Coffee wars plunge into shape protection

In the early hours of every morning, this Kat performs a ritual which will be very familiar to some readers. She (a) takes her clean cafetiere from the cupboard; (b) adds two big scoops of ground Italian coffee; (c) adds boiling water; (d) pushes the plunger down and, (e) hopes for the best. Accordingly, she has been reading with interest the recent decision in Australia concerning an alleged case of misleading and deceptive conduct and passing off between two manufacturers of cafetieres.

Peter Bodum A/S ('Bodum'), a Danish company, was founded in 1944. Since at least April 1986, Bodum widely advertised the Bodum Chambord Coffee Plunger (BCCP) and made substantial sales in Australia. The BCCP possessed a number of readily identified and reasonably distinctive features, being marked with the Bodum name in a number of places. When sold it also bore a prominent sticker on which the Bodum logo appeared.

DKSH Australia Pty Limited ('DKSH'), an Australian
company, was a subsidiary of a Swiss company DKSH Holdings Ltd. DKