Goodman Fielder Pte Ltd v Conga Foods Pty Ltd

[2020] FCA 1808

FEDERAL COURT OF AUSTRALIA

Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808  

File number:

NSD 328 of 2018

Judgment of:

BURLEY J

Date of judgment:

17 December 2020

Catchwords:

TRADE MARKS – foreign words – word marks – composite marks – claims for rectification of the Register of Trade Marks – claim for infringement

TRADE MARKS – rectification – Trade Marks Act 1995 (Cth) ss 88, 59, 92(4) – lack of intention to use marks –non-use of marks –whether marks not capable of distinguishing applicants' goods – partial rectification granted

TRADE MARKS – infringement – Act s 120 – whether trade mark use of mark – whether use deceptively similar – whether use in relation to goods of the same description – whether use likely to deceive or cause confusion – infringement established

PRACTICE AND PROCEDURE – defence in s 120(2) of the Act – whether necessary to plead reliance on defence

Legislation:

Evidence Act 1995 (Cth) s 144

Intellectual Property Laws (Raising the Bar) Act 2012 (Cth)

Trade Marks Act 1955 (Cth) s 23(2)

Trade Marks Act 1995 (Cth) s 7, s 14, s 17, s 33, s 41, s 44, s 59, s 65(7), s 83(1)(b), s 88, s 92, s 93(2), s 94, s 96, s 97, s 100, s 101, s 120

Trade Marks Amendment Act 2006 (Cth)

Cases cited:

Aldi Foods v Moroccanoil Israel [2018] FCAFC 93; 261 FCR 301

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530

Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511

Aston v Harlee Manufacturing Co [1960] HCA 47; 103 CLR 391

Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490

Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207; 268 FCR 623

Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; 58 CLR 641

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393

Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1965]  HCA 71; 120 CLR 285

Blount Inc v Registrar of Trade Marks [1998] FCA 440; 83 FCR 50

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 354 ALR 353

CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42

Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; 202 CLR 45

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337

Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; 111 CLR 511

Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; 86 CLR 536

Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39; 149 IPR 1

E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2009] FCAFC 27

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934; 77 IPR 69

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144

Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9

Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478

Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010) 240 CLR 590

Hermes Trade Mark [1982] RPC 425

Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883

In Re J & J Colman Ltd’s Application (1929) 46 RPC 126

In Re the Registered Trade Marks of John Batt & Co [1898] 2 Ch 432

In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774

Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115

Johnson & Johnson Australia Pty Limited v Stering Parmaceuticals Pty Limited [1991] FCA 402; 30 FCR 326

JT International SA v Commonwealth of Australia [2012] HCA 43; 250 CLR 1

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494

Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415; 253 ALR 76

Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75; 311 ALR 207

Mark Foys v Davies Coop & Co Ltd [1956] HCA 41; 95 CLR 190

McCormick & Company Inc v McCormick [2000] FCA 1335; 51 IPR 102

McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481; 34 IPR 537

MID Sydney Pty Ltd v Australian Tourism Company Ltd [1998] FCA 1616; 90 FCR 236

New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; 14 IPR 26

Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816

Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130

Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380

Philippart v William Whiteley Ltd (Diabolo Case) [1908] 2 Ch 274

Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300

Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265; 42 FCR 227

Re Applications by Maxam Food Products Pty Ltd [1991] ATMO 12; 20 IPR 381

Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365

San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842; 50 IPR 321

Shell Co of Australia v Esso Standard Oil [1963] HCA 66; 109 CLR 407 at 424-425

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592

Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519

Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; 357 ALR 15

Suyen Corporation v Americana International Ltd [2010] FCA 638

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; 237 FCR 388

Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97

Woolworths Ltd v BP plc [2006] FCAFC 132; 154 FCR 97

Burrell R and Handler M, Australian Trade Mark Law (2^nd ed, Oxford University Press, 2016)

Davison M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (6^th ed, Thomson Reuters, 2016)

Elkington B, Hall M, Kell D, Annotated Trade Marks Act 1995 (3^rd ed, LexisNexis Butterworths, 2020)

Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill (2011)

Macquarie Dictionary, (3^rd ed, 2001, Sydney)

Division:

General Division

Registry:

New South Wales

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Number of paragraphs:

370

Date of hearing:

2-6 December 2019

Counsel for the Applicants / Cross-respondents:

Mr E J C Heerey QC with Ms M Evetts

Solicitor for the Applicants / Cross-respondents:

Norton Rose Fulbright

Counsel for the Respondents/Cross-claimants:

Mr M Hall SC with Ms S Stewart

Solicitor for the Respondents/Cross-claimants:

Clayton Utz

ORDERS

NSD 328 of 2018

BETWEEN:

GOODMAN FIELDER PTE LTD

First Applicant

LA FAMIGLIA FINE FOODS PTY LTD

Second Applicant

AND:

CONGA FOODS PTY LTD

First Respondent

PASTIFICIO RANA SPA

Second Respondent

AND BETWEEN:

CONGA FOODS PTY LTD (and another named in the Schedule)

First Cross-Claimant

AND:

GOODMAN FIELDER PTE LTD (and another named in the Schedule)

First Cross-Respondent

ORDER MADE BY:	BURLEY J
DATE OF ORDER:	17 DECEMBER 2020

THE COURT ORDERS THAT:

1.By 4.00pm on 1 February 2021 the parties are to confer and provide proposed short minutes of order to chambers, with any areas of disagreement noted in mark-up, which:

(a)Give effect to these reasons;

(b)Provide for any proposed suppression order pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth) in respect of any evidence read or tendered in this proceeding; and

(c)Provide for any proposed redactions of the reasons for judgment published today.

2.The proceeding be listed for case management hearing at 9.30am on 5 February 2021.

3.Until further order, the text of the reasons for judgment published today is to be published and disclosed only to the parties to these proceedings and their external legal representatives who are party to confidentiality arrangements.  

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1......... INTRODUCTION	[1]
1.1...... The trade marks	[3]
1.2...... The dispute	[9]
1.3...... The designated goods	[18]
2......... THE WITNESSES	[21]
2.1...... The applicants’ witnesses	[21]
2.2...... The respondents’ witnesses	[32]
3......... RELEVANT FACTUAL FINDINGS	[38]
3.1...... Chronology of trade mark use by the applicants	[38]
3.1.1... Use from 1999 to 2007	[39]
3.1.2... Use from 2008 to 2009	[57]
3.1.3... Use in 2010	[58]
3.1.4... Use in 2011	[61]
3.1.5... Use in 2012	[62]
3.1.6... Use in 2013	[64]
3.1.7... Use in 2014	[68]
3.1.8... Use in 2015	[74]
3.1.9... Use in 2016	[83]
3.1.10. Use in 2017	[85]
3.1.11. Use in 2018	[90]
3.1.12. Use in 2019	[94]
3.2...... The Quantium data presentation	[95]
3.3...... The display of chilled products in supermarkets	[99]
4......... LACK OF USE OR INTENTION TO USE: S 59 AND S 92(4)(a) AND (b)	[109]
4.1...... Introduction	[109]
4.2...... Relevant law	[111]
4.2.1... Section 59 – lack of intention to use mark	[111]
4.2.2... Section 92(4) – lack of intention to use mark and failure to use mark within specified periods	[126]
4.3...... The submissions	[131]
4.4...... Consideration: the 473 word mark	[135]
4.4.1... Findings of use	[136]
4.4.2... Findings as to intention	[142]
4.4.3... Application of section 59	[146]
4.4.4... Application of sections 92(4)(a) and 92(4)(b)	[156]
4.5...... Consideration: the 906 composite mark	[160]
4.5.1... Findings of use	[161]
4.5.2... Findings as to intention	[168]
4.5.3... Application of section 59	[171]
4.5.4... Application of sections 92(4)(a) and 92(4)(b)	[173]
4.6...... Consideration: the 2015 marks	[176]
4.6.1... Findings of use	[177]
4.6.2... Findings as to intention	[179]
4.6.3... Application of section 59	[191]
4.6.4... Application of section 92(4)(a)	[199]
5......... LACK OF DISTINCTIVENESS: S 41	[201]
5.1...... Relevant law	[203]
5.1.1... The scheme of s 41	[203]
5.1.2... Inherent adaptability to distinguish	[211]
5.2...... The submissions	[223]
5.3...... Consideration: the 473 word mark	[229]
5.4...... Consideration: the 906 composite mark	[243]
5.5...... Consideration: the 2015 marks	[246]
6......... EXERCISE OF DISCRETION: S 88(1) AND S 101	[255]
6.1...... Introduction	[255]
6.2...... Relevant law concerning the exercise of discretion	[262]
6.2.1... Section 101(2)	[262]
6.2.2... Section 88(1)	[273]
6.2.3... “Goods of the same description” and “similar goods”	[275]
6.3...... Consideration: exercise of discretion	[287]
6.3.1... The 473 word mark and the 906 composite mark	[287]
6.3.2... The 2015 marks	[315]
6.4...... Conclusions in relation to rectification	[318]
7......... INFRINGMENT	[319]
7.1...... Introduction	[319]
7.2...... The impugned use by the respondents	[321]
7.2.1... The Rana mark	[321]
7.2.2... The words “LA FAMIGLIA RANA”	[324]
7.3...... Deceptive similarity	[326]
7.3.1... Relevant law	[327]
7.3.2... The Rana mark	[340]
7.3.3... The words “LA FAMIGLIA RANA”	[353]
7.4...... Are pasta products the same goods as any of the registered goods?	[355]
7.5...... Are filled pasta products goods of the same description as the registered goods?	[358]
7.6...... Does the defence under s 120(2) apply?	[361]
8......... CONCLUSION	[369]

BURLEY J:

1.               INTRODUCTION

1. Trade mark cases often metastasize from simple disputes about easily identified issues into something bigger. This case is no exception. At its centre is whether the respondents are able to use the words “La Famiglia Rana” as a sign to designate their fresh pasta products in the face of the applicants’ trade mark registrations for the words “La Famiglia” in relation to bread, particularly garlic bread. The respondents anticipated a problem when they launched their products in Australia, and tried to clear the way by seeking to revoke six of the applicants’ trade marks for non-use. The applicants then sued for infringement of two of those marks. The respondents then cross claimed, alleging the marks lacked distinctiveness and that the applicants did not have the requisite intention to use them as at their filing dates. The result is a somewhat messy case requiring a matrix of decisions concerning whether and how, over a period of some 20 years, the applicants have used their six marks. Only after that had been determined could the central question of infringement be decided. The case raises issues about whether “La Famiglia Rana” in the form that it has been used by the respondents is deceptively similar to “La Famiglia” and whether bread, and in particular garlic bread, falls within the definition of “goods of the same description” as fresh pasta. It also involves consideration of whether “La Famiglia” as a trade mark is sufficiently distinctive to remain on the Trade Marks Register, the extent to which the six trade marks have been used or were intended to be used, and the proper scope of the exercise of a discretion to remove designated goods from the Register when they have not been used.

