The recent proceedings commenced by Koninklijke Douwe Egberts BV (KDE) and Jacobs Douwe Egberts AU Pty Ltd (JDE AU) against Cantarella Bros Pty Ltd (Cantarella) in the Federal Court represents another battle in the ongoing coffee brand trade mark wars being waged in Australian courts (most recently where the Full Federal Court considered the validity of Cantarella’s ORO mark).
While the claims being made in the KDE case were not unusual (the case involved allegations of trade mark infringement, Australian Consumer Law (ACL) contraventions and passing off), the trade mark at the centre of the case was somewhat unusual, being a 'shape' mark relating to the shape of a container.
The decision of Wheelahan J, handed down on 7 November 2024 ([2024] FCA 1277), provides useful guidance as to the validity of registered shape marks, the use of product containers as trade marks, and an analysis of deceptive similarity in the context of a shape mark.
The facts
The case concerned the well-known coffee brands 'Moccona' (the applicants’ brand) and 'Vittoria' (the respondent’s brand).
The focus of the case was the shape of a glass jar in which the respondent, Cantarella, had marketed and sold a Vittoria-branded 400-gram instant coffee product since August 2022. A representative image of the Vittoria product is shown below:
The first applicant, KDE, is the registered owner of a shape mark, being a trade mark comprising the three-dimensional shape of a container (the KDE shape mark). The second applicant, JDE AU, sells Moccona-branded instant coffee products in Australia in various packages and containers, including glass jars using the KDE shape mark.
An example of a Moccona-branded glass jar using the KDE shape mark is shown below:
The allegations and key findings
The applicants commenced proceedings against Cantarella alleging that Cantarella’s jar infringed the KDE shape mark. In addition, the applicants alleged that, by the use of its glass jar, Cantarella had engaged in misleading and deceptive conduct in contravention of the ACL and passing off.
Cantarella denied the applicants’ claims, and filed a cross-claim seeking cancellation of the KDE shape mark, or removal of the mark from the Register, on various grounds, including (amongst others) a lack of distinctiveness, a lack of intention as at the priority date to use the mark as a trade mark, and non-use of the trade mark as a trade mark since the priority date.
While the Court dismissed Cantarella’s cross-claim seeking cancellation or removal of KDE’s shape mark, the Court also dismissed the applicants’ infringement claim against Cantarella, finding that:
Cantarella had not used its jar as a trade mark
even if Cantarella had used its jar as a trade mark, the Cantarella jar was not deceptively similar to the KDE shape mark and, accordingly, would not have infringed that mark.
Relying largely on the reasoning set out in relation to the analysis of deceptive similarity, the Court also dismissed the ACL and passing off allegations against Cantarella.
Reasons for the decision
Cancellation / removal of the KDE shape mark
Wheelahan J dealt first with Cantarella’s claims that the KDE shape mark should be cancelled or removed from the Register. Ultimately, his Honour was not satisfied that any ground of cancellation or removal was established.
In relation to distinctiveness, his Honour found that the KDE shape mark “is not to any extent inherently adapted to distinguish KDE’s goods” from those of other traders, and that “the KDE shape mark is both primarily functional and, to the extent that it is not functional, it draws on features of the common heritage [that is, features of old-fashioned jars] that are not apt to distinguish the goods of any one trader”.
Wheelahan J then went on to consider whether the KDE shape mark had acquired distinctiveness through use as a trade mark in relation to relevant coffee products before the priority date, and in so doing, summarised the existing case law in relation to shape marks. His Honour noted that “it does not follow that consistent use of a container will constitute the use of its shape as a mark. More is required, in that the shape of the container must be used to distinguish the goods from those of other traders”.
Examining the evidence of use of the KDE shape mark in the decades before the priority date, his Honour found that it had acquired distinctiveness, including for the following reasons:
The Moccona jars using the KDE shape mark were aesthetically distinct, with the most notable characteristics “involving the combination of the shoulder, the opening of the jar, and the stopper lid, which are depicted in the visual representation of the shape recorded on the Register”.
Over several decades, the applicants had “developed a significant association between their coffee products and the jar shape in which those products were sold”.
In the two decades immediately preceding the priority date for the KDE shape mark (being 7 January 2014), “there were no competitors using jars that were apt to detract from the effectiveness of this use as a badge of origin”.
Taking into account the evidence of the applicants’ longstanding extensive advertising campaigns in which the KDE shape mark was a prominent feature – including television advertisements featuring Moccona coffee jars and lids significantly not bearing Moccona labels (for example as a candle or keepsake holder) – the applicants had “clearly deployed the KDE shape mark as a badge of origin in the last decade before the priority date”.
His Honour concluded that “this amounted to such significant use of the KDE shape mark as a badge of origin before the priority date as to satisfy the test of use” under the relevant section of the Trade Marks Act (section 41(3)(b)).
It is apparent from the decision that the applicants had spent a significant amount on their advertising campaigns over the years, and enjoyed substantial sales and a major share of the instant coffee market in Australia. However, the details in this regard were the subject of confidential evidence.
