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  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  FCA 23 at -.
Nature’s Blend Pty Ltd v Nestle Australia Ltd  FCA 198