Goodman Fielder Pte Ltd v Conga Foods Pty Ltd ([2020] FCA 1808) [La Famiglia case]

Author: Jasmine Burrows, Progressive Legal

Facts

The first applicant is Goodman Fielder Pte Ltd (Goodman), is an Australian manufacturer, marketer and distributor of bread, small goods, dairy products, margarine, oil, dressings and various food ingredients.  

The second applicant is La Famiglia Fine Foods Pty Ltd (LFFF), a family owned business that produces and sells garlic bread, herb bread, restaurant style pan bread and crusty garlic rolls.  

Goodman is the company that owns LFFF.  

The first respondent is Conga Foods Pty Ltd (Conga), is a family owned company in the grocery industry.  

The second respondent is Pastificio Rana Spa (Rana), an Italian company that makes and distributes fresh pasta.  

Conga imports pasta products into Australia from Rana.  

Over time, the applicants registered several trade marks in class 30 which consisted of or included the words LA FAMIGLIA. The trade marks include: 

LA FAMIGLIA TAKE AND BAKE and LA FAMIGLIA TAKE ‘N’ BAKE
LA FAMIGLIA
LA FAMIGLIA KITCHEN

The respondents registered the Giovanni Rana mark (see below) in Class 29, 30 and 43. They then applied for the registration of the Rana mark (see below) in Class 30.  

Giovanni Rana mark	Rana mark

The applicants claimed that the respondents had infringed their registered trade marks, ‘LA FAMIGLIA’ and ‘LA FAMIGLIA KITCHEN’ under class 30.  

The respondents denied infringement. They also cross claimed and alleged that the applicant’s registered trade marks lacked distinctiveness (s 44 of the Trade Marks Act 1995 (Cth)) and that they should be removed for non-use or lack of intention to use (s 59 and s 92(4) of the Trade Marks Act 1995 (Cth)). 

Issues

Whether the Rana mark was deceptively similar to the ‘LA FAMIGLIA’ mark and ‘LA FAMIGLIA KITCHEN’ mark. 

Whether the applicant’s trade marks were sufficiently distinctive.  

Whether there was actual use or intention to use the trade marks by the applicants.  

Decision

The Rana mark was deceptively similar to the ‘LA FAMIGLIA’ and ‘LA FAMIGLIA KITCHEN’ trade mark.  

The applicant’s trade marks were sufficiently distinctive. 

Actual use and intention to use was established to a partial extent. It was found that there was a lack of intention to use the marks in the general foodstuffs category.  

Reasoning

Deceptively similar?

The use of the Rana mark on pasta products was found to infringe the ‘LA FAMIGLIA’ mark and the ‘LA FAMIGLIA KITCHEN’ mark. 

Both marks included the words ‘LA FAMIGLIA’.  

The inclusion of the large font word ‘RANA’ was not deemed sufficient to differentiate the products and prevent consumer confusion. Adding additional material alone does not prevent infringement when the infringer has adopted the entire registered mark.  

The consumers for both marks were deemed to be broad. 

His Honour determined that there is a significant overlap in trade channels between garlic bread and fresh pastas, as they are often consumed together and both products are made from dough.  

Additionally, in supermarkets, fresh filled pastas and chilled garlic bread are typically displayed in close proximity to each other.  

The products are also both inexpensive and require little attention when purchasing.  

Consumers may have viewed the Rana mark as a product variant by the applicants.  

These factors contribute to a likelihood of confusion between the two products among consumers.  

Distinctiveness

‘LA FAMIGLIA’ mark: 

Burley J acknowledged that many consumers and traders in Australia would recognise the phrase “LA FAMIGLIA” as foreign words meaning “the family.” These words are not among the foreign words that His Honour considered to have an unclear meaning to English speakers in Australia.  

However, it is not expected that all English-speaking Australians would understand the connection between the words and their meaning. 

Burley J determined that the inclusion of the definite article ‘la’ before ‘famiglia’ in the ‘LA FAMIGLIA’ word mark prevented it from being directly descriptive. The addition of ‘la’ made the mark more distinctive. 

Instead, it was interpreted to connote associations with Italian or Mediterranean dining, such as eating in a larger group.  

‘LA FAMIGLIA KITCHEN’ mark: 

The ‘LA FAMIGLIA KITCHEN’ word mark was considered even more descriptive.  

Burley J stated that it conveyed a more literal meaning, indicating that the source of the goods is a family kitchen.  

Although they were considered almost descriptive, Burley J concluded that the mark ‘LA FAMIGLIA KITCHEN’ was sufficiently inherently adapted to distinguish the goods to which they were applied. This was due to the indirect reference to the potential origin of the goods and the combination of English and Italian elements. 

Thus, the applicant’s trade marks were considered to be sufficiently distinguishable.  

Lack of use or intention to use

Burley J reviewed the evidence of actual use for the trade marks in question, which included website captures, sales data, marketing materials, social media screenshots, and the registered domain name ‘lafamiglia.com.au’ for the ‘LA FAMIGLIA’ mark.  

It was found that the trade marks had been used during the relevant periods for “bread and bread products” but not for pizza bases, pizza dough, and general foodstuffs. 

Regarding the intention to use, Burley J assessed the goods for which actual use had not been found.  

Pizza bases and pizza dough were considered similar enough to bread products, and evidence of brand planning documents and actual sales of pizza base products indicated an intention to use.  

However, no intention to use was found for the general foodstuffs category.  

Reasons for this included the lack of concrete plans to expand the range of goods, inability to produce goods beyond bread products, and the applicants’ failure to launch any new products since the filing date. 

As a result, Burley J concluded that the register should be changed to include only the designated goods and removed the general foodstuffs category from the trade marks. 

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