By Christine Moody, Brand Audits
Since immigrating from Veneto, Italy, Luigi Borgo’s family has been making Italian salami in Queensland, Australia for half a century under the Borgo Salumi brand name. ‘Borgo Salumi’ was established in 1966 and produces 500 tonnes of salami each year from their Holland Park factory—every product using the traditional Italian curing method. Borgo products are stocked in independent supermarkets and delis across Australia.
Two years ago, Luigi commenced the registration process with IP Australia for Borgo’s 30-year-old, star-shaped brand identity. The registration process came to a halt during the opposition phase because the Italian food giant Agricola Italiana Alimentare (AIA) attempted to stop the family business from using the logo they have had for 30 years.
And this is where the trouble started and raised the hackles of AIA. AIA has had one of their brand names—‘Negroni Salumi’—registered as trade mark since 2007 and has the rights until 2027. The opposition was that AIA felt Borgo’s star-shaped logo was too similar to their star-shaped logo. There were also other trade mark issues, as not only did the logos look similar, but the script font used for the brand names was also similar on both. Borgo was also registering in the same trade mark classes as AIA’s Negroni brand (Class 29). However, the outcome of the case was IP Australia ruled that there were no grounds for the opposition as consumers would not mistake the two logos. While both businesses use the star, the different business names in the middle of the stars meant they were not deemed as similar by IP Australia.
Even though Borgo was successful, it is a good lesson for all retail businesses is to register logos and not assume they are automatically protected just because they have been in use for a long time. This oversight cost Borgo $100,000 in legal fees and a two-year distraction away from their businesses. Opposition to your trade mark is complex and costly—and perhaps worth considering Trade Mark Protect (insurance to help cover defense costs)—and also worth talking to the NRA Legal team. Prior to undertaking any design work, the brand strategy must include research and briefing notes to achieve ‘trade mark-ability’.
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Images: IP Australia Trade Mark Registration
Negroni Trade Mark registration number: 1176139 Retrieved: https://search.ipaustralia.gov.au/trademarks/search/view/1176139?q=AIA
Borgo Trade Mark registration number: 1809076 Retrieved: https://search.ipaustralia.gov.au/trademarks/search/view/1809076?q=borgo |
For more information on Trade Marks
Christine Moody BA GradDip(Comn)(Dist) GradCertAppLaw FAIM FDIA GAICD IPANZ AFHEA
I am positioned as one of Australia’s leading brand strategists and the founder of brand management consultancy,
Brand Audits. With more than 35 years’ professional experience, I have partnered with a diverse client base of local
and international brands—including Gold Coast City Council, Hilton Hotels, Wrigleys, and International Cricket Council’s Champions Trophy, Twenty20, and Women’s Cricket tournaments, Terry White Chemists, and Become—to develop, protect, and achieve brand differentiation resulting in business growth through an increase in brand value. I have design, advertising, business, and law qualifications.