Australia and the European Union concluded negotiations on a historic free trade agreement on 24 March 2026, following eight years of extensive negotiations. One of the key obstacles to the signing of the Australian and European Union Free Trade Agreement (AEUFTA) was the European Union’s insistence that Australia provide geographical indication (GI) protection to the names of agricultural products and spirits that have been recognised domestically.

The EU has the most comprehensive internal framework for the protection of GIs and strongly advocates for the protection of EU GIs globally, primarily through bilateral free trade agreements. The EU recently extended the GI protection that already existed for agricultural products, wine and spirits to other categories of goods whose quality and reputation depend on geographical origin, such as craft and industrial goods,[4] and increased the level of protection afforded to agricultural and food GIs, including increasing the scope of GI protection where GIs are used as an ingredient in a processed product[5].  This illustrates its recognition of the value of GIs to preserve cultural traditions that are closely tied to geographical origin, enhance the economic benefits to local communities and increase the value of authentic EU regional products in global markets.[6]

GI Protection for Products other Than Wine and Grape Products

Giving Effect to Obligations Under AEUFTA

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When looking to register your new beverage trade mark in Australia, there are some key considerations to keep in mind.

Be thorough with preliminary searches. Look beyond the obvious class.  

 The distinction between alcoholic and non-alcoholic beverages in Australia is blurring. The commercial reality is that many producers now operate across both categories and offer non-alcoholic products alongside alcoholic options.

The result?

Trade mark risk no longer sits neatly within one classification. Although spirits and wine fall within Class 33 and most non-alcoholic beverages (plus beer) fall within Class 32 in Australia, Examiners increasingly treat these goods as commercially related. From a consumer perspective, alcohol-free spirits, zero-alcohol beers and traditional alcoholic beverages are often marketed under the same branding architecture, sold in the same retail channels and are targeted at the same demographic. This means that a mark registered in Class 32 may present an obstacle to registration of a mark in Class 33, and vice versa.

For example:

• A gin brand could block a non-alcoholic botanical spirit with a similar name.
• A sparkling water brand might face opposition from an established vodka producer.
• A brewery expanding into alcohol-free beer may encounter issues if it failed to secure coverage early.
• A wine producer launching a low-alcohol or canned wine range could face objections from a non-alcoholic or no-alcohol beverage brand with earlier rights in another class.

What this means for brand owners

• When looking for your next brand name, don’t limit clearance searches to the class that strictly describes the relevant product. Consider related beverage categories and brand extensions. Also look at bar and hospitality services which fall under Class 43.
• File strategically. When filing your application for one type of product, give some thought to your future plans. If for example expansion into alcohol-free variants is realistic, consider whether to cover goods in both Classes 32 and 33 This could potentially avoid problems in the future. Early intervention is typically more cost-effective than rebranding or defending infringement proceedings later.
• Monitor competitors. Consider implementing a trade mark-watching service to try to identify potentially-conflicting applications early so that you can consider whether you want to formally object.

Final thoughts

In an increasingly converged beverage market, trade mark strategy must be forward-looking rather than reactive. Taking a broader, multi-class and monitoring-focused approach at the outset can provide valuable flexibility as your brand evolves and significantly reduces the risk of costly disputes down the track. The specialist Trade Marks Team at Madderns can help protect your brands at every stage.

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The shape of the product (think of the iconic McCains potato smiles), the use of a distinctive colour (like Cadbury’s signature purple), or the adoption of a unique aspect of packaging may be intrinsically associated with the product for consumers and act as a badge of origin distinguishing it from other similar products in the market. Despite the value that non-traditional trade marks, such as shape, colour, sound, scent or aspects of packaging may have, these branding elements are often overlooked by businesses when considering obtaining registrable intellectual property rights.

The Trade Marks Act 1995 (Cth) defines a trade mark as a ‘sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”[1].

