Vittoria Food & Beverage has successfully opposed a trade mark application made by Di Bella Coffee, to protect its tagline "We Know Coffee".
Di Bella Coffee began using the tagline “We Know Coffee” in early March 2012, on its Facebook accounts, and in television and print advertisements.
Vittoria Food & Beverage, however, successfully argued that it has been using the tagline extensively in advertising for its Vittoria Coffee brand since August 2010, and particularly as part of its globally renowned campaign featuring Al Pacino.
One television advertisement features Phillip Di Bella proclaiming “I’m not Pacino” and “I know coffee”.
According to Vittoria, Di Bella Coffee lodged applications in late March 2012 for the trade marks “Di Bella Coffee…We Know Coffee”, and “Crop to Cup…We Know Coffee”.
Vittoria opposed Di Bella Coffee’s trade mark applications under s62A of the Trade Marks Act, on the basis that those applications were made in bad faith.
In a decision handed down by the Australian Trade Marks Office last Thursday, the Hearing Officer declined Di Bella Coffee’s application “on the grounds raised pursuant to s62A of the Act”.
Hearing officer Michael Kirov determined that Di Bella's application fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
“It is one thing to imitate a rival’s advertising campaign, but it is quite another to seek to acquire registered rights in trade marks which feature the very tagline prominently used in that advertising,” he said.
Les Schirato, CEO of Vittoria Food & Beverage, said he was pleased with the decision.
“Vittoria is committed to protecting its intellectual property rights. The decision is a great win for companies who have spent time, money and resources in building their brands”.
