'Humorous description' held not to infringe trademark

Australia

In Nature's Blend Pty Ltd v Nestlé Australia Ltd ([2010] FCAFC 117, September 13 2010), the Full Court of the Federal Court of Australia has dismissed an appeal against the trial judge’s ruling that the use of the phrase 'luscious Lips' was purely descriptive of the relevant products (confectionery) in the context of its use and, therefore, did not infringe the earlier registration for LUSCIOUS LIPS in respect of such products.

Nature’s Blend Pty Ltd is the owner of the registered trademark LUSCIOUS LIPS in respect of confectionery products. Nestlé Australia Ltd distributes a range of confectionery called the Retro Party Mix. There are seven different lollies in the Retro Party Mix and, relevantly, one of them is called 'luscious Lips'. The lolly in question is lip-shaped and sweet to taste.

The fundamental question (at the trial and on appeal) was whether the words ‘luscious Lips’ were being used by Nestlé 'as a trademark' - that is, whether the words were being used so as to indicate a connection in the course of trade between Nestle and the lollies.

Nature’s Blend’s primary submission on appeal was that the trial judge had given insufficient attention to the proper meaning of its trademark and focused only on the conduct of, and usage by, Nestlé of the expression ‘luscious Lips’. The argument was based on these four propositions:

  • The phrase 'luscious lips' is inherently distinctive in relation to confectionery because its ordinary or natural meaning is a description of “the shape and physical appearance of female human lips”.
  • Prior to its use of ‘luscious lips’ as a brand for chocolate, the phrase ‘luscious Lips’ had not "sprung unaided" in anyone’s mind to be used in relation to confectionery.
  • The phrase is not a natural, obvious or inevitable description of confectionery.
  • Therefore, when used in relation to confectionery by a competitor, these factors are a “strong indicator” that the phrase is being used 'as a trademark'.

In rejecting this submission, the Full Court set out six guiding principles derived from previous case law:

  • Use as a trademark is use of the mark as a ‘badge of origin’, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
  • A mark may contain descriptive elements but still be a ‘badge of origin’.
  • The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand.
  • The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use ‘as a trademark’.
  • Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words.
  • In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it.

An important (and decisive) consideration (at the trial and on appeal) was the fact that the impact of the phrase ‘luscious Lips’ was diluted by the prominence of the well known-mark ALLEN’S on both the front and back of the packaging, along with the mark NESTLÉ appearing on the back of the packaging. The trial judge’s impression was that consumers would have interpreted ‘luscious Lips’ to be simply a humorous way to describe the lip-shaped lolly, not as a badge of origin. In light of the principles set out above, the Full Court agreed unanimously that the trial judge had been 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’.

On the facts, the Full Court was also satisfied that, even if consumers inspected the packaging and saw the words ‘luscious Lips’ before purchase, they would be left in no doubt as to the commercial origin of the product by the time they had read the humorous description of one of the lollies as being ‘luscious Lips’.

This case highlights the common, but difficult, question as to whether a trademark that includes a descriptive element may nonetheless function as a badge of origin. Many cases may be cited which turn on their own facts, and this can lead to difficulties for trademark owners and their advisors. The problem is compounded where the word in question is used in conjunction with a distinctive mark (perhaps a house brand), because such use does not of itself prevent the conclusion that the descriptive word is also being used for the purpose of distinguishing the product in question (perhaps as a sub-brand).

In general terms, it can be said that an invented word will usually be considered to have been used as a trademark. Conversely, where the word has a clear meaning in ordinary use, the question may be more difficult because the word may either have taken on a secondary meaning that indicates the origin of the goods, or it may simply convey the ordinary meaning (eg, the words 'Cheezy Twists' have been held, on the facts, to be merely descriptive of cheese-flavoured confectionery and not to infringe the well-known TWISTIES mark).

Ultimately, it is a question of fact because it is well settled that there is no absolute dichotomy between words capable of being used as a badge of trade origin and words that are inherently descriptive. Thus, even an invented word may convey a sufficient, descriptive meaning such that its use may not be as a trademark (eg, the use of the invented word 'caplets' in the context of a pharmaceutical product).

When the trial judge issued its decision, it seemed very unlikely that the case would be the subject of an appeal - but perhaps this is now the end of the matter.

For further details on the trial judge's decision please see "Descriptive use of registered trademark allowed".

Julian Gyngell, Kepdowrie Chambers, Wahroonga

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