In this article, we discuss a recent trade mark judgment in Australia relating to coffee and shape trade marks.
Shape trade marks
The case that we discuss is Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (2024) FCA 1277.
Shape trade marks are unusual, but this particular case dealt with the shape of the coffee jar in which the coffee brand Mocconna Classic Medium Roast is sold in Australia.
The claims
There were claims of:
- trade mark infringement
- breaches of Australian Consumer Law (ACL)
- passing-off
There were counter-claims for:
- cancellation of a trade mark registration on the basis of non-distinctiveness
- cancellation of a trade mark registration on the basis of a lack of intention to use the trade mark
The facts
The Dutch company, Koninklijke Douwe Egberts BV (KDE), has an Australian trade mark registration in class 30 for coffee for the shape of the container in which a coffee product is sold in Australia. The brand name under which the product is sold is Moccona.
Cantarella Bros Pty Ltd (Cantarella), an Australian company, has been around since 1951. Coffee is what the company does, and it trades under the brand name Vittoria. The product sells well, and this is no surprise because Australians are partial to coffee.
Alleged infringement
KDE claimed that Cantarella was infringing its registered shape trade mark. It raised Section 120 of the Australian Trade Marks Act 1995, as well as the Australian Consumer Law and the common law action of passing-off.
The court's judgment
Before dealing with the alleged trade mark infringement, the court dealt with:
A counter-claim by Cantarella for the cancellation of KDE's shape trade mark
Judge Wheelahan made the following findings:
- Inherent distinctiveness: The shape of KDE's container was not inherently adapted to distinguish the company's goods. Many of the container's features were dictated by functional considerations, although some were aesthetic and without functional purpose. The judge referred to the container as an 'old fashioned jar' and said that 'the shape mark draws on features of the common heritage that are not apt to distinguish the goods of any one trader'.
- Acquired distinctiveness: There was, however, acquired distinctiveness. The judge made the point that no one else had used the shape for some 20 years:
'The applicants have singled out the Moccona jar for special attention in their marketing activities. They have done so to emphasise the shape of the jar with the objective of using it as a badge of origin. The fact that, on other occasions, the applicants have not sought to single out the shape of the jar does not rob the shape of the jar of the character of a brand, which it has acquired through the applicant's use'.
- Intention to use: Given that the Moccona jar had acquired distinctiveness, the court dismissed a cross-claim based on the argument that, as of the priority date, KDE did not intend to use the shape trade mark as a trade mark.
- Fraud: A claim that the KDE shape trade mark had been entered on the Register as a result of 'fraud, false suggestion of misrepresentation'
- Bad faith: There was a claim that KDE had registered the trade mark in bad faith. The court, however, held that there was no factual foundation for this claim.
Having disposed of the cancellation claim, the court moved on to:
The alleged infringement by Cantarella of the shape trade mark – 'use as a trade mark'
The court made these findings:
- The jar was 'relatively plain'. It was not something that was 'aesthetically arresting and attractive, which made it more likely to distinguish and thereby operate as a trade mark'.
- 'Simply displaying a picture of a product in its packaging does not entail that the shape of the packaging will be used as a trade mark'.
The result is that there was no infringement because KDE had failed to show that the shape of the jar had been used as a trade mark.
Passing-off
The court had to consider whether a person who is familiar with the Moccona product would assume that a commercial connection exists. The judge made the point that Vittoria is a 'well-known brand in Australia', and that consumers will not 'draw a blank as to the commercial source of instant coffee if is labelled Vittoria'.
There was therefore no passing-off.
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.