Renaud Cointreau v Cordon Bleu International Ltee

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FEDERAL COURT OF AUSTRALIA

Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170

INTELLECTUAL PROPERTY – trade marks – appeals from decision of single Judge dismissing appeal from decisions of delegates of the Registrar of Trade Marks – where delegates of Registrar allowed 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 Au Petit Cordon Bleu Cooking School in London – application by French company for registration of device mark including words “CORDON BLEU” – relevant test for determining whether leave to appeal should be granted – whether a clear prima facie case of error has been shown – procedure the Court should adopt in considering leave application – leave application must be considered before substantive hearing of appeal – extent of reputation necessary to establish “proprietorship” for the purposes of s 40 – extent of reputation necessary to ground a claim, under s 28(a), of deception and confusion – application of test for determining the question of deception or confusion

WORDS AND PHRASES “cordon bleu”

Trade Marks Act 1955 (Cth) s 6(1)(a) and (3), s 28, s 33(1), s 40(1), s 114
Patents Act 1990 (Cth)

Campomar Sociedad, Limitada v Nike International Ltd (2000) 169 ALR 677 considered
Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 applied
Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 followed
Genetics Institute Inc v Kirin-Amgen Inc (1999) 43 IPR 189 applied
Sports Café v The Registrar of Trade Marks [1998] AIPC 91-409 not followed
Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 considered
McCormick & Company Inc v McCormick [2000] FCA 1335 distinguished
Southern Cross Refrigerating Co v The Toowoomba Company Foundry Pty Ltd (1954) 91 CLR 592 considered

RENAUD COINTREAU & CIE v CORDON BLEU INTERNATIONAL LTEE
V 931 OF 2000
and
LE CORDON BLEU BV v CORDON BLEU INTERNATIONAL LTEE
V 932 of 2000

MOORE, TAMBERLIN & GOLDBERG JJ
MELBOURNE
29 AUGUST 2001

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V931 OF 2000

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

RENAUD COINTREAU & CIE
APPELLANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

AND:

  V932 OF 2000

BETWEEN:

LE CORDON BLEU BV
APPELLANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

JUDGES:

MOORE, TAMBERLIN AND GOLDBERG JJ

DATE OF ORDER:

29 AUGUST 2001

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

The application for leave to appeal is dismissed with costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V931 OF 2000

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

RENAUD COINTREAU & CIE
APPELLANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

AND

  V932 OF 2000

BETWEEN:

LE CORDON BLEU BV
APPELLANT

AND:

CORDON BLEU INTERNATIONAL LTEE
RESPONDENT

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Details
Case
[2001] FCA 1170
Decision Date

CaseChat Overview and Summary

Renaud Cointreau and Cordon Bleu International Ltee were parties in a legal dispute concerning the registration of a Canadian mark, with LCB being the appellant in the case. The dispute centred around the likelihood of deception or confusion among consumers due to the use of the mark "cordon bleu." The case was heard in the court of appeal, where the primary judge had previously dismissed an appeal by the French company against the delegate's decision to allow the registration of the Canadian mark. The appeal sought leave to challenge the primary judge's decision, specifically regarding the dismissal of the French company's opposition to the registration.

The central legal issue before the court was whether the use of the Canadian mark "cordon bleu" was likely to deceive or mislead the public, considering the established reputation of the Paris and London Cordon Bleu schools in Australia. The court had to determine if the primary judge erred in his assessment that the Canadian mark would not cause confusion among consumers. Additionally, the court needed to assess the credibility and weight of the evidence presented by the French companies concerning the reputation of their schools in Australia.

The court found that the primary judge's assessment was correct and that there was no likelihood of deception or confusion. The judge did not accept the evidence provided by the French companies as it appeared partisan and lacking in spontaneity. The court concluded that the applicants had not demonstrated any prima facie case of error on the part of the primary judge. As a result, the application for leave to appeal was dismissed, and the original decision upholding the registration of the Canadian mark was upheld. The court also ordered that the application be dismissed with costs.

In summary, the court dismissed the appeal brought by the French companies, confirming the decision that the use of the Canadian mark "cordon bleu" would not deceive or mislead the public. The court upheld the primary judge's findings and found no error in the judgment.

Orders

Orders of the court

The application for leave to appeal is dismissed with costs.