The term ‘sign’ is further defined in the Act to include “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent” or any combination of them. [2]

In light of this broad definition, businesses in the food and beverage industry should consider whether they have adequate protection for all intellectual property associated with their products and whether obtaining trade mark registration for a non-traditional trade mark would foster greater brand protection and preserve the intended competitive advantage that it was intended to create.

The most common forms of non-traditional trade marks in the food and beverage industry, being shape marks and colour marks, are discussed below.

Shape marks

Most food and beverage products are designed to be shaped or packaged in a manner that is commonplace to the relevant industry. For example, wine is ordinarily sold in a long, glass bottle with an extended tapered neck and therefore wine offered for sale in the marketplace in a standard, industry-approved bottle is generally not distinguishable from other competitors’ products by its shape.

However, the three-dimensional shape of a product may function as a trade mark if it is not a shape other traders are likely to wish to use for the same or a similar product in the ordinary course of their business. It is important to consider whether the shape of the product has a significant functional feature, such as:

• being essential to the use or purpose of the article;
• being needed to achieve a particular technical result;
• having an engineering advantage which results in improved performance; or
• resulting from a comparatively simple and cost-effective manufacturing method[3].

If the product’s shape is for a functional purpose, it could be difficult to establish that other traders are not likely to wish to use that shape without improper purpose and therefore trade mark registration is not likely to be available, unless you can demonstrate acquired distinctiveness through extensive use.

The same considerations apply to the shape or configuration of the packaging of goods.

Colour and Aspects of Packaging

A colour, by itself or in combination with other colours and/or aspects of packaging, may act as a trade mark if, when taken as a whole, it distinguishes the goods or services of one trader from the same or similar goods or services of another trader. Like shape marks, you should ask whether other traders are likely to want to use the colour or colour combination having regard to what is commonly used in the relevant trade or market. Relevant factors to be considered include whether the colour or colour combination:

• it is the natural colour of the goods, for example, as a result of the usual manufacturing process;
• may be regarded as functional;
• serves to provide a particular technical result for the goods concerned; or
• conveys a generally-accepted meaning in the trade or the wider community[4]

If any of these factors apply, it may be difficult to obtain trade mark registration for the colour, colour combination or other aspect of packaging and therefore an enforceable monopoly in respect of it.

Registrations for non-traditional trade marks in the food and beverage industry

Some examples of non-traditional trade marks used in the food and beverage industry that have been successfully registered include:

The iconic packaging associated with ‘Vegemite’ is the subject of a registered Australian trade mark, which contains the following endorsement:

“The Trade Mark consists of the shape of a jar and lid, with the jar bearing a yellow-coloured label including a red-coloured logo, the lid being yellow-coloured and the jar having a contrasting brown colour, as shown in the representation(s) attached to the application form.”

(Australian Registered Trade Mark No 1842067)

• The manufacturer of the well-known ‘Lindt’ bunny chocolate product, Chocoladefabriken Lindt & Sprungli AG, recognised the shape, colour and other aspects of packaging of its product acted as a ‘badge of origin’ independent of other prominent logos or markings and obtained the following trade mark registration:

(Australian Registered Trade Mark No. 1164439)

The endorsement to this registration describes the trade mark in the following terms:

“The trade mark consists of the 3-dimensional shape of a rabbit covered by GOLD packaging, a RED ribbon and GOLD bell around the neck of the rabbit, the word LINDT and a device element, as shown in the representations attached to the application form”.

Although non-traditional trade marks may form valuable intellectual property assets of a business, they can be difficult to register. To demonstrate acquired distinctiveness, extensive evidence of use is often required to obtain registration. Rights of this kind may also be difficult to enforce, as illustrated by the recent Federal Court decision of Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 (7 November 2024), which concerned the shape of the ‘Moccona’ instant coffee jar.

