K.S. Low Australia, Trade Marks

PASTA and GARLIC BREAD held to be “Goods of Same Description”

pasta dish with vegetables Photo by Lisa on Pexels.com

In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, the Federal Court of Australia held that pasta and garlic bread are goods of the same description under s 120(2) of the Trade Marks Act 1995 (Cth) thereby establishing infringement conduct by Conga Foods Pty Ltd.

Federal Court of Australia 

Judge: Burley J

Date of Judgment: 17 December 2020

In November 2017, Conga Foods Pty Ltd and Pastificio Rana Spa (“respondents”) began importing fresh pasta products into Australia bearing the “” (“Rana mark”). Pastificio had earlier filed the Rana mark in respect of goods in class 30 including pasta with fillings, pizza and sauces. Anticipating issues, the respondents filed non-use removal application against six of registered trade marks by Goodman Fielder Pte Ltd (“Goodman”) and La Famiglia Fine Foods(“LFFF”) Pty Ltd (collectively “applicants”). The applicants then brought infringement proceedings against the respondents. The respondents cross claimed on grounds that the applicants’ registered trade marks lack distinctiveness and for lacking requisite intention to use.

At trial, the primary judge found evidence and bona fide intention to use the 473 mark, 906 composite mark and 2015 marks in respect to bread and bread products only and His Honour took the view that it’s reasonable to extend the use to pizza bases and pizza dough as they are considered to be sufficiently similar to bread and bread products. The same cannot be said for the general foodstuffs category and it was held that there was a lack of intention to use the marks on the general foodstuffs category. The grounds of s 59 and s 92(4) are made out and the Court ordered the registered goods to be amended.

Distinctiveness

Burley J held that the LA FAMIGLIA (473 mark) is sufficiently distinctive in respect of the goods claimed in class 30.(except for the following reasons:

  • Australians understood the ordinary signification of the words to mean “the family”
  • LA FAMIGLIA convey the meaning including family communal dining, products that can be enjoyed by the family and alluded to Mediterranean or Italian dining and cooking
  • The 473 mark did not convey any meaning tangible amounting to a direct reference on the character or quality of goods

The 906 composite marks and the (131 and 133 marks) 2015 marks were all held to be sufficiently capable of distinguishing the designated goods from those of other traders.

Pasta and Garlic Bread – goods of same description?

In considering if “Rana mark” and LA FAMIGLIA were deceptively similar, his Honour noted the following:

  • Both marks contain the words “LA FAMIGLIA” 
  • The consumers for both marks are broad and overlap
  • The products are inexpensive and requires little attention when purchasing
  • Presence of the word “RANA” insufficient to prevent a substantial number of consumers from wondering if the products are from the same source
  • Consumers might mistook the RANA mark as a product variant by LA FAMIGLIA
  • There is real and tangible danger of deception or confusion occurring that a number of purchasers will be caused to wonder whether the products emanate from the same source

His Honour concluded the “Rana mark” was deceptively similar to 473 and 133 marks. 

As pastas were not the “same goods” as the registered goods(amended) of the applicants, the trial proceeded to invoke s 120(2) of the Trade Marks Act 1995 (Cth). His Honour found garlic bread to be often eaten with pasta and fresh pastas and garlic are formed by dough and their trade channels overlap significantly resulting in likelihood of confusion. Fresh filled pastas and chilled garlic bread are placed in close proximity to each other in supermarkets. It was held that pastas and garlic bread are goods of the same description. Infringement was established in relation to 473 and 133 marks. 

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.