Background

Background to the litigation

By the application in matter V 932 of 2000, LCB seeks leave to appeal from that part of the judgment of the primary Judge dismissing the appeal by the French company from the delegate’s decision which dismissed the opposition by the French company to registration of the Canadian mark.BACKGROUND Subject to one or two points of difference, there is no major dispute between the parties as to the background facts and the summary of the evidence given by his Honour in the course of his judgment. For the purposes of this appeal, the background can be taken from his Honour’s judgment at [18]‑[42], as follows:“The Paris School In the late 19th century the French journalist Marthe Distel commenced publishing a culinary magazine ‘La Cuisinere Cordon Bleu’. In December 1895 Mme Distel offered her subscribers an opportunity to see the great chefs of Paris at work. The first class was held at the Palais Royale on 14 January 1896 and the Paris school was thus established. Its fame spread quickly and by 1905 students were coming from as far away as Japan. According to a report in the London Daily Mail in 1927 describing a visit to the school, it was not unusual for as many as eight different nationalities to be represented in the classes. Mme Distel died in 1939. The Paris school was taken over by Elisabeth Brassart who operated the school continuously, except for a three year break during the Second World War, under the name ‘Le Cordon Bleu’ until it was purchased by RCC in 1984. The school continued to attract students from around the world and in particular the United States and the United Kingdom. Julia Child, the pioneer of television cookery programmes in the United States, trained at the school. In 1954 the Paris school featured in the film ‘Sabrina’ where Audrey Hepburn played a student at the school being introduced to the French culinary arts and Parisian manners and society. Prior to 1987 the Paris school published some eleven magazine titles and twenty‑six books. One of these works ‘La Patisserie Pratique’ by Henri‑Ivan Polpelipras, first published in 1913, had sold more than 1.5 million copies around the world by 1939 and to date some 3.5 million copies. As far as one can gauge from the titles, all of those books were in French as were all of the magazines, with the exception of ‘The Cordon Bleu Monthly Cookery Course’ which was a weekly magazine published in the UK commencing in September 1968 which sold over 100,000 copies per week for 72 weeks. This magazine was reprinted five times through to the mid 1970s. As will be seen, ‘The Cordon Bleu Cookery Course’ was published in Australia but otherwise there was no evidence as to the publication of any of the magazines or books of the Paris school in this country.The London SchoolIn 1933 Rosemary Hume and Dione Lucas, two Englishwomen who had taken courses at the Paris school during the 1920s, opened ‘Au Petit Cordon Bleu Culinary School’ in London. In an affidavit sworn in the present proceedings M. André Cointreau, President and Director of LCB, says that Mesdames Hume and Lucas‘… had received special permission from Marthe Distel to open a school in London under the name Au Petit Cordon Bleu, to primarily cater to the British market’. There is no documentary evidence to support that obviously hearsay assertion. In any case I am not satisfied that at this time the proprietor of the Paris school had or retained any legal or proprietary rights over the London school or that the latter operated under some kind of licence or franchise from the former. If any such agreement or arrangement existed it would presumably be the subject of some documentation. The obvious source of evidence would be RCC which acquired the London school in 1990, but none was produced. It seems inherently likely that Mme Distal was aware of the opening of the London school. The adjective ‘petit’ in its title suggests an affectionate gesture to the proprietors’ alma mater and the new venture being launched with the blessing of Mme Distel. However this was long before brand name licensing became a feature of international commerce. All the evidence suggests that up until 1990 the London school and the Paris school were totally independent of each other in any legal sense. From 1935 the proprietors of the London school also operated a tea shop and the ‘Au Petit Cordon Bleu Restaurant’. The London school closed briefly during the Second World War and during this time, in 1942, Dione Lucas moved to the United States and opened ‘Cordon Bleu Restaurant’ in New York. Again there is no suggestion that any licence or permission of the proprietor of the Paris school was involved. Mrs Lucas went on to write cookery books, give cooking classes and appear on television. There were in evidence copies of the covers and extracts from two of her books. The first is The Cordon Bleu Cook Book (1947). The introduction includes the following:‘This cookbook contains new and exciting French recipes which were formerly available in this country only to Mrs Lucas’ students. The author holds the coveted diploma of the internationally famous L’ecole du Cordon Bleu in Paris, and is well known for her popular television programmes.The blue ribbon quality of the book is to be emphasized. Although its origin is French, as its title indicates, its art and substance have been transplanted to America with complete success. Everybody knows that the French consider cooking a creative art and that French food is planned to bring delight to the eye and warmth to the heart, as well as pleasure to the palettes of those who eat it. With Dione Lucas’ recipes, this art can be practiced to its fullest expression by American cooks using American ingredients.’