Goodman Fielder Pte Ltd v Conga Foods Pty Ltd  FCA 1808 (17 December 2020)
Successful infringement action by Goodman Fielder. Unsuccessful cross claim by Conga Foods for rectification based on distinctiveness, but partially successful applications for removal on the ground of non-use.
In December 2005, Goodman Fielder acquired the business of La Famiglia Fine Foods (LFFF) which, since 1993, had been selling refrigerated garlic and other bread products. There were various registrations dating from 2007 and 2015 for trade marks containing LA FAMIGLIA including registrations for the words marks LA FAMIGLIA and LA FAMIGLIA KITCHEN which were assigned in 2017 to Goodman Fielder.
In November 2017 Conga Foods began importing pasta products produced by Pastificio Rana Spa (Rana) including pasta bearing the following mark (Rana Mark):
Rana filed an application to register this mark on 22 September 2017 which was blocked by the various LA FAMIGLIA registrations. Rana then filed s92 non-use removal applications against the LA FAMIGLIA registrations seeking to restrict them to bread and bread products.
Goodman Fielder then commenced proceedings alleging infringement of its word mark registrations and Conga Foods/Rana cross-claimed under s88 seeking cancellation of the LA FAMIGLIA trademark registrations on the ground that they lacked sufficient distinctiveness.
Burley J considered the evidence relied upon by Goodman Fielder/LFFF in assessing their actual and intended use of their various registered marks. This was particularly relevant to the word mark registrations which were relied upon in the infringement proceedings.
His Honour found that LFFF had an intention to use the LA FAMIGLIA and LA FAMIGLIA KITCHEN word marks for bread and bread products as well as pizza bases and pizza dough and these marks had been used during the relevant periods for chilled bread and bread products. However, the respective registrations should be restricted to those products and not maintained for the broader claims to other general foodstuffs and ready made meals..
Burley J found the words LA FAMIGLIA had sufficient inherent adaptation to distinguish. Although a substantial number of consumers and traders in Australia would understand these words to be foreign words, probably Italian, meaning “the family”, they are not directly descriptive words in the context of the relevant goods. Rather, they are allusive and will evoke for those who recognise the language an Italian feel, with whatever connotations or associations that supplies. When considering the LA FAMIGLIA KITCHEN word mark, his Honour noted the addition of KITCHEN to LA FAMIGLIA “begins to move into the territory of being a mark which is less allusive and more literal in its meaning” but concluded “the reference to the potential origin of the goods is indirect and the combination of Italian and English is, in my view, sufficient to impart a sufficient degree of inherent distinctiveness”.
Burley J then went on to consider the exercise of discretion under s88 (rectification) and s101 (non-use). His Honour was not satisfied it was an appropriate exercise of discretion to permit other goods in the ready made meal category or general foodstuffs category to be retained, but it was appropriate to retain pizza bases and pizza dough.
Having decided the goods which remain protected by the various LA FAMIGLIA registrations, Burley J then went on to determine the infringement issue.
The Rana Mark was applied to packaging and shown on the Rana website and social media. The social media handles and pages also disclosed use of the word mark LA FAMIGLIA RANA. The goods marketed under this mark were fresh-filled pasta, sauces, pasta and gnocchi. The infringement allegation related only to the filled pasta products, namely ricotta and spinach tortellini, pumpkin and roasted onion ravioli, four cheese ravioli, porcini mushroom ravioli, tomato and mozzarella tortellini, and feta and kalamata olives tortellini.
Burley J found there was infringement. His Honour considered the Rana Mark and the LA FAMIGLIA RANA word mark were deceptively similar to Goodman Fielder’s registered word marks for LA FAMIGLIA and LA FAMIGLIA KITCHEN. Further, the filled pasta products were similar (of the same description) to garlic bread covered by Goodman Fielder’s word mark registrations.
Conga Foods/Rana sought to rely on the defence to infringement under s120(2), namely that their actual manner of use is not likely to deceive or cause confusion. However, this was not pleaded in their defence. In any event, his Honour considered this defence could not be established and concluded “the respondents rely on no matter additional to the fact that the word “Rana” is the name of the trader…The presence of “RANA” will not prevent consumers from wondering whether the words “LA FAMIGLIA” indicate that the goods come from the same source as the owner of the [registered] word marks.”