AU: Queensland farmers see red over purple wax tip

Can the simple act of selling purple wax tip bananas cost you a legal bill in excess of $50,000?

Be warned - according to the Consent Orders made in the Federal Court in Brisbane on 1 May 2012, the answer is YES.

Queensland farmers, Frank and Dianne Sciacca, operate their successful Pacific Coast Eco Bananas (Pacific Coast) business using a sustainable and ecologically natural farming system known as “ecoganic”.

While they knew their bananas tasted great, their challenge was how to communicate this message to consumers at a glance.

Fada Pty Ltd (trading as Pacific Coast Eco Bananas) (Pacific Coast) own ten registered trade marks in Australia, four of which relate to wax tipped bananas (the Wax Tip Banana Marks).

Pictures of some of their bananas are set out below:



More recently, they obtained even broader trade mark rights – not only in red wax tips – but over opaque coatings of all colours applied on bananas. .

In fact, Pacific Coast owns ten Australian registered trade marks, four of which cover variations of coloured wax tips on bananas.

To support and reinforce the association between the opaque wax tipped bananas and their business, Pacific Coast constantly emphasise the association in their marketing materials. As they say, when you look for the red wax, you know it’s Pacific Coast’s.

Adopting the comments made by their customers, their website now states: “WAX TIP Eco Bananas are the Better Banana”

The Pacific Coast logo features the business name and an image of three wax-tipped bananas.

The brand has been such a success that Pacific Coast also sells bananas with wax tips in custom colours for special events.

With all this goodwill and investment behind them, Pacific Coast’s trade mark registrations are immensely valuable to Pacific Coast business.

For this reason there is no way that it will tolerate any sort of copying.

One can only imagine their horror and indignation when in September 2010, they discovered that another banana grower, Greg Worth, had started supplying bananas with purple wax tippings, even going as far as to apply for his own trade mark for purple wax tips on bananas.

Given the time and effort spent in developing the wax-tipped banana branding, there was no way that Frank and Dianne were going to just “let this slide” and commenced Federal Court trade mark infringement proceedings.
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Dianne has said: “Many people don’t realise the power of a trade mark… It gives the owner of a trade mark to prevent anyone else from using not only that exact mark but anything that is deceptively similar. In our case, we knew we had to pursue Greg Worth and never doubted our chances of success”.

This attitude has certainly paid off, culminating in Orders recently obtained in the Federal Court restraining Mr Worth and his companies from selling or supplying bananas with wax tippings and dismissing Mr Worth’s challenge to Pacific Coast’s trade mark registrations.

To be specific, he and his company agreed to stop:

“marketing, promoting, selling, supplying or offering for sale within Australia fresh bananas bearing a visible opaque coating of hardenable material and in a contrasting colour applied to one end of the banana whereby the coating extends up to one-third along the length of the banana”.

He was also ordered to pay damages and costs in excess of $49,000 and withdraw his trade mark application with a promise not to file a similar trade mark.

The message

The matter illustrates the power of a trade mark registration.

 “Branding is a way of generating a fair price for our product,” Dianne has said. A strong recognisable brand “can make a business sustainable in the long term”.

“Pacific Coast’s special ecoganic system means that it has to sacrifice yield and take other measures in order to produce superior fruit”.

This investment is paid off and their signature opaque wax tip is one that people have come to recognise Australia-wide creating the message that these bananas are different.

Frank and Dianne have been very grateful for the incredible support they had from the industry generally. Businesses from all levels of the supply chain made their time available to us to give us the evidence we needed to run the case.”

The lesson

The case serves as a lesson to all fruit growers and the food industry generally: If you are inspired by someone else’s brand or business idea, don’t slavishly copy it or get too close. This can result in costly and embarrassing consequences as was the case here.

Sharon Givoni
 

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