…The second, published in 1953, is entitled: ‘Au Petit Cordon Bleu a collection of recipes by Dione Lucas and Rosemary Hume’.Mrs Lucas undertook extensive foreign travel to promote her books and visited Australia for this purpose in the late 1950s and early 1960s. It does not appear that her books were published by the Paris school, or indeed the London school, although the 1953 book of course bears the title of the latter. The expression ‘cordon bleu’ appears to be a reference to a style of French cooking or perhaps French cooking in general. There is a reference to the Paris school, but only as a matter of the author’s qualification.The London school reopened in 1945. In 1947 Rosemary Hume was joined by Constance Spry who was an expert in flowers and garden design. The two incorporated a company Constance Spry and Cordon Bleu Limited which ran the London school under the name ‘The Cordon Bleu School of Cookery’. Later a residential ‘Cordon Bleu’ cookery school was established near Windsor. In 1953 the London school had the distinction of being asked by Queen Elizabeth II to prepare luncheon for guests attending the Coronation. Rosemary Hume was awarded an MBE in 1970.Rosemary Hume and Muriel Downs wrote a cook book entitled ‘Cordon Bleu Cookery’ published by Penguin in 1963 which was sold in Australia. On what appears to be the back cover appears the following:‘The term Cordon Bleu has come to be accepted as the hallmark of culinary perfection – the very highest standard of European cooking with a French accent. This Penguin cookery book, prepared by the co‑principals of the English Cordon Bleu school, needs little other recommendation.’In 1968 and 1969 the London school published the seventy-two part weekly magazine entitled ‘Cordon Bleu Monthly Cookery Course’ to which reference has already been made. During the 1970s Muriel Downs made a promotional tour of Australia.Acquisition of Paris and London SchoolsIn 1984 RCC purchased the Paris school, including its trade marks and goodwill, from Elisabeth Brassart. In 1985 RCC first offered for sale in France food products, homewares and chefs’ equipment under ‘Le Cordon Bleu’ trade marks. In subsequent years it appointed distributors overseas in a number of countries including Australia. However the first export of ‘Le Cordon Bleu’ products to this country did not occur until 1991. In May 1990 RCC purchased the London school including its business, goodwill and trade marks. Subsequently ‘Le Cordon Bleu’ schools were established in Ottawa, Tokyo, Sydney, Brasilia and Mexico City as well as in five cities in the United States.The business of RCC was assigned to LCB in 1990.Australian studentsBetween 1981 and 1991 52 Australians attended the Paris school. The evidence does not indicate how many of that number attended before the priority dates. On a pro rata basis there would have been about 36. There is no evidence as to the number of Australians attending the London school.Reputation of the Paris and London Schools in AustraliaThe French companies called a number of witnesses on this issue. They included professional cooking instructors and writers on cookery and an experienced amateur cook as well as a marketing expert. In general terms there was evidence of the witnesses’ awareness of either the Paris or London school or both, and of reference to them in Australian publications. There was no evidence of sales or advertising by the French companies in Australia before the priority dates.Jillian Adams is a cookery teacher. She holds the degree of Bachelor of Arts and a Diploma of Education. She has spent most of her working life as an educator in cookery. She has worked as a chef in Australia and overseas. She has been employed in the food hygiene industry. In 1993 she opened a cafe in Williamstown. In 1996 she established a business ‘Serious Cooks’ which runs cookery classes and sells cook books and kitchen products. She is currently employed as a vocational education training scheme teacher by a private training institution. In the early 1970s she developed a keen interest in cooking, especially French cooking. She deposed:‘In the early 1970s, I was aware that a company called Le Cordon Bleu operated French cooking schools in London and in Paris.’ (As has been seen, this was not in fact correct.)In the early to mid 1970s she recalls seeing the magazine ‘The Cordon Bleu Cookery Course’ available for sale in Victorian newsagencies. She bought about twenty of the series. She also bought a book called ‘The Cordon Bleu Cook Book’. In the late 1970s she decided to study French cooking and enquired about courses available. At the suggestion of a cookery teacher in Melbourne, Ms Diane Holouige, she decided to go to the Paris school. She telephoned the French Embassy to find out more information and was told that it offered various types of courses which were conducted in French. She enrolled at the Paris school in 1979 and completed a two month advanced cooking course. The recipes taught were very traditional and the students were required to prepare food by hand without the aid of electrical appliances. She stayed on in Paris for about four months, then went to England and worked as a cook for several employers. She returned to Australia on a date which does not emerge from the evidence. During her career she has used her attendance at the Paris school as a marketing tool. For example