Don’t let your trade mark become generic!

by admin | Jul 6, 2012 | Blog, Content, Design

Bakery can continue to use “Granola”

On 8 June 2012, Justice Jagot of the Federal Court of Australia held that Australian Health and Nutrition Association Limited, trading as Sanitarium Health Food Company (Sanitarium), could not enforce its trade mark registration rights over the word “GRANOLA” against Irrewarra Estate Pty Ltd, owner of Irrewarra Sourdough Bakery.

This case demonstrates the importance of ensuring that a registered trade mark does not become generic over time. This is where advertising and branding agencies can play an important role as the way a brand is marketed has a big impact on whether a mark can remain protected.

What happened in the case

Since 1921, Sanitarium has been the owner of the Australian registered trade mark “GRANOLA”. In August 2010, Sanitarium initiated legal proceedings against Irrewarra Sourdough Bakery for infringing its registered trade mark for the word “GRANOLA” (covering “preparations made from cereals”) after the bakery sold packets of toasted nut, seed and oat mix labelled “ALL NATURAL HANDMADE GRANOLA”.

The bakery also owns its own trade mark, pictured below in relation to breads and baked goods:

Sanitarium argued that Irrewarra had infringed its “GRANOLA” registered trade mark by using it in that way.

While Sanitarium conceded that the word “GRANOLA” has been understood in the US to denote a crunchy toasted cereal and was in common use there, it argued that in Australia it has a more “boutique” meaning associated exclusively with Sanitarium-branded breakfast products.

In response to this, the bakery argued that the word “GRANOLA” merely describes the contents of the product and pointed to a list of Australian dictionary entries for the word “GRANOLA” to support its case that the word is now common.

The court’s findings

The judge took the view that the words used by the bakery: “ALL NATURAL HANDMADE GRANOLA” refer to a product consisting of grains, fruits and nuts, which may be baked or toasted into large clusters. She observed that since 2004 the word “GRANOLA” started appearing in Australian dictionaries and has “percolated” into the “consciousness of Australians”.

Thus, the bakery was using “GRANOLA” in a descriptive sense rather than as a trade mark (that is, to indicate the origin of the good) and therefore, Sanitarium could not establish trade mark infringement.

Lessons

An important lesson that flows from the decision is that brand owners should take steps to prevent their brands from becoming generic. This means that while an invented word may be validly registered as a trade mark at the outset (as Sanitarium did with its “GRANOLA” mark, from 1921), its ability to stop other traders from using the brand could be limited if the word becomes used in common language.

A good tip is to use trade marks as adjectives rather than nouns.

To do this have the common descriptive name (ie the noun) of the product or service follow the mark at least the first time that the mark appears in your marketing material.

Tip 1:

Correct: Buy CADBURY chocolate.

Incorrect: Buy CADBURY.

Correct: Use SAVLON cream.

Incorrect: Use SAVLON.

Tip 2:

If you take the trade mark out of the sentence and it still makes sense – that will be good trade mark use.

The Rollerblades example

For example it is well known that the Italian-based company, Nordica S.p.A. actively enforced its “ROLLERBLADE” trade mark rights against various retailers around Australia when they used the word “rollerblades”. As a result, the trade mark is still registered (Trade Mark Number: 480323) and traders now use other words such as “inline skates” instead.

In some situations, a trade mark that has over time, become generic, could even be removed from the Register.

Disclaimer – The contents of this article do not replace tailored legal advice

*Sharon Givoni is an intellectual property lawyer with 16 years and has clients across all industries.