It’s not exactly front page news, but over at news.com.au they have a short video explaining the battle between Kraft and Bega over who can market peanut butter in that yellow get-up. This follows news that Kraft has applied for special leave to appeal the dismissal of its complaint.
A Current Affair also has a go with a lot more flag waving and some gruesome finger dipping.
If you’re looking for the more formal legal analysis, the Full court decision is here.
So far, the moral of the story is that an unregistered trade mark is not property in its own right. Such a “thing” can be assigned only as part of the transfer of the goodwill of a business as a going concern. If you are going to sell your business, or its assets, but you don’t want to the purchaser to use an unregistered name, or get-up, after the sale, you will need to impose appropriate contractual restraints.
Now, you might be thinking that CHÉRI marks out Homart’s product from CHANTELLE rather plainly. But the dreaded Red Bull and Peter Bodum cases reared their heads again.
Sales of Careline’s CHANTELLE product had exploded after it adopted its current get-up: from between $25,000 to $60,000 per year to over $2 million in between June 2014 and early 2016 when Homart introduced its competing product.
Homart’s get-up was nothing like the other products in its CHÉRI range. Its get-up was much closer than any other competing product to Careline’s. The boxes of the products were often displayed in stores stacked, with the lid of the top box open so that customers could see the contents.
Accordingly, the branding on Homart’s product was often not visible, at least initially. CHÉRI itself was not thought to be a particularly distinctive mark, especially as both CHANTELLE and CHÉRI began with the same “shhh” pronunciation. Burley J could not accept the explanation for the adoption of the get-up advanced by Homart’s designer.
After a very careful consideration of the evidence, his Honour summarised:
194 The unique combination of features making up the get-up of the CHANTELLE bio-placenta product are eye-catching. They extend to the packaging in open or closed configuration and provide strong visual cues by which a consumer would note and remember the product. From this combination, quite separately to the name, the consumer is informed of the origin, quality and type of goods being purchased. Homart has taken all of those cues.
195 The suggestion conveyed by the get-up is not, in my view, dispelled sufficiently by the use of the CHÉRI Australia brand name. The name CHÉRI Australia is a relatively weak mark for distinguishing otherwise identical products because:
(a) such reputation as Homart has in the mark CHÉRI is weak and has been significantly dissipated by reason of Homart’s choice to use it in packaging distinctly different to the products in the balance of the CHÉRI range (see section 9 above);
(b) the phonetic and visual similarities between the first letters of both the CHÉRI and CHANTELLE marks diminish the effect of the use of different words (see  above). In this context both Chantelle and Chéri are French sounding names. Both commence with “Ch…”. To persons not familiar with French, they are likely to be weak means of distinguishing otherwise identical products (unlike “Andronicus” and “Moccona” in Stuart Alexander). They are likely to be perceived as words that convey little or no meaning (I make this observation without particular regard to the level of English literacy of the target market and assuming it to be roughly on par within native English speakers); and
(c) the addition of the reference to “Australia” has a similar local geographical connotation to “Sydney” as used in the CHANTELLE bio-placenta product.
198 Further, the trade circumstances to which I have referred in section 5 above demonstrate that often the display of the bio-placenta products in stores may not clearly show the trade mark, for instance, when the products are stacked one on top of the other. In those circumstances consumers are likely to use the visual cues provided by the get-up of the packaging to indicate the product which they seek rather than the names.
199 In my view, it is likely that a not insubstantial number of persons within the relevant class, who are aware of the CHANTELLE bio-placenta product, would be diverted from a search for that product by the get-up of the Homart product. They may note that something seems different about the brand name, but be convinced by the other similarities in the get-up that her or his recollection as to the brand name was mistaken. A consumer familiar with the CHANTELLE bio-placenta product may well recall its get-up, but have no or an imperfect recollection of its name and acquire the CHÉRI bio-placenta product believing it to be the CHANTELLE bio-placenta product. This would be especially likely in circumstances where the store does not stock both brands. The rapier of suggestion caused by the similarity in get-up will in those circumstances result in a sale for Homart.