2. In the end, I have decided in favour of the applicants, although it has not all gone one way. The applicants abandoned two of the six marks in closing submissions, and as a result of my decision must significantly narrow the scope of the designated goods for the remaining four. But enough of the designated goods for each of the asserted marks are to remain on the Register to enable me to conclude that the respondents have infringed those marks, for the reasons set out in quite a lot of detail below.

   1.1             The trade marks

3. In 1993 a small, family owned business called La Famiglia Fine Foods Pty Ltd (LFFF) (the second applicant) began producing and selling garlic bread. It later branched out into herb bread, restaurant style pan bread and crusty garlic rolls. Business flourished and LFFF was subsequently acquired by a company within the Goodman Fielder Group, Goodman Fielder Pte Ltd (the first applicant) in December 2005. I refer to LFFF and Goodman collectively as the applicants. Over time LFFF registered a number of trade marks in class 30 which consisted of or included the words LA FAMIGLIA:

   (a)Trade mark number 701727 (727 composite mark) was filed on 5 February 1996 and is in the following form:

   (b)Trade mark number 1130187 (187 word mark) is for the words LA FAMIGLIA TAKE AND BAKE and LA FAMIGLIA TAKE ‘N’ BAKE. It was filed on 16 August 2006;

   (c)Trade mark number 1155473 (473 word mark) is for the words LA FAMIGLIA and was filed on 8 January 2007;

   (d)Trade mark number 1171906 (906 composite mark) was filed on 19 April 2007 and is in the following form:

   (e)Trade mark number 1689133 (133 word mark) is for the words LA FAMIGLIA KITCHEN, and trade mark number 1689131 (131 composite mark) is in the following form:

   Both the 133 word mark and the 131 composite mark were filed on 23 April 2015, and I refer to them together as the 2015 marks.

   The goods in respect of which the 473 word mark, the 906 composite mark and the 2015 marks are registered are set out in the annexure to these reasons, and where necessary I refer to these as the 473 original goods, the 906 original goods, and the 2015 original goods.

4. Each of the marks was assigned by LFFF to Goodman in 2017, but the assignment was not recorded on the Register of Trade Marks until March 2018. With respect to the use of the marks, no point is taken by the respondents arising from the fact that until March 2018 it was LFFF rather than Goodman who was the owner of the marks.

5. Pastificio Rana SpA is a successful Italian company that has since 1962 made and distributed fresh pasta. On 23 February 2017 Rana filed trade mark application number 1827822 for the following composite mark (Giovanni Rana mark):

6. This mark was accepted and registered in January 2018.

7. On 22 September 2017 Rana filed trade mark application number 1875074 for the following composite mark (Rana mark):

   It seeks registration in class 30 in respect of:

   Precooked, fresh, or frozen meals consisting primarily of pasta or rice; pizza; pasta; pasta with fillings, including tortellini, tortelloni, ravioli, cappelletti, flour-based gnocchi; condiments; sauces.

8. The application to register the Rana mark was deferred on 21 February 2018, pending the resolution of the issues in these proceedings.

   1.2             The dispute

9. In November 2017 Conga Foods Pty Ltd began importing Rana pasta products into Australia for distribution and sale. The packaging of the Rana pasta products includes the Rana mark.

10. In their amended statement of claim the applicants allege that Rana and Conga (collectively, respondents) have infringed the 473 word mark and the 133 word mark in breach of s 120 of the Trade Marks Act 1995 (Cth). They seek declarations of infringement, injunctive relief, delivery up and pecuniary relief for trade mark infringement. They also seek an order that Rana withdraw the application to register the Rana mark. In their amended defence the respondents deny that the use alleged constitutes the use of a sign that is deceptively similar to these word marks.

11. The issues arising from the applicants’ claim concerning the application of s 120 of the Trade Marks Act are: first, the identification of the impugned use by the respondents; secondly, whether or not that use is deceptively similar to the asserted 473 and/or 133 word marks; thirdly, whether or not the use is in relation to the same goods, or goods of the same description, as the goods in respect of which those two word marks are registered; fourthly, whether the respondents’ use is not likely to deceive or cause confusion; and fifthly, what, if any, is the appropriate relief.

12. On 2 January 2018 and 13 February 2018, before the infringement proceedings commenced, Rana filed non-use applications for the rectification of the Register in respect of the applicants’ trade marks before the Registrar of Trade Marks. Upon the commencement of the infringement proceedings, the non-use applications were referred to this Court by the Registrar pursuant to s 94 of the Trade Marks Act and incorporated into the amended statement of cross claim advanced by the respondents.

13. In their cross claim the respondents contend that each of the six trade marks currently owned by Goodman and identified above ought to be cancelled or amended pursuant to either s 88 or s 92 of the Trade Marks Act. Although the respondents press for the revocation of the impugned marks in their entirety, as will be seen below, much of the evidence and legal debate concerns the identification of which particular designated goods in respect of which each mark is registered ought to remain on the Register.

14. The issues that arise on the cross claim are: first, whether the Register ought to be amended to limit the goods in respect of which each of the Goodman marks is registered to “bread and bread products” only, because at the respective filing dates of the trade marks LFFF lacked a bona fide intention to use the marks in respect of goods other than bread and bread products within s 59 or s 92(4)(a) of the Trade Marks Act; secondly, whether there has been use of the Goodman marks during their respective non-use periods within s 92(4)(b) of the Trade Marks Act; thirdly, whether the Goodman marks ought to be cancelled on the ground that they are signs that are not inherently adapted to distinguish or do not in fact distinguish the applicants’ goods from the goods of other persons within s 41 of the Trade Marks Act; and fourthly, whether the Goodman marks ought, in the exercise of discretion, not to be removed from the Register in respect of all or any of the goods in relation to which each mark is registered within either s 88(1) or s 101 of the Trade Marks Act.

1. The Trade Marks Act was relevantly amended on 15 April 2013, with amendments brought about by the Intellectual Property Laws (Raising the Bar) Act 2012 (Cth) (RTB Act). These have most relevance to the section 41 ground, because the 2015 marks were filed after the introduction of the changes. Unless otherwise stated, references to the Trade Marks Act are to the post RTB version.

2. On 18 September 2018 I ordered that questions arising under the cross claim and the liability of the respondents for infringement, together with any questions of non-pecuniary relief should be heard separately and before questions of the quantum of any relief.

3. Significant portions of the evidence were the subject of confidentiality claims, although no formal application for a suppression order was made. I will direct that the parties confer and provide to my chambers the terms of a final confidentiality order, and propose any redactions to be applied to the published version of this judgment to reflect the scope of confidentiality sought to be preserved. Such redactions will, if appropriate, then be applied.

   1.3             The designated goods

4. In the course of closing submissions the applicants indicated that they would not contest the non-use applications brought in respect of the 727 composite mark and the 187 word mark, with the result that they consent to an order for the removal of those marks from the Register pursuant to s 97(2) of the Trade Marks Act. I refer to the remaining four trade marks that are the subject of the cross claim collectively as the Goodman marks even though for a substantial period they were owned by LFFF. As the annexure to these reasons indicates, each of the 473, 906 and 2015 original goods included a large number of goods in class 30, ranging from “preparations made from or containing cereals” to “yoghurt based snack foods” to “chocolate”, “confectionary”, “coffee”, “drinks” and “baking powder”. In their closing submissions the applicants elected to reduce the range of goods for each trade mark to a much narrower subset. That election was appropriate having regard to the paucity of any evidence of use or intention to use the marks in relation to the majority of the 473, 906 and 2015 original goods.

5. The class 30 goods which the applicants seek to retain on the Register, and upon which the applicants rely in answer to the rectification suit brought by the respondents are as follows:

   (a)In respect of the 473 word mark (473 designated goods):

   Bread, bread rolls, buns, flat bread, pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready made dishes.

   (b)In respect of the 906 composite mark (906 designated goods):

   Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready made dishes.

   (c)In respect of the 2015 marks (2015 designated goods):

   Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; sandwiches; frozen, chilled and shelf stable bread; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes.

6. The applicants submit that in the event that the Court finds that any of the Goodman marks are liable to be removed because a ground of rectification advanced by the respondents has been made out, then nevertheless the Court should exercise its discretion pursuant to either s 88 or s 101 of the Trade Marks Act not to remove from the Register the 473, 906 and 2015 designated goods, save that the underlined words “foodstuffs having a base of rice, of flour or of cereals, also in the form of ready made dishes” (the general foodstuffs category) in the 473 and 906 designated goods should be replaced by the words “Italian-style ready made dishes being rice and pasta-based meals such as risotto, lasagne and spaghetti bolognese” (the ready made meal category).

   2.               THE WITNESSES

   2.1             The applicants’ witnesses

7. Christine Siow Yin Fung is the Head of Marketing – Retail at Goodman Fielder Consumer Foods Pty Ltd (GFCF). In her affidavit of 22 February 2019, she gives evidence that she has been employed by GFCF since January 2015. From 2005 to 2013 she worked in a number of different companies as a brand manager or marketing manager. In January 2015, she commenced work for the Goodman Group in the role of Marketing Manager – Specialty & Chilled Breads. In July 2015, she moved to the role of Marketing Manager – In Home Baking until November 2018, when she became Head of Marketing – Retail. In her current role she is directly involved with the retail brands of the Goodman Group’s business in Australia across all product categories.

8. Ms Fung gives evidence about the Goodman Group’s acquisition of LFFF and the acquisition of the Goodman marks from LFFF, as well as the history of the trade marks now owned by Goodman. She also gives evidence about the fast moving consumer goods industry, the LFFF chilled bread products (which consist of garlic, herb, pan bread, ciabatta and sourdough products), and evidence (some of which is confidential) about past and future proposed uses by the applicants of the Goodman marks. She annexes to her affidavit images of product packaging, print outs of various iterations of the website located at (Goodman website) from 1999 to 2018, and images from the Facebook page operated under the name “La Famiglia” (Goodman Facebook page). She also gives evidence about marketing and promotional advertising undertaken by the applicants.

9. In her second affidavit Ms Fung provides evidence of a Facebook message she caused to be sent to a consumer who enquired about the relationship between the applicants and one of Rana’s pasta products, and updates her evidence as to the Goodman Group’s current marketing plans and proposals in respect of the “La Famiglia brand”. In her third affidavit Ms Fung again provides a further update as to the Goodman Group’s current marketing plans and proposals in respect of the “La Famiglia brand”. Ms Fung was cross-examined.

