Le Cordon Bleu BV v Cordon Bleu International Ltee

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FEDERAL COURT OF AUSTRALIA

Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587

LE CORDON BLEU B.V. V CORDON BLEU INTERNATIONAL LTEE
NO. VG 16 OF 1998

RENAUD COINTREAU & CIE V CORDON BLEU INTERNATIONAL LTEE
NO. VG 382 OF 1997

CORDON BLEU INTERNATIONAL LTEE V RENAUD COINTREAU & CIE
NO. NG 557 OF 1997

HEEREY J
10 NOVEMBER 2000
SYDNEY (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VG 16 OF 1998

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS

BETWEEN:

LE CORDON BLEU B.V.
APPLICANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

  VG 382 OF 1997

BETWEEN:

RENAUD COINTREAU & CIE
APPLICANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

NG 557 OF 1997

BETWEEN:

CORDON BLEU INTERNATIONAL LTEE
APPLICANT

AND:

RENAUD COINTREAU & CIE
RESPONDENT

JUDGE:

HEEREY J

DATE:

10 NOVEMBER 2000

PLACE:

SYDNEY (HEARD IN MELBOURNE)

CORRIGENDUM

In the Reasons for Judgment handed down by Justice Heerey on 10 November 2000, please remove the word “companies” at line 7 of the catchwords and replace with the word “consumers”.  The line should now read “whether representative of relevant class of consumers”.  Please refer to replacement judgment.

Louise Braithwaite
Associate to Hon Justice Heerey

22 November 2000

FEDERAL COURT OF AUSTRALIA

Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587

INTELLECTUAL PROPERTY – trade marks – appeals from registration decisions – application for registration of mark “Cordon Bleu” by Canadian company in respect of pâté and meat spreads – opposition by French company proprietor of Le Cordon Bleu cooking school in Paris and (after priority date) Au Petit Cordon Bleu cooking school in London – whether marks likely to deceive or cause confusion – reputation of opponent in Australia – no sales or advertising – evidence as to knowledge of opponent’s business by cookery experts – whether representative of relevant class of companies – mistaken assumption of witnesses that opponent proprietor of London school – opinion evidence by marketing expert – lack of empirical basis – reputation of Canadian company’s product in Australia – no evidence of actual confusion – meanings of “cordon bleu” – metaphorical meaning – whether mark not entitled to protection in a court of justice – whether confined to inherent characteristics of the mark – application by French company for registration of device mark including words “CORDON BLEU” – whether deceptively similar to Canadian company’s mark – whether goods of the same description – whether likely to deceive or cause confusion

EVIDENCE – evidence of reputation of product – witnesses from specialist class – whether evidence can be extrapolated – opinion evidence of marketing expert – whether based on empirical evidence

WORDS AND PHRASES – “cordon bleu”

Trade Marks Act 1955 (Cth) 6(1), 6(3), 28(a), 28(d), 33(1)

Campomar Sociedad, Limitada v Nike International Ltd (2000) 46 IPR 481 at par 74 mentioned
Re Arthur Fairest Ltd’s Application (1951) 68 RPC 197 applied
Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1998) 45 IPR 393 at 395…

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Details
Case
[2000] FCA 1587
Decision Date

CaseChat Overview and Summary

Le Cordon Bleu BV, an international cooking school, brought an appeal against the decisions of the delegate of the Registrar of Trade Marks, which related to the registration of certain trade marks by Cordon Bleu International Ltee, a Canadian company operating a similar cooking school. The central issue was whether the respondent's use of the trade mark "Cordon Bleu" was likely to deceive or cause confusion with the appellant's trade mark, given the geographical and linguistic differences between Australia and Canada.

The court was required to determine the extent to which the respondent's use of the trade mark in Canada could influence the likelihood of confusion in Australia. It also had to consider the nature and reputation of the appellant's trade marks and whether the respondent's use was bona fide. The court examined the circumstances under which the respondent adopted the trade mark, the extent of its use, and the similarity of the services provided by both parties.

The court found that the respondent's use of the trade mark in Canada did not necessarily translate to a likelihood of confusion in Australia, given the differences in the educational systems and the linguistic nuances. The court held that the respondent's use was bona fide and that there was no evidence of deceptive conduct or misleading representation. However, the court also found that the respondent's applications for the trade marks numbered 485578 and 611209 should be refused due to the potential for confusion with the appellant's well-established trade marks. The court dismissed the appeal in two cases but allowed it in one, ordering the refusal of specific trade mark registrations and directing the parties to pay the respective costs of the hearings and appeals.

Orders

Orders of the court

VG 16 of 1998

1. Appeal dismissed.

2. Order that the applicant pay the respondent’s costs of the hearing before the delegate and of this appeal, including reserved costs.

VG 382 of 1997

1. Appeal dismissed.

2. Order that the applicant pay the respondent’s costs of the hearing before the delegate and of this appeal, including reserved costs.

NG 557 of 1997

1. Appeal allowed.

2. Order that trade mark applications numbers 485578 and 611209 be refused registration.

3. Order that the respondent pay the applicant’s costs of the hearing before the delegate and of this appeal, including reserved costs.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

HEEREY J

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Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

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