200 Further, the findings that I have expressed in section 8 above (Development of the CHÉRI bio-placenta product) as to Homart’s intention, lead to the application of Australian Woollen Mills. That authority was applied by the Full Court in RedBull at  (Weinberg and Dowsett JJ, Branson J agreeing) who said:
Without wishing to labour the point unduly, we again point out that where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse…”. Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing.
201 In the present case, I am satisfied that this was the intention of Homart. As noted in Red Bull at first instance (Conti J) at , the difference between the brand names is not necessarily decisive of an absence of the requisite intention. Nor, as I have noted above by reference to the Full Court decision in Peter Bodum, is the presence of a brand name determinative of an absence of misleading conduct. In the present case, in any action under s 18 of the ACL, one must look at the totality of conduct of the alleged deceiver.
202 I have found that Homart intentionally adopted a get-up for its product for the purpose of appropriating part of the trade or reputation of Careline. The choice of the CHÉRI Australia brand name was not, in the particular circumstances of this case, sufficient.
In the context of the findings at  above, his Honour had earlier noted at  –  that the cause of action could be made out even if the customer’s mistaken impression was dispelled by the time they had reached, or at, the sales counter. Burley J did discount Careline’s argument that the largely Chinese speaking customer base would not appreciate the different wording in Roman characters.
While we are on the subject of misleading or deceptive conduct, the Full Court has dismissed “Chemist Warehouse”‘s appeal from Middleton J’s dismissal of its claim that stores like these:
misrepresented an association of some sort with stores looking something like this:
There were some 19 grounds of appeal which the Full Court worked their way through in detail. The central problem for Chemist Warehouse was that Full Court said there was no error in Middleton J’s finding that the predominantly yellow colouring of the exterior of the Chemist Warehouse outlets was not distinctive – the distinctive feature was the “Chemist Warehouse” logo:
no error has been shown in his Honour’s findings that the primary colour palette used by Chemist Warehouse was not distinctive. First, there was considerable variability in the nature of the Chemist Warehouse get-up. The primary judge distinguished other authorities where secondary branding had been accepted on the basis of a consistent presentation of colours in a particular juxtaposition. Second, the colours had a functional aspect. Colour can be used for its practical or functional utility, for example, high visibility for a road sign. In the present case his Honour appears to have accepted that the colour yellow was used to take advantage of the attributes of visibility and its association with discount value; but such a function could apply to any type of discount goods, not just pharmacy goods. The use of yellow to create the so-called “yellow box” was also to draw the attention of potential consumers on the street; it cannot be said that the use of the colour yellow in that way denoted trade origin. His Honour accepted the functionality of yellow (see at , , ,  and ). He also accepted that the yellow, blue and red combination served a functional purpose (see at ). No error is demonstrated in any of these findings.
Fourth, the dominant and distinctive “Chemist Warehouse” logo was the only consistent branding element across the appellants’ stores prior to May 2006 ….
The fact that other stores, like JB Hi-Fi and Ted’s Camera’s used a predominantly yellow background to attract attention was also not irrelevant to whether its use on pharmacies was distinctive.
Moreover, even if the get-up had been distinctive, there would have been no misrepresentation:
in any event, even if a colour-based reputation could have been shown, that would not have answered the question of whether there had been misleading or deceptive conduct or a misrepresentation. The respondents had a different get-up with different distinguishing features. Indeed the primary judge had distinguished the respondents’ stores by not only the “Direct Chemist Outlet” trade mark but also the different distinctive logo, cleaner appearance and lifestyle photographs. None of these were part of the appellants’ pleaded get-up. The respondents’ schedules two and three to its closing submissions, by reference to the primary evidence before his Honour consisting of the relevant photos, well summarise the variability in get-up used at the DCO stores and the Chemist Warehouse stores, and relevant differences.
The Full Court pointed out that proof DCO had copied elements of its get-up from Chemist Warehouse was not sufficient to invoke the principle from Australian Woollen Mills that someone who sets out to deceive will be presumed to have succeeded. For that principle to apply, it was necessary to show not just copying but also a subjective intention to mislead or deceive – to appropriate part of the trade or reputation of the competitor.
Finally (for the purposes of this note), the Full Court accepted Middleton J’s view that the appropriate time to assess whether DCO’s conduct was misleading or deceptive was when DCO first commenced use of its present get-up. Chemist Warehouse argued, in the alternative, that Middleton J should have made the assessment for each individual DCO store at the time it opened – the so-called geographical approach. Middleton J pointed to a number of problems with this approach. One problem was that there were some areas where the Chemist Warehouse store opened after the DCO store – who would be making the misrepresentation then. Further:
… if the Applicants and Respondents were concurrently trading and building independent reputations in separate areas, it may have been the case that it was not the Respondents’ conduct that was misleading or deceptive at that later time.
For example, the Lalor DCO store opened in 2014, well after 26 May 2006. Both parties had advanced their own reputations by that time. What is the Court to conclude is the position of the competing parties in that particular area and at that particular time? It is to be recalled that since 26 May 2006 both businesses involved in this proceeding have increased their respective exposure to the relevant consumers by opening many new stores. There has been co-existence in the market place for approximately eight years prior to litigation commencing. Further, stores have opened in numerous locations, and Chemist Warehouse stores have opened in close proximity to existing DCO stores (as in the case of the Warrnambool store, for example).
In any event, his Honour considered that the DCO get-up sufficiently distinguished its stores from Chemist Warehouse stores that no misrepresentation was likely to arise.
The Full Court considered Middleton J’s analysis was “unremarkable” and no error was identified.
Moshinsky J has rejected Stone & Wood’s attempt to block Thunder Road Pacific Ale and, instead, ruled that Stone & Wood made unjustified threats of trade mark infringement.
In 2010, Stone & Wood renamed its Draught Ale product as Stone & Wood Pacific Ale. Stone & Wood has 3 other main products in its line up of beers, but the Pacific Ale makes up some 80 – 85% of its sales. These sales were mainly in the Northern Rivers area of NSW, south eastern Queensland, Sydney and Melbourne.
Pacific Ale was a name Stone & Wood coined for its product. At the time, Stone & Wood was based in Byron Bay and ‘Pacific’ was chosen partly to reflect Byron Bay’s location on the Pacific ocean and partly for its ‘calming, cooling emotional response’.
The second respondent, Elixir, also started up in 2010, in Brunswick, Melbourne Victoria, which some people might consider far from the Pacific. One of its lines of beers is its Thunder Road range. In 2015, it added a Thunder Road Pacific Ale to that range.
misleading or deceptive conduct / passing off
This is what individual bottles of the competing products looked like:
The Thunder Road logo is on the label around the neck. This is what a six pack of each looked like:
Stone & Wood contended that Elixir’s use of Pacific Ale and/or the ‘similar’ green and orange colour scheme misrespresented that the Thunder Road product was Stone & Wood’s or in some way associated with it in contravention of s 18 or s 29 of the ACL or a passing off.
The essential problem with this type of claim is that whether or not there is a real possibility of misrepresentation falls to be determined in all the circumstances. What would the ordinary consumer of the relevant products think in all the circumstances. Moshinsky J’s reasoning is much more detailed than I am going to attempt here, but notwithstanding the large and prominent display of Pacific Ale on Elixir’s product:
the dominant element on Stone & Wood’s packaging and get-up was its name: Stone & Wood;
there was no use of Stone & Wood on the Thunder Road product;
the words Pacific Ale on the Elixir product was very closely associated with Thunder Road, itself a well-known brand amongst the discerning hipsters and others in the market for craft beers;
although Pacific Ale was not a technical ‘style’ recognised at beer shows, it had become by the time Elixir introduced its product, descriptive for many consumers of a beer made from Galaxy hops, a particular Australian variety which gave the beer a fruity or tropical flavour – this was reinforced by the reasons why Stone & Wood had adopted the name in the first place;
the colour schemes and get-up are, shall we say, pretty different.
Moshinsky J accepted that Elixir knew full well that Stone & Wood had a Pacific Ale product when it decided to launch its own Pacific Ale and was trying “to some extent” to take advantage of consumers’ recognition of the term Pale Ale. That was not the same thing, however, as trying to take advantage of the name Stone & Wood or trick people into thinking the Thunder Road product was the Stone & Wood product which was what Stone & Wood needed to show.
