JBS Australia Pty Ltd v Australian Meat Group Pty Ltd  FCA 1421 (30 November 2017)
Successful trademark infringement action by JBS. To confine the issues, JBS did not pursue claims for misleading or deceptive conduct under the Australian Consumer Law or passing off under Common Law.
JBS is the owner of a registration for the AMH Logo trademark shown below dating from 20 July 1998 and covering meat and meat products in class 29.
It also owns a registration for the plain word trademark AMH dating from 4 September 2015 and covering a broad range of class 29 goods including meat and meat products.
JBS is the largest meat processing company in Australia with 80% of its meat products exported to 80 countries. It has used the AMH Logo and word marks since 1991 in relation to processed meat and meat products. It changed its name from Australia Meat Holdings Pty Limited in October 2007 and, since that time, has also used other brands for its processed meat products.
Australian Meat Group (AMG) filed an application on 8 April 2014 to register the AMG Logo trademark shown below for various meat related goods and services in classes 29, 35, 39 and 40. That application was accepted but JBS opposed registration of it.
AMG also filed applications on 3 March 2016 to register the composite trademarks shown below for the same goods and services which are also being opposed by JBS.
AMG adopted its company name in March 2014 and subsequently designed the AMG Logo mark. It commenced trading in in January 2015.
AMG sells its meat products under the AMG Logo, AMG word mark and the two composite marks shown above. It was not in dispute that these were signs being used as trade marks in relation to the same goods covered by the trade mark registrations owned by JBS.
A substantial proportion of AMG’s total sales (approximately 70%) were directed to the export market. In the Australian domestic market, AMG’s sales were to wholesalers and food manufacturers using meat as an ingredient. AMG’s evidence was that retailers typically repackage these products and apply their own brands, or affix their own labels over the supplier’s brand, but there was evidence to the contrary where the supplier’s brand was clearly visible to the consumer at a retail level. AMG also contended that buyers of its meat product were “highly sophisticated”, but this was not unequivocally accepted by his Honour, Greenwood J who characterised such buyers as persons who “bring an enquiring mind to purchase transactions”. AMG also contended that buyers attach significant weight to the so called “establishment number” of the meat processor which is also shown on the product labelling, but his Honour did not accept this materially diminishes the role of the trade marks on the labelling.
AMG also relied upon evidence from a linguistics expert, Associate Professor Felicity Cox of Macquarie University, but his Honour did not find this very helpful because “her opinions operate at too high a level of abstraction“ and her evidence “has no contextual application to the engaged field of common human endeavour in question in the case“.
The evidence disclosed that it is industry practice for acronyms to be used to identify the source of a product.
AMG did not contest that the AMH word and Logo marks had acquired a strong reputation at functional levels of the domestic market (which involve buying and selling activity by wholesalers, those acquiring meat products for sale for export, direct export by processors, supermarkets and independent butchers), but AMG did challenge the extent of this reputation at the retail level.
Greenwood J accepted this strong reputation at these functional levels of the domestic market, but did not place it in the same category as Maltesers such that no imperfect recollection of the AMH word and Logo marks would be brought to any engagement with the AMG word and Logo marks.
Greenwood J accepted that the first two letters “AM” were an essential feature of the registered AMH word mark, but the dissimilarity conveyed by the different third letters “H” and “G” meant the AMG mark was not substantially identical.
However, his Honour found that the AMG Logo mark and the variants of it in use (where the AMG Logo was the dominant feature) were deceptively similar to the registered AMH Logo mark and there was a real tangible risk of confusion both at the functional levels of the market and at the retail consumer level.
It is curious why a significant part of the judgment concerned the reputation of the AMH word and Logo marks. Indeed, Greenwood J made a specific finding of infringement in the context of this reputation (at paragraph 279 (21)). There was also a finding ( at paragraph 279 (23)) that the difference in the third letters of the respective AMH and AMG trade marks “is not a sufficiently distinguishing feature of the two marks when AMH has been used in the same market for so long“. However, it is now quite settled that, in infringement proceedings, reputation is a relevant consideration in assessing the nature of imperfect recollection of a registered mark, where the mark, or perhaps an important element of it, “is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services“. His Honour did not assess the reputation of the AMH word and Logo marks to be at this level of notoriety, so the enquiry ought to have been confined to a comparison of the trade marks as used by AMG with the registered AMH word and Logo marks by attributing a notional use to these registered marks.