10. Susan Carmel Charleson is the National Account Manager – Wraps and Chilled Bread at GFCF. She commenced her employment with that company in about December 2012 in the position of Victorian Account Manager in its Retail Baking and Grocery divisions. In March 2014 she moved to the role of National Account Manager for Metcash and Aldi. She worked across various retail grocery categories between March 2014 and July 2016 before becoming National Account Manager – Wraps and Chilled Bread within the Goodman Group’s retail division in about July 2016. She gives evidence about fast moving consumer goods, the retail sales of LFFF chilled bread products and other products under the trade marks in suit, and the promotion of those products. Ms Charleson was cross-examined.

11. Brett Darren Allan is Head of Category – Retail at GFCF. He has been employed in that position since 2018, and has been employed by GFCF since 2013. He has been working in various roles in the fast moving consumer goods industry for about 20 years. He gives evidence about a confidential annexure to his affidavit that is a presentation dating from around October 2018 using data from a company called “Quantium” that collects data from the physical scanning of products and loyalty cards at supermarket checkouts. Mr Allan was cross-examined.

12. Donna Joy Vicente is a Social Media Assistant employed by Resolution Media. Resolution Media is a third party digital marketing agency that manages social media accounts for various clients, including the Goodman Group. Ms Vicente gives evidence about a private message that was received on 6 June 2019 via the Goodman Facebook page, from a user who enquired as to whether a Rana pasta product was one of the applicants’ products, and her reaction to that message. She was cross-examined.

13. Deborah Jane Loosley is the founder and director of TRIO Marketing, a strategic brand and marketing consulting firm. Since 1981 she has worked in various marketing roles, and in 1994 founded TRIO. She was engaged by LFFF in July 2001 as its Marketing Manager to develop a strategic marketing plan for its LA FAMIGLIA brand of garlic bread and other food products. She continued to consult to LFFF until it was acquired by the Goodman Group and thereafter consulted to the Goodman Group until October 2006. She gives evidence about LFFF’s strategic marketing plan and various forms of the LA FAMIGLIA trade marks used on products and in advertising during her period of tenure as marketing consultant for LFFF and later the Goodman Group. She was cross-examined.

14. Isobel Sarah Taylor is a solicitor employed by Norton Rose Fulbright. She attended the State Library of New South Wales and took photographs of advertisements of LFFF chilled bread products in various editions of the Super Food Ideas magazine and Table magazine in 2006. She was not cross-examined.

15. Harrison Hunter Ottaway is a solicitor employed by Norton Rose Fulbright. He gives evidence of photographs that he took of the chilled food products section in three supermarkets located in Melbourne in February, October and November 2018 where Rana pasta products were on display. He purchased the products and took photographs of those as well. Mr Ottaway also annexes pages from (the Rana website), and the Facebook and Instagram pages operated under the name “La Famiglia Rana” (respectively, the Rana Facebook page and the Rana Instagram page), as at October and November 2018. He was not cross-examined.

16. Louis John Lao is a solicitor employed by Norton Rose Fulbright. His affidavit annexes extracts from various websites dated between November and December 2018 about: the use of the Goodman marks on the Facebook page and website operated by Goodman Fielder Food Service; promotions of the LFFF chilled bread products; the “bundling” by supermarkets of pasta and bread products; a visit he made to an Aldi supermarket in December 2018; and extracts from various Coles and Woolworths supermarket catalogues ranging in date between early-2013 and late-2018. He also annexes versions of the Rana website, Rana Facebook Page, Rana Instagram page, and a YouTube page operated under the name “La Famiglia Rana” (Rana YouTube page). He was not cross-examined.

17. D’arcy Lawrence Hope is yet another solicitor employed by Norton Rose Fulbright. Like Mr Ottaway, he gives evidence about the chilled product sections of various supermarkets which he attended in January 2019, including the availability of the Rana pasta products and their proximity to LFFF’s chilled bread products. He also gives evidence about LFFF chilled bread products appearing in Woolworths and Coles catalogues between December 2014 and February 2018. He was not cross-examined.

    2.2             The respondents’ witnesses

18. Federico Chiavegatti is the Commercial and Marketing Director Europe of Rana. In 1996 he obtained a degree in Business Administration from L.Bocconi University in Milan. He has over 20 years of experience in marketing, including over 15 years working for Rana in a number of brand and marketing roles. He has been employed by Rana since 2004 and has variously occupied the positions of Export Brand Manager, Marketing Manager – Italy, Marketing Director – Italy, and has held his current role since 2016. He explains that in his present role he is responsible for commercial and marketing matters in all countries in the world except for the United States, Canada and Mexico. Mr Chiavegatti gives evidence about the history of Rana and the development of the Rana brand, including the logos used by Rana and the design of the Rana mark. He gives evidence about the promotion and advertising of Rana pasta products and the events that led to Rana’s entry into Australia with the Rana mark. He also gives evidence about the use of the words “la famiglia” by other traders in Italy, and responds directly to the allegations made by the applicants. Mr Chiavegatti was cross-examined.

19. Daniel James Thompson is Chief Sales and Marketing Officer at Conga. Prior to his recent appointment to that position, he was General Manager, Sales and Marketing, from March 2016. From April 2013 to March 2016 he was the National Business Manager for Conga. He has over 14 years’ experience in sales and marketing, and has held sales, marketing and management positions in Balfours Bakery Pty Ltd and L’Oreal. He gives evidence about the background to the business of Conga, the development of the relationship between Conga and Rana, the introduction, promotion and advertising of Rana pasta products in Australia, the placement of those products in major supermarkets in Australia, and of the absence, so far as he is concerned, of any confusion between those products and any other trader. He was cross-examined.

20. Francesca Stephanie Sian Lee Teng is a solicitor employed by Clayton Utz. She exhibits documentary evidence of: the use of the Rana mark on the Rana website and Rana Facebook and Instagram pages; the promotion and offer for sale of Rana pasta products in Australia; translations of the word “family” into various other languages; searches she conducted to identify businesses which use foreign language translations of the word “family” in their business name; searches she conducted on various websites to identify products with “la famiglia” in their name; statistics taken from the Australian Bureau of Statistics Census Data; various websites that have used or referred to the Goodman marks; various websites that have used or referred to the “Latina Fresh” and “Leggos” brands; and photographs of displays of Rana pasta products in supermarkets. She was not cross-examined.

21. Brett Chapman Doyle is a solicitor employed by Clayton Utz. He annexes or exhibits the results of searches of the online trade marks records of IP Australia and the WIPO Global Brand Database for marks containing the word “family” in English and in various other languages. He was not cross-examined.

22. Dean Gerakiteys is a solicitor employed by Clayton Utz. He gives evidence about attending the Rookwood Necropolis in Lidcombe, New South Wales, where he observed a number of family vaults displaying the words “Famiglia” or “Famiglie”. He also exhibits various DVDs and pages from the Dymocks website. He was not cross-examined.

23. Beth Victoria Miller is a paralegal employed by Clayton Utz. She exhibits photographs of the refrigerated units displaying the Rana pasta products for sale at about 20 different supermarkets located in and around Sydney between 1 June 2018 and 2 February 2019. She was not cross-examined.

    3.               RELEVANT FACTUAL FINDINGS

    3.1             Chronology of trade mark use by the applicants

24. The cross claim for rectification raises questions going to when and how each of the Goodman marks has been used, both before and after the 2007 and 2015 filing dates. Before addressing each ground of revocation it is convenient to set out some relevant findings of fact which have been drawn from the evidence and an agreed chronology.

    3.1.1Use from 1999 to 2007

25. Evidence of the Goodman website as at 24 August 1999 shows that the 727 composite mark and the 473 word mark were in use from at least that date. There is only one page of the 1999 Goodman website in evidence, which shows the 727 composite mark in colour in the top left corner of the page. The page is headed “July and August Recipe”, and provides a recipe for “wilted baby spinach and melted parmesan on La Famiglia Herb Bread”. There are no website pages in evidence for 2000, but the captures from 2001 again show the use of the 727 composite mark in the top left corner of the page, and the 473 word mark is used on the “about us” page, for example: “All of La Famiglia’s products have been designed so consumers can make them into a meal with ingredients generally found in the pantry”.

26. Exhibited to Ms Charleson’s affidavit is confidential evidence of sales data relating to LFFF’s products, sourced from Information Resources, Inc (IRI). IRI keeps a record of retail sales of fast moving consumer goods made by Coles, Woolworths and Metcash. IRI data is provided from 2001 to 2018, and records the total number of units of LFFF products sold, and the sales revenue of those products. Each of the products listed in the IRI data begins with the 473 word mark, for example “La Famiglia Bread Herb”, and “La Famiglia Bread Garlic Cheesy”. Although the IRI data cannot be matched with the product packaging or composite marks used from time to time, the evidence permits me to infer that there was some continuity and consistency of packaging and trade mark use in respect of the products listed.

27. The IRI data shows substantial supermarket sales of LFFF products in 2001 ($XXXXX XX). This amount consists primarily of sales of LFFF chilled bread products, though there are also some sales of a product identified as “La Famiglia Pizza Garlic Style 385g” which achieved sales of $XXXX in 2001, but that product does not appear to have been sold in subsequent years.

28. In around 2001, LFFF engaged Ms Loosley (through her company TRIO) as LFFF’s Marketing Manager. Ms Loosley gives evidence about her knowledge of the use of the 473 word mark and the 906 composite mark between 2001 and 2007. She explains that TRIO was engaged to assist in the development of strategic marketing for LFFF’s “La Famiglia brand” from 2001 until October 2006. During that time she observed iterations of various composite marks being used in conjunction with various products, but the consistent use of the 473 word mark.

29. Ms Loosley gives evidence that in about 2001 or 2002 she developed the following mark, which I refer to as the hybrid mark:

    In colour, it features an oval shaped green disk of four colours, starting with a green outline, a thin inner white band, a dominant red band on which the words “LA FAMIGLIA” appeared above ears of wheat, and the centre in yellow background with a black and white image showing the heads of two parents and a child above a band saying “such good taste”. 

30. Ms Loosley’s evidence is that the hybrid mark was introduced to the public in about April 2002 through a print and television advertising campaign. Ms Loosley gives evidence that in 2002, as a consequence of the rebranding to use the hybrid mark, she was involved in writing copy and preparing content for a redesign of the Goodman website. Website captures show that by at least September 2002 the hybrid mark had replaced the 727 composite mark in the top left corner of the page. The 473 word mark was still being used to describe the company and LFFF’s products, for example, “La Famiglia is Australia’s favourite garlic bread…”. The hybrid mark and the 473 mark continued to be used on the Goodman website throughout 2003, 2004, 2005 and 2006. For example, an entry on 21 July 2005 is headed “About La Famiglia” which describes the history of LFFF and identifies products by reference to the words “LA FAMIGLIA”. Such pages promote “La Famiglia Fine Foods” and LFFF products as “Australia’s No. 1 manufacturer and marketer of chilled specialty breads, servicing both domestic and export markets”.

