The Federal Court decision of Yarra Valley Dairy Pty Ltd v
Lemnos Foods Pty Ltd  FCA 1367 is a timely reminder of
how important it is to choose and use trade marks that are
Trade mark applicants are relying more on submitting extensive
evidence of use to get their trade marks registered rather than
focusing on creating distinctive and original trade marks to market
their goods and services.
As a brand owner, it is very important to be aware that just
because you use a trade mark in connection with your goods or
services, it does not necessarily mean that such use will
distinguish your goods and services from those of other
In 1995, a Victorian farm-based cheese maker, Yarra Valley Dairy
sold its first marinated cheese product under the brand
'Persian Fetta' in a distinctive paint tin. Five years
later, on 21 March 2000, it applied to register the words
'Persian Fetta' as a trade mark for 'dairy products
Yarra Valley Dairy gathered and submitted a substantial amount
of evidence to the trade mark examiner to establish its use of the
'Persian Fetta' brand in Australia. It also submitted
evidence to establish its reputation in the brand.
The mark was subsequently registered.
Yarra Valley Dairy licensed the use of the 'Persian
Fetta' brand to National Foods in 2002. National Foods
produced a product known as 'South Cape Persian Fetta'
that was sold in various supermarkets including Coles from
In 2009, Coles decided to replace the South Cape Persian Fetta
product with 'Lemnos Persian Marinated Cheese' produced
by Lemnos Foods. Yarra Valley sought relief against Lemnos Foods
contraventions of the former Trade Practices Act 1974
(Cth), now referred to as the Consumer and Competition Act
passing off; and
trade mark infringement because Lemnos was using the brand
'Persian Fetta' and 'Persian Marinated
Cheese' in connection with its cheese products.
Justice Middleton found that in relation to the contraventions
of the former Trade Practices Act and passing off it was
consumers would be misled by the packaging of the Lemnos
Persian Marinated Cheese goods; and
that consumers would associate the Lemnos cheese goods with
Yarra Valley cheese products.
In response to the trade mark infringement claim, Lemnos argued
in its cross claim that Yarra Valley Dairy's trade mark for
'Persian Fetta' should be cancelled on the basis that
it was not capable of distinguishing Yarra Valley Dairy's
cheese. Lemnos submitted that the name 'Persian Fetta'
would help consumers identify what region the fetta was from.
To be successful, Lemnos had to establish that Yarra Valley
Dairy's 'Persian Fetta' trade mark was
descriptive and was not capable of distinguishing Yarra Valley
Dairy's goods from the goods of other traders.
Justice Middelton considered the following evidence:
'there is a style or quality of fetta which originates from
or is associated with the geographical location then known as
other cheese makers wishing to trade in Australia may want to
use the word 'Persia' or 'Persian' on or in
connection with fetta, either to signify the style of cheese or to
indicate that their cheese comes from the region formerly known as
Persia and these traders 'would have a legitimate interest in
using both the geographical and style name to identify their
'there is a likelihood of other traders legitimately
wishing to use in Australia the phrase 'Persian Fetta'
in relation to cheese products in appropriate
His Honour held that 'it is the Yarra Valley Dairy name and
logo on Yarra Valley's Persian Fetta product that does the
work of identifying the commercial source or trade origin of Yarra
Valley's product and not the words 'Persian
Lemnos was successful in its counter claim for removal of the
Persian Fetta word mark and therefore it was not necessary for the
court to consider Yarra Valley Dairy's claim for trade mark
Important Points to Note When Choosing a Brand
For trade mark applicants it is very important:
not to equate use of a trade mark with distinctiveness;
to choose an original and distinctive brand name to maximise
to choose a trade mark that does not by itself, denote the
kind, quality, intended purpose or value of the goods or services
and that does not contain common surnames or geographical names.
Such trade marks should only be filed if they contain other
distinctive features such as a logo and other distinctive
to conduct searches on various public registers such as the
Trade Marks Register, ASIC and internet search engines to determine
whether your brand name is available for trade mark
If you would like further information about registering your
trade marks please contact Alexia Marinos.
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