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Unilever Australia Ltd v Karounos

Unilever Australia Ltd v Karounos

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FEDERAL COURT OF AUSTRALIA
Unilever Aust Ltd v Karounos [2001] FCA 1132
TRADE MARKS – application to remove or cancel registration of word mark “REAL” and word and device mark “Real Fish’n Chips” – word “real” used by Unilever on product packaging and in advertising material – respondent alleged Unilever by its conduct infringed both marks – whether Unilever a person aggrieved – whether word “real” capable of distinguishing goods and services – whether marks should be removed for non-use – whether use by Unilever was use as a trade mark
Trade Marks Act 1995 (Cth) ss 7, 17, 41, 88(1)(a), 88(2)(a), 92(3), 92(4)(b)(i), 100(1), 100(3)(c)
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 followed
Continental Liqueurs Pty Ltd v GF Heublein and Bro Inc (1960) 103 CLR 422 cited
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 cited
Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 followed
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 followed
Pepsico Ausralia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 at 182 cited
Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 discussed
Registrar of Trade Marks v Muller (1980) 54 ALJR 513 cited
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 cited
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257 cited
Eastman Photographic Materials Co Ltd v Comptroller-General of Patents, Designs, and Trade-Marks (“Solio” case) [1898] AC 571 cited
Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 followed
Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254 cited
Buying Systems (Australia) Pty Ltd v Studio Srl (1995) 30 IPR 517 distinguished
UNILEVER AUSTRALIA LIMITED v GEORGE KAROUNOS and SABRE INTERNATIONAL LIMITED
NG 732 OF 1998
HILL J
17 AUGUST 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 732 OF 1998

BETWEEN:

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828)
APPLICANT/CROSS-RESPONDENT

AND:

GEORGE KAROUNOS
SECOND RESPONDENT/SECOND CROSS-CLAIMANT

SABRE INTERNATIONAL LIMITED
THIRD RESPONDENT/THIRD CROSS-CLAIMANT

JUDGE:

HILL J

DATE OF ORDER:

17 AUGUST 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.   The Register of Trade Marks be rectified by cancelling the registration of the word mark “REAL”.
2.   The Registrar of Trade Marks remove the word and device mark “Real Fish’n Chips” from the Register of Trade Marks in respect of goods and services in class 16.
3.   Should Unilever wish to submit that use of the word and device mark did not relate to any or all of classes 29, 30, 35 and 42, leave is given to file and serve submissions to that effect within 14 days of the date of these orders.
4.   The cross-claims brought by Mr Karounos and Sabre International Limited be dismissed.
5.   Mr Karounos pay the costs of Unilever.
THE…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2001] FCA 1132
Decision Date: 17 AUGUST 2001

CaseChat Overview and Summary

Unilever Australia Ltd brought an action against Karounos and Sabre International Limited seeking cancellation of the registration of the word mark “REAL” and the word and device mark “Real Fish’n Chips” on the basis that the marks were deceptively similar to its registered marks and that the mark “REAL” was incapable of distinguishing the goods and services of the registered proprietor. Karounos and Sabre International Limited brought cross-claims against Unilever for injunctive relief and damages for alleged passing off. The case was heard in the Federal Court of Australia. The primary legal issues that the court was required to decide were whether the mark “REAL” was capable of distinguishing the goods and services of the registered proprietor, and whether Unilever’s use of the word “real” in relation to food and drink products infringed the registered marks. The court found that the word “real” was a descriptive term used in relation to food and drink products and was incapable of distinguishing the goods and services of the registered proprietor. The court also found that Unilever’s use of the word “real” did not infringe the registered marks as they were not deceptively similar. The cross-claims brought by Karounos and Sabre International Limited were dismissed. The court ordered that the registration of the word mark “REAL” and the word and device mark “Real Fish’n Chips” be cancelled, and that Unilever pay the costs of Karounos.

