Yellow tops and labels

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.

Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65 (special leave application pending)

Coffee plungers, tea pots, designs and passing off

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.

Security over a business name

A restaurant granted a bank, Westpac, security over its assets.  When the business went sour and the bank came to enforce the security, it found the registration of the business name, Melba’s on the Park, had been transferred to someone else and another company incorporated under the name too.  Apparently, the ability to sell the restaurant business with its name would add significant value.

What to do?

Somehow, the bank has persuaded the Supreme Court of Queensland to grant declarations and injunctions transferring the names back to Westpac.

Mark Davison explores the judgment and how it should have worked here.

I guess if you were taking security over something as risky as goodwill, it certainly wouldn’t hurt to try and tie down the business name registrations etc.  In the good old (monochrome) days, people giving licences or lending on security in such situations used to get signed Cessation/Transfer of Business Name forms and shareholders’ resolutions to change the corporate name.  That led to powers of attorney and stamp duty issues.  And, of course, wouldn’t have worked here once the business name was in someone else’s name!

Case is Westpac Banking Corporation v. McMillan & Melbas On The Park Pty Ltd (formerly Credit Systems Australia Pty Ltd) [2008] QSC 2006