Arnott's recently threatened legal action against the well known doughnut chain, Krispy Kreme Doughnuts Inc. over its use of the name Iced Dough-Vo. One of the claims alleged by Arnotts' was that this use of the name was a breach of the Trade Marks Act, given the similarities of the name to its ICED VO-VO trade mark. We all know what an Iced Vo-Vo looks like. Krispy Kreme's Iced Dough-Vo doughnut was topped in a pink fondant and sprinkled with coconut, reminiscent of the popular Arnott's biscuit.
It certainly would have been an interesting case to follow. Would Arnott's have been able to establish trade mark infringement? For Arnott's
trade mark registration for ICED VO-VO to have been infringed it must at least be found that Krispy Kreme's ICED DOUGH-VO mark was 'deceptively similar' to the ICED VO-VO mark. Deceptive similarity casts a relatively wide net as to what amounts to a similar mark for trade mark infringement purposes. It does not involve a strict side-by-side comparison of the respective marks, but rather is based on the reasonable consumers 'imperfect recollection'. In this case, whilst the two marks share phoenetic similarities, the visual differences ("Dough" instead of "Vo") at the end of the day may have assisted Krispy Kreme to side step these claims. Where goods are typically bought by the prospective purchaser as displayed goods (eg off-the-shelves, menu boards) more emphasis will be placed on the visual differences rather than the aural similarities.
Initially, Krispy Kreme refused to remove the ICED DOUGH-VO product from sale or rename it. Krispy Kreme's spin was that the ICED DOUGH-VO product attempted to pay homage to the ICED VO-VO biscuit, claiming it as an Australian icon. Interestingly, Arnott's and Krispy Kreme soon after called a truce with Krispy Kreme agreeing to rename the ICED DOUGH-VO product.
by Jennifer Driver,
Actuate IP Patent & Trade Mark Attorneys
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