Australia: Rights and Reputation in Product Look and Feel - Full Federal Court Finds that the sale of similar looking coffee plungers is misleading and deceptive and constitutes passing off

Last Updated: 4 September 2011
Article by Justine Munsie

Owners of distinctive and well known homewares and similar products can take great comfort from this month's Full Federal Court decision in Bodum v DKSH Australia Pty Limited [2011] FCAFC 98.

In a case concerning the Danish design company, Bodum's flagship Chambord coffee plunger, the majority of the court1 confirmed that the look and feel or "get up" of such a consumer product can attain sufficient reputation, independent of its brand name and packaging, such that the sale of look-a-like or copycat products will amount to misleading and deceptive conduct or passing off unless the copies are clearly labelled so as to distinguish themselves clearly to prospective consumers.

The Court found that Bodum, as a result of an extensive advertising campaign in Australia since at least the 1990s, was the owner of a significant reputation in the shape or get up of its Chambord coffee plunger.  In those circumstances, the sale by DSKH from June 2004 of an almost identical looking plunger without any distinguishing branding on the plunger itself was likely to mislead ordinary consumers into believing that the DKSH product was a Bodum Chambord coffee plunger or part of the Chambord line. 

The Full Court noted that "the cases recognise that a trader's goods may, as a question of fact, become distinctive of and associated with a particular trader by reason of the get-up or design of the goods even though other labelling or brand names are also present...".  Crucially, in this case, the Full Court disagreed with the findings of the trial judge2 that the packaging of DKSH's plunger - which was labelled with the brand name EUROLINE - was sufficient in the circumstances to distinguish the respective products.

Whilst the Full Court was at pains to stress that the question of misleading and deceptive conduct/passing off is one of fact, the following issues which contributed to their reasoning should be noted for their potential to apply more generally in similar cases:

  • The Full Court carefully examined the history and extent of Bodum's advertising of its Bodum Chambord coffee plunger, agreeing with the trial judge that it was "vast" and that the sales of the plunger "dwarfed" those of its competitors. Examples of the reach of Bodum's reputation extended to a cameo appearance in the ABC's Kath and Kim program;
  • The Bodum Chambord coffee plunger could be likened to the Jif Lemon container or Henry the vacuum, both famously recognised shapes in the UK and the subject of similarly successful passing off claims;
  • Although there was some evidence of other "copyists" in the market, their numbers had declined in recent years. In any event, DKSH had never directly advertised its Euroline plunger to consumers and therefore had failed to distinguish its product;
  • The evidence showed that coffee plungers are most often displayed for sale out of their boxes - this is where consumers observe, handle them and where consumers are likely to be misled to believe that the Euroline and Chambord were one and the same: "the consumer seeks out the product not the box".
  • Even if consumers saw the brand name EUROLINE on the boxes for the plungers, they were likely to believe, given the strength of Bodum's reputation and that the EUROLINE name was not virtually unknown and not distinctive to DKSH, that the plunger was an extension of the famous Bodum brand.

Importantly for famous brand and design owners, the Court rejected the trial judge's findings that:

  • Bodum had not established any independent reputation in the product shape independent of its well known brand name; and
  • Bodum was the "victim of its own success" (similar to Mars, the owner of Maltesers which had failed in its bid to stop the sale of "Malt Balls" in packets bearing similar colours to Maltesers' packaging.)3

Rather, the Full Court held that Bodum had established a secondary reputation independent of and in addition to the BODUM brand in the features of its Chambord Coffee plunger.  This secondary reputation was such that, unlike Mars in the Maltesers case, those who seek to copy the famous design of the plunger must ensure that their product is clearly distinguishable, including when the product is available without its packaging.


[1] Greenwood and Tracey JJ, Buchanan J dissenting

[2] Bodum v DKSH Australia Pty Limited [2008] FCA 1854

[3] Mars Australia Pty Limited v Sweet Rewards Pty Limited [2009] FCA 606

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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Justine Munsie
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