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Sundberg J has dismissed Nature’s Blend’s action against Nestlé for infringement of its LUSCIOUS LIPS trade mark, passing off and misleading or deceptive conduct by selling Allens RETRO PARTY MIX.

Nature’s Blend, which was principally a supplier of veterinary products registered LUSCIOUS LIPS in respect of confectionery. Initially, at least, it gave chocolates away branded with the trade mark and a device to promote its business.

Around the same time as Nature’s Blend began marketing products with its trade mark, Nestlé introduced a new product under its ALLENS brand called ‘RETRO PARTY MIX’. This was a box or packet of mixed lollies. The back of the packaging included the following:

That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including…cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries. [emphasis added]

The “luscious” Lips were a jelly product in the shape of lips.

Sundberg J found that the words used in this setting were not used as a trade mark. First, because the word “luscious” was descriptive and in context consumers would be likely to regard the expression as laudatory and possibly even humorous. Secondly, the effect of the combined expression in context was diluted by the prominence of the Allens, RETRO PARTY MIX and Nestlé trade marks.

Sundberg J would also have found, if necessary, that Nestlé was using the term as a good faith description: Nestlé’s product manager explained the development of the name in terms which made it clear she had been unaware of Nature’s Blend’s trade mark or product.

Interestingly, at [13] Sundberg J also considered it clear that the relevant time for determining liability under s 52 of the Trade Practices Act 1974 (Cth) is the date when the respondent’s conduct started; the same as for trade mark infringement and passing off. Middleton J did not consider it necessary to decide the point in Playcorp v Bodum [2010] FCA 23 at [58]-[59].

Nature’s Blend Pty Ltd  v Nestle Australia Ltd [2010] FCA 198

The Federal Court, Middleton J, has rejected Bodum’s allegations that

1. the sale of the Baccarat Venice coffee plunger and Euroline’s Classic coffee plunger passed off Bodum’s Chambord coffee plunger or was otherwise misleading or deceptive; or
2. Baccarat’s Devon teapot passed off Bodum’s Assam Tea Press or was otherwise misleading or deceptive.

Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23

The judgment includes depictions of the products and their packaging in the appendices.

Mars’ appeal against the rejection of its claims of trade mark infringement and misleading or deceptive conduct have been tersely rejected.

Images of the product Mars complained about here.

The Full Court noted:

9     It is not in dispute that the evidence established that:
•    confectionary is commonly packaged in primary colours and that red, in various shades, is a predominant and common, indeed ubiquitous, colour;
•    confectionary packaging commonly displays a picture or representation of the product, frequently showing a cross-section or “cut through” of the product;
•    it is not unusual for the name of the product to be written on a diagonal, from bottom left to top right;
•    it is common for packaging of confectionary to include all of the above features.

In this context, the Full Court found that the words malt balls were descriptive and the colour red used by the respondent was not distinctive.

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174

Telstra and Optus have an interconnect agreement, in part to regulate how callers originating from one network get delivered to the other, charges and the like.

Optus successfully sued Telstra for misusing Optus’ confidential information under the agreement: information about call traffic between the two networks.

(You should look at that judgment as it illustrates the two-edged nature of many definitions of confidential information.)

In this part of the fight, Edmonds J declined to grant relief under the equitable obligation of confidence as the contractual obligations in question were comprehensive.

His Honour also explored the meaning of the prohibition on unconscionable conduct in s 51AA of the TPA, but declined to find a contravention in that context.

Optus Networks Ltd v Telstra Corporation Ltd (No. 3) [2009] FCA 728