Koninklijke Douwe Egberts was the owner of Australian Trade Mark Registration No. 1599824 for the following shape mark:

In or about August 2022, Cantarella Bros Pty Ltd, which is the owner of various registered Australian trade marks containing or comprising the word ‘Vittoria’ in relation to coffee and a range of other similar and related goods and services, began selling its instant coffee under the ‘Vittoria’ brand packaged in a cylindrical glass jar (as displayed below):

The Moccona coffee jar              The Vittoria coffee jar

Koninklijke Douwe Egberts sought relief against Cantarella for infringing their registered shape mark and Cantarella filed a cross-claim seeking cancellation of the registration for the shape of the ‘Moccona’ instant coffee jar, under Trade Marks Act 1995 (Cth), arguing the shape of the jar was not sufficiently adapted to distinguish it from similar goods of other traders.

Ultimately, the ‘Vittoria’ coffee jar used by Cantarella was held by the Federal Court not to have been used ‘as a trade mark’, with Wheelan J observing:

• The “relatively plain”[5] shape of the coffee jar made it less likely to have the ability to distinguish Canterella’s coffee products from those of other traders; and
• The advertisement of Cantarella’s ‘Vittoria’ coffee product did not attempt to specifically draw the consumer’s attention to the shape of the jar, which itself was heavily branded with the registered ‘Vittoria’ logo and brand name[6].

In relation to Cantarella’s cross-claim seeking cancellation of the registration for the shape of the Moccona coffee jar, the Court considered evidence of how the ‘Moccona’ coffee jar was marketed over an extensive period of time, as well as the lack of other traders selling coffee in a similar jar shape.  His Honour also noted the ‘Moccona’ jar had, on occasions, been promoted and advertised without the ‘Moccona’ label and with complete emphasis on the shape of the jar itself[7].  Therefore, the shape mark was held to be registrable and valid, despite containing some functional aspects.

Although this decision illustrates the difficulty in enforcing non-traditional trade marks due to the requirement that the infringing shape, colour and/or aspects of packaging is being used as a badge of origin, the deterrent effect of trade mark registration should also be considered.

A few key takeaways:

• As a starting point, the primary focus should generally be on securing trade mark registration for a word mark and/or associated logo used to identify the trade source of your product.
• When designing your product/packaging, think about how other brands would usually present or package their similar products and whether you intend this feature to set your product apart from competitor products. For example, think about the shapes and colours commonly used in the industry and whether other traders may wish to use the proposed shape or colour for a functional purpose. It is also important to conduct clearance searches to see whether the same or a similar shape or colour is already trade marked for particular goods.
• If the shape of your product or packaging, the particular colour or colour combination used or other aspects of packaging is something you consider valuable to your brand and sets your product apart from others, then you should consider seeking trade mark registration for a non-traditional trade mark.
• If you wish to obtain trade mark registration for a shape mark or colour mark, it is useful to clearly document this in your initial design concepts and emphasise and promote its unique shape or colour as part of the subsequent advertising campaign, to develop strong brand recognition in that element independent of the associated brand name.

Despite the challenges in securing registration for non-traditional trade marks, such as shape and/or colour and/or other aspects of packaging, and then enforcing those rights, obtaining trade mark registration may still be an important step in preserving the competitive advantage created by a product’s distinctive presentation.

Our team has extensive expertise in securing and enforcing intellectual property rights in the food and beverage industry and would welcome the opportunity to discuss securing trade mark registration for a non-traditional trade mark, including a shape or colour trade mark, with you.

[1] Trade Marks Act 1995 (Cth), section 17.

[2] Ibid, section 6.

[3] IP Australia, Trade Marks Manual of Practice and Procedure, Section 21. 3 ‘Shape (three dimensional) trade marks’ <https://manuals.ipaustralia.gov.au/trademark/3.-shape-three-dimensional-trade-marks>

[4] IP Australia, Trade Marks Manual of Practice and Procedure, 21.4 ‘Colour and coloured trade marks’, <https://manuals.ipaustralia.gov.au/trademark/4.-colour-and-coloured-trade-marks>

[5] Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 (7 November 2024) [460].

[6] Ibid, [463].

[7] Ibid, [53], [77], [83] and [512].

