Coffee producers left with bitter taste in their mouths after shape mark infringement case rejected by Federal Court of Australia

Australians love their coffee, so this Kat was not surprised to see another trade mark dispute between coffee producers. This time, the case concerned the shape of the instant coffee jars that populate many homes and workplace kitchens. 

Example jar of
“Moccona Classic Medium Roast”

On Thursday, the Federal Court of Australia handed down its judgment in Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277. The case involved allegations of trade mark infringement, breaches of the Australian Consumer Law, and passing off. The respondent cross-claimed for cancellation of the trade mark on the grounds of distinctiveness and lack of intention to use the mark (amongst other arguments).

The Facts

Justice Wheelahan, sitting as a single judge of the Court, had a lot of evidence to wade through. The applicant, Koninklijke Douwe Egberts BV ("KDE"), owns a shape mark in Australia (see image from the register below) constituted by the shape of a container. The trade mark is used to sell instant coffee under the MOCCONA brand name, notably jars of “Moccona Classic Medium Roast” (see example right). KDE obtained registration of its shape mark with effect from 7 January 2014 in relation to “Class 30: Coffee; instant coffee”.

Vittoria 400-gram freeze-dried
"Classic" coffee

The respondent, Cantarella Bros Pty Ltd, was incorporated in Australia in 1951. It sells coffee products, notably under its major brand, Vittoria, which launched in 1958 and was the highest selling brand by value in Australia in the bean and ground coffee market in 2023. Readers who are familiar with Australian trade mark law will recognise the respondents from the important High Court decision in Cantarella Bros v Modena Trading [2014] HCA 48.

In 2021, Cantarella launched a 100-gram freeze-dried instant coffee product under the Vittoria brand, sold in a cylindrical glass jar with a gold-coloured plastic lid. In 2022, Cantarella then expanded this range to a 400-gram freeze-dried instant coffee product under the Vittoria brand, sold in a cylindrical glass jar with a glass stopper lid. This product also came in four flavour variants: "Classic" (see image below), “Italian”, “Mountain Grown”, and “Latte”. 

KDE alleged that the new jars infringed their shape mark under s 120 of the Trade Marks Act 1995. KDE also argued that Cantarella had contravened the Australian Consumer Law (ACL) and engaged in passing off.

The Decision

Cross-claim for cancellation of the shape mark

AU Trade Mark No. 1599824.
The KDE shape mark.

The Court first addressed the cross-claims for cancellation of the shape mark. On the issue of distinctiveness, Justice Wheelahan found that the shape mark was not to any extent inherently adapted to distinguish KDE’s goods. He noted that many of the features of the jar were dictated by functional considerations, but that the shape was also marked by some aesthetic features with no functional purpose. However, these features were intended to evoke the aesthetic of an old-fashioned jar, and to that extent, the shape mark "draws on features of the common heritage that are not apt to distinguish the goods of any one trader."

The Court then turned to the question of whether the shape mark had acquired distinctiveness. Justice Wheelahan summarised the key cases on shape marks, especially those with a functional element, and considered the evidence of use. It appeared that the applicants had been the only users of the shape in Australia in relation to coffee for a period of almost 20 years before the priority date. The jars, without any labels or visual adornment, had prominently featured in several television commercials for Moccona coffee. Justice Wheelahan concluded:

As the facts stand ... 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 purpose 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 applicants’ use.

Given the factual findings on acquired distinctiveness, the Court dismissed the cross-claim that, as at the priority date, KDE did not intend to use or authorise the use of the shape mark in Australia as a trade mark. The Court also dismissed the argument that KDE had not, in the three years prior to the filing of the cross-claim, used the shape mark in Australia as a trade mark. This claim had opened up questions about the applicant's complex corporate group structure, but this Kat thinks it suffices to say that the shape mark owner, KDE, is a Dutch wholly-owned subsidiary which ultimately has the same parent company as Jacobs Douwe Egberts AU Pty Ltd ("JDE AU"). JDE AU took over the importation and distribution of Moccona-branded instant coffee in Australia from 1992 onwards and were the company using the shape mark in Australia. Therefore, JDE AU was an authorised user of the shape mark under the control of KDE, so JDE AU's use of the mark could be attributed to KDE as the registered owner.

