• Steve Davey

Should I choose a descriptive brand?


Short answer: definitely not. Why? Because its difficult to stop others from using them.

A case in point is the PERSIAN FETTA trade mark, which was the subject of Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367.

In that case Yarra Valley claimed that Lemnos Foods was infringing its "PERSIAN FETTA" trade mark by using an identical mark.

Yarra Valley also alleged that Lemnos Foods was engaging in passing off and misleading and deceptive conduct.

Lemnos counter-claimed that Yarra Valley's registration of the PERSIAN FETTA should be cancelled because the mark is descriptive and Yarra Valley made misrepresentations to the Trade Marks Office regarding the trade mark.

The Federal Court noted that "fetta" is a common term and "Persia/Persian" are geographical terms (even though Iran is no longer called Persia).

The Federal Court held that "there is a likelihood of other traders legitimately wishing to use in Australia the phrase PERSIAN FETTA in relation to cheese products in the appropriate circumstance."

According to the Court, it was the logo that distinguished its products from those of competitors. The logo includes the words YARRA VALLEY PERSIAN FETTA and not the actual words PERSIAN FETTA.

The judge made the point that extensive use of a mark does not alone establish distinctiveness; instead, distinctiveness is proven if the trade mark distinguishes the goods or services of one trader from those of another. This assessment cannot be reached in isolation from a consideration of the mark itself.

The judge referred to the distinctiveness test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

"The question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

Justice Middleton stated the three classic elements needed to establish a passing off case are:

  1. that the "get-up" is recognised by the public as distinctive;

  2. that there has been misrepresentation by the other party; and

  3. that the applicant has suffered or is likely to suffer damage.

The judge held that there was an insufficient likelihood that consumers would have been misled by the packaging of Lemnos. Consequently, a finding of passing off could not be made out.

#trademarks

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