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 Group.
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 Coffee Plunger.
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 Chambord.
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
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