By Dan Star QC -
Key decisions
- Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93
- Robinson v 470 St Kilda Road Pty Ltd [2018] FCAFC 84
- Construction, Forestry, Maritime, Mining and Energy Union v Australian Building and Construction Commissioner (The Non-Indemnification Personal Payment Case) [2018] FCAFC 97
APPELLATE JURISDICTION – CONSUMER LAW – TRADE MARKS
The nature of an appeal
In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 (22 June 2018) the issues before the Full Court were (i) should a trade mark proceed to registration (see s 41 of the Trade Marks Act 1995 (Cth)) and (ii) did the manner in which the appellant sold some hair care products constitute misleading or deceptive conduct and false or misleading representation (see ss 18 and 29(1)(a) of Schedule 2 to the Competition and Consumer Act 2010 (Cth)).
In relation to the trade mark question, the issue between the parties was whether the word mark ‘MOROCCANOIL’ was capable of being registered as a trade mark. The Full Court held that the trial judge erred in not concluding that the trade mark was not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of others (Allsop CJ at [16] and Perram J at [163]-[165]). The requirements of s 41(6) of the Trade Marks Act 1995 were not satisfied and the mark was not registrable.
