An appeal decision of the Federal Court has held that secondary
branding elements such as product shape, can have reputation
independently of the brand name.
Click here to view the two products in question.
InBodum v DKSH Australia Pty Limited, the Court ruled
by a 2-1 majority that DKSH had engaged in misleading and deceptive
conduct and committed the tort of passing off by selling its
'Euroline' Coffee Plunger in competition with Bodum's
Chambord Coffee Plunger.
The Court held that Bodum Group, a Danish home wares company,
had a "very significant secondary reputation in the features
of the Bodum Chambord Coffee Plunger". The Court found this
reputation subsisted even in the absence of branding or trade marks
which would identify the product as one originating from the Bodum
Bodum has marketed and sold the Chambord Coffee Plunger since
1958, and in Australia since 1986. Over the period that Bodum had
sold its Chambord Coffee Plunger, the product was often displayed
out of its packaging, so that the focus was on the appearance of
the product. Due to its extensive marketing, sales and presentation
of its product over such a long period of time, the Court found
that Bodum had developed a reputation in the shape of the Chambord
The Euroline Coffee Plunger began being sold in Australia in
2004 and had a very similar appearance to the Bodum Chambord
product. The Court found that DKSH's efforts to distinguish its
product were insufficient with swing tags and instruction manuals
likely to be lost, discarded or ignored. Similarly, the trade mark
"Euroline", which was used on packaging, was insufficient
to distinguish the copy product from the original Bodum
The Court placed importance on the fact that home wares products
are often displayed out of their boxes. When removed from its box,
the unmarked Euroline plunger was largely indistinguishable from
the original Chambord plunger. The Court noted only minor
differences between the two designs.
Justice Greenwood stated that given the substantial secondary
reputation in the shape and features of the Chambord plunger, DKSH
was under an obligation to mark its product in such a way as to
tell consumers "You are not looking at a Bodum Chambord Coffee
Plunger here". The fact that its own branding was trivialised
was a factor in the decision.
This decision provides encouragement to business owners that
Courts will recognise and protect secondary aspects of branding,
over and above the traditional rights associated with brand name.
The case is particularly important given there have been very few
cases in Australia which recognise the independent repute which can
reside in a shape of a product, or any other element which does not
involve the brand name (such as colour or 'get-up').
Previously courts have found that the Coca Cola contour bottle, JIF
lemon and the Henry vacuum cleaner all had a reputation inherent in
their shape or features.
Businesses should also consider shape trade marks and registered
designs as important means of protecting the three-dimensional
aspects of their products. These forms of intellectual property
provide greater certainty and are cost effective, but this appeal
decision also provides another form of protection in the reputation
afforded to secondary branding elements.
Contributing author: Tim Guy, Lawyer
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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