Bega Cheese Limited v Vincenzo Fasanella [2021] ATMO 49 (10 June 2021)
Successful opposition by Bega Cheese Limited to the registration of BUTTERMITE filed in the name of Vincenzo Fasanella.
Background
Vincenzo Fasanella (Fasanella) filed an application for BUTTERMITE on 27 February 2018 for the following goods:
Class 29: Dairy spreads; Food spreads consisting principally of dairy products; Butter; Butter portions; Butter preparations; Savoury butters
Bega Cheese Limited (Bega) is an Australian food company, which has been established for almost 120 years. Bega acquired most of Mondelez International Inc’s grocery business in Australia and New Zealand in January 2017, including the VEGEMITE brand.
Bega owns various trade mark registrations for VEGEMITE and VEGEMITE composite marks in Australia, covering a broad range of goods and services.
Grounds of Opposition
Section 60 – Reputation
The VEGEMITE trade mark is an iconic and well-known brand. It has been used in Australia since 1923 in relation to a yeast spread product. Over 22 million jars of VEGEMITE brand yeast spread are sold every year
Bega submitted a substantial amount of evidence of the VEGEMITE trade mark being extensively advertised and promoted through a wide variety of channels, some of which is listed below:
- Substantial revenue and marketing figures.
- 1954 radio advertising jingle ‘Happy Little Vegemites’. In 1956 the jingle was developed into a television campaign, which was broadcast until the late 1960s.
- In the 1980s and 2010 The ‘Happy Little Vegemites’ commercials were remastered, colourised and rebroadcast.
- Advertisements from supermarket retailers including Coles, Woolworths, Metcash and Foodworks.
- Screenshots from the vegemite.com.au website, including historical extracts.
- Social Media Accounts – Facebook, Instagram and Twitter.
- Agreements with Peter Alexander Sleepwear Pty Ltd, Bambis Imports Co Pty Ltd, The Lane & Co, and various food manufacturers including Arnott’s Biscuits, ABE’s Bagels and Four ‘N Twenty.
- Men at Work song ‘Land Down Under’ – ‘he just smiled and gave me a Vegemite sandwich’.
- Sponsorship of events.
- Use and licensing of the suffixes MITE and MITEY to promote/and or indicate products that include the VEGEMITE food spread as an ingredient. Since 1994, Bakers Delight has offered a CHEESYMITE SCROLL with the VEGEMITE spread as an ingredient.
- Addition of VEGEMITE BLEND 17 and VEGEMITE CHEESYBITE to its range.
- Reference to BUTTERMITE in the context of the VEGEMITE yeast spread on its Facebook page. The post promoted a fictitious VEGEMITE & BUTTER combination spread, because its VEGEMITE yeast spread product has a strong association with butter.
Fasanella’s evidence included argument that the suffix MITE is used by other food producers of yeast spread (e.g. Marmite; Aussiemite; MightyMite; and Ozemite). However, the Delegate has indicated that Bega’s tendency to play around with the brand using the suffix MITE, as in its use in CHEESYMITE SCROLL and MITEY recipes that sets the VEGEMITE mark apart.
Fasanella included evidence that the MITE suffix is also used by bakery chains and food distributors (i.e. Baker’s Delight’s CHEESYMITE SCROLL; Brumby’s CHEDDARMITE; and Melbourne Food Distributors TASTYMITE product). However, these products include Bega’s VEGEMITE yeast spread as an ingredient.
Decision
The Delegate was satisfied that Bega’s VEGEMITE trade mark had a very substantial reputation in relation to food spreads. Further, she was satisfied that members of the public are also likely to conclude that the BUTTERMITE trade mark is used by, or under the auspices of Bega.
In coming to this conclusion, it was significant that -MITE branding has been used to identify a range of products that contain VEGEMITE as an ingredient, and that VEGEMITE and butter are both spreads that are commonly combined and used in a similar manner.
Consequently, the s60 ground of opposition was successful and costs were awarded against Fasanella.
The additional grounds of opposition, namely sections 42(b), 44 and 62A were not considered.
Final Comment
Fasanella also filed an additional trade mark for the composite mark BUTTERMITE & Device for the same goods in class 29 as its BUTTERMITE word mark.
This trade mark was also opposed by Bega, however, a Notice of Intention to Defend was not filed by Fasanella and the application subsequently lapsed.