Meat marks update

In brief 7 min read

Two recent trade mark disputes in the meat industry illustrate that even where marks share similar elements, they are unlikely to be deceptively similar if the overall impression created by each mark is substantially different. 

Australian Meat Group Pty Ltd v JBS Australia Pty Limited

This¹ was a successful appeal to the Full Federal Court from a Federal Court decision, in which each of the Australian Meat Group Pty Ltd (AMG) marks was found to be deceptively similar to, and therefore infringe, two registered trade marks (one for the word mark AMH and the other for the AMH device) that JBS Australia Pty Limited (JBS) owned. The AMH brand has a long-standing and significant reputation in the meat industry and with customers. It has been in existence since 1989, and is widely known at the wholesale, retail and consumer levels. Images of the principal AMH and AMG device marks appear below:

The Full Court held that the primary judge erred in concluding that each of the AMG marks was deceptively similar to each of the AMH marks, principally because of the way in which His Honour took into account the strong brand reputation of AMH when assessing deceptive similarity. The primary judge erred in the way he undertook his trade mark comparisons for the following reasons:

• First, they proceeded from an incorrect starting point – namely, that a strong reputation existed in the AMH acronym (seen in the context of a market in which the participants – most significantly, wholesale buyers of meat products – generally use three-letter acronyms in emails and on price lists, and the like, to refer to suppliers and sources of supply). This led His Honour to conclude that this reputation should be taken into account in considering whether the competing marks were deceptively similar. This analysis was appropriate for a passing off case but was the wrong test to apply to a case of trade mark infringement under section 120(1) of the Trade Marks Act 1995 (Cth) (the TMA).
• Second, His Honour’s focus on the reputation in the AMH acronym shifted attention from other features of the AMH device mark and other features of the AMG marks – which are significant and meaningful, and ought to have been accorded due weight when conducting the comparisons for the purpose of s120(1) of the TMA. The consequence was to give the AMH acronym a predominating significance, or influence, it should not have been given as part of the deceptive similarity analysis in the context of trade mark infringement.

When the Full Court itself turned to compare each AMG mark with the AMH device mark, it found them to be quite different, even though they possessed similar elements, such as the map of Australia and the first two letters ‘AM’. Allowing for the possibility of imperfect recollection, the Full Court was not persuaded that the AMG device mark was deceptively similar to the AMH device mark. The impression created by each mark was substantially different and likely to be enduring. The Full Court took into account that, on the factual findings made at first instance, the marks are used in a market where the buyers are likely to bring to bear an inquiring mind regarding purchases of some considerable value. The evidence showed that other entities involved in the Australian meat industry have also adopted logos including a stylised map of Australia.

The high point of the case on trade mark infringement was the AMG word mark compared with the AMH word mark. Even here, the Full Court found that the primary judge placed too much significance on the ‘AM’ components of the marks and discounted the significance to be attached to the distinguishing last letters ‘G’ or ‘H’. It was relevant that the letters ‘AM’, in the context of the Australian meat industry, are likely to be understood as denoting the words ‘Australian meat’.

A.I.A. Agricola Italiana Alimentare S.p.A. v Borgo Developments Pty Ltd

Italian meat producer A.I.A. Agricola Italiana Alimentare S.p.A. (A.I.A.) has unsuccessfully opposed2 the registration of a trade mark by competitor Borgo Developments Pty Ltd (Borgo). While the parties’ marks have similar elements, those elements are common shapes dominated by different Italian names, such that the marks are not deceptively similar. The decision serves as a reminder to trade mark owners that: 

• Common shapes, alone, are unlikely to distinguish your marks from others’.
• To oppose the registration of a mark on the basis of reputation, the reputation must be in Australia, rather than another country. It must be proved that the reputation has ‘spilled over’ to Australia.
• To prove reputation in Australia, it is necessary to have clear documentary evidence. This can include sales information, advertising expenditure and promotions. Sales information will not assist if it cannot be established which marks were applied to the sold goods.

The background

Borgo and associated entities sell a range of Italian meats and cheeses in Australia. Borgo applied for registration of the following trade mark, comprising the name ‘Borgo’ diagonally across a five-pointed star atop red, white and green concentric circles.

A.I.A. is an Italian company that sells meat products internationally, including in Australia. It asserts rights in the common law trade mark and Australian-registered trade marks shown below:

A.I.A. opposed the registration of Borgo’s trade mark on the following grounds:

• Borgo’s mark is substantially identical with, or deceptively similar to, A.I.A.’s registered marks;
• owing to the reputation of A.I.A.’s marks in Australia, use of Borgo’s mark would be likely to deceive or cause confusion;
• use of Borgo’s mark would be contrary to law, as it would contravene ss 18 and 29 of the Australian Consumer Law and constitute passing off; and
• Borgo’s trade mark application was made in bad faith.

The hearing officer rejected each of A.I.A.’s grounds of opposition, and held that Borgo’s trade mark should be registered.

The reasoning

The hearing officer found that the marks were not substantially identical or deceptively similar. In relation to deceptive similarity, he said that the shared elements, being the star and concentric circles, are ‘commonplace geometric forms’; and that dominant to those elements are two very different Italian names. The hearing officer concluded there was no suggestion of association between the marks, and an ordinary person would not confuse them.

A.I.A.’s second ground of opposition hinged on the reputation of its marks. To establish this ground, A.I.A. asserted that its registered marks and variations of them (including the common law mark) had been used in Australia since 2007, and in Italy since at least 1950. A.I.A. argued that the marks had acquired a reputation in Australia, and a more significant reputation in Italy that had ‘spilled over into Australia’.

The hearing officer expressed reservations about A.I.A.’s evidence going to reputation in Australia. This was for a number of reasons, including that:

• The sales information A.I.A. provided failed to identify which marks had been used in Australia.
• Due to restrictive food importation laws, A.I.A. had trouble selling its products in Australia, and sold its products through restaurants, delicatessens and fruit barns. The end purchasers of A.I.A.’s products in Australia may never have seen A.I.A.’s branding, including the relevant marks.
• A.I.A. had, in the past, held an Australian registration for the following device mark. However, there was no evidence of use of that mark without the word NEGRONI. In fact, Borgo succeeded in having the mark removed from the trade marks register in late 2017, on the basis of non-use. 

The hearing officer was not persuaded that the reputation of the marks in Italy had ‘spilled over’ into Australia. He found that the word NEGRONI and A.I.A.’s common law mark ‘might have acquired some very modest level of awareness with a small section of the Australian public’.

He found that there was no real likelihood of confusion or deception owing to the reputation of A.I.A.’s marks. He pointed out that the only similarities between Borgo’s mark and A.I.A.’s common law mark are the star and circle elements, and said these similarities must be discounted because:

• stars and circles are common shapes;
• the circles are the colours of the Italian flag; and
• the marks are dominated by very different Italian names.

Because A.I.A. failed to establish its second ground of opposition, its third ground of opposition also failed. Finally, the hearing officer dismissed A.I.A.’s assertion that Borgo’s trade mark application had been made in bad faith. He noted, however, that there was a dearth of evidence establishing how the parties arrived at trade marks with similar star and circle elements.