Stone & Wood also deployed expert evidence from the marketing expert, Professor Lockshin. Prof. Lockshin argued that marketing theory posited consumers might have come to identify Stone & Wood’s product just by the sub-brand Pacific Ale. Moshinksy J was not prepared, however, to overlook the significance of the prominent use of Stone & Wood on Stone & Wood’s products and the other differences between the products in the absence of testing which showed how consumers actually reacted.
In an attempt to repeat Bodum’s rather surprising success against Euroline, Stone & Wood pointed to a blackboard in a bar which simply listed PACIFIC ALE as one of the beers on tap; the beer of course being Thunder Road, not Stone & Wood. Moshinky J was not prepared to infer that patrons ordering the beer from that listing were necessarily trying to order Stone & Wood Pacific Ale as opposed to a pacific ale. Also, Elixir should hardly be liable for the actions of an independent bar owner.
Trade Mark infringement
Stone & Wood has a trade mark, No. 1395188, registered in class 32 for beer:
The problem Stone & Wood confronted with its infringement case is that Pacific Ale is such a subsidiary feature of the trade mark. Moshinsky J was not prepared to find that the words Pacific Ale in that configuration were likely to be an essential feature of the mark. His Honour considered that the Crazy Ron case required him to assess the essentiality of a feature in the context of the trade mark as a whole. It would have been wrong to focus on part of the mark in isolation only.
Section 129 provides someone threatened with an action for trade mark infringement to bring proceedings for unjustified threats. A declaration that the threat was unjustified can be obtained, injunctions against repetition and, if damage be suffered, damages.
The Trade Marks Act is rather curious in that it is a defence to such an action if the trade mark owner starts proceedings for infringement “with due diligence”, even if the infringement allegation ultimately fails. Moshinsky J denied Stone & Wood’s reliance on this defence in this case.
Stone & Wood had sent a letter of demand which included allegations of trade mark infringement as well as misleading or deceptive conduct, and threatened proceedings. When the correspondence did not lead to a resolution of the dispute, it started proceedings against Elixir, but only for misleading or deceptive conduct / passing off. It did not bring proceedings for trade mark infringement. It only brought the infringement proceedings by way of amendment after Elixir cross-claimed for unjustified threats.
In that respect, Moshinsky J distinguished Stone & Wood’s position from the trade mark owner in the Montana case. There, Wilcox J had rejected reliance on the ‘with due diligence’ defence, but the Full Court overturned that on appeal. In Montana, TTS did bring the infringement proceedings by way of cross-claim. However, it did not start the proceedings with a misleading or deceptive conduct claim. Montana started the earlier proceedings with its claim against unjustified threats and TTS brought the cross-claim at the first available opportunity.
It is tempting to wonder whether Stone & Wood would have had more success if it had promoted Pacific Ale more prominently and independently of its name, Stone & Wood. Perhaps, but these types of sign are slippery and it doesn’t take much for them to slide into descriptiveness. CAPLETS, for example, was a coined word, but not infringed.
If you have a comment or a question, please feel free to post it in the comments section. Or, if you would prefer, email me.
The Full Court (Greenwood and Tracey JJ, Buchanan J dissenting) has upheld Bodum’s appeal from Middleton J’s finding that the Euroline product was not likely to misrepresent an association with Bodum or its Chambord coffee plunger.
Now, due to my involvement in the other case (which was not appealed), I cannot say much about this.
I will draw your attention to Greenwood J’s finding that Bodum did in fact have a reputation (but not a monopoly see ) in the features of the coffee plunger alone, divorced from its branding insignia.
192 The advertising material is vast. It has endured over a long period. It is reinforced by substantial sales of the product. The reputation for the product by reason of its aesthetic features reflected in the pleaded elements of the shape of the product, is very significant. The presence of the bodum® trade mark operates to reinforce the association in the mind of consumers or potential purchasers between the distinctive product and its maker which is established by the reputation subsisting in the features of the product itself.