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1. Environmental messaging is now a whole-of-IP issue

Environmental claims are no longer just marketing statements. In the food and beverage sector, they intersect with trade marks, packaging design, patents, R&D outputs, and broader IP strategy. Every visual or technical cue can create an environmental impression that must be accurate and supported.

Consumers respond strongly to sustainability signals. Regulators now require those signals to be evidence-based.

2. What constitutes an environmental claim

Under Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)), an environmental claim can arise through:

• wording and slogans;
• trade marks and brand names;
• packaging structure and design;
• imagery, colours and icons; and
• technical statements about performance or composition.

Any feature that implies an environmental benefit is a claim that must be substantiated.

3. Why the food and beverage industry is under intense scrutiny

The ACCC is Australia’s national consumer, competition, and product safety regulator responsible for enforcing the Australian Consumer Law.

Packaging is one of the strongest drivers of environmental assumptions. A leaf, a wave, an ocean colour palette, or a term such as natural or ocean friendly can suggest environmental qualities even when none are intended. The ACCC has identified the food and beverage sectoras one of the industries with the highest proportion of concerning environmental claims.

4. Recent Australian matters shaping expectations

4.1 ACCC v Clorox Australia Pty Ltd [2025] FCA

GLAD bags were marketed as “50% Ocean Plastic Recycled” despite being made from plastic collected inland. The Federal Court imposed $8.25 million in penalties and corrective notices.

ACCC link: https://www.accc.gov.au/media-release/clorox-ordered-to-pay-825m-in-penuries-for-misleading-ocean-plastic-claims-about-certain-glad-products

4.2 MOO Premium Foods: “100% Ocean Plastic” yoghurt tubs (court-enforceable undertaking)

MOO marketed yoghurt tubs as “100% Ocean Plastic”, but the material was sourced from coastal communities, not the ocean. MOO amended its packaging and implemented a compliance program.

ACCC link: https://www.accc.gov.au/media-release/moo-premium-foods-gives-undertaking-after-accc-investigates-ocean-plastic-claims

4.3 ACCC sweep: food and drink sector (2022–23)

In a nationwide sweep of 247 businesses, 57 per cent of environmental claims raised concerns. Food and drink was identified as a high-risk category sector for ‘greenwashing’.

ACCC link: https://www.accc.gov.au/media-release/accc-greenwashing-internet-sweep-unearths-widespread-concerning-claims

5. Trade marks, packaging, and IP: claims by implication

Trade marks can themselves function as environmental claims. Names such as Eco Brew, Clean Harvest or Carbon Neutral Coffee, and imagery featuring leaves, oceans, wildlife or earthy colours, can imply sustainability credentials.

Trade mark registration does not protect a business from greenwashing liability. If the mark creates a misleading environmental impression, it may still breach Australian consumer laws.

Packaging shapes, symbols and colour cues can also imply environmental advantages that require substantiation.

6. Patents and technical claims: why accuracy matters

Environmental innovation in the food and beverage sector increasingly relies on technical innovation, such as biodegradable packing materials, alternative proteins and water or energy-efficient processes.

The Australian Patents Act 1990 (Cth) has its own checks against unsubstantiated green claims:

• Section 18(1)(c) requires a patent to deliver on any environmental benefit it claims to provide;
• Section 40(2)(a) requires the patent to “disclose the invention in a manner which is clear enough and complete enough for it to be performed by others”; and
• Section 40(3) ensures the scope of the monopoly does not overreach the inventor’s actual technical contribution.

If marketing relies on patented or proprietary technology to support an environmental claim, the underlying science must match the narrative. A patent that overstates performance, is light on disclosure or lacks technical support increases both patent invalidity and greenwashing risk.

Patents can assist in substantiation but must sit alongside testing, lifecycle data, supplier verification and R&D documentation.

7. International frameworks driving higher standards

Globally, regulators are tightening the rules on environmental claims.

