PERSIAN FETTA trade mark deemed incapable of distinguishing
In a recent decision, the Federal Court of Australia ordered that a trade mark registration for a geographically descriptive name be cancelled. The applicant’s claim for infringement of the now-cancelled registration was therefore unsuccessful.
Background
Yarra Valley Dairy Pty Ltd (“Yarra Valley”) is a farm-based cheese maker located in Victoria, Australia. In the mid 1990s, it began making and selling a marinated cheese product under the name PERSIAN FETTA. The cheese was sold in a small “paint tin” container.
On 21 March 2000, Yarra Valley applied to register PERSIAN FETTA as a trade mark for “dairy products including cheese”. The examiner initially refused registration on the basis that the mark was incapable of distinguishing Yarra Valley’s dairy products from those of other traders. Registration was eventually obtained after evidence was filed purporting to show significant use of and reputation in the PERSIAN FETTA mark.
Lemnos Foods Pty Ltd (“Lemnos”) is also a cheese manufacturer. In 2007, it began developing marinated cheese products. In early 2009, it had on its website an image of a product labelled LEMNOS PERSIAN FETTA. At the time, no sales had been made of the product.
By letter of demand dated 26 March 2009, Yarra Valley informed Lemnos of its registration for PERSIAN FETTA. Lemnos removed the offending image and changed the name of the product to LEMNOS PERSIAN MARINATED CHEESE. The LEMNOS PERSIAN MARINATED CHEESE product was then supplied to retailers. It was, and continues to be, sold in a tin.
Yarra Valley brought proceedings against Lemnos for trade mark infringement, passing off and for misleading and deceptive conduct in breach of the Trade Practices Act. Lemnos cross-claimed that the PERSIAN FETTA registration should be cancelled because the mark is incapable of distinguishing Yarra Valley’s goods.
Trade mark infringement
The Court held that the PERSIAN FETTA mark was incapable of distinguishing Yarra Valley’s goods at the filing date of the application – both inherently and factually, through use. Lemnos was therefore successful in having the PERSIAN FETTA registration cancelled. Consequently, there was no need for the Judge to consider the question of trade mark infringement.
The geographical significance of the word “PERSIAN” played a key part in the Court’s decision. It was accepted that the word is commonly used to describe things pertaining to “Persia” (even though the official name of Persia is now Iran). The mark PERSIAN FETTA had been adopted partly for its emotive and exotic connotations but it also indicated a style of cheese originating in Persia or Iran. This led to the finding that other traders should be free to use that term.
On the question of inherent capability to distinguish, the Judge concluded that:
- “there is a style or quality of fetta which originates from or is associated with the geographical location then known as Persia”;and
- “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.”
As to whether the mark had factually acquired the ability to distinguish through use, the Judge commented that:
- “it is the YARRA VALLEY DAIRY name and logo on Yarra Valley’s PERSIAN FETTA product that does the work of identifying the commercial source or trade origin of Yarra Valley’s product, and not the words PERSIAN FETTA”;
- “Yarra Valley did not use the words PERSIAN FETTA as a trade mark prior to 21 March 2000 to the extent necessary to establish that by then the words PERSIAN FETTA no longer conveyed their inherent descriptive meaning, but instead distinguished Yarra Valley’s cheese from the cheese of other persons.”
Passing off / Breaches of the Trade Practices Act
Lemnos was also successful in defending Yarra Valley’s claim for passing off and breaches of the Trade Practices Act. The Judge held that, although both parties use tins, the respective products are clearly distinguishable.
An image of the get up currently used by each party is set out below:
Discussion
This decision in emphasises the difficulty in obtaining meaningful trade mark rights in a geographically descriptive name. A distinctive trade mark will provide greater protection than one that is incapable of distinguishing one trader’s goods from those of another.
It is important that traders understand the pitfalls of adopting a descriptive trade mark before launching a product.
March 2011
