If you’re starting your own business in Australia, it can be pretty difficult to come up with a new and entirely original business name, domain name, logo or another way of distinguishing yourself from the competition. We can’t over-emphasise the importance of creating a unique brand presence. Some companies are lucky enough to have got away with using copied, or very similar, logos and brand names for the entirety of their existence without ever being challenged on their use by the registered trade mark owner. In other cases, such as James Christian and his former business ‘A-Sashi’, you may stumble into the trade mark territory of a company that won’t hesitate to launch an action against you. If you are found to infringe the exclusive rights of another company’s trade mark, the cost of proceedings can result in your business collapsing. Below, we look at trade mark infringement in the recent Federal Court matter, Christian v Nestle. 

Musashi and A-SASHI

Musashi, owned by Nestle, is a relatively well-known brand of health related nutritional and dietary supplements you can purchase at your local Coles or Woolworths. A-Sashi was an online Australian small business that also sold supplements and vitamins of a similar type. A-Sashi’s supplements were imported from an overseas manufacturer and were branded with a logo devised by its owner, James Christian. Mr Christian had registered his business name, two domain names and a Facebook account all bearing the word ‘A-Sashi’. Nestle then challenged Mr Christian in the Federal Court, alleging trade mark infringement. 

Proceedings Against Christian

Nestle sought to establish that Mr Christian had infringed their exclusive right to use their trade mark ‘Musashi’ when he applied it to goods that belonged to the same class as its products. 

Musashi claimed that a number of their registered word and device (logo) trade marks had been infringed.

To seek the relief they alleged they were entitled under s 20(1) Trade Mark Act 1995 (Cth), Nestle had to prove the following: 

  • A-Sashi was a sign that was substantially identical, or deceptively similar, to their trade marks; and 
  • A-Sashi had infringed Nestle’s exclusive rights under section 120(2) Trade Mark Act.

Substantially Identical or Deceptively Similar

The court in determining whether A-Sashi infringed Nestle’s trade mark examined whether there was: 

“‘a real risk or danger that the use of the mark will cause some prospective or potential purchases of the goods to wonder whether the two products came from the same source.”

The court conducted this test by:

“comparing the actual or potential customers’ impressions of the claimed infringing mark with the customers’ impressions of the registered trade mark based on their memory of the features of the registered trade mark”.

Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025 [46]

In this case, the court held that the most significant part of each word was ‘SASHI’ and that ‘A-’ or ‘Mu’ were minor differences that didn’t satisfactorily distinguish the two. This led the court’s determination that it was likely that an average shopper would think the two goods were associated.

What Happened to A-Sashi?

Although Mr Christian appealed the decision, the Full Court of the Federal Court only made a very minor alteration in his favour. The Court then ordered Mr Christian to cancel his registration of the business name “A-Sashi Vitamins” and the associated domain name. They also restrained him from using the A-Sashi mark or sign and any signs that may be substantially identical. He was ordered to pay 85% of Nestlé’s costs for the proceedings and has since told the media that the court case has left him on Centrelink payments, and still in debt to Nestle.

How Can You Check For Yourself?

Knowing the fine line between what is, and is not, infringement can be difficult as the outcome of the test is relatively subjective. It’s even more difficult if you’re unaware of the trade marks that are already registered. If you intend to use a logo, word or other identifying marks, then you should ensure you conduct a search for both exact and non-exact matches to determine whether it is already in use.

Questions about registering your trade mark or trade mark infringement? Let our trade mark lawyers know.

Thomas Richman

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