Yarn wholesaler in a spin after FEATHERS fight

In Australian Country Spinners Pty Ltd v Austwide Wholesalers Pty Ltd, the Federal Court of Australia has issued summary judgment in favour of the plaintiff in relation to the defendant's use of the words 'feather' and 'feathers'.

Australian Country Spinners Pty Ltd (ACS), a manufacturer of yarn products, owns a trademark registration for FEATHERS for handknitting yarn. It brought a claim for trademark infringement against Austwide Wholesalers Pty Ltd relating to its use of the words 'feather' and 'feathers' in the promotion and supply of handknitting yarn products. It also stated that Austwide had engaged in misleading and deceptive conduct, and passing off.

Austwide adduced evidence of the use of the words 'feather yarn' by textile manufacturers in China and Taiwan to describe a type of yarn product. It submitted that the term is used generically in the textile industry to describe the type of yarn and threads manufactured by ACS. It further contended that the use by ACS of the word 'feather' on balls of yarn was purely descriptive of its product and did not constitute the use of the word as a trademark. In making this argument, it relied on the earlier Federal Court decision in Ocean Spray Cranberries Inc v Registrar of Trademarks in which the court held that the name 'Cranberry Classic' was purely descriptive of the nature of a cranberry juice product. The court held that the words meant no more than 'quality cranberry' juice and were therefore not capable of registration as a trademark.

In the case at hand, the court held that there was no evidence of the generic use of the words 'feather yarn' to describe this type of product in Australia and it discarded the relevance of the overseas use. Further, it found that there had been extensive use made of the mark by ACS in relation to its product, over a period of approximately three years, both before and after the filing of the application for registration of its FEATHERS mark.

The court also distinguished the decision in Ocean Spray on two grounds. First, in that case, the words 'Cranberry Classic' only described the nature of the drink, using for emphasis a commonplace laudation. In the given case, the word 'feathers' was not used to describe a product made from bird plumage but a type of yarn for which ACS had acquired a particular reputation as a manufacturer.

Second, assuming even that the use in China and Taiwan of the similar words to describe a generic type of yarn had been relevant, the words are used by ACS in the reverse order (yarn feather) to the way they are used by textile manufacturers in China and Taiwan (feather yarn).

The court held that Austwide had sought to derive a benefit from the reputation ACS had acquired through the consistent use of the FEATHERS mark in relation to its yarn products. Particularly, the court was persuaded by Austwide's use of the phrase 'knitting yarn feather', which did not accord with the use in China and Taiwan - about which it brought evidence - but did follow the same word order as the mark used by ACS.

Accordingly, the court issued an injunction restraining Austwide from importing, offering for sale, advertising or distributing handknitting yarn products under or by reference to the words 'feather' or 'feathers'. The injunction also prevents Austwide from using any mark or packaging that is substantially identical or misleadingly or deceptively similar to ACS's mark in the course of conducting its business.

Jim Dwyer and Sara Hofman, Allens Arthur Robinson, Sydney