31. IRI data for 2002 to 2004 shows substantial supermarket sales of LFFF chilled bread products totalling a combined $XXXXX X. Apart from use on the Goodman website and the IRI data there is no other evidence of use of any of the Goodman marks in 2003 and 2004.

32. Ms Loosley gives evidence that Goodman launched a new “salsa” product for sale in about 2005. She exhibits a “trade presenter” which displays the salsa product and the hybrid mark, and evinces various uses of the 473 word mark: for instance, the document promotes “Cross Promotional Opportunities with top-selling La Famiglia breads!”, identifies the Goodman website, and provides [email protected] as a contact email address. She also exhibits photographs of the salsa packaging and a copy of a magazine advertisement for the salsa products, as well as a retail brochure listing several LFFF chilled bread products and the salsa product. These documents again show the hybrid mark and the 473 word mark. Usually the 473 word mark is used in the domain name for the Goodman website and/or email address, although on some documents it is also used to describe the advertised product, for example “La Famiglia Pan Bread”.

1. The respondents submit that it ought not be accepted that, on the balance of probabilities, the salsa product was sold. They acknowledge that “significant preparatory steps were taken” towards launching the salsa product, but submit it was never sold and rely on Ms Taylor’s evidence to prove a negative. She attended the New South Wales State Library and reviewed each monthly edition of the Super Food Ideas magazine and Table magazine from August 2006 until November 2006. She found no advertisements for any salsa product. She did, however, find advertisements for La Famiglia Really Cheesy Fingers, La Famiglia Café Italia fruit toast, La Famiglia Traditional Wholemeal Garlic Bread Slices and La Famiglia Baker’s Pride garlic bread.

2. Certainly, salsa was not included in any of the IRI data.  However, as I have noted, there was marketing evidence concerning this product given by Ms Loosely, and in cross examination she had a specific recollection that there had been a product made available and placed on the market before her company ceased to work on the applicants’ account in October 2006. She explained that the absence of sales figures in the IRI data may be explained by the fact that salsa is in a different category of goods to chilled bread, but accepted that, in any event, there had only been a “very small amount” of salsa product sold.

3. Having regard to the evidence, including the images of the product in the marketing materials, I am satisfied that there was some use of the 473 word mark and the hybrid mark in respect of the salsa product. The evidence does not support a conclusion that sales of that product contributed in any meaningful way to the ability of the trade mark to distinguish within s 41(5) or (6) of the pre-RTB Trade Marks Act.

4. On 30 September 2005, LFFF was acquired by the Baking Division of Burns, Philp & Company Limited (Burns Philip).

5. In November 2005 a document prepared on behalf of LFFF by a research or strategy agency called “Torch” spoke of an “innovation pipeline” quickly to capitalise on the Goodman Group’s upcoming acquisition of the LFFF business (2005 Torch document). The contents of this and a number of other strategy and planning documents are relied upon by the applicants to demonstrate an intention to use the Goodman marks in respect of a range of products. They are addressed in more detail later in these reasons.

6. On 21 December 2005, the Goodman Group acquired certain businesses, including LFFF, from Burns Philip. Ms Loosley gives evidence that at the time the Goodman Group acquired LFFF the development and launch of the La Famiglia Café Italia fruit toast product was in progress. She recalls that that product was ultimately introduced to the public some time in 2006. As noted above, Ms Taylor’s evidence shows that the fruit toast product was advertised in Super Food Ideas magazine and Table magazine by at least mid-2006, and those advertisements incorporated the domain name for the Goodman website and the hybrid mark.

7. IRI data shows supermarket sales of LFFF products for the 12 months prior to 11 December 2005 were in the amount of $XXXXX X.

8. In April 2006 Ms Loosely prepared a brand plan for the LFFF products for financial year 2007 (2007 brand plan). The hybrid mark was used in this document.

9. Ms Loosley gives evidence that she observed that the applicants began to use the 906 composite mark first in late 2006 or early 2007. However, there are no examples in evidence of any promotional material or packaging in a form that includes the 906 composite mark in 2006 and 2007. As I note below, the first evidence of the use of that mark was when it was applied to a document in 2010.

10. The IRI data in respect of 2006 shows supermarket sales of LFFF products in the amount of $XXXXX XX, while sales in 2007 totalled $XXXXX X. In 2007 there were also sales of the New York Pizza Bread product in Coles in the amount of $XXXX. There are no screen captures in evidence showing what marks, if any, were used on the Goodman website in 2007. As noted above, the 473 word mark was filed on 7 January 2007, while the 906 composite mark was filed on 19 April 2007.

    3.1.2Use from 2008 to 2009

11. The confidential IRI data shows total supermarket sales of $XXXXX X in 2008 and $XXXXX X in 2009. It appears that some pizza base products were launched in 2009, as IRI data shows sales of a combined total of $XXXXX in respect of “La Famiglia Pizza Base Gourmet 550g”, “La Famiglia Pizza Garlic Bread/Prmsn 260g” and “La Famiglia Pizza Base Psly 250g”.

    3.1.3Use in 2010

12. By 2010 the applicants were promoting the LFFF chilled bread products under the 906 composite mark. Ms Fung exhibits a PowerPoint presentation apparently created in 2010 bearing Goodman’s name and entitled “Pasta Sauce Category” (2010 Presentation).

13. Ms Fung also exhibits a presentation given by Goodman to Woolworths dated May 2010 entitled “La Famiglia NPD [New Product Development] Workshop” (2010 Woolworths Presentation).

14. No screen captures of the Goodman website as it appeared in 2010 were tendered. The IRI data indicates supermarket sales of LFFF chilled bread products were in the amount of $XXXXX in the 12 months prior to 5 December 2010, and sales of pizza bases were in the amount of $XXXXX X.

    3.1.4Use in 2011

15. In 2011 the 473 word mark and/or the 906 composite mark were used on the Goodman website in conjunction with at least the following products: LFFF chilled bread products; gourmet pizza bases; Italian cheese melt; and restaurant style pizza breads. The IRI data shows supermarket sales of LFFF products were in the amount of $XXXXX X, including $XXXX in respect of pizza bases, for the 12 months prior to 4 December 2011.

    3.1.5Use in 2012

16. Ms Fung exhibits a Goodman PowerPoint presentation dated 29 November 2012 entitled “La Famiglia Kitchen Pre-Read: Steer-Co Update” (2012 Steering Committee Presentation).

17. The 906 composite mark and 473 word mark continued to be used on the Goodman website in 2012, in conjunction with products such as traditional garlic bread and traditional sourdough loaf with garlic butter. The IRI data shows supermarket sales of $XXXXX in the 12 months prior to 2 December 2012. No pizza bases were recorded as sold during this period.

    3.1.6Use in 2013

18. The 2013 product packaging shows that both the 906 composite mark and the 131 composite mark were applied to packaging of different LFFF chilled bread products. For example, the packaging of the cheesy garlic bread twin pack was:

    The 2013 packaging of another cheesy garlic bread product was:

19. Mr Lao gives evidence that he accessed a website called Catalytics at where he browsed a number of Coles and Woolworths product catalogues dated between 2013 and 2018. During his review, he took screenshots of:

    (1)Promotions of Goodman’s products alone;

    (2)Promotions of Goodman’s products with fresh pasta products in “meal deals”;

    (3)Promotions of Goodman’s products on the same page as fresh pasta products, but not in “meal deals”; and

    (4)Promotions of third party garlic bread products in “meal deals” with third party pasta products. There are five examples of this sort of promotion in evidence, dated between November 2014 and June 2018.

20. Only one catalogue from 2013 is in evidence. It includes a promotion for “La Famiglia Stone Baked Sourdough Bread 330g-480g”, and the product packaging used in the catalogue displays the 906 composite mark.

21. The IRI data demonstrates that the applicants continuously sold in major supermarkets monthly volumes of chilled bread products such as garlic bread, parmesan pan style bread and herb bread. In the 12 months prior to 1 December 2013 the value of LFFF’s products sold through those supermarkets was $XXXXX X. 

    3.1.7Use in 2014

22. In the 12 months prior to 30 November 2014 the IRI data shows supermarket sales of $XXXXX X. Ms Fung gives evidence of total amounts of direct marketing expenditure and promotional activity expenditure for the “La Famiglia brand” during the period from 2014 to 2018. In 2014 the applicants spent $XXXXX X.

23. In catalogues published by Coles and Woolworths throughout 2014 the 906 composite mark is almost always used on LFFF chilled bread product packaging, whether the product is promoted alone, in conjunction with pasta products, or on the same page as pasta products. However, in a Coles catalogue dated 6 August 2014 the 131 composite mark is used instead in a promotion for “La Famiglia Sourdough Bread 330g-480g” alone.

24. Only the 906 composite mark, and not the 131 composite mark, was used on the Goodman website in 2014. The 906 composite mark was only used in relation to the LFFF chilled bread products.

25. Both the 906 composite mark and the 131 composite mark were used on LFFF chilled bread product packaging in 2014. The packaging samples that Ms Fung exhibits indicate that, as in 2013, products were sold with either the 906 composite mark or the 131 composite mark applied.

26. The first Facebook post on the Goodman Facebook page in evidence is dated 23 October 2014. It includes a photograph of a garlic bread product, with the 131 composite mark applied on the packaging. The page’s profile picture is the 131 composite mark with a black background, and the handle used is @lafamigliakitchen, although the page name is simply “La Famiglia” and not “La Famiglia Kitchen”:

27. Mr Lao and Ms Teng’s evidence of screen shots of the Goodman Facebook page shows use of the 131 composite mark in numerous posts from October 2014 to 5 December 2017. The 906 composite mark appears in very few of the Facebook posts in Mr Lao or Ms Teng’s evidence, and does not appear in any posts made in 2014. The 131 composite mark appears in almost every post that contains a photograph, whether on the advertised or promoted product or as a logo applied to the photograph. Occasionally the text of the post will refer to a product using the 473 word mark, for example “La Famiglia Stone Baked Garlic Bread”.

    3.1.8Use in 2015

28. Ms Fung gives evidence that from about October 2014 until December 2014 and then February 2015 to April 2015 the applicants ran an extensive advertising campaign they called “Sit-Down Comedians”. Australian actor Gyton Grantley was engaged as a “brand ambassador”, and the campaign used web advertisements, online videos, radio, social media and public relations. The materials exhibited demonstrate use of the 473 word mark, the 133 word mark and the 131 composite mark in respect of the LFFF chilled bread products.

