Arnott’s calls in lawyers to stop Streets from selling mint slice flavoured ice-cream: Can the biscuit giant succeed?

Ice-cream maker Streets is embroiled in a legal conflict with Arnott’s after a partnership aimed at launching a joint ice-cream product fell through.

The biscuit manufacturer has called in lawyers to prevent Streets from producing its own line of mint slice flavoured ice-cream, according to Fairfax, after the parties previously entered into an “alliance” to co-develop ice cream products, including Streets Blue Ribbon and Arnott’s Mint Slice ice-cream and Streets Cornetto and Arnott’s Mint Slice ice-cream.

The manufacturers had reportedly intended to collaborate further on more ice-cream products and Arnott’s says it shared confidential information with Streets, including biscuit recipes, ahead of the potential collaboration, which fell through in 2015.

However, Streets now wants to do it alone, hoping to soon sell its own mint-slice flavoured ice-cream in supermarkets.

Read more: Arnott’s tops list of 20 brands Aussies don’t want to see disappear from supermarket shelves

Arnott’s is arguing Streets shouldn’t be able to sell ice-cream using the words “mint slice” because consumers will be tricked into thinking they are purchasing a frozen treat that contains pieces of the Arnott’s biscuit that is a favourite among many Australians, alongside the world-famous Tim Tams.

Arnott’s is also seeking damages from Streets for loss of reputation and goodwill.

Streets has launched a number of collaborations in the past, resulting in flavours such as Blue Ribbon ice-cream scattered with Darrel Lea’s coconut rough chips.

Can Arnott’s stop Streets from selling mint slice flavoured ice-cream?

John MacPhail, intellectual property law specialist and partner at Lynch Myer Lawyers, told SmartCompany, all Arnott’s has to prove in order to be successful in the case is that the average person would assume Streets’ “mint slice” ice-cream is associated with the biscuit of the same name.

“Mint slice is the second best well-known biscuit brand after Tim Tams in the Arnott’s range, so there’s a pretty good chance you come out with a mint slice ice cream and most punters are going to think, gee, that is going to be connected with Arnott’s,” MacPhail says.

“I think it’s a pretty convincing action and Streets are on pretty thin ground here. They’ve established the precedent, anyway, by making ice-cream with stuff added like Tim Tams and Mars Bars … it’s a very well known brand extension.”

However, there is no registered trademark for mint slice

MacPhail says Arnott’s has tried to trademark the term “mint slice” numerous times but it has never been successful.

“In 1993 they filed [an application] for ‘mint slice’ and didn’t get it, they were knocked back a couple of times,” MacPhail says.

“Then in 2003 they filed again, this time for ‘Arnott’s Mint Slice’ which would be easier to get through, generally, but they got knocked back at least a couple of times and withdrew it.”

Despite being unsuccessful when it comes to trademarking the words “mint slice”, Arnott’s has expanded its trademarks over names such as “monte carlo” and “tiny teddy” to include ice-cream, according to MacPhail.

“Arnott’s are obviously very astute and aware of the trademarks system,” he says.

Arnott’s prepared to “protect” its brands now and in the future

A spokesperson for Arnott’s told SmartCompany its “brands are our business” and the company will take steps to protect its brands accordingly.

“As this matter is before the court, we don’t have any further comments,” the spokesperson said in a statement.

A spokesperson for Streets’ parent company, Unilever, declined to comment.

“We can’t comment on ongoing legal proceedings,” the spokesperson said in a statement.