13 March 2010

Luscious lips

The 'luscious lips' trade mark judgment last week recalls hours swinging on the Hills Hoist with a mouthful of jelly teeth while pretending to be a vampire or merely a fruit bat.

In Nature's Blend Pty Ltd (ACN 126 406 488) v Nestle Australia Ltd (ACN 000 011 316) [2010] FCA 198 Sundberg J of the Federal Court considered the Trade Marks Act 1995 (Cth) and Trade Practices Act 1974 (Cth) in connexion with the claim by Nature's Blend - a small confectionary manufacturer - that Nestlé had infringed its registered trade mark for 'Luscious Lips'.

Nature's Blend, initially selling "veterinary, animal and medical products", had expanded into confectionary. It was using the registered mark - satisfying s 17 of the Trade Marks Act - for chocolates as goods under class 30 of the Act. Nestlé, having acquired the Allens confectionary business, sold a product - mixed confectionary, including lip-shaped jellies - by the name of Retro Party Mix from 2007 to 2009. The packaging for that product referred to "luscious Lips" -
That's right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including ... cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries.
The product was elsewhere promoted as "All Delicious! All FUN! 99% Fat Free!". How can you go past something that's both FUN and fat free (and presumably didn't involve the evisceration of kittens, death to innocent tuna or the demise of a rainforest or two)?

Nature's Blend argued that Nestlé was liable in relation to trade mark infringement under the Act, the tort of passing off, and misleading and deceptive conduct under the Trade Practices Act. It submitted that
submit that the phrase 'luscious Lips' is not a phrase which ordinarily and naturally describes confectionary and is 'in no sense laudatory of confectionary, whether in relation to the shape, appearance, or taste', nor does it refer to the character or quality of confectionary. ... the phrase is inherently distinctive and newly-coined ... in relation to confectionary.
Sundberg J noted that
The words 'luscious Lips' are substantially identical with or deceptively similar to the 'LUSCIOUS LIPS' mark. However this in itself is not sufficient to infringe; the context is all-important.
After discussing the 'Kettle Chips' and other cases he stated that
When considering the evidence on use as a whole, I am not satisfied that the there has been 'use as a trade mark' for the following reasons.

First, the word 'luscious' is descriptive and is intended to convey to consumers a laudatory, perhaps even humorous, description of such of the respondent's confectionary contained in the Retro Party Mix Product which are shaped as lips, in the same way that the expression 'cool Cola Bottles' or 'yummy Honey flavoured Bears' provides a laudatory description of confectionary in the product that are shaped like cola bottles and bears respectively. It may be the case that some consumers would not read the marketing narration on the back of the pack at all. However, for those consumers who took the time to do so, my impression is that they would have taken 'luscious Lips' as essentially a humorous way to describe the products contents, not as a badge of origin. See Johnson & Johnson Australia Pty Limited [1991] FCA 310; 30 FCR 326.

Second, the effect of the words 'luscious Lips' on consumers is diluted by the prominence of the well known mark 'ALLEN'S' on both the front and back of the packaging, along with the mark 'NESTLE' appearing on the back of the packaging. These two registered marks perform the role of distinguishing the respondent's confectionary from that of others. In addition, the product name 'RETRO PARTY MIX' appears in large font on the front and the back of the product. I accept that, in some circumstances, there may be trade mark use despite other marks appearing on the product: see Anheuser-Busch, Inc [2002] FCA 390; 56 IPR 182. However, in my view, this case is distinguishable from that type of case. In Anheuser-Busch, Inc [2002] FCA 390; 56 IPR 182 the infringing mark 'Budweiser' was the most prominent word on the label. That is not the case here. In this case, the registered marks 'ALLEN'S', and to a lesser extent 'NESTLE', are prominent especially when contrasted with the positioning and use of the words 'luscious Lips'. See Chocolaterie Guylian NV 258 ALR 545.
Guylian was noted here last year year.

In essence, Nestlé's use of the words in the particular setting setting was not as a trade mark and did not infringe the Nature's Blend mark: its use of 'luscious' was descriptive (with consumers likely to regard the expression as laudatory - as in tasty, delicious, yummo - and humorous) and the effect of the phrase was diluted by the prominence of the Nestlé, Allens and RETRO PARTY MIX marks. Interestingly, Sundberg J was prepatred to find that Nestlé was using the phrase as a good faith description, given the claim by Nestlé about development of the packaging and its unawareness of the Nature's Blend mark.

12 March 2010

ALRC Secrecy Report

The Australian Law Reform Commission (ALRC) has released its report on Secrecy Laws and Open Government in Australia.

The report reflects a 15-month inquiry. It features 61 recommendations for reform, with a new principle-based framework to "reinforce open and accountable government while ensuring adequate protection for Commonwealth information that should legitimately be kept confidential". The ALRC comments that -
The management of information can be conceived of as a spectrum, with openness of information and protection of information at opposite ends. Secrecy provisions are situated at different points on the spectrum—at times emphasising protection; at times facilitating information handling, sharing and disclosure.
The 642 page report is a major study that identified 506 secrecy provisions in 176 items of Commonwealth legislation, including 358 criminal secrecy offences.

