IP Update: Is your product infringing another’s trade mark?

Product labels and their catch phrases can slip through your trade mark infringement risk assessment – if you have one! A recent Federal Court decision reminds us how important it is that manufacturers assess the legal risks of product packaging.

Marketing departments often use “blurbs” or “hooks” on product labels to attract customers to their product. They do not always remember trade mark infringement.

What happened?

In a recent case, heard before the Full Federal Court, Nestle and Nature’s Blend went head to head over Nature’s Blend’s trade mark “LUSCIOUS LIPS”. Nature’s Blend owns the trade mark “LUSCIOUS LIPS”, which Nestle used in a marketing blurb on its Retro Party Mix.
Nature’s Blend commenced proceedings against Nestle in late 2009.

What did the Court say?

The Court initially ruled that there was no trade mark infringement as the term “LUSCIOUS LIPS” was used by Nestle in a descriptive manner and not as a trade mark. The Court decided that Nestle had used the phrase in a “light and amusing” way to describe one of the lollies in the Party Mix.

Manufacturers can take comfort in knowing that the Court considered the prominent placing of Nestlé’s registered trade marks on the product. They decided that by the time the consumer read the blurb which contained Nature’s Blends trade mark, they would have no doubt of the commercial origin of the product and not be confused.

How does this affect you?

Firstly, trade mark owners should take comfort in the Court’s view that prominent placing of well-known trade marks can potentially stop the use of a descriptive term from being trade mark infringement.

BUT manufacturers must ensure that product blurbs and hooks are carefully scrutinised as part of a trade mark infringement risk assessment process. It is not enough to check the name of product. Nestle were successful in this case, and awarded some costs, but would defiantly have been better avoiding the litigation all together.

If you would like more information about this topic, or to discuss your own trade mark infringement risk assessment process please call us on +61 7 5591 - 7555.

Rob Ffrench is an experienced Intellectual Property Lawyer and Partner of Ffrench Legal. To discuss any of the contents of this article,

please email Rob at rffrench@ffrenchlegal.com or phone him on +61 7 5591 7555.

This article is intended to assist you in ensuring your business achieves maximum potential with or without the assistance of Ffrench Legal.

It does not constitute any form of legal advice.