• European Union: Empowering Consumers for the Green Transition Directive

Link: https://eur-lex.europa.eu/eli/dir/2024/825/oj

This directive restricts broad environmental claims without proof, limits offset-only carbon neutral statements and requires robust life-cycle substantiation.

• United Kingdom: CMA Green Claims Code

Link: https://www.gov.uk/government/publications/green-claims-code-making-environmental-claims
and ASA rulings
Link: https://www.asa.org.uk/codes-and-rulings.html

These require clear, specific and well-evidenced environmental claims and treat imagery and colour as part of the environmental impression.

• United States: FTC Green Guides

Link: https://www.ftc.gov/legal-library/browse/rules/green-guides
These guides require accuracy in recyclability, degradability and offset claims and set clear parameters for environmental certifications and seals.

Together, these frameworks set a consistently high evidentiary threshold.

8. High-risk environmental claims

• carbon neutral, net zero and climate positive;
• recyclable, recycled content, compostable and biodegradable;
• sustainable, eco friendly and green;
• imagery suggesting environmental or animal welfare benefits; and
• unaccredited certification-style symbols

9. How IP, legal, marketing and R&D teams stay aligned

• substantiate environmental claims before publication;
• treat words, images and technical statements as equally powerful;
• ensure patents, product data and environmental messaging remain consistent;
• embed environmental reviews in trade mark, packaging, and innovation processes; and
• maintain clear documentation of testing, materials and substantiation.

10. The bottom line

Green claims can elevate your brand or expose it. The difference lies in the evidence behind them.

For food and beverage businesses, the smartest move is to treat environmental messaging like any other high value IP: build it carefully, support it fully and let the facts speak louder than the colour green.

The post Sustainability or liability? The international IP landscape for environmental claims in the food and beverage sector appeared first on Madderns | Our Team is Your Team.

1. Select a brand that is sufficiently unique (“distinctive”) to be registrable.  It is generally difficult to register words that have a descriptive meaning (eg. SPICY, SWEET, ORGANIC).  It is also difficult to register common surnames, geographical names and words that have a descriptive meaning in a foreign language.  It is worthwhile investing some time in selecting a brand that is going to differentiate your product in the marketplace (such as on crowded supermarket shelves).  It is also generally easier to register and enforce a unique and memorable brand.  Click here for tips on selecting a unique trade mark.
2. To minimise the risk of a trade mark dispute, conduct availability searches to check whether anyone else has registered or is already using a similar brand.  Search the Australian Trade Marks Register here and also conduct general searches of the internet and your competitors.  Check for existing brands that are identical, but also consider whether your proposed brand could be considered confusingly similar to an existing brand because it has similar spelling or sounds the same.  Simply changing one letter, for example,  is unlikely to prevent confusion if the brands look very similar overall.
3. C​arefully select the goods to be covered by your trade mark application so that you have a strong and enforceable registration.  For food brands, the most relevant classes are class 29 (which encompasses items such as meat, fish, poultry, plant-based meat alternatives and dairy products), and class 30 (which includes bakery goods, pasta, rice, confectionery, spices, sauces, coffee and tea).  Consider how the brand may develop in the future and select items with that in mind.  It is not possible to amend a trade mark registration to add items in the future.
4.  Registrable trade marks can include words, logos, slogans and even colours and shapes.  Consider how you want your brand to stand out and look at registering each branding element separately for the broadest and strongest protection.
5. Don’t forget your export markets.  As a first priority, secure registration for your brand in Australia but then ensure you file overseas.  If you are considering selling in multiple countries, it is often most cost-efficient to file an International “Madrid Protocol” application designating a number of countries at the same time.  If you file overseas within 6 months of filing your Australian application, you can claim the Australian filing date as the effective “priority” date for the overseas applications.

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For wine brands, the standard trade mark provisions apply, but there are also additional requirements/considerations relating specifically to the wine industry.

