The staples of Naples? Garlic bread and pasta held to be goods "of the same description"

What you need to know

• The use of a composite mark containing the words "LA FAMIGLIA" and "RANA", in relation to filled pasta products, was found to infringe a registration for LA FAMIGLIA covering bread and bread products.
• "LA FAMIGLIA" does not lack distinctiveness, as it merely evokes an Italian feel (and is therefore allusory rather than literally descriptive).
• Garlic bread and filled pasta products are goods "of the same description", because many Australians would consider garlic bread to be a side dish to an Italian meal.

What you need to do

• When adopting a trade mark that contains a mark registered by a third party, carefully consider whether the ordinary Australian consumer would understand your goods and/or services to be related to those covered by the prior registration. 
• Be careful not to place undue weight on technical distinctions between your goods and/or services and those covered by any prior registration (eg based on their historical origins, or their manufacturing process).

Background

Goodman Fielder produces and sells bread products in Australia under the name LA FAMIGLIA.  It owns a number of trade mark registrations for marks that include the words LA FAMIGLIA.  Those registrations originally covered goods in class 30 including bread products, pizza dough and bases, and "foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes".

In late 2017, Conga Foods began importing and selling filled pasta products in Australia under the following mark, and applied to register it in class 30 in respect of various food products (including pasta):

(the LA FAMIGLIA RANA Device)

Conga Foods anticipated that Goodman Fielder's registrations would be an issue for Conga Foods' use of the LA FAMIGLIA RANA Device in Australia.  To clear the way, Conga Foods filed non-use removal actions against Goodman Fielder's registrations.

Goodman Fielder responded by filing an infringement action against Conga Foods in the Federal Court. The non-use removal actions were added to those proceedings and Conga Foods filed a cross-claim alleging that Goodman Fielder's registrations lacked distinctiveness and that Goodman Fielder did not have the requisite intention to use the registrations in relation to some of the goods at their filing dates.

Main issues in dispute

The main issues were:

1. whether Goodman Fielder's registrations should be cancelled because LA FAMIGLIA is not inherently distinctive and did not distinguish Goodman Fielder's goods;
2. alternatively, whether Goodman Fielder's registrations should be limited to "bread and bread products", because Goodman Fielder had not used (nor intended to use, at the time of filing) the marks for the other "foodstuffs" specified including pizza dough and bases, and ready-made meals; and
3. subject to the outcomes of the above, whether the LA FAMIGLIA RANA Device is deceptively similar to Goodman Fielder's registrations for LA FAMIGLIA, and whether pasta is a good "of the same description" as the (remaining) goods covered by Goodman Fielder's registrations. 

Decision

Distinctiveness of LA FAMIGLIA

Conga Foods contended that Australians would readily appreciate (or even simply guess) that "la famiglia" means "the family" in Italian.  It argued that the mark therefore indicates that the goods:

• are produced by a family-owned enterprise; and/or
• are products intended to be consumed and shared with one's family at a family occasion.

Justice Burley accepted that many Australians would understand "la famiglia" to be a reference to "the family".  However, Justice Burley concluded that this would merely evoke an Italian feel, with "whatever connotations or associations that supplies" (which could differ among different consumers).  Justice Burley distinguished the use of "the family" from "family sized” or “family made”, which have more definite and descriptive meanings.

Accordingly, Justice Burley concluded that LA FAMIGLIA does not lack distinctiveness as the words do not directly reference the character or quality of the goods.  Rather, the words have a vague meaning and connote no more than an emotive tendency that the goods may be consumed in a "convivial dining setting a bit like that in which Italian families are imaged to dine when together". 

Cancellation/non-use actions

In respect of Conga Foods' non-use action, Justice Burley found that Goodman Fielder had demonstrated the requisite use and intention to use its marks in relation to "bread and bread products" (and pizza bases and pizza dough as they are sufficiently similar to the "bread products" for which the marks were used).  However, the general foodstuffs category was removed from Goodman Fielder's registrations. 

In respect of Goodman Fielder's infringement action, Justice Burley found that Conga Foods' use of the LA FAMIGLIA RANA Device infringed Goodman Fielder's registrations, because: 

1. the addition of the larger word "RANA" did not sufficiently distinguish the mark from Goodman Fielder's registrations (it would likely be construed as indicating a variant or sub-brand); and
2. Conga Foods' pasta products were goods of the same description as Goodman Fielder's remaining registered goods (including garlic bread).

In finding that Conga Foods' filled pasta products are goods of the same description as garlic bread, Justice Burley noted that:

• "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" (notwithstanding that purists might take exception to that view as garlic bread did not originate in Italy);
• filled fresh pasta and chilled garlic bread are likely to be displayed in close proximity in shops where they are sold; and
• pasta and garlic bread are likely to be promoted together by traders using an Italian theme. This may reinforce a connection between these two products in the minds of consumers.

Next Steps

The decision did not address the damages payable by Conga Foods as a result of the finding of trade mark infringement.  Stay tuned for further updates regarding whether the findings of liability are appealed or the matter proceeds straight to a determination of the quantum of damages.  

Authors: Will Scott, Senior Associate; Nina Fitzgerald, Partner.