Nature’s Blend left caution to the wind as it pursued confectionery giant Nestlé over the use of the words ‘luscious Lips’ appearing on the Allen’s ‘RETRO PARTY MIX’ lolly packet (Nestlé having acquired Allen’s in 1989). Nature’s Blend had registered the word mark ‘LUSCIOUS LIPS’ for a variety of goods including confectionery and took issue with the following paragraph appearing in small font on the back of the RETRO PARTY MIX packet:
“That’s right! All your favourites are back, so put on those flares and get ready to party! Up to 7 lolly varieties including … cool Cola Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries” [emphasis added].
Nature’s Blend tried to bolster its claim for trade mark infringement by adding claims for passing off and misleading and deceptive conduct. However, much like the side of salad that arrives with your chicken parmigiana, the extra claims were just there to add credibility and received little attention. The live issue was trade mark infringement – requiring two questions to be answered.
Question 1: Were the words “luscious Lips” substantially identical or deceptively similar to the “LUSCIOUS LIPS” mark? Unsurprisingly – yes.
Question 2: Were the words “luscious Lips” used as a trade mark? According to Justice Sundberg – no, for the following two reasons. First, the word ‘luscious’ is descriptive, laudatory, and given its context, perhaps even humorous. Therefore, consumers who actually bothered to read the back of the packet would not have understood the expression to be used as a trade mark. Second, the effect of the words “luscious Lips” was diluted by the prominence of the well known marks ALLEN’S and Nestlé and the product name RETRO PARTY MIX. Justice Sundberg accepted that, while there can be use as a trade mark despite other marks on the packaging, there was no such use here. The decisive factor was the comparative prominence, positioning, and context of the words “luscious Lips”.
The case is an important reminder that context is pivotal in determining whether there has been use as a trade mark. You can read the Federal Court’s decision here.