The ALRC comments on "considerable inconsistency in the framing and elements of specific secrecy provisions, reflecting their introduction at different times, using different language and often with widely ranging penalties". It also notes the catch-all nature of some secrecy provisions and over-reliance on criminal sanctions.

The report indicates that administrative and disciplinary frameworks should play the central role in ensuring that government information is handled appropriately. "In most cases, unauthorised disclosure of Commonwealth information can be dealt with through better education and training, improved information-handling practices and, where necessary, public service disciplinary procedures."

It accordingly suggests a "winding back" of reliance on criminal sanctions for unauthorised disclosure of information, including repeal of ss 70 and 79(3) of the Crimes Act 1914 (Cth) - "Criminal sanctions should only be imposed where the unauthorised release of information has caused, or is likely or intended to cause, harm to identified public interests."

The ALRC recommends that every Australian Government agency should develop and publish information-handling policies and guidelines to clarify the application of secrecy laws. It also recommends a role for the proposed new Office of the Information Commissioner to provide independent oversight of the manner in which the agencies discharge their information-handling responsibilities.

07 March 2010

Race to the bottom, emoting all the way

Students in my intellectual property class yesterday had fun joking about Adelaide water and geographic indications. Perhaps Adelaide water does indeed have special properties, which might explain the latest election campaign strangeness in South Australia.

Recent posts in this blog have questioned the rhetoric used by the current SA Attorney-General, including claims that he is supported by all "decent people" - a category that apparently doesn't include the SA Supreme Court and much of the legal profession. Mr Atkinson is warring with outlaw motorcycle gangs (aka "organised crime") and gamers (apparently more threatening than the OMGs), and has had trouble with the notion of an implied right of political communication.

The SA Premier, according to the online offshoot of the dominant Adelaide newspaper (the same offshoot damned by the Attorney-General as a "sewer"), promises a revolution in the criminal justice system if his Government is re-elected.
Premier Mike Rann yesterday said he would change the law to allow juries "in appropriate cases" to hear evidence of relevant prior criminal behaviour and offending by the accused.

"Serious criminals like those who are violent, child-sex offenders, or internet predators, should have to account to a court for their actions and previous behaviour," Mr Rann said. ...

Labor would amend the 1921 Evidence Act to allow juries to hear similar fact evidence, propensity evidence and evidence of uncharged acts. Mr Rann said if re-elected, he would also tighten sentencing legislation to take away the option of suspended sentences for serious, violent and recidivist offenders.
So much for the notion that people should not be recurrently punished for the same offence.

In a nice piece of hype, unsubstantiated by reference to statistics, the Premier is reported as stating that "There is an unacceptably high risk of child-sex offenders repeating their crimes after release".

The meaning of that statement is unclear. From some perspectives any risk - no matter how remote - is too high and it is imperative to engage in preemptive social prophylaxis, such as the surgical castration of offenders discussed in Richard Wetzell's Inventing The Criminal: A History of German Criminology, 1880-1945 (Chapel Hill: University of North Carolina Press 2000) or extra-judicial permanent detention of every offender.

Lest the Government's 'war on crime' credentials be in doubt, the Premier promises extended proceeds of crime penalties -
"These laws will allow for the confiscation of a convicted offender's property, whether or not it is lawfully acquired and whether or not there is any level of proof about the source of any property at all," Mr Rann said.
Let's not bother about notions of proof or justice when a headline is available.

Details of the Government's new justice platform are, as yet, unavailable. The latest media release states that -
The Rann Labor Government is demanding to know how the Liberal Party will pay for its promise of "building more prisons" by 2014 – or - by 2018.

The Liberal prisons policy announcement today shows both dates. But no money. Correctional Services Minister Tom Koutsantonis says the Liberals' 10-page policy, does not promise a single new dollar for adult prisons.

This is yet another sloppily-prepared Liberal policy without any costings – an all-too familiar theme that shows Isobel Redmond is not ready for Government.

South Australians deserve better than this kind of dodgy ducking and weaving over costings.

In the absence of new prisons, the Liberals will have to release hundreds of prisoners back out into the community if it wants to reach its target of reducing the prison population down to "the national average".

This is nothing but a soft-on-crime, soft-on-criminals policy.
Beware, it seems ... hordes of drooling axe-murderers will shortly arrive (modems balanced on the back of their Harleys?) to eat your kiddies and defenestrate the family cockatoo or budgie.

The Opposition (in a policy statement decorated with razor-wire and searchlights) meanwhile promises that -
A Redmond Liberal Government will put an end to the premature release of offenders from prison who have not completed rehabilitation – a practice that has flourished under the Rann Government.