Generic trade mark faces the crunch test

A recent Federal Court decision has found that descriptive use of a trade mark which has become a common-place word does not constitute trade mark infringement under the Trade Marks Act 1995 (Cth).

The word ‘Granola’ was trade marked by the Sanitarium Health Food Company in 1921 and has since come to be known as a descriptive word for crunchy cereal based food products.

Sanitarium argued that Irrewarra Sourdough, a small company that manufactures and distributes breads and baked goods, had infringed the ‘Granola’ trade mark by selling a cereal product labelled ‘All Natural Handmade Granola’.

Despite the prominent placement of the word ‘Granola’ on Irrewarra Sourdough’s label, Justice Jagot held that it was merely descriptive of the ‘grainy foodstuff’ which comprised the contents of the package and therefore was not intended to distinguish its goods from those of others in the course of trade.

As a result, it was held that the word ‘Granola’ was not being used as a trade mark by Irrewarra, and did not infringe Sanitarium’s registered trade mark.

This case demonstrates the difficulty in protecting a trade mark from infringement where the trade mark has become a commonly known word that can be used descriptively by others.

Businesses wishing to protect their trade mark should be aware that use of their trade mark by others will not necessarily be infringement if their registered trade mark is merely descriptive.

For further information or advice on trade mark infringement, please contact Certus Legal Group.

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