Following is a general checklist of key questions to consider before filing a trade mark application for a wine trade mark:

1. Is the proposed trade mark sufficiently “distinctive” (unique) to be registrable?

This will depend on whether other wine businesses are likely to legitimately need to use the proposed mark.  Consider:

• Does the proposed mark consist of a word(s) that is used in the wine industry for descriptive purposes? Descriptive words that refer to the characteristics or qualities of wine are likely to be difficult to register.
• Does the proposed mark consist of a surname? Surnames are likely to be difficult to register as the use of surnames in the wine industry is common.
• Does the proposed mark consist of a geographical name that relates to an existing grape growing region, or the name of a region that could become a grape growing area due to its location and climate? Geographical names that have a connection, or a potential connection, to a grape growing area (in Australia or overseas) are likely to be difficult to register.
• For tips on selecting a unique trade mark, see: https://madderns.com.au/tips-for-selecting-a-unique-trade-mark/

2. Are there already existing similar marks that may pose an obstacle?

It is important to conduct pre-filing searches to check whether anyone else has already registered or is using a similar mark.  Search the Australian Trade Marks Register at https://search.ipaustralia.gov.au/trademarks/search/advanced and also conduct general searches of the internet, company/business name registrations and wine listings.  Consider:

• Are there existing marks that are identical, or similar, to the proposed mark? Whether two marks will be considered confusingly similar will depend on how the marks look visually as well as how they sound aurally.
• Check for existing marks that cover wine as well as related goods and services. Wine falls in class 33 on the Trade Marks Register.  Other alcoholic beverages including spirits also fall in class 33.  Beer and alcohol-free wine fall in class 32.

3. Will the use of the proposed mark comply with the requirements of the Wine Australia Act?

The Wine Australia Act protects Australian and European wine geographical indications (“GIs”), traditional expressions and quality wine terms, as listed on the Register of Protected Geographical Indications and Other Terms.  See: https://www.wineaustralia.com/labelling/register-of-protected-gis-and-other-terms.

As examples, the Australian Trade Marks Office will raise an objection against an application covering wine if the trade mark incorporates as part of the mark:

• a protected Australian GI such as BAROSSA VALLEY, MARGARET RIVER, RUTHERGLEN, YARRA VALLEY, HUNTER VALLEY;
• a protected European GI such as BURGUNDY, CHABLIS, CHAMPAGNE, SANCERRE, MOSEL, BAROLO, CHIANTI CLASSICO, PORT and CAVA, RIOJA.

This type of objection can be addressed if the applicant consents to a condition being entered on the Trade Marks Register as follows:

It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical Indications and Other Terms for use of [eg. the Geographical Indication BAROSSA VALLEY] and that the use will accord with the Wine Australia Act 2013.

In addition, the Australian Trade Marks Office may raise an objection if the proposed mark incorporates any geographical name (in Australia or elsewhere) if it is considered that use of that geographical name on wine not produced from that area would cause deception or confusion.  Once again, such an objection can be addressed if the applicant consents to a condition like the above being entered on the Register.

(The proposed mark as a whole will also still need to be considered sufficiently “distinctive” and not conflict with any existing marks, as outlined above, in order to be registrable.)

Fast-track option

As the answer to some of the above questions can be subjective, an option that may be worth consideration is to file an application for the proposed mark through the fast-track “headstart” system.  Headstart applications are assessed within 5-10 days (sometimes even sooner) and so we can find out very quickly whether any objections based on any of the above issues are likely to be raised.  Once headstart results are issued, there will then be a further 5 day period to consider any objections and decide whether or not to proceed with formally filing the application.

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A GI indicates that a product comes from a specific geographical area. Use of a GI may indicate that the product was made according to, eg, traditional methods or may indicate a certain reputation. An example is “Champagne”, which refers to the specific region of France known for its sparkling wine.