194 Two examples (among many) speak loudly to the independent or secondary reputation in the features of the product at approximately each end of the chronological spectrum. The first is the feature article as early as 17 June 1986 addressing the coffee-drinking behaviours and coffee preferences of consumers, in the Good Living section of The Sydney Morning Herald which depicts as the signature image for the article a large Bodum Chambord Coffee Plunger standing next to a mound of coffee beans. Presumably, the publishers of the article in that section of the newspaper thought that consumers would immediately identify with the image. The second is the front page of the 2008 Myer Christmas Catalogue. In that catalogue Myer placed the Bodum Chambord Coffee Plunger at the apex of the Christmas tree of products presumably on the footing that consumers ready to engage in purchase transactions in the Christmas retail cycle would identify and associate with the products on the cover of the catalogue including, for present purposes, the Bodum Chambord Coffee Plunger.
195 What further evidence could be needed of a significant independent reputation in the features of the product itself connecting consumers with the maker of the product (even if the name of the maker may not readily be called to mind) although, in fact, the promotional material is, as found, vast.
196 As to the distinctiveness of those features, there is no evidence which suggests that the features of the Bodum Chambord Coffee Plunger are simply generic features. There are many different coffee makers which exhibit many different shapes. The evidence within the advertising material contains many images of different styles of coffee makers. Moreover, the primary judge found at  that although copyists had entered the market from time to time, the presence of copyists had not diluted Bodum’s reputation. Rather, it “would have had the inverse effect” having regard to the factors mentioned by the primary judge at .
197 I am satisfied that the evidence establishes a very significant secondary reputation in the features of the Bodum Chambord Coffee Plunger associated in the mind of consumers with Bodum as the manufacturer of the product and, with respect to the primary judge, that reputation is not “distinctly tied” to Bodum in the sense that in the absence of the name Bodum there cannot be a secondary reputation in the features of the product. The primary judge considered that Bodum, like Mars Australia Pty Ltd, had become “a victim of its own success” by so heavily promoting its distinctive product in conjunction with its trade mark, Bodum, that in the absence of the mark, no potential purchaser would be, or would be likely to be, misled into believing that a rival product is a Bodum Chambord Coffee Plunger. Care should be taken in applying this notion as a general principle. As a conclusion on the facts in the case of the Maltesers get-up, the highly stylized and dominant word Maltesers as the principal component of the get-up emblazoned on the box of the confectionary product meant that purchasers of similar confectionary would not think a rival boxed product not exhibiting the highly stylized Maltesers mark was a box of Maltesers. However, it should be remembered that the product in question was a boxed product in which the confectionary could not be examined by a potential buyer independently of its packaging.
You should also note the importance his Honour placed on (a) the absence of product branding on the Euroline product itself and (b) the generic or descriptive and unknown nature of the branding that it did have. For example:
244 It seems to me that the adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product which for all practical purposes embodies all of the features (that is, copies those features) of the product exhibiting the pronounced and substantial reputation at July 2004 of the Bodum Chambord Coffee Plunger, is not sufficient to distinguish the rival product from the distinctive product sought to be copied. This is especially so as the rival product and the Bodum product are regularly displayed outside the packaging for each product notwithstanding that it may be that the products are displayed in stand-alone fashion, proximately located to the packaging and in some locations in front of the boxes. It would have been a simple matter for DKSH to mark its name prominently on the box or mark its trade mark and product name prominently on the rival product itself (or at least as prominently as Bodum marks its product) or both. A plainly distinctive differentiating trade mark might also have been selected for use on the box and on the product.
245 An inference is open that at July 2004 DKSH’s get-up of its product was such as to lead consumers to believe, or be likely to lead consumers to believe, that when they engaged with the rival product they were actually engaging with Bodum’s product or a product in the Bodum line of products even if they saw the words Euroline on the box when engaging in the sequence of steps leading up to selection and purchase of a coffee plunger. If they did not see the box and were drawn to the rival coffee plunger by reason of the distinctive features of the Bodum product, a consumer might well pick up the rival product and handle and examine it, and if a potential purchaser did so, there is no indication from DKSH on the product itself that the consumer was not looking at a Bodum product or a product in the Bodum line of products, but looking at a DKSH product.