29. Ms Fung also exhibits screenshots of posts made on the Goodman Facebook page between January 2015 and April 2016. These posts, which feature the 473 word mark (as both the name of the page, and in relation to specific products such as “La Famiglia Garlic Bread loaf”), the 131 composite mark (as the profile picture and occasionally in photographs) and the 133 word mark (as the “@” handle, and as a banner running across the top or bottom of many of the photographs), promote the consumption of LFFF chilled bread products with pizza and pasta. One post, dated 28 April 2015, displays a LFFF chilled bread product with the 906 composite mark applied to it. It appears to be the only post which uses the 906 composite mark.

30. From about February 2015 the Goodman website shows both the 906 and 131 composite marks being used in conjunction with the promotion of LFFF chilled bread products. Sometimes both marks were used together, as may be seen in the following screen shot of the website as at 27 February 2015:

    The 473 word mark continued to be used to promote the company and its products on the “Our Story” page of the Goodman website.

31. Ms Fung exhibits screenshots of posts published on the Goodman Facebook page from June 2015 to October 2016 that promote the LFFF chilled bread products in conjunction with meals, cooking ideas or recipes. Each post typically uses the 131 composite mark, either on a photograph of a product, or in the bottom left or right of the photograph. Some also use the 473 word mark to describe Goodman products such as “La Famiglia Stone Baked Ciabatta with pure Garlic Butter”.

32. Ms Fung also gives evidence about and exhibits a confidential PowerPoint presentation dated 10 March 2015, which she instructed a creative agency called Bonney Creative to prepare (2015 Bonney Creative Presentation).

33. As noted earlier, the 2015 marks were filed on 23 April 2015. There is only one sample of 2015 product packaging available in the evidence. It is for “Just for 2 Garlic Loaf” and bears the 131 composite mark. In calendar year 2015 Goodman spent $XXXXX on marketing and advertising, and IRI data indicates that supermarket sales of LFFF chilled bread products in the 12 months prior to 29 November 2015 were in the amount of $XXXXX X. In the Coles and Woolworths catalogues in evidence, the 906 composite mark is typically used, though there are two instances where the 131 composite mark is used.

34. Ms Charleson gives evidence that she attended the “Metcash Expo 2015” on the Gold Coast in about July 2015, where a flyer exhibited to her affidavit (Metcash expo flyer) was given to store owners and head buyers of stores such as IGA and Foodworks. The flyer bears the 131 composite mark and suggests that stores can “Offer shoppers ready meal solutions for both lunch and dinner”. Some suggested “ready meal” packages include: “Winter Night In”, consisting of soup, garlic bread and chocolate mousse; “Pasta Night”, consisting of pasta, pasta sauce and garlic bread; and “Saturday Night Footy” consisting of garlic bread, pizza and cola. Only the garlic bread component of these packages includes a LFFF trade mark, usually the 906 composite mark, although in one instance the 131 composite mark is used. The other components are from third parties. Ms Charleson also exhibits a photograph she took of the applicants’ display stand at the Metcash Expo 2015, which shows a refrigerator stocked with various LFFF chilled bread products which use the 131 composite mark on their packaging, as well as third party products including salmon, sausages, chocolate mousse, pizza, and Coca-Cola.

35. Ms Fung gives evidence that between August 2015 and September 2017 Goodman ran an advertising campaign using the phrase or tagline: “MAKE THE FAMILIAR LA FAMIGLIA”. Advertising proofs and photographs of digital screen advertisements in shopping centres exhibited to Ms Fung’s affidavit evidence show that the advertisements were for garlic bread: they include the statement “Discover Australia’s best tasting garlic bread”. Many of the images used in the campaign show garlic bread accompanying pasta, lasagne or pizza. The mark used on the advertisements is not the 131 composite mark, but is rather the following mark which bears some similarities to the 131 composite mark but omits the words “kitchen” and “Est 1992”, as shown below:

    This mark also appears in some of the videos posted to the Goodman Facebook page between 23 September 2015 and 15 October 2015, which are exhibited to Ms Fung’s affidavit. However, most photographs posted to the Goodman Facebook page use the 131 composite mark either on the product depicted or in the bottom left or right corner of the photograph.

36. Ms Charleson also exhibits a document which summarises the promotional materials that were used as part of the “MAKE THE FAMILIAR LA FAMIGLIA” campaign in Foodland stores between October and December 2015. These promotional materials display the 131 composite mark on product packaging, and encourage consumers to “buy any 2 La Famiglia products”, thereby using the 473 word mark. The advertisement itself (excluding the product packaging included within the advertisement) uses the mark identified at [81] above. Ms Charleson also exhibits several confidential PowerPoint presentations that were made in connection with the “Ritchies La Famiglia Dinner Drivers Challenge”, which took place between 7 October 2015 and 17 November 2015 (Ritchies presentations). These presentations, and photographs within them, use the 473 word mark, the 906 composite mark, the composite mark set out at [81] above, and the tagline “MAKE THE FAMILIAR LA FAMIGLIA”. One of the presentations instructs Ritchies store owners to display La Famiglia chilled breads in proximity to third party products for certain periods of time, including in proximity to pizzas, Coca-Cola varieties, mince meat, pasta sauce, salad mix and chicken fillets.

    3.1.9Use in 2016

37. Ms Fung gives evidence of a campaign called “Just for 2” which was run in 2016 and which was intended to promote the launch of a new garlic bread product. She exhibits screenshots of posts on the Goodman Facebook page made as part of this campaign which contain photographs depicting the use of the 131 composite mark on product packaging. She also exhibits advertising mock ups for the Coles website which features the 131 composite mark as well as the “MAKE THE FAMILIAR LA FAMIGLIA” tagline.

38. The applicants spent a total of $XXXXX on advertising and marketing in 2016. Throughout 2016 there remained some dual usage of the 131 composite mark and 906 composite mark on the home page of the Goodman website, as in the example given in [76] above. On other pages, such as pages dedicated to particular products, only the 131 composite mark is used, along with the 473 word mark. However, by 2016 the applicants’ product packaging appears exclusively to use the 131 composite mark, not the 906 composite mark. The IRI data shows supermarket sales of LFFF chilled bread products in the amount of $XXXXX XX in the 12 months prior to 27 November 2016. There was some use of the 906 composite marks in Coles and Woolworths catalogues in early 2016, but by July 2016 the 131 composite mark was being used.

    3.1.10Use in 2017

39. On 1 January 2017 LFFF assigned the Goodman marks to Goodman, although that assignment was not recorded on the Register until 2 March 2018.

40. Ms Charleson exhibits a Coles “meal deal” offer which she saw on 3 May 2017, which consisted of the joint promotion of pizza, pasta, pasta sauce and garlic bread products. None of these products are LFFF products, nor do they use any of the Goodman marks.

41. Ms Fung exhibits confidential evidence of data collected by a third party agency acting for the applicants which indicates that in the week of 3 July 2017 social media promotions of the general advertising of the “La Famiglia brand” was of in excess of 5 million impressions. The materials in the promotions indicate that impressions in the order of 650,000 were achieved for post about an “Antipasto plate” that featured a photograph of the applicants’ ciabatta on an antipasto plate, with the 131 composite mark in the bottom right of the photograph, accompanied by the words “A romantic dinner for two can be as simple as a rustic antipasto plate. And instead of plain bread why not try La Famiglia Stone Baked Traditional Ciabatta?”. Other promotions for LFFF chilled bread products are also depicted in the document.

42. Ms Charleson exhibits several Coles meal deal promotions which she saw between 8 November 2017 and 30 May 2018. Each of these advertises either La Famiglia Garlic Bread Slices or La Famiglia Stonebaked Garlic Bread in conjunction with Latina branded filled pasta and Latina branded pasta sauce. The 131 composite mark is used both on the product packaging for the LFFF chilled bread product, and in the bottom right corner of the promotion in conjunction with the Latina logo.

43. The IRI data shows that in the 12 months prior to 26 November 2017 LFFF chilled bread product supermarket sales were in the amount of $XXXXX XXX. $XXXXX X was spent on advertising and marketing. There are only two examples of 2017 product packaging available in the evidence, and both feature the 131 composite mark only. The home page of the Goodman website continued to feature both the 906 composite mark and the 131 composite mark, while other pages used only the 131 composite mark, but identified products using the 473 word mark. The 906 composite mark was used in a Woolworths catalogues dated 1 and 22 February 2017. After that time, the 131 composite mark was used in catalogues published in 2017.

    3.1.11Use in 2018

1. Ms Fung gives evidence about and exhibits a confidential three year marketing plan dated July 2018 (2018 Goodman Plan).

2. Ms Fung also exhibits and gives evidence about a confidential PowerPoint presentation prepared by her colleague, Head of Marketing – Baking Ms Sterling-Lewis, in September 2018 entitled “La Famiglia’s positioning has evolved over time....” (2018 Evolved Over Time Presentation).

3. Exhibited to Mr Lao’s affidavit are a screen shots taken on 30 November 2018 from the Woolworths website at Those screenshots show that as at that date Woolworths promoted certain “bundles” of products, such as one consisting of Leggos Ricotta and Roast Vegetable Tortellini, Leggos Creamy Tomato Sauce and La Famiglia Just for 2 Garlic Bread Slices. The webpage shows an image of the Just for 2 Garlic Bread product packaging, which uses the 131 composite mark.

4. The 2018 product packaging in evidence shows use of the 131 composite mark only. In the two 2018 Woolworths catalogues in evidence, the 131 composite mark is used. IRI data shows that supermarket sales of LFFF chilled bread products in the 12 months prior to 25 November 2018 totalled $XXXXX XX. The applicants spent $XXXXX X on marketing and advertising in 2018. In February 2018 the Goodman website continued to display both the 906 and 131 composite marks, but there are no screen shots of the Goodman website after February 2018 in evidence. In her 4 September 2019 affidavit Ms Fung gives evidence that the Goodman website has not been working since about September to December 2018.

   3.1.12Use in 2019

5. In her affidavit affirmed on 4 September 2019, Ms Fung gives confidential evidence that no new product lines under the “La Famiglia brand” were launched by the applicants between the Goodman 2018 plan and the date of her affidavit. XXX XXXX XXXXX X XXXXX XXXX XXXXX XXxXXX XXXXX X XXXX XXXXX X XXXXX XXXXX XX XXXXX XXXX XXXXX X. She gives evidence that as at September 2019, Goodman’s Baking Marketing Team was working on a draft La Famiglia brand plan (2019 draft brand plan), a confidential copy of which was annexed to her affidavit. In her third affidavit, affirmed on 21 November 2019, Ms Fung annexes the confidential final version of the brand plan (2019 final brand plan).

   3.2             The Quantium data presentation

6. In October 2018 a document was prepared by the applicants using data collected by an organisation called Quantium (the Quantium data presentation). As mentioned above, Quantium collects data from the physical scanning of products and loyalty cards at supermarket checkouts. One form of data provided by Quantium is “basket affinity data”, which is compiled by aggregating supermarket baskets and identifying associations between products within each basket. It is said to represent a measure of the likelihood of two products being purchased in the same transaction. Mr Allan gives evidence that the Quantium data presentation was prepared for the purposes of an internal Goodman presentation concerning the “basket affinities” of various products in the LFFF chilled bread product range. It addresses basket affinity for the 26 weeks prior to 18 September 2018. Based on the figures set out, Mr Allan interprets the data as predicting that if a customer has La Famiglia Stone Bake Ciabatta 330g in their basket, they are XXXX times more likely also to have in their basket XXXX XXXX XXXXX XX XXX XXX XXX, and XXX times more likely to also have XXXX XXXX XXX XXX. The figures also indicate that customers having 400g La Famiglia Garlic Bread in their basket are XXXX times more likely to have XXXXX XXX XX and XXXX times more likely to have XXXX XXXX XXXX XXXXX XXX.

7. There is no evidence as to how Quantium calculates the figures identified, the assumptions made in the figures, or adjustments made to the underlying data. No witness from Quantium was called to give evidence.

8. There are a number of difficulties in reaching conclusions based on the Quantium data to which Mr Allan refers. One is the sample size. As Mr Allan readily accepted, the degree of affinity between products is based on a very small number of individual shoppers displaying the relevant behaviour. Additionally, the figures do not expressly account for the prospect that a consumer: (a) purchased the two products with no thought that they may be connected; (b) was induced by a sale price or promotion that induced the purchase rather than any affinity; and/or (c) responded to a “meal deal” offering in selecting the two products in the same basket.

9. Taken as a whole, and given the lack of evidence in relation to the calculation of the figures, I am sceptical of the value of the Quantium basket affinity data and I give it no weight.

   3.3             The display of chilled products in supermarkets

10. In evidence are numerous photographs depicting the manner in which chilled items are displayed and sold in supermarkets. They are placed by retailers using various different methods of organisation.

11. Ms Charleson gives evidence about the positioning of LFFF chilled bread products on shelves in supermarkets. She accepted that the applicants only sell refrigerated bread products under the La Famiglia brand. She describes the LFFF chilled bread products as “bake-at-home” products, which are not to be eaten straight from the packet, but which require cooking first. I accept that garlic bread, herb bread and cheese bread are goods within the designated goods for each of the Goodman marks that are necessarily displayed in refrigerated shelving because they contain perishable ingredients.

12. Ms Charleson in her evidence in chief says that the applicants work with retailers to position the LFFF chilled bread products on shelves “adjacent to meals they are typically consumed with, such as pasta, pasta sauce, pizza bases and pre-made meals”. She refers to this positioning as “complementary presentation” of products, and gives evidence that it is a means by which retailers provide consumers with what she terms a “meal solution”.

13. In cross-examination it became apparent that such a targeted approach is not uniform. The applicants do not themselves have control over where their products are stocked on shelves, leaving aside the fact that as chilled bread products they must be put into the refrigerated section. It was not uncommon for retailers to place the LFFF chilled bread products close to products that are not likely to be eaten together with garlic bread as a meal, such as uncooked pastry, cookie dough, chilled wontons, chilled Asian noodles, or bacon.

14. Although in her evidence in chief Ms Charleson emphasises the proximity of Italian meals such as pasta and pizza to the LFFF chilled bread products, in the Metcash Expo flyer it is apparent that the applicants promoted to Metcash the placement of LFFF chilled bread products with a variety of meals including: salad, salad dressing and sausages; soup and chocolate mousse; smoked salmon; as well as with Italian meals of pasta and pizza.

15. Some sample supermarket displays are depicted below.

16. In June 2018 Ms Miller attended a Supabarn located in Gymea, New South Wales, and took the following photograph:

    The photograph shows a range of fresh pasta products, including the Rana pasta products, as well as third party pasta products, displayed above a small selection of pasta sauces. Below the pasta sauces is a selection of LFFF chilled bread products, as well as one third party garlic bread product.

17. In December 2018 Mr Lao attended an Aldi store in Campberwell, Victoria, and took the following photograph of the “Ready Meals” section:

    Mr Lao’s photograph shows a number of products on display over five shelves. “Piatti Fresh” pasta products and pasta sauce are displayed on the right side of the two top shelves. “Piatti Fresh” garlic bread products are displayed in the two bottom left shelves, next to pizza bases or ready made pizza products. A number of other products are also displayed, including duck pancakes, tofu, and other types of ready made meals.

18. In January 2019 Mr Hope attended the Coles supermarket in Melbourne Central, Victoria, and took the following photograph:

    Displayed in the top shelf are pasta sauces, and on the two shelves below there are fresh pasta products, including one of the Rana pasta products. On the next shelf are ready made pizzas, and on the following shelf there is at least one LFFF chilled bread product. On the final shelf there are third party garlic bread products, as well as a cookie dough product.  To the right of all of these products are a range of cheese products in what appears to be a different section of the chiller.

19. The above photographs are a few examples of many similar photographs that were in evidence. These photographs show that chilled bread products are often, if not typically, displayed in the chilled sections of supermarkets in very close proximity to fresh pasta and pasta sauces, as well as pizza bases and ready made pizzas. A consumer pausing to consider purchasing any of these products will no doubt observe the other products in close proximity.  

    4.               LACK OF USE OR INTENTION TO USE: S 59 AND S 92(4)(a) AND (b)

    4.1             Introduction

20. The respondents plead that the Register should be amended pursuant to s 59 of the Trade Marks Act such that the goods in respect of which the Goodman marks are registered are “bread and bread products only”, because at the filing date of each of the Goodman marks LFFF had no intention to use those marks in relation to any other goods, and the Goodman marks have only been used in respect of bread and bread products. The respondents further plead that the Goodman marks should be removed for lack of intention to use and non-use under s 92(4) of the Trade Marks Act.

21. The applicants contend that LFFF had the requisite intention to use the marks as at their filing dates, and that they have used, the Goodman marks in respect of the 473, 906 and 2015 designated goods, as set out in [19] above.

    4.2             Relevant law

    4.2.1Section 59 – lack of intention to use mark

22. Section 59 provides:

    59  Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)       to use, or authorise the use of, the trade mark in Australia; or

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

23. Section 88(2)(a) facilitates that s 59 may be a ground for amendment or cancellation of a mark once registered.

24. Section 17 provides that a trade mark is a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by one person from goods or services provided by any other person. Section 7(1) provides:

    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

25. A trade mark is used (or intended to be used) if it is used to indicate a connection in the course of trade between the goods and the person who applies it to the goods: Johnson & Johnson Australia Pty Limited v Stering Parmaceuticals Pty Limited [1991] FCA 402; 30 FCR 326 (Lockhart J at 341, Burchett J at 342, Gummow J at 251); Shell Co of Australia v Esso Standard Oil [1963] HCA 66; 109 CLR 407 at 424-425 (per Kitto J, with whom Dixon CJ, Taylor J and Owen J separately agreed).

26. Use must be use of the trade mark the subject of the registration, although s 7(1) of the Trade Marks Act, set out above, allows some leeway.

27. In this context, it may be noted that the registration of a word mark provides particularly strong protection to a trader. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 (Gallo HC) the High Court (French CJ, Gummow, Crennan and Bell JJ) noted that the monopoly given by a registration of the word BAREFOOT alone was wide enough to include the word together with a device which did not substantially affect the identity of the word mark (at [69]). The Court dismissed an argument that there had been no use of the word mark because that word always appeared in close conjunction with an image of a bare foot. It said at [69]:

    The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

28. In order to make good a s 59 ground, the respondents must establish that as at the filing date of each of the Goodman marks, LFFF did not intend to use, authorise the use of or assign those marks in Australia: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 (Keane CJ, Stone and Jagot JJ) at [74]; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478 (Jacobson J) (Health World (Jacobson J)) at [158].

29. The filing of an application to register a trade mark has long been taken to be prima facie evidence of an intention to use the trade mark in relation to the prescribed goods: Aston v Harlee Manufacturing Co [1960] HCA 47; 103 CLR 391 at 401 (Fullagar J).The burden then falls to the opponent (or, as here, the applicant for rectification) to prove the absence of intention: Health World (Jacobson J) at [163]. However, where a trade mark applicant or owner has been put on notice that its intention to use the mark is in issue, and it fails to respond to the opponent’s evidence, the Court may infer that there is or was no intention to use: Health World (Jacobson J) at [162].

30. The requisite intention to which s 59 is directed is a “real and definite intention” of the applicant for registration to use the mark publicly as a trade mark: Health World (Jacobson J) at [160].

31. The intention in this connection is not to be regarded as meaning an intention to use immediately or within any limited time: Health World (Jacobson J) at [160]. To use an example provided by Fullagar J in Aston at 401, a confectionery manufacturer would be entitled to register three trade marks in relation to confectionery with the specific intention of using two of them even if it had not made up its mind as to which two it would use. If it does not in fact use them, they could be removed for non-use. However, a manufacturer of confectionery, who had no intention of ever manufacturing vehicles, might be held to be disentitled to register a trade mark in relation to cars.

32. A more general intention to expand a business at some future time will not supply the requisite intention, particularly if the trade mark applicant lacks the capacity to expand the business to provide the goods or services covered in the registration: see In Re the Registered Trade Marks of John Batt & Co [1898] 2 Ch 432 at 439-440, cited in Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415; 253 ALR 76 (Jagot J) at [10]; and Suyen Corporation v Americana International Ltd [2010] FCA 638 (Dodds-Streeton J) at [241].

33. In Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816; AIPC ⁋91-904 Wilcox J said at [55] (in relation to the cognate requirement in s 92(4)(a)):

    The case-law establishes that the relevant intention is a ‘definite and present intention’ to deal in the goods, or provide the services: see Re J Batt & Co (1898) 15 RPC 534 at 538. There must be ‘a resolve to use it in the immediate future … and real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’: see Re Ducker’s Trade Mark (1928) 45 RPC 397 at 402.

34. It is not sufficient if the intention is “merely speculative” or of “an uncertain or indeterminate possibility: Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 (Optical 88 (No 2)) at [265]-[267] (Yates J, upheld on appeal in Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130 (Cowdroy, Middleton and Jagot JJ)).

