Shape trade marks and use of a shape as a trade mark.
Coca Cola has sold its beverage in a distinctive contoured
bottle (Contour Bottle) for over 75 years in Australia and holds 4
registered Australian trade marks relating to the outline or shape
of the bottle:
Coke's 2D/3D image trade marks
Coke's silhouette/outline trade marks
Pepsi began using its "Carolina" shaped bottle in
Australia in 2007 in a limited way:
Coke commenced proceedings against Pepsi alleging that
Pepsi's Carolina bottle infringed Coke's trade marks and
that Pepsi's use of a similar bottle was misleading and
deceptive conduct in breach of section 18 of the Australian
COURT DECISION AND REASONING
Coke's trade marks were not infringed and Pepsi did not
infringe the Australian Consumer Law.
The multiplicity of bottle shapes does not mean that consumers
treat each shape as a badge of origin – there were at least 4
other soft drinks on the market sold in waisted bottles of varying
The bottle itself is not the product, it is the container for
the product, meaning cases relating to shape trade marks for the
actual product did not apply.
A key issue is whether Pepsi was using the shape as a trade
The relevant test is as set out by Sundberg J in Global Brand
Marketing Inc v YD Pty Ltd  76 IPR 161 (concerning a shape
trade mark for shoes):
Whether a shape is used as a trade mark is a matter for the
Court and is not determined by the absence of evidence;
The context of the use is critical and will generally determine
whether the use is trade mark use;
Use covers a spectrum from shapes which are features that are
purely functional at one end and shapes or features that are
non-descriptive and non-functional ("arresting of
appearance" or more attractive) at the other.
The Carolina Bottle is distinctive and functions as a trade mark
as consumers would associate it with Pepsi.
Coke provided no evidence that consumers had been misled by
Pepsi's use of the Carolina Bottle.
The judge rejected Coke's argument that the overall
impression a consumer would have of Pepsi's Carolina Bottle is
a low-waisted contoured bottle (like Coke's). Rather, consumers
would focus on the waist, horizontal wave and neck of Carolina; in
contrast the vertical flutes and clear belt band of Coke's
Contour Bottle and trade mark (not present in the Carolina) were
the distinctive elements.
Considered as a whole, the Carolina Bottle is not deceptively
similar to the Coke 2D/3D marks as it does not have the fluting or
the band, has a horizontal wave feature (which the Coke marks do
not have), has a waist which is higher and more gradual, has flat
sides, not curved sides, has a different neck shape and has a twist
top seal (not a cap lid seal).
The Carolina Bottle is not deceptively similar to Coke's
silhouette trade marks for the same reasons.
The silhouette of the Carolina Bottle does not function as a
trade mark (meaning that Coke's silhouette/outline trade marks
were not infringed) and even if it did, the silhouette was not
deceptively similar to Coke's silhouette trade marks for the
same reasons set out above.
In relation to the misleading and deceptive conduct argument,
while enough consumers may make their initial selection based on
bottle shape, the bottles are different (as set out above) and each
bottle is clearly and prominently labelled with COCA COLA or PEPSI
(both well-known brands), removing any real likelihood of
If deceptive similarity is not established for trade mark
purposes, misleading and deceptive conduct under the Australian
Consumer Law is unlikely to be established.
Coke does not have a reputation in the outline or silhouette of
the bottle alone.
Note: Coca Cola lost a similar case against Pepsi before the
High Court of New Zealand recently.
Coca Cola has appealed this Australian decision.
Shapes may be used as trade marks even if they also have a
Shape marks are worth registering but reasonably small
differences will avoid infringement.
Where other branding (particularly word branding) is present, it
will be more difficult to establish misleading and deceptive
conduct due to the countering influence of other branding,
particularly for well known marks.
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.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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