Full Federal Court affirms "luscious Lips" as descriptive
In the recent case of Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 the Full Federal Court unanimously affirmed the March 2010 decision of Sundberg J, that Nestle had not used ‘luscious Lips’ as a trade mark on its product packaging, and accordingly did not infringe Nature’s Blend’s registered “LUSCIOUS LIPS” trade mark.
Nestle had sold a ‘RETRO PARTY MIX’ range of lollies under its “ALLEN’S” trade mark. The “blurb” on the back of Nestle’s packaging read “That’s right! All your old favourites are back, so put on those flares & 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”.
The primary judge accepted that the words ‘luscious Lips’ were substantially identical with or deceptively similar to the Nature’s Blend’s ‘LUSCIOUS LIPS’ mark, but held that the plain meaning of the words ‘luscious Lips’ would be taken by consumers as being descriptive or laudatory of the lip shaped confectionery sold by Nestle in its ‘RETRO PARTY MIX’ and would not be seen as a badge of origin for Nestle.
On appeal, Nature’s Blend had contended that the primary Judge had erred in concluding that Nestlé’s use of ‘luscious Lips’ did not constitute infringement, in diluting the significance of ‘luscious Lips’ as it appears on the packaging, by the prominence of the registered ALLEN’S and NESTLÉ marks and in applying the defence of good faith to indicate a descriptive characteristic of the goods.
In dismissing Nature’s Blend’s appeal with costs, Justices Stone, Gordon and McKerracher held that “[t]he primary judge was correct in taking into account the prominence of the registered ALLEN’S and NESTLÉ marks on the packaging in contrast to the location and style of the expression ‘luscious Lips’” and that the inclusion of these trade marks meant that “[t]he consumer… is left in no doubt as to the commercial origin of the product by the time he or she has read the relatively long discursive and humorous description referring to one of the lolly varieties as being ‘luscious Lips’”.
The Full Federal Court’s decision affirms the well-established position that a mark must be used as a trade mark in order to infringe an existing trade mark registration. In determining the question of use, context is all important.
Take away
In determining whether to initiate trade mark infringement proceedings, trade mark owners should be careful to consider whether the potential infringer is actually using the relevant mark as a badge of origin in the context in which it is being used.
More information
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