Advertisement in the 12 October 1977 edition
of The Australian Women’s Weekly
for Moccona

Cantarella also argued that the KDE shape mark was entered on the Register "as a result of fraud, false suggestion or misrepresentation". The first examination report in 2014 raised issues about inherent distinctiveness of the shape mark, and KDE responded with a declaration that the "unique" shape of the jar had been used in Australia since 1960 without substantial change since then (amongst other statements) to support a finding of acquired distinctiveness. However, the Court noted that the documentary evidence only supported a finding that Moccona-branded instant coffee was sold in a jar that substantially resembled the KDE shape mark by October 1977 (see photo right). Nevertheless, this false statement was not material: the second examination report stated that the Office received no documentary evidence demonstrating use any earlier than 2008 and that the examiner had "examined this application based on the evidence submitted and my own additional research." Therefore, the trade mark had not been registered on the basis of representations that were false in material particulars.

Finally, Cantarella argued that the shape mark had been registered in bad faith, since KDE would have been aware that other traders had been selling instant coffee in similar jars in the 1980s and 1990s, and was therefore seeking to acquire a monopoly over a generically shaped container used by other traders. However, bad faith was a serious allegation, and absent more evidence of KDE's state of mind in 2014, the Court was not satisfied that Cantarella had provided a factual foundation for this claim.

Infringement of the Shape Mark

Australian trade mark law states that there is only infringement where the sign as been used as a trade mark. KDE argued that the Cantarella jar shape was aesthetically arresting and attractive, which made it more likely to distinguish and thereby operate as a trade mark. However, the Court considered the Cantarella jar to be "relatively plain". As for the use of the sign in advertising, the promotional materials for Vittoria instant coffee did not draw express attention to the shape of the jar itself. Justice Wheelehan noted that "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 — even though the packaging will almost always be bigger than the label affixed to it." KDE failed to show that the shape of the jar itself had been used as a badge of origin.

Whilst the above finding meant that the infringement claim must fail, Justice Wheelahan still addressed the arguments about deceptive similarity. Here, the Court applied the guidance from the recent High Court judgment in Self Care. In considering the impression of the notional buyer of coffee with their imperfect recollection of the mark as registered, not taking into account the Vittoria logo or any other material when conducting the comparison, the Court found that the buyer would have a distinct visual impression of the Cantarella jar shape as noticeably taller in its proportions, with a compressed neck section, and a plain, low lid. Even with their imperfect recollection, there was no real risk that a notional buyer could confuse the Cantarella jar shape with the KDE shape mark.

ACL and Passing Off

Turning to passing off (which was addressed together with the ACL claims), the Court applied the formulation from Jif Lemon and focused on the question of whether the respondent's representation would lead a consumer who is familiar with the Moccona product to think there is "a commercial connection" between the allegedly infringing goods and those of the claimant. 

Unlike for trade mark infringement, this analysis considered the overall appearance of the Vittoria 400-gram jar situated within the context in which consumers come across it. Whilst the Court accepted that the was goodwill and reputation associated with the Moccona get-up (including the gold label over the jar), and the “Original Classic” variant of the Vittoria 400-gram product bore a gold label, KDE was arguing passing off for all variants, which had other colours to their labels. Furthermore, the “Vittoria” name and logo was prominent, repeated, and obvious on the jars: the Vittoria 400-gram product bore a Vittoria logo on its front, its back, its lid, its base, and on the join between its lid and its body. "Vittoria" is a well-known brand name in Australia and consumers were "not likely to draw a blank as to the commercial source of instant coffee if it is labelled as "Vittoria"." Therefore, the ACL and passing off claims failed.

Final Thoughts

With so many factual and legal issues to address, the Court had to deliver a very hefty judgment. However, this also means that the decision provides a nice, up-to-date survey of many important aspects of Australian trade mark law. We will wait to see whether any of the myriad of legal issues raised in this case will be appealed to the Full Federal Court.

All images obtained from the judgment here.