246 The references in the primary judgment to the association between the distinctive features of the Bodum product and the use of Bodum’s name and logo inverts the real question to be addressed. A consumer looking specifically for the Bodum Chambord Coffee Plunger by reference to the name Bodum could pick up the Bodum product as displayed out of its box, hold it (as put in cross-examination – even at arms-length in the right hand) and see the Bodum name and trade mark. That might well be so for a consumer looking for the product specifically by name because they know the product by name. They may be replacing a Bodum product they already own; or they may have seen the product closely in particular settings at a restaurant, in a home or in many other settings which attracted their attention to its features and the Bodum name as well as the features. The real question is what impression is made on the mind of the reasonable or ordinary member of the class of consumers seeking to buy a coffee plunger (rather than sophisticated members of the class, which applies a more stringent and incorrect test) drawn to the rival product by reason of the copying of the distinctive features of the Bodum product and conscious of the reputation associating the product distinctly with Bodum (although the name might not be immediately recalled), when such a consumer examines the rival product without any differentiating name, title or logo on the product at all to signify that it is not actually a Bodum product. As a matter of impression, it seems to me entirely rational to conclude that such a member of the class is very likely to think that the largely indistinguishable product embodying those features (as DKSH chose to do) is the Bodum product, a version of the Bodum product or in some way sponsored or approved by Bodum. The only step taken by DKSH to differentiate its product is the placing of the Euroline name on the box for the product. The instruction sheet as to safe use of the product does not reasonably tell a potential purchaser that “this is not a Bodum coffee plunger”.
Note in particular that the branded leaflet inside the product itself was inadequate.
Note also there was not a marketing expert or a parade of consumers anywhere to be seen.
Parkdale v Puxu was distinguished on its facts at 254 – 257. Philips v Remingtonand Dr Martens were distinguished as the products themselves were labelled in the appropriate places (and the rival traders’ marks were well-known).
Greenwood J put to one side arguments about “impulse purchase” products being the subject matter of cases such as Jif Lemon and Red Bull :
262 It seems to me to be an error of principle to simply put cases such as Red Bull and Apand to one side as purely “impulse purchase” cases in the circumstances of this case. Those cases at least raise for proper analogical consideration the question of whether the use of a label on the rival product itself (or packaging for a product) aided, in context, in distinguishing a rival product from the product it closely resembles whether by features of shape or other distinctive get-up. In similar terms, the adoption of the trade name REALEMON on the rival get-up for the rival product in Reckitt & Colman Products Ltd v Borden Inc. (Schedule 16) was not enough to establish differentiation for the rival product from the distinctive lemon get-up of Borden’s product.
Mitre 10 has been refused an interlocutory injunction to stop “Masters” using a blue, white and grey get-up for a hardware store. Macaulay J was not persuaded there was a serious question to be tried and, even if there were, the damage to “Masters” resulting from an injunction far outweighed the damage to Mitre 10’s goodwill if no injunction were granted.
His Honour itemised a number of reasons why the claim did not rise to a prima facie case. The main reason was that Mitre 10 was trying to argue that the colour scheme adopted by “Masters” would misrepresent an association with Mitre 10. The problem with that was that both rivals’ get-up included plastering their respective brand names and logos on their get-up. That created a real difficulty when, apparently, other hardware stores unrelated to Mitre 10 used a similar get-up. At least at the interlocutory stage, Mitre 10’s evidence apparently showed that less than half its stores had adopted the get-up in which reputation was now claimed.
You can get a bit of an idea of the competing get-ups from Mitre 10’s homepage and Masters’ homepage (or even better (or worse) try here).
Mitre 10 Australia Pty Ltd v Masters Home Improvement Australia Pty Ltd  VSC 343
You won’t have heard of Masters yet: it isn’t scheduled to start trading until September or October. Apparently, it is a joint venture between Woolworths and Lowe’s from the USA and, of course, Woolworths’ main competitor just happens to own Bunnings.
Back in the “good old” days, we used to bring actions for passing off in the State Supreme Courts. Then, we worked out that by bringing a counterpart claim for misleading or deceptive conduct, we could go play in the Federal Court. Recently, the Federal Court has not been so kind to straight get-up claims (Bodum and Maltesers and Nutrientwater). This resort to the old State court has not led to any different outcome at this stage.
Of course, there have been cases where the interlocutory injunction was lost but the plaintiff ultimately succeeded at final trial.