News & Insights

Apparently, super-sugary biscuits are a thing in America.  They love their “Crumbl” biscuits over in the US and in Canada, and it has been reported that some enterprising fans have tried to give Aussies a taste of Crumbl biscuits too.

Reportedly sourcing genuine Crumbl biscuits by flying to Hawaii and buying 700 biscuits at retail, they then set up a pop-up in North Bondi that drew excited crowds.

Trade mark registration

It is worth mentioning that US company Crumbl IP, LLC has a current application (filed in 2022) to register the “CRUMBL” trade mark in Australia in relation to “bakery goods, namely, cookies”.

There is also a registration for “crumbl cookies” with a logo, also filed in 2022 and covering the same goods.

So have the “CRUMBL” trade marks been infringed?

Probably not.  Under section 122A of the Trade Marks Act 1995 (Cth), where a trade mark has been applied to, or in relation to, the goods with the consent of the registered of the trade mark, or the consent of a person permitted to use the trade mark, then the use of that mark does not infringe the trade mark registration.

Section 122A is intended to facilitate grey imports, because they are considered pro-competition and therefore of benefit to consumers.  Particularly in Australia where imports can sometimes be considerably more expensive than the same goods overseas.

Given that the biscuits were apparently purchased from a genuine US Crumbl store, and then sold with genuine Crumbl packaging, it is likely that this falls within the section 122A exemption.

So, everything is fine?

While there is probably no trade mark issue, there are some potential issues:

1. The Food Standards Code, enforced by Food Standards Australia New Zealand, imposes requirements as to food labelling, including as to trade origin, allergens and nutrition. Food packaging taken from the US does not necessarily comply.
2. The news reports comment on the biscuits being stale, as they were allegedly a week old by the time they were sold. Section 54 of the Australian Consumer Law imposes a statutory guarantee that the goods are of acceptable quality.  One of the factors determining acceptable quality is price.  The biscuits sold for $17.50 each, so you would probably expect something pretty fresh for that price.
3. Contravention of Australian Consumer Law prohibitions in relation to misleading and deceptive conduct, around how the North Bondi pop-up was presented and whether consumers were misled into believing that it was a genuine Crumbl store, and that the biscuits were as fresh as they would be in a genuine store. The Crumble website doesn’t appear to state whether the biscuits are baked daily in-store, and consumers appear to have been aware that they were grey imports, but the lack of clarity around this could be an issue.

Take-aways

If you want to engage in grey importing, you need to ensure that:

• You comply with the processes of section 122A of the Trade Marks Act 1995, including ensuring that you have verified the trade mark position.
• You have considered other IP rights, such as patents and designs.
• The goods meet Australian requirements and standards in relation to the goods, their labelling and ancillary documents such as warranty wording.
• You are sufficiently clear if the grey imports are not the same as official imports. For example, if the manufacturer or official importer will not honour the warranty, they are not as fresh or they are not designed for local conditions.

If you’re looking at doing some grey importing, or have a concern about grey imports disrupting your authorised Australian imports, have a chat with the Macpherson Kelley IP and trade teams.