Federal Court freezes ice cream passing off claim

In MacPhee v Peters Foods Australia Pty Ltd, the Federal Court of Australia has rejected the claim that the defendant was passing off its lemon cheesecake flavoured ice cream as the plaintiff's lemon cheesecake sold in a cone, even though the court found that the description of the ice cream as a lemon cheesecake was in breach of the Trade Practices Act 1974.

Michael MacPhee, a pastry cook, conceived the idea of producing and marketing a lemon cheesecake served in a cone. In October 1999 he launched the product under the name Say Cheese - Cheesecake in a cone. He also registered the shape of the cone as a design for cheesecake. Peters Foods, a company owned by Nestlé, launched in September 2000 a product called Lemon Cheesecake in its Drumstick range - a highly successful and extensively advertised range of ice creams. MacPhee's sales declined, allegedly as a result of the competition from the Drumstick Lemon Cheesecake, and MacPhee ceased production of Say Cheese in June 2001.

MacPhee brought an action under the Trade Practices Act against Peters Foods (now in liquidation) for engaging in deceptive and misleading conduct. He also claimed passing off and design infringement. The claims under the Trade Practices Act and for passing off rested on the publication and distribution by Peters Foods of range boards and an ad in a trade journal.

The court upheld the claims under the Trade Practices Act in part. It found that the description of the Peters Foods' product as 'lemon cheesecake' on the range boards was a false description and that there was nothing in that context to lead the relevant consumers to conclude that the Drumstick product was a lemon cheesecake flavoured ice cream. However, the court held that in the context of the trade journal ad, it was clear that (i) the product was an ice cream, and (ii) the phrase 'lemon cheesecake' referred to the flavour and not the nature of the product.

The claim for passing off also failed as MacPhee had not shown that any misrepresentation found in the range boards was likely to lead the public to believe that the product was in any way connected with MacPhee's goods.

MacPhee also fared badly on the design question. Even though his claim for infringement was not pursued, Peters Foods' cross-claim for cancellation was. Peters Foods submitted that the design - a cone shape with a flat top - was an obvious imitation of a design for an ice cream cone that was common to the trade and had been used by Peters Foods for several years prior to the design registration. It further contended that in registering the design, MacPhee had attempted to obtain a monopoly in the idea of making and supplying cheesecake in a cone. The court found for Peters Foods on both points and ordered the expungement of the registration of the design.

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne