The Full Court of the Federal Court (Foster, Moshinsky and O’Bryan JJ) has unanimously dismissed Kraft’s appeal against Bega’s successful claim against Kraft over the rights to use distinctive yellow coloured packaging for its peanut butter products. In the judgment given on 14 April 2020, the Full Court confirmed O’Callaghan J’s findings that Bega owned the rights to the yellow packaging as a result of acquiring the business (including its goodwill) from Mondelez in 2017 and that Kraft’s use of that packaging for its own peanut butter products is misleading and deceptive in breach of section 18 of the Australian Consumer Law and amounts to passing off of its products as having a connection with Bega’s products.
Both judgments contain significant discussion about the concept of goodwill in relation to unregistered trade marks and confirmation of the principle that the assignment of an unregistered trade mark is not possible without the assignment of the underlying goodwill of the business using that trademark. Anthony McGrath SC appeared for Bega at first instance before O’Callaghan J and in the appeal before the Full Court, briefed by Justine Munsie and Hayden Martin of Addisons and leading Craig Smith of Dever’s List.
The full judgment at first instance is Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8)  FCA 593 and the Full Court’s judgment is Kraft Foods Group Brands LLC v Bega Cheese Limited  FCAFC 65