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An Australian biscuit maker has launched a legal challenge to a new doughnut by US manufacturer Krispy Kreme, claiming that the confectionery infringes its trade mark rights.

Australia's Arnott's has been making the Vo-Vo biscuit for over a hundred years and registered the name as a trade mark in 1906. One variant is the Iced Vo-Vo, a biscuit topped with two strips of pink fondant and one of jam and sprinkled with coconut.

The Iced Vo-Vo is described in the Australian media as an 'iconic' piece of Australian culinary heritage.

Krispy Kreme has launched its own homages to Australian sweet cuisine with its Fair Dinkum Doughnuts range. It includes an Iced Dough-Vo, and Arnott's says that the treat violates its trade marks.

Arnott's has written to Krispy Kreme's Australian arm, demanding that it withdraw the doughnut, but Krispy Kreme Australia chief executive John McGuigan said it will not back down.

"The word 'iced' is pretty well used, and the word 'dough' I don't think has got anything to do with what Arnott's do, and the word 'vo', I'm not sure what it means, but it goes well with 'dough'," he said, according to New.com.au, an Australian news service.

Arnott's, though, claims that the name is deceptively similar to the name of its product.

The Krispy Kreme doughnut is part of a range that is a tribute to Australian food, which might suggest that it is named after the Arnott's product. The Fair Dinkum Doughnuts range was designed to "put a smile on the faces of our customers and, in a sense, pay homage to some Aussie household favourites", McGuigan told News.com.au.

Trade mark law specialist Jude Tonner of Pinsent Masons, the law firm behind OUT-LAW.COM, said that if the case happened in the UK then the fact that one product was a 'tribute' to another would make no difference.

"This is not a defence to their use of a potentially infringing mark, as regardless of the intentions behind the use, Krispy Kreme should have sought permission from Arnott's before adopting a mark that bears similarity to 'Iced Vo-Vo," she said. "Using it without this permission deprives Arnott's of their exclusive legal right to control and benefit from the trade use of Iced Vo-Vo, Vo-Vo or anything else that is confusingly similar."

Tonner said that the name of the new doughnut was probably too close to Arnott's trade marked term.

"The whole conflict turns on whether Iced Vo-Vo as the earlier trade mark right is close enough to Iced Dough-Vo for consumers to potentially be confused between them," she said. "I think Arnott's stand a very good chance of being able to establish this likelihood of confusion and block Krispy Kreme's use of the Iced Dough-Vo mark.

"Under UK law, this potential for confusion is split into two parts – are the marks similar? And are the goods or services they are used on similar?" said Tonner. "If both these criteria are established, then a chance of consumer confusion can exist and the owner of the earlier trade mark would win."

McGuigan has said that Krispy Kreme will continue to sell its doughnut because people know the difference between a doughnut and a biscuit, but Tonner said that this is not the basis on which trade mark law works.

"He is taking a very simplistic view – obviously people know that doughnuts and biscuits are not identical to each other, but from a trade mark infringement standpoint, the question isn't whether they're completely identical to each other, but rather whether they're similar enough that consumers could think they've come from the same trade source," she said.

"Doughnuts and biscuits are very often sold by the same source, for example alongside each other on a supermarket shelf, so there's a very strong chance that courts would find that they're 'similar' goods for the purposes of trade mark infringement," she said.

Copyright © 2009, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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