My Food Bag’s quirky response (which is worth a read itself) to a stern letter from a German multinational food delivery service, HelloFresh, in relation to My Food Bag’s use of the phrase “Hello Fresh Start the programme” highlights a potential pitfall of descriptive trade marks.
HelloFresh owns a word mark for HELLOFRESH in New Zealand in various classes including in respect of “Services for providing food and drinks” and claims that it can prevent others from using its word mark or marks sufficiently similar to it.
However, to amount to infringement, the alleged infringing sign must be used “as a trade mark”, meaning to indicate the origin of goods or services. For example, use of the words “kettle cooked” in relation to potato chips was found not to infringe a registered trade mark for KETTLE because the words were used descriptively and would not be seen by the average consumer as a trade mark.
Here, My Food Bag is saying that it is simply using the phrase “Hello Fresh” as part of a broader phrase “Hello Fresh Start the programme” to greet its new “Fresh Start” programme; such use is not use as a trade mark and does not impinge on HelloFresh’s rights. The more descriptive the registered trade mark, the more likely an argument of this kind may be available, and the harder it may be to enforce a generally descriptive trade mark.