Orders

Orders of the court

1. The Register of Trade Marks be rectified by cancelling the registration of the word mark “REAL”.

2. The Registrar of Trade Marks remove the word and device mark “Real Fish’n Chips” from the Register of Trade Marks in respect of goods and services in class 16.

3. Should Unilever wish to submit that use of the word and device mark did not relate to any or all of classes 29, 30, 35 and 42, leave is given to file and serve submissions to that effect within 14 days of the date of these orders.

4. The cross-claims brought by Mr Karounos and Sabre International Limited be dismissed.

5. Mr Karounos pay the costs of Unilever.

THE COURT DECLARES THAT:

1. Unilever’s use of the word “real” does not infringe the word and device mark “Real Fish’n Chips”.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The language of s 41, which has been drafted to guide the Registrar of Trade Marks in admitting a mark to registration, requires some adaptation when it falls to be considered in the context of the exercise of the Court’s power under s 88(1) to cancel a registration already effected. The Court is required to consider the question as at the time of registration and determine whether as at that time it was proper for the Registrar to admit the mark to the Register. Facts subsequent to the date of registration will be irrelevant. Hence, in applying the tests under s 41 in the context of an application made under s 88(1) the question whether the mark distinguishes (whether inherently, by reason of use, or by reason of a combination of both and any other circumstances) the goods or services of the registered proprietor of the mark will be determined by the Court as at the date of registration.The evidence It was the primary case for Unilever that the word “real” was a descriptor used in relation to food or beverages and as such incapable of becoming distinctive of goods and services, particularly with respect to food related products. In support of this case, Unilever tendered the packaging of several food and drink products manufactured and sold in Australia by companies other than Unilever which featured the word “real”. Examples included:· Pascall nougat confectionery: “with real fruit juice”.· Mun-Chee prawn crackers: “made with real prawns”.· Bon Gateaux cheese cake: “fresh dairy cream topping. Real fruit”.· Kraft macaroni cheese: “made with real cheese”.· Big Sister glace pineapple: “real pineapple”.· Uncle Tobys fruit bars: “real fruit bars”; “made with real fruit”; “lots of nutritious real fruit”.· Campbell’s cream of chicken & corn soup: “real chicken pieces”.· Best Foods mayonnaise: “real mayonaise”.· Sara Lee fruit muffins: “real fruit muffins”. Unilever sought also to rely on an affidavit of a Mr Powell, a media research analyst with Brainwaves Information Services (“Brainwaves”). Mr Powell had conducted a search of the Brainwaves database in 1999 for print advertisements published in 1994 and 1995 for food related products in which the word “real” appeared, either in the product name or advertising tag line. His search revealed a number of advertisements including the word “real”. Examples are:· New Zealand natural ice cream: “real chocolate ecstacy”; “you can have it for real”; “real jaffa orange”; “real coffee cream”.· Campbell’s (beef, chicken, fish and vegetable) stock: “real stock”.· Mainland cheese: “real cheese slices”.· Ranieri ice cream: “the renaissance of real ice cream”.· Bega cheese: “a real vintage light”.· Farm House milk: “real full cream milk”; “the real cows milk”.· Carnation evaporated milk: “taste of real cream”.· Moccona: “for lovers of real coffee”.Although his database included the Adelaide Advertiser it had failed to locate use of the word “real” in the context of “Real Fish’n Chips” or, indeed, any use of either mark by RFC Nominees or the respondents.

Decision

Reasons for decision

HILL J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HILL J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 732 OF 1998

BETWEEN:	UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) APPLICANT/CROSS-RESPONDENT
AND:	GEORGE KAROUNOS SECOND RESPONDENT/SECOND CROSS-CLAIMANT SABRE INTERNATIONAL LIMITED THIRD RESPONDENT/THIRD CROSS-CLAIMANT
JUDGE:	HILL J
DATE OF ORDER:	17 AUGUST 2001
WHERE MADE:	SYDNEY