A trademark battle between two prominent coffee companies over the use of a jar design has boiled over in the Federal Court.
Dutch coffee giant Koninklijke Douwe Egberts BV (KDE), the maker of Moccona, took on Australian company Cantarella Bros Pty Ltd over its use of a similar container for its product Vittoria, claiming Cantarella had infringed its shape mark as well as engaged in misleading and deceptive conduct, and committed the tort of passing off.
In his 156-page judgment delivered on Thursday in Victoria, Justice Wheelahan dismissed all of the claims.
KDE, as the registered owner of a trademarked shape of a cylindrical container with a stopper, took aim at Cantarella after it released an instant coffee product under the brand name Vittoria, in a cylindrical jar with a stopper lid, in 2022.
A comparison of the jars in question.
Justice Wheelahan pointed out the trademark, which was registered in 2014, specified no dimensions, colour or material, only a three-dimensional shape.
He ruled the Vittoria jar was not used as a trade mark, and was not deceptively similar to the KDE shape mark, and therefore did not infringe the mark.
KDE had also alleged Cantarella had contravened ss 18, 29 and 33 of Australian Consumer Law, or committed the tort of passing off.
Justice Wheelahan held there was no real risk that Cantarella’s use of the jar would mislead or deceive people familiar with Moccona to believe there was a commercial association between the two products.
Cantarella sought by cross claim the removal of the KDE shape mark from the register under s 88(1) or 92 of the Trade Marks Act 1995 (Cth) on grounds including ss 41 (that the mark did not attempt to distinguish KDE’s good from other goods), 59 (that KDE did not intend to use it as a trade mark), 62A (that registration was made in bad faith) and 88(2)(e) (that the mark was entered on the register as a result of false suggestion or misrepresentation).
It also sought a declaration under s 129(2)(a) of the Act that KDE made unjustified threats of trade mark infringement, with claims for an injunction and damages in relation to them.
Justice Wheelahan found no ground had been established, after considering evidence from experts in marketing and industrial design, and analysing advertisements in various mediums.
“I accept the joint evidence of the industrial design experts that, for glass jars, a round footprint is the commonest and most efficient to make,” he said.
“Their evidence also stated that having a ‘large cylindrical label area’ is a common functional solution, because applying a label to a round jar is the simplest and most cost-effective method of labelling.
“The experts also stated that the diameter of the lid and opening of the jar were smaller than the diameter of the jar, and that this reflected a common functional requirement. Likewise, there was evidence that a flat-topped lid may have the functional benefit of being easier than other lids to stack and transport.”
Justice Wheelahan said the notional buyer, on an ordinary shopping trip, could not be expected to remember anything more specific about the KDE shape mark than its rough proportions and general shape.
“I do not consider there to be a real, tangible risk that a notional buyer, with a recollection only of the KDE shape mark’s rough proportions and general shape, would be perplexed, mixed up, caused to wonder, or left in doubt, about whether instant coffee sold in the Cantarella jar shape has the same commercial source as coffee sold in the KDE shape mark,” he said.
Justice Wheelahan said core features of the KDE shape mark were overall proportions which included “a fairly squat body that sits beneath a slowly sloping shoulder and a tall lid”. They also included the shape of the shoulder and neck; and the shape and height of the lid itself.
“In my view, these three features are essential to the imperfect recollection that the notional buyer would have. The notional buyer would recall the KDE shape mark as a cylindrical body with, in roughly its top third, a shoulder that slopes to a thick neck ring surmounted by a two-tiered lid,” he said.
“The buyer would view the Cantarella jar shape as noticeably taller in its proportions, with a compressed neck section, and a plain, low lid.
“Even with the imperfect recollection outlined above, there is no real risk that a buyer could confuse the Cantarella jar shape, in view of its distinct visual impression, with the KDE shape mark.”
Justice Wheelahan listed the proceeding for further case management, in relation to Cantarella’s claim for damages.
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