Trouble International Lawyers Network
In a recent Federal Court decision, Justice Michael Wheelahan has dismissed claims against Cantarella Bros Pty Ltd (Cantarella Bros) by international coffee giant, Koninklijke Douwe Egberts BV (KDE), that its Vittoria glass coffee packaging was too similar to the famous Moccona coffee jar.
Background
The applicant in Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277, KDE is an American-Dutch coffee giant who is a registered owner of a shape mark constituted by the shape of a cylindrical container with a stopper in “Class 30: Coffee, instant coffee”. This shape mark is utilised to sell instant coffee under the “Moccona” brand name.
KDE claimed that the respondent, Cantarella Bros, in releasing their 400-gram instant coffee product within its brand name “Vittoria”, in a cylindrical jar with a stopper lid, infringed its intellectual property rights by using a jar for its coffee beans that was deceptively similar to the shape mark for the glass jar registered by KDE.
KD also alleged that Cantarella Bros engaged in passing off and misleading or deceptive conduct in contravention of the Competition and Consumer Law Act 2010 (Cth) (the ACL) by using a jar so similar to its own Moccona jar.
Cantarella Bros denied that it had infringed the KDE trademark and by cross-claim, sought orders for the removal of KDE shape mark from the Trade Marks Register. Can Additionally, Cantarella Bros argued that the shape mark was registered “as a result of fraud, false suggestion or misrepresentation”.
Decision
Ultimately, the court determined that Cantarella Bros’ Vittoria jar was not deceptively similar to the KDE shape mark and it had not infringed KDE’s intellectual property rights.
KDE’s misleading or deceptive conduct and passing off claims also failed on the basis that there was no real risk that Cantarella’s use of its jar would mislead or deceive persons familiar with the Moccona jar – the “Vittoria” name was clear and repeated on its packaging, and consumers were “not likely to draw a blank as to the commercial source of instant coffee if it is labelled as “Vittoria”.
On the argument of distinctiveness, Justice Wheelahan contended that customers could recognise the Vittoria jar as “noticeably taller in its proportions, with a compressed neck section, and a plain, low lid.” Moreover, Justice Wheelahan remarked, “I do not consider there to be a real, tangible risk that a notional buyer, with recollection only of the [Moccona] shape mark’s rough proportions and general share, would be perplexed, mixed up, caused to wonder, or left in doubt, about whether instant coffee sold in the [Vittoria] jar shape has the same commercial source as coffee sold in the [Moccona] shape mark.” Therefore, there was no real risk that a customer would confuse the Cantarella jar shape with the KDE shape mark.
Cantarella’s cross-claim was also dismissed, with the court finding that there were no grounds for removal of KDE’s shape mark because the registration was not made in bad faith, nor was it entered on the Trade Mark Register as a result of fraud, false suggestion or misrepresentation by KDE.
Key Takeaways
Justice Wheelahan’s decision demonstrates the importance of product design as a component of brand identity in the Australian market and reinforces the courts’ approach to protecting distinctive trade dress elements. This case reinforces that a unique product design can acquire secondary meaning in the eyes of consumers, warranting protection even within industries where some design elements may be shared across competitors.
The ruling also highlights that Australian courts are likely to protect distinctive product shapes that consumers strongly associate with a specific brand, particularly when that shape serves as a significant component of a company’s market identity. The