35. In addition, establishing a relevant lack of intention on the part of an applicant at the filing date of an application for registration of a trade mark “may involve the consideration of the intention of the applicant having regard to any of his or her statements of intent, prior uses consistent or otherwise with that intention, and uses shortly after the filing date”: see Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393 at [247] (per Burley J, with whom Greenwood J agreed at [18]). The scope of the inquiry may be broad but it starts from the prima facie position set out in Aston at 401.

36. An intention to use may of course be demonstrated or inferred by actual use by the trade mark owner or its authorised user after the filing date. Conversely, a failure to use after the filing date may enable a Court to infer that there was a lack of intention: Food Channel at [74]; Nikken at [61]. A relatively small amount of genuine use may be sufficient to maintain a registration: Gallo (HC) at [64].

    4.2.2Section 92(4) – lack of intention to use mark and failure to use mark within specified periods

37. Under the scheme contemplated in Part 9, an applicant may apply to the Registrar for removal of a trade mark pursuant to s 92, and that application may, as happened in the present case, be referred to this Court pursuant to s 94. Any person may oppose the application by filing a notice of opposition: s 96. Here the opponents are the applicants. If the opposition is unopposed, the trade mark will be removed from the Register, in whole or in relation to particular goods or services: s 97. If opposed, the opponent has the onus to establish relevant use or intention to use: s 100. However, there remains a broad discretion for the Court or the Registrar to decline to remove the trade mark: s 101. See generally Hungry Spirit Pty Limited ATF The Hungry Spirt Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883 (Burley J) at [6]-[10].

38. Section 92(4) provides:

    92  Application for removal of trade mark from Register etc.

    …

    (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

    (i)        to use the trade mark in Australia; or

    (ii)       to authorise the use of the trade mark in Australia; or

    (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

    (iv)      has not used the trade mark in Australia; or

    (v)       has not used the trade mark in good faith in Australia;

    in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

    (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)        used the trade mark in Australia; or

    (ii)       used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

39. In the present case, Rana filed two non-use applications. The first, in respect of the 473 word mark and the 906 composite mark, was filed on 2 January 2018. Accordingly, the period mentioned in s 92(4)(a) is the period ending on 2 December 2017 and the non-use period of 3 years mentioned in s 92(4)(b) is from 2 December 2014 until 2 December 2017. The second, in respect of the 2015 marks, was filed on 13 February 2018. Accordingly, the period mentioned in s 92(4)(a) is the period ending on 13 January 2018. In the present case, the s 92(4)(b) does not apply to the 2015 marks because, at the time that Rana filed its non-use applications, a s 92(4)(b) non-use application could not be made earlier than five years after the filing date of the trade mark: s 93(2) of the Trade Marks Act. Section 93(2) has since been amended, and now provides that a s 92(4)(b) non-use application cannot be made earlier than three years after the particulars of the trade mark are entered into the Register.

1. The first impugned use is the words “LA FAMIGLIA” as they appear on the Rana pasta product packaging. The respondents contend that the use is not deceptively similar to the 473 or 133 word marks. In this regard they emphasise the fact that the words “LA FAMIGLIA” are small and that the prominent feature is the word “RANA” in large, bold writing which stands out against a contrasting background. They submit that consumers would naturally recognise that the word “RANA” is the brand of the goods: “RANA” is how Woolworths and Harris Farm list the brand on their websites, and how Coles lists the brand on consumers’ tax invoices. The words “LA FAMIGLIA” play a negligible role in the Rana mark and are an obvious reference to the “the family”, being a descriptive use which could not lead to any deception or confusion within the meaning of s 10 of the Trade Marks Act. In the unlikely event, they submit, that any consumer is in any doubt about the import of those words, the answer is immediately provided: it is “LA FAMIGLIA RANA”. The situation, they submit, is the same as if the applicants had managed to obtain a registration for the English words “the family” and the respondents were using “the family Rana”.

2. The respondents submit that by choosing a name that has a descriptive aspect to it, the applicants ran the risk that others in the trade would use it descriptively and that it would not distinguish the applicants’ products. Having chosen to evoke “Italianness” by adopting “LA FAMIGLIA” as a trade mark, the applicants cannot preclude genuinely Italian companies from using these words. In this context, the respondents submit that the decision in Stone & Wood is relevant, where the word “pacific” had become descriptive, and was used descriptively in the impugned mark (at [66]-[67], [98]-[100]). They submit that non-distinctive elements of the mark are to be given reduced significance in any comparison. Here, the respondents submit that the ordinary person would be credited with an understanding that the two elements of the Rana mark, “LA FAMIGLIA” and “RANA”, have ordinary significations and would be understood separately. Taken in combination, the risk of confusion between the marks does not rise above mere possibility.

3. For the reasons set out below, I am satisfied that the Rana mark is deceptively similar to the 473 word mark, because it so nearly resembles the 473 word mark that it is likely to deceive or cause confusion within s 120(2) of the Trade Marks Act.

4. Fresh pasta products and goods within the 473 designated goods are fast moving consumer goods which are selected by consumers from supermarket aisles. The class of consumer of such products is the broad spectrum, including those who shop in supermarkets. The Rana pasta products will be displayed in, and selected from, refrigerated shelving, because they contain temperature-sensitive ingredients. Consumers will typically pass down the aisle and select goods at varying places, but taking note of the packaging. The items are relatively inexpensive and do not call for much deliberation in the purchase. It is likely that consumers will have occasion to refer to such products by name amongst themselves and if asking where to find the products.

5. I first consider the 473 word mark. It is for the words LA FAMIGLIA alone, however rendered, and whether rendered with or without a logo. The words may be rendered in cursive within the scope of the registration. The ordinary consumer will perceive that it is of two words, one short and commencing with “L” the second being longer which looks and sounds somewhat like the English word “family” with a foreign twist. That is the impression that many consumers are likely to take away and remember. A significant number (but by no means all) will no doubt understand the two words to mean “the family” in another language. That is the idea that they will recall (Jafferjee at 121 (per Latham CJ, with whom McTiernan J agreed at 126); Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; 237 FCR 388 (Besanko, Jagot and Edelman JJ) at [213]). The consumer will pronounce the words with either a hard or a soft “g”.

6. The Rana mark shows the words “LA FAMIGLIA” in cursive script in a flourish like a signature or handwriting, rendered over the larger sans serif “RANA”. I do not accept the submission that consumers and traders are unlikely to notice the words “LA FAMIGLIA”. They are spread across the central aspect of the front of the packaging and are repeated with every rendition of the large word RANA, on the top and base of the packaging. Sometimes, the words are more easily visible, particularly where the mark is rendered in lighter yellow, orange and light brown colours, but it is still visible when the other variety of colours are used. The signature-style rendition of the words renders them prominent to the eye.  

7. Consumers will read the words “LA FAMIGLIA RANA” on the packaging and, having an impression (which may be imperfect) of the 473 word mark, likely notice that the words “LA FAMIGLIA” in both are the same. They are the first two words of the impugned use and they look and sound the same. They also mean the same thing. In my view these aspects are likely to form a strong impression on consumers. Only the word “RANA” distinguishes the two marks. It is rendered in large letters in a different font to “LA FAMIGLIA”. However, in my view the presence of “RANA” will not prevent a substantial number of consumers from wondering whether it might not be the case that products bearing the impugned mark come from the same source. Many will consider that that mark has been entirely used on the packaging, and that the word “RANA” is an addition, connoting either a variant or sub-brand of “LA FAMIGLIA”.

8. The respondents contend that the word “RANA” makes plain to consumers that the words “LA FAMIGLIA” are simply descriptive, and that there can be no doubt that the words simply mean “the family Rana” thereby making plain that “Rana” is the trader whose sign is being used. However, I do not consider that consumers who recall the 473 word mark and view the Rana mark on product packaging would understand it to be a reference to “the family Rana”, and thereby set to one side the words “LA FAMIGLIA”. As I have noted, the words “LA FAMIGLIA” are not directly descriptive. They are allusive. The addition of a further word (“RANA”) which, significantly, and unlike the word “KITCHEN” in the 2015 marks, has no English meaning is not likely to diminish the trade mark significance of those words, in contrast to the position in Stone & Wood at [66].

9. Furthermore, it has long been recognised that for the purposes of considering infringement, it is beside the point that the alleged infringer has added other material to the impugned trade mark, even if the steps taken were to avoid the likelihood of deception.

10. In Mark Foys Williams J (Dixon CJ agreeing) said as follows (citations omitted) at 205:

    In Aristoc Ltd v Rysta Ltd Vicount Maugham cites the following appropriate passage from the judgment of Lorde Greene MR in Saville Perfumery Ltd v June Perfect Ltd:

    In an infringement action, once it is found that the defendant’s mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin.

    Needless to say, if the defendant uses the words of the plaintiff’s trade mark as indicating origin, it is still an infringement notwithstanding that the defendant always adds his own name.

11. In my view the respondents’ reliance on the usage by Woolworths and Harris Farm is misplaced. The selection of “RANA” as the descriptor by those companies could as well be because the words “LA FAMIGLIA” are taken by the applicants, because the word Rana is conveniently short, or because Rana is a convenient contraction of the second respondent’s name: see the authorities collected in Optical 88 (No 2) at [99].

12. I now turn to consider the evidence of Ms Vicente, whose role included managing Goodman’s social media accounts for its La Famiglia brand. Her evidence is relied upon by the applicants as evidence of confusion. She received an enquiry from a person identified as “Far Lou” via the Goodman Facebook pahe which attached a photograph of the front of the Rana packaging for ravioli, although the packaging was empty, and enquired whether the ravioli was one of the applicants’ products. Ms Vicente looked at the photograph. She was familiar with the LFFF chilled bread products but had not encountered Rana’s pasta products, and was uncertain whether it was a new product in the applicants’ La Famiglia range. She initially thought that the word “RANA” may have been the flavour of the ravioli product. On the same day, she enquired of the applicants whether or not it was one of their products, who subsequently confirmed that it was not.

13. I accept the respondents’ submission that Ms Vicente was not a typical consumer and that she was not engaged in any shopping at the time when she perceived the packaging. Furthermore, I accept that having regard to her role, she was particularly sensitised to the Goodman marks. Nevertheless, she had a spontaneous reaction to the Rana packaging, which was to identify the words “LA FAMIGLIA” as separate to “RANA”, and having separate trade mark or branding significance. To that limited extent her evidence might be regarded as tending to support the view that I have reached. On balance, however, I do not consider it appropriate to place reliance on it. Where evidence of confusion consists of a small sample it is particularly important to pay close attention to the context in which it appears to have arisen. If it is remote from the typical consumer experience (as here) or absent contextual information (as was Far Lou’s message), then it must be approached with considerable caution.

