Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593

FEDERAL COURT OF AUSTRALIA

Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593 File number: VID 1220 of 2017

Judge: O'CALLAGHAN J

Date of judgment: 1 May 2019

Catchwords: CONTRACTS – whether the first applicant or the respondent owns the "Peanut Butter Trade Dress" currently used by both the respondent and the second applicant in Australia in conjunction with their respective peanut butter products – where respondent brings cross-claim asserting entitlement to the trade dress – what trade dress designates to consumers – how goodwill inures to an entity – how an unregistered trade mark is assigned or transferred – whether goodwill in the trade dress inured to the benefit of the first applicant or the respondent – whether the respondent acquired the trade dress from Australian subsidiary – whether right of Australian subsidiary to use the trade dress was as mere licensee – significance of control of the business and operations of the Australian subsidiary by parent company – whether the trade dress only a diagnostic cue for brand name owned by parent company – whether the trade dress was an inseparable part of the business of the Australian subsidiary incapable of being assigned under the common law of Australia without assignment of the underlying business – proper construction of agreements effecting a "spin-off" or restructure of parent company of first applicant – where agreements governed by New York law – evidence of New York law. CONSUMER LAW - whether applicants or respondent contravened the Australian Consumer Law (ACL) or engaged in passing off by selling their respective peanut butter products in conjunction with the trade dress – whether television and radio commercials broadcast by the respondent were misleading or deceptive – whether second applicant published misleading press release – whether provisions of "spin-off" or restructure agreements relevant to ACL or passing off claims – proper interpretation of such agreements – whether respondent breached terms of such agreements. COPYRIGHT – whether respondent's use of first applicant's "shippers" by placing its peanut butter products in them without permission and selling to supermarkets constitutes trade mark infringement under s 120(1) of the Trade Marks Act 1995 (Cth).