For the reasons summarised above, his Honour dismissed the claims by Cantarella that the KDE shape mark should be cancelled or removed for lack of distinctiveness, lack of intention as at the priority date to use the mark as a trade mark and non-use of the mark as a trade mark since the priority date.
Infringement of the KDE shape mark by Cantarella
As mentioned above, the applicants contended that Cantarella had infringed the KDE shape mark by selling its 400-gram instant coffee product in a cylindrical glass jar with a glass stopper lid.
This gave rise to two questions for the Court: (1) did the use by Cantarella of its jar constitute use of the jar as a trade mark and (2) was Cantarella’s jar substantially identical with, or deceptively similar to, the KDE shape mark?
Was Cantarella using its jar as a trade mark?
In relation to the first question, Wheelahan J found that Cantarella had not used the Cantarella jar shape as a trade mark. Rather, his Honour found that “the Cantarella jar shape … is simply functioning as the shape of a receptable that fits in with the overall market positioning of the Vittoria 400-gram product, and not as a badge of origin sufficient in itself to distinguish Cantarella’s instant coffee from the instant coffee of other traders”.
His Honour observed that:
The Cantarella jar itself was fairly plain, making it less likely that the shape of the jar itself serves to distinguish the Cantarella product to any extent from those of other traders.
Cantarella’s advertisements did not explicitly draw attention to the shape of the jar; nor did they expressly ask consumers to use it as a point of distinction from the goods of other traders.
The shape of the jar is “swamped” by the use of the Vittoria branding in numerous locations on the jar (and elsewhere), further undermining the argument that the shape of the jar itself was functioning as a trade mark.
Cantarella’s advertisements for its product were to be contrasted with those deployed by the applicants (discussed above), with the latter prominently featuring the shape of the Moccona jar.
Was the Cantarella jar deceptively similar to the KDE shape mark?
In light of Wheelahan J’s finding that Cantarella was not using its jar as a trade mark, the applicants’ claim that Cantarella was infringing the KDE shape mark was doomed to fail. However, his Honour nonetheless addressed the applicants’ claim that the Cantarella jar shape is deceptively similar to the KDE shape mark, and concluded that it is not.
Wheelahan J restated the principles relevant to the assessment of deceptive similarity, as follows:
“The question of deceptive similarity is concerned with the impression that would be produced on the mind of a potential customer”, noting that “the notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration – here, coffee and instant coffee”.
The “notional buyer has no knowledge about any actual use of the registered mark, the actual business of its owner, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing, or any reputation associated with the registered mark”.
The notional buyer “who sees the impugned mark must be attributed an imperfect recollection of the mark as registered”.
Applying these principles, his Honour:
Accepted that purchasers of instant coffee do not spend a long time deciding which product to purchase, and that this informs the level of detail that should be attributed to the notional buyer’s “imperfect recollection” of the mark.
Found that 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.
Even taking into account this imperfect, and rather vague, recollection, Wheelahan J did not consider there to be a real, tangible risk that a notional buyer “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”.
Indeed, his Honour concluded that there were three features that were essential to the imperfect recollection that the notional buyer would have of the KDE shape mark, namely its “cylindrical body with, in roughly its top third, a shoulder that slopes to a thick neck ring surmounted by a two-tiered lid".
In describing the key features of the Cantarella jar, his Honour concluded: “Having regard to these key features of an otherwise fairly plain shape, the notional buyer would be left with a strikingly different impression from the effect produced by the KDE shape mark. 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”.
Key takeaways
The owner of a shape trade mark registration faces particular challenges when seeking to enforce the registration as follows:
There is a risk that the alleged infringer will counter claim and seek to cancel the shape registration on the basis of lack of distinctiveness or other grounds.
The need to establish that the alleged infringer is using the shape of its goods or its containers (as applicable) as a trade mark / badge of origin (and not merely for functional purposes), noting the applicant recently did not succeed in cases involving a light switch and a moulded plastic chair.
The need to establish that the respective shapes are deceptively similar (which is likely to be more complex in the context of shapes), noting the applicant recently did not succeed in cases involving a dishwasher tablet, a soft drink bottle, and a moulded plastic chair.
Implications
Shape trade marks can be a very valuable asset in connection with protecting a successful product (which may be as diverse as a dishwasher tablet, sneaker, plastic chair, beverage bottle, light switch or chocolate bar).
However, there may be considerable challenges in connection with securing and enforcing such registrations. Care and attention must be given to employing long term effective and targeted advertising and marketing strategies highlighting the shape separately and using the shape as a trade mark prior to filing the application to register the shape mark.
The KDE case is also a reminder of:
The challenges involved in establishing that a 3-dimensional object is being used as a trade mark.
The difficulties involved in applying the ordinary legal principles with regard to deceptive similarity to shape marks and 3-dimensional objects.
This is a slightly revised version of an article first published in the LexisNexis Intellectual Property Law Bulletin 2025 (Vol 37 No 2 & 3).