she prepared a course for the Sandy Beach Centre at Sandringham, the brochure for which refers to her studying at the Paris school. In cross-examination she said that at the time she went to the Paris school in 1979 she was aware of the London school and agreed that there was ‘a separate sort of reputation’ in her mind between the two. As she put it‘The London school had a reputation as a kind of finishing school for London girls, whereas the French school had a reputation for classical French cooking.’She said she had ‘no interest in the London school at all’. She agreed that it was a ‘source of particular pride’ that she went to the Paris school as opposed to the London school.Suzanne Gibbs is the daughter of the very well known cooking writer Margaret Fulton, who also gave evidence. In 1969 and 1970 Mrs Gibbs, on her mother’s recommendation, studied at the London school. For eighteen months thereafter she was head sweet and pastry chef at the Cordon Bleu Restaurant in London. She returned to Australia in 1972 and since that time has worked as a cookery and food writer rather than as a chef. She has written for Women’s Day, Australian Home Beautiful, The Sunday Telegraph and New Idea. Her association with the last mentioned began in 1982 and lasted for eighteen years. She has also written nine cook books all of which have been published in Australia, commencing with The French Cook Book (1972). This was particularly successful. She says the attendance at the London school is used as a marketing tool by many people in the food industry. She has mentioned the London school in several of her publications, including The French Cook Book. In cross-examination she said that when she first went to London she was aware that the Paris school existed and that it had a very high reputation, but her French was not sufficiently good so she chose the London school. She regarded both of them as teaching ‘the Cordon Bleu style of cookery’ although there was some difference in methods of instruction, for example in the London school the students formed small groups. She distinguished between ‘French cooking’ and ‘Cordon Bleu cooking’ saying ‘you’re learning the classic techniques’ in the latter. Forms of French cooking other than ‘Cordon Bleu cooking’ were possibly more modern and ‘probably more provincial’.Mrs Margaret Fulton OAM has had a distinguished career in food writing extending over fifty years. She has written for most of the major Australian women’s magazines, including Woman, Woman’s Day and New Idea. A regular column with the lastmentioned magazine began twenty‑one years ago and continues. Her first cook book The Margaret Fulton Cook Book was published in 1968 and sold over 100,000 copies at the first print run. In the late 1970s, together with her daughter Mrs Gibbs, she wrote a thirty‑nine part series entitled ‘The Margaret Fulton Cookery Course’ which was successfully sold in newsagents and later published as a best selling book. In 1983 she published ‘The Encyclopaedia of Food and Cookery’. She received the Medal of the Order of Australia in 1983 in recognition of her contribution to food journalism in Australia.Since the start of her career in the early 1960s she has been aware that ‘the Cordon Bleu schools of London and Paris have enjoyed an excellent reputation … amongst people in the cooking industry in Australia’. She has come into contact with a large number of Australian food writers, chefs, restaurateurs and others in the food industry who have told her that ‘they have a high regard for the Cordon Bleu cookery schools’. She deposed:‘In particular, I note that during the 1960s, 1970s and 1980s Australians aspiring to learn the best cooking techniques considered the Paris and London Cordon Bleu cookery schools were the best place to learn those techniques. These schools taught the art of ‘blue ribbon’ cookery, or the highest level of cookery techniques.’She encouraged her daughter Mrs Gibbs to attend the London school because she had heard that it adopted very good teaching methods and that its students appeared to be in demand for work after graduation. In the mid 1970s Mrs Fulton travelled to London to look at English trends in cookery. She decided to visit the London school because it had been the subject of many reports in the Australia media including newspapers and womens magazines and Cordon Bleu cook books that were used by cooks in Australia at that time.Included in the collection of Mrs Fulton were various cordon bleu publications, including the Cordon Bleu Cookery Course, a series of magazines each covering a different aspect of cooking. The series was very popular among home cooks during the 1970’s.”

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In addition, his Honour did not accept the evidence of the French companies’ witnesses due to what his Honour described, at [96], its “air of partisanship and lack of spontaneity”. Given these circumstances, we are satisfied that his Honour did not err in deciding that use of the Canadian mark was not likely to deceive or mislead having regard to the ways in which the words “cordon bleu” would be read by an ordinary person. Again, no prima facie case of error has been demonstrated.CONCLUSION For the above reasons, we do not grant leave to appeal in this matter because the applicants have not shown any prima facie case of error on the part of his Honour in the judgment under appeal. Indeed, no error has been demonstrated at all. The application should be dismissed with costs.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.