Australia: What frozen berries could now mean to trade mark owners

HG IP Alert: 10 March 2015

21 cases of the hepatitis A virus in Australia have been linked to the consumption of Nanna's branded frozen mixed berries imported from China.

Since the scandal, Agriculture Minister Barnaby Joyce has received 220,000 emails from concerned citizens petitioning for change to our current country of origin food labelling laws.

According to a survey conducted by the Australian Consumer's Association, Choice, these changes are much needed. Of more than 700 people surveyed, barely one in 10 were able to correctly identify the meaning of the term "Made in Australia". A more encouraging one in four was able to correctly identify the meaning of the term "Product of Australia".

Taking swift action in response to the call for change, Minister Joyce will, together with Industry Minister Ian Macfarlane, present a labelling reform proposal to Cabinet by the end of March. In this Alert, Partner Hayden Delaney and Associate Hayley Tarr explore some possible impacts of the reform proposal.

Key "take away" message

Trade mark owners should use caution when adopting marks including a map of Australia, and the phrases "Made in Australia", "Grown in Australia", "Product of Australia" or similar. Such marks should not be used in relation to products which cause consumers to be misled or confused, such as those with shifting targets based on evolving food labelling laws, which force trade mark owners to reconsider and modify the use of their marks over time.

Possible impact for marks using a map of Australia

Recently accepted Australian trade mark application number 1644267 highlights a cause for confusion.

This mark complies with existing laws which state that the words "Made in Australia" mean that the product was made (not just packed) in Australia, and that at least 50 percent of the cost to produce the product was incurred in Australia. In reality, the ingredients of this product are 100 percent Belgian, implying that a product with a "Made in Australia" label won't necessarily contain Australian ingredients.

Suggestions for the reform proposal have included a mandatory visual system for country of origin labelling, which would indicate how much of a food product is comprised of Australian grown produce. An example of this system can be viewed here.

There are currently 540 pending and registered trade marks on the Australian trade marks database for food and beverages (in classes 29, 30, 31 and 32) which include a map of Australia. But what will this new proposed labelling system mean for these marks? Could the inclusion of the Australian flag mean that they are now misleading and deceptive?

Possible impact for marks using the words "Made in Australia", "Grown in Australia" or "Product of Australia"

Prior to the commencement of the Trade Marks Act 1995, it was common for marks using the words "Made in Australia" to be registered with an endorsement which read, "It is a condition of registration that the mark will only be used in relation to goods manufactured in Australia." No such endorsements are used anymore.

Today, without endorsements, third parties would need to:

  • Oppose applications for registration of such marks, on the basis that the marks are contrary to law (namely, consumer protection laws) under s 42, and/or misleading or deceptive under s 43, when used in relation to goods which are not made, grown or produced in Australia (adducing evidence that the applicant is intending to use or currently using the mark in relation to goods which are not made, grown or produced in Australia, which evidence would not be available to the examiner during examination of the mark);
  • Apply to a court for rectification of the register, on the basis of ss 42 and/or 43, to have such marks which are already registered cancelled or removed; or
  • Notify the ACCC of the applicant's misleading or deceptive conduct.

On the other hand, s 86 of the Act allows third parties to apply for rectification of the register to have such marks which are already registered cancelled or removed on the ground that a condition or limitation entered in the register has been contravened. This means that endorsements add another avenue via which third parties can police marks which are misleading. Should such endorsements be re-introduced?

Even if endorsements were reintroduced (or limitations built into the specification of goods themselves used), brand owners should still be cautious. If "Made in Australia" has a particular meaning, and a legislative review changes that meaning, then any trade mark comprising that phrase can only be used in relation to goods which comply with the new meaning. This may be an onerous requirement for some trade mark owners, depending on how drastic the changes are.

Other food for thought

What about trade marks that do not directly reference Australia, but reference a State or city in Australia?

Examples of these include:

  • Australian trade mark registration number 1099766, for puddings; and
  • Australian trade mark registration number 1637725, for a range of dairy products.

Do these marks cleverly circumvent country of origin labelling laws, or (given that they imply the products are made, grown or produced in Australia) will they also be affected by the new country of origin food labelling laws?

The same question must be asked of marks which use variations of the phrases "Made in Australia", "Grown in Australia", or "Product of Australia", as many of these marks are confusing. For example, trade mark number 1066424 covers meat extracts, jellies, and fruit sauces in class 29. All of these goods are processed goods. According to the ACCC, the term "Grown In" which is arguably akin to the trade mark "AussieGrown", should be used in relation to fresh food, not processed food. How is this trade mark, then, to be interpreted when used in relation to processed food?

© HopgoodGanim Lawyers

Award-winning law firm HopgoodGanim offers commercially-focused advice, coupled with reliable and responsive service, to clients throughout Australia and across international borders.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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