Legal action has been initiated in the Federal Court of Australia between Koninklijke Douwe Egberts BV ("KDE") and Jacobs Douwe Egberts AU Pty Ltd ("JDE"), as the applicants, with respect to the coffee brand, Moccona, against Cantarella Bros Pty Ltd ("Vittoria"), as the respondent, in relation to promoting and selling freeze-dried coffee under the Vittoria brand in a glass jar.
KDE is the registered owner of a three-dimensional shape trade mark in the form of a glass jar and lid,1 and JDE is alleged to be the authorised user in Australia of the trade mark.2 The applicants claim that they have advertised and sold coffee products in a clear glass jar since at least 1960, including under the Moccona brand and have alleged that Vittoria has engaged in infringement by marketing and selling freeze-dried coffee under the Vittoria brand in a glass jar that is "deceptively similar" to KDE's trade mark.3 Vittoria has been further accused of engaging in the tort of passing off as well as in misleading or deceptive conduct and the making of certain false representations under the Australian Consumer Law.4 Vittoria has cross-claimed, arguing that KDE's shape trade mark registration should be cancelled on the basis that: the mark does not distinguish the applicant's goods from those of other persons, that the application for registration was accepted on the basis of false evidence or representations, and that as at the priority date, KDE did not intend to use, authorise the use of or assign the mark for use in relation to the registered goods.5 Vittoria has made further claims that the shape trade mark registration should be removed on the ground of non-use as a trade mark. That is, that "the applicant's glass jar is a utilitarian shape which does not involve the use of a trade mark for reasons including that it is not inherently distinctive".6 Vittoria has also claimed that the applicant has made unjustified threats to it which have caused loss and is seeking injunctions and damages.7
Justice Wheelahan from the Federal Court of Australia (in the interlocutory application hearing), has foreshadowed that it is evident from the pleadings and submissions of the parties that this is going to be a "hard fought litigation".8 For now, we watch this space and await the outcome of these proceedings.
Footnotes
1 Australian trade mark registration no. 1599824.
2 Koninklijke Douwe Egberts B.V. v Cantarella Bros Pty Ltd (2023] FCA 341 [2].
3 Ibid [2]-[3].
4 Sections 18, 29 and 33 of Australian Consumer Law (Competition and Consumer Act 2010 (Cth)- Schedule 2).
5 Koninklijke Douwe Egberts B.V. v Cantarella Bros Pty Ltd (2023) FCA 341 [4].
6 Ibid.
7 Ibid.
8 Ibid [20].
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