On 13 November 2020 the High Court of Australia dismissed Kraft’s application for special leave to appeal against the judgment of the Full Court of the Federal Court which unanimously dismissed Kraft ‘s appeal against Bega’s successful claim over the rights to use the distinctive yellow lid and blue/red labels in the packaging for its peanut butter products. Bega is now confirmed to be the owner of those rights. Bega can now proceed to have the quantum of its claim for damages against Kraft assessed for passing off and misleading and deceptive conduct arising from Kraft’s unauthorised use of the yellow lid and blue/red labels on its own peanut butter products.
The decisions at first instance and on appeal to the Full Court in this case confirm that under Australian law unregistered trade marks are not a species of property, it is the business goodwill or reputation generated by the use of unregistered trade marks which can be protected by an action for passing off or statutory misleading and deceptive conduct, the goodwill of a business is property capable of assignment only with the transfer of the business itself and an unregistered trade mark can only be transferred with the goodwill of the business which owns the rights to it.
Anthony McGrath SC appeared for Bega throughout the litigation – in the High Court (Nettle and Gordon JJ), before the Full Court (Foster, Moshinsky and O’Bryan JJ) and at first instance (O’Callaghan J) – briefed by Justine Munsie and Hayden Martin of Addisons and leading Craig Smith of Dever’s List.
The judgment of O’Callaghan J 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