14. These matters inform my view that the impression based on an imperfect recollection of the 473 word mark that persons of ordinary intelligence and memory would have, when compared with the impression that they would get from the Rana packaging use, is such that there is a real tangible danger of deception or confusion occurring on the basis that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source: Southern Cross at 594-5; Registrar v Woolworths at [50].

15. I reach the same conclusion in relation to the 133 word mark although it is perhaps unnecessary to do so as the applicants seek no relief in their Originating Application in respect of this mark. Again, it is a word mark and its registration covers the rendition of the words in cursive script. The sound, look and meaning of the words “LA FAMIGLIA” are likely to form the more powerful part of a consumer’s reaction, with “KITCHEN” playing a secondary role. The rendition of the Rana mark on the Rana packaging includes the words LA FAMIGLIA in their entirety. A not insubstantial number of consumers with a recollection of the 133 word mark perceiving the Rana packaging are likely to be caused to wonder whether the Rana pasta products come from the same source.

    7.3.3The words “LA FAMIGLIA RANA”

16. The applicants contend that the use of “La Famiglia Rana” and “@lafamigliarana” respectively as the account name and handle on the Rana Facebook page and the Rana Instagram page are deceptively similar to the 473 word mark and 906 composite mark.

17. I have found each of these to be a trade mark use. Each uses, as a significant component of the account name and handle, the words “LA FAMIGLIA”, which are the entirety of the 473 word mark as I have described in section 7.3.2. In the written form of these uses the word “RANA” recedes yet further in significance as the last four letters of a mark otherwise identical to the 473 word mark. In the @lafamigliarana usage the letters do not form a separate word. For these reasons, and also the reasons set out in section 7.3.2 in my view these uses are also deceptively similar to the 473 word mark and the 133 word mark.

    7.4             Are pasta products the same goods as any of the registered goods?

18. I have found in section 6 above that the scope of the goods in respect of the 473 word mark is eligible to remain registered are as follows:

    Bread, bread rolls, buns, flat bread, pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread.

19. The scope of goods in respect of which the 133 word mark is eligible to remain registered are as follows:

    Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; sandwiches; frozen, chilled and shelf stable bread.

20. None of these goods is “the same as” filled pasta, as is required by s 120(1) of the Trade Marks Act. Accordingly, Goodman’s infringement case must be assessed by reference to s 120(2).

    7.5             Are filled pasta products goods of the same description as the registered goods?

21. I have in section 6.2.3 addressed the principles of law relevant to consideration of whether or not identified goods are “goods of the same description” as those in respect of which a trade mark is registered for the purpose of s 120(2) Trade Marks Act.

22. In section 6.3.1 at [293] to [306] I explain why I conclude that goods in the ready made meal category are goods of the same description as garlic bread. In my view, filled pasta is very similar, if not the same in character as a “ready made meal”. As Mr Chiavegatti points out, it is a meal in itself that simply requires boiling for a few minutes. In my view, by virtue of being, or being of the same character as, a “ready made meal”, filled pasta is also a good of the same description as garlic bread. For brevity, I do not here repeat my conclusions in section 6.3.1, but note that:

    (a)Garlic bread is a side dish that would be regarded by many Australians as a dish to be eaten with an Italian meal, such as filled pasta (pace Italian purists);

    (b)Pasta and garlic bread are both made substantially from flour that is formed into dough, but the filled component of the Rana pasta products is not, and bread and filled pasta would be made by different manufacturers;

    (c)The trade channels of ready made meals, including filled fresh pasta and chilled garlic bread, significantly overlap, such that there is a real likelihood that those products will be displayed side by side or in close proximity, notwithstanding that other products that have no Italian connotation may also be displayed in similar proximity from time to time; and

    (d)Traders such as Coles and Woolworths promote Italian main meals, including pasta in conjunction with garlic bread, thereby reinforcing the connection in the minds of consumers of an association between the two.

23. Accordingly, both the Rana mark and the use of the words “LA FAMIGLIA RANA” is in respect of goods of the same description as the designated goods in the 473 word mark.

    7.6             Does the defence under s 120(2) apply?

24. The respondents submit that in the event that any of the impugned uses are found to be of a deceptively similar trade mark that is used on goods of the same description as the applicants’ goods within s 120(2), nevertheless the use should not be found to infringe by reason of the defence arising under that section, which provides that:

    However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

25. Two issues arise. First, the applicants submit that the respondents have not pleaded reliance on the defence and so cannot rely on it. The respondents contend that it is sufficient to provide a general denial of infringement of s 120(2), and submit that the defence is an element of s 120 and is required to be considered by the Court in every case. The second is whether the requirements of the defence are made out. In this regard, the respondents contend that their use is not likely to deceive or cause confusion for essentially the same reason that the trade mark applied to the Rana packaging is not deceptively similar, namely that they have made clear that “RANA” is the name of the trader from where the goods originate, and “LA FAMIGLIA” is simply descriptive.

26. As a matter of law, the defence under s 120(2) proceeds on the basis that there has been a finding of deceptive similarity and the existence of all other matters necessary to establish infringement. The requirement is that the respondent establish that using the mark in the manner that it did was not likely to deceive or cause confusion. In Gallo (FC) the Full Court at [76] pointed out that the words “as the person did” direct attention to the way in which, as a matter of fact, the alleged infringer has used the allegedly infringing trade mark. The Full Court went on to say:

    ...In a sense, an affirmative answer to the question of whether the alleged infringing mark was deceptively similar would be the starting point.  If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion.  Also relevant, in our opinion, would be the matters considered in determining whether the alleged infringer's goods are of the same description as the goods in respect of which the registered mark is registered.

27. The defence may give rise to consideration of what additional features are used in conjunction with the trade mark, which may suggest that there was no likelihood of deception or confusion. This was alluded to by Yates J in Optical 88 (No 2) at [99] (emphasis added):

    So too it is recognised that, for the purposes of considering infringement under s 120(1), it is beside the point that the alleged infringer has added other material to the impugned trade mark, even if those steps were taken to avoid the likelihood of deception: Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 161 (Sir Greene MR) and at 174 (Viscount Maugham); Lever Brothers, Port Sunlight Limited v Sunniwite Products Ltd (1949) 66 RPC 84 at 89; Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 205; Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 at 495; New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Limited (1989) 86 ALR 549 at 589; Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 231-232. Considerations of this kind, if raised by an alleged infringer, are relevant when considering infringement under s 120(2) and may be relevant when considering infringement under s 120(3). However, the general position under s 120(1) is that infringement cannot be avoided by, for example, the use of additional matter if the mark itself is taken and used. Once again, if the test is not applied in this fashion a trade mark owner may be deprived of the monopoly conferred by registration.

28. The learned authors of Shanahan’s suggest that the only aspects of a respondent’s use that should be considered relevant to the defence are those in some way peculiar to the respondent’s own product, such as the use of some special get-up or the inclusion of the respondent’s label of its company or business name (at [85.765]). The comparator, for the purpose of the defence, is not, however, against any actual use by the registered trade mark owner, but rather against the fair and normal use of its trade mark within the scope of its registration. Such an approach was adopted by the Full Court in Gallo (FC) at [78], no doubt to accommodate the statutory language “using the sign as the person did is not likely to deceive or cause confusion” – the likelihood being judged against such notional use.

1. In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75; 311 ALR 207 at [62], [67], [68] the Full Court (Besanko, Yates and Mortimer JJ) noted in obiter dicta that the primary judge’s findings that the term “lift shop” had an understood generic connotation, and that at the point at which certain web search results were displayed there was no respectable possibility of confusion that the respondent was associated with the applicant, were sufficient circumstances to give rise to the defence under s 120(2).

2. Turning now to consideration of the issues, in my view the applicants’ first submission is to be accepted. To fall within the s 120(2) defence, a respondent to an infringement action must establish that its use of the impugned sign is not likely to deceive or cause confusion. That is what the words “if the person establishes” require: Gallo (Flick J) at [89]; Optical 88 (No 2) at [99]. This requires consideration of such matters as the respondent puts forward to establish the fact, and, in my view, a pleaded case to support that. It is not to the point to submit, as the respondents in this proceeding do, that their case relies on no matters that would be of an unexpected kind. That speaks only to the respondents’ position. Once made aware of the facts, matters and circumstances upon which a respondent may wish to rely, an applicant may wish to call evidence in answer, which is something that cannot be done if it has no notice of the case to be run against it. Accordingly, as a matter of principle in my view a respondent should plead or at the least provide notice of its intention to advance a positive case at trial that using the impugned mark as the respondent did was not likely to deceive or cause confusion. The respondents have not done so here.

3. In any event, in my view the respondents fail on the second issue. For the same reasons that I have found in relation to the issues determined under the headings of “deceptive similarity” and “goods of the same description” in sections 7.3 and 6.2.3 above, I do not consider that the actual use by the respondents in the context either of the Rana mark or the words “LA FAMIGLIA RANA” is such that that use is not likely to deceive or cause confusion. In this regard, the respondents rely on no matter additional to the fact that the word “Rana” is the name of the trader.  However, for the reasons explained in section 7.3.2, that fact alone is insufficient. 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 473 and/or 133 word marks.

   8.               CONCLUSION

4. For the reasons set out in more detail above I have concluded that the respondents’ cross claim seeking rectification of the Register pursuant to s 41 of the Trade Marks Act fails, but that it succeeds pursuant to s 59 and s 92(4) insofar as:

   (a)The designated goods for the 473 word mark be rectified such that they are confined to the following:

   Bread, bread rolls, buns, flat bread, pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread.

   (b)The designated goods for the 906 composite mark be rectified such that they are confined to the following:

   Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; frozen, chilled and shelf stable bread

   (c)The designated goods for each of the 2015 marks be rectified such that they are confined to the following:

   Pizza bases, pizza dough, ciabatta and focaccia bread and rolls; garlic bread; herb bread; cheese bread; bread sticks; sandwiches; frozen, chilled and shelf stable bread.

5. I have also concluded that the applicants’ trade mark infringement case has been established. I will set in place a timetable for the parties to confer and jointly provide short minutes of order giving effect to these reasons.

I certify that the preceding three hundred and seventy (370) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley.

Associate:

Dated:       17 December 2020

ANNEXURE

SCHEDULE OF PARTIES

NSD 328 of 2018
Cross-Claimants
Second Cross-Claimant:	PASTIFICIO RANA SPA
Cross-Respondents
Second Cross-Respondent	LA FAMIGLIA FINE FOODS PTY LTD