The EU is looking for protection of a specific list of GIs (236 spirit names and 172 agricultural and other foodstuff names) which includes the names such as: “Camembert de Normandie” for cheese, “Καλαμάτα or Kalamata” for olive oil, “Φέτα or Feta” for cheese and “Scotch Beef” for meat. The EU has confirmed examples of where the protection it is seeking would not extend to the use of parts of EU GI names which are identified in the list by text that has been underlined. The complete list of names can be found here.

As well as seeking protection for the specific GIs, the EU is seeking broader protections that would prevent use of the GIs accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient.

Accordingly, Australian cheese makers would no longer be able to sell cheese as “Feta” or even “Feta-style” or “Feta-like”. The same applies to “Kalamata” olive oil.

Seems like the EU is asking too much. Your thoughts?

If you have any objections, they can be made here and must be received by 6pm AEST Wednesday 13 November 2019.

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For example, the owners of the iconic “Penfolds Grange” brand were unsuccessful in opposing a trade mark application for “Tenfolds Grunge” (Southcorp Limited v Morris McKeeman [2006] ATMO 48).  The Hearing Officer in this case concluded that the “Tenfolds Grunge” mark would be seen as an obvious parody and, as such, deception or confusion was unlikely.  The Hearing Officer considered that there was no doubt that “Tenfolds Grunge” made a play on, or reference to, the “Penfolds Grange” mark; however, the fact that a mark might “ape, mimic or parody” another mark does not in itself disbar it from registration.

Similarly, the Australian Post Corporation (the “POST OFFICE”) was unsuccessful in opposing a trade mark application for “POST WITHOUT THE OFFICE” (Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42), with the Hearing Officer concluding that consumers would be sufficiently careful and astute so as not to be confused or deceived by the use of this mark.

On the other hand, Hasbro successfully opposed a trade mark application for “LIVE-OPOLY” covering toys/games and entertainment services on the basis of Hasbro’s rights in the “MONOPOLY” brand, the “world’s most popular board game” (Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43).  The Hearing Officer in this case held that the inclusion of the “OPOLY” element in the “LIVE-OPOLY” mark would lead to potential purchasers concluding that there was some connection with the “MONOPOLY” game, when this was not the case.

Also, Target Australia successfully opposed a trade mark application for marks incorporating “TARJAY” on the basis that “TARGET” stores have been colloquially referred to over the years by way of a French sounding pronunciation i.e. “TARJAY” or “TARGÉT” (Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54).  The Applicant argued that it chose to apply to register the “TARJAY” marks as part of its marketing strategy to be “cheeky” and as a means of cleverly and satirically referencing Target; however, the Hearing Officer concluded that a parody only works if it is immediately apparent and, in this case, shoppers would be likely to be misled.

Take home message:  A brand owner may have grounds to oppose the registration of a parody trade mark in Australia if the mark is not clearly a parody mark.  A parody mark must be of a nature that is immediately recognisable as a parody and not imply some endorsement by, or commercial connection with, the brand owner that would lead to deception or confusion in the marketplace.

In addition to opposing the registration of a parody mark, a brand owner may have grounds for objecting to the use of a parody mark in Australia on the basis that such use constitutes misleading and deceptive conduct in contravention of the Competition and Consumer Act 2010 (Cth) and/or the common law tort of “passing off”.

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An insight into the work of our client, Beston Global Food Company, who have developed sophisticated anti-counterfeit and traceability technology helping to protect the integrity of premium Australian food products overseas, ensuring that consumers are receiving authentic, non-counterfeit products.

The Lead SA: Food security app protects premium Aussie foods in Asia

The post Client News: Food security app protects premium Aussie foods in Asia appeared first on Madderns | Our Team is Your Team.

We are excited to see three of our clients: Haigh’s Chocolates, Coopers Brewery and Yalumba, joining together to help Haigh’s celebrate their Centenary with a unique collection of hand crafted chocolates.

Haigh’s Chocolates teams up with Coopers and Yalumba to release history-making sweets

It is great to see these iconic South Australian brands working together.

The post A Sweet Union: Haigh’s, Coopers and Yalumba appeared first on Madderns | Our Team is Your Team.