Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd

The case of Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd involved a dispute between Yarra Valley Dairy, the owner of the registered trade mark "PERSIAN FETTA," and Lemnos Foods, which sought the cancellation of the trade mark. The Federal Court was tasked with determining whether the trade mark was capable of distinguishing Yarra Valley’s marinated cheese products from those of other traders. Additionally, the Court considered whether Lemnos Foods had engaged in misleading or deceptive conduct and passing off by representing to the public that their goods were those of Yarra Valley.

The primary legal issues were whether the term "PERSIAN FETTA" was inherently distinctive and not likely to be adopted by other traders for similar cheese products. Yarra Valley argued that the term had a significant degree of inherent adaptability to distinguish, considering the geographic and descriptive aspects of the term. Lemnos Foods, on the other hand, contended that the term did not possess sufficient distinctiveness and was likely to be used by other traders. The Court had to examine the likelihood that other traders would use the term to describe their cheese products and whether it had a significant degree of inherent adaptability.

The Court found that the term "PERSIAN FETTA" did not possess a connotation that would lead other traders to use it for their cheese products. It determined that the term was unlikely to be used by other traders to indicate the geographic origin or the type of cheese. The Court further held that the term was a combination of two terms, similar to "California Syrup of Figs," which did not directly describe the character or quality of the goods. Consequently, the Court concluded that the trade mark was capable of distinguishing Yarra Valley’s products from those of other traders.

The Court also found that Lemnos Foods had engaged in misleading or deceptive conduct and passing off by representing to the public that their goods were those of Yarra Valley. This conclusion led to the cancellation of Yarra Valley’s trade mark registration under the Trade Marks Act 1995 (Cth). The Court emphasised that the failure to give notification under the Act did not deprive it of jurisdiction to grant relief. The Court ordered the parties to confer and submit minutes of orders reflecting these reasons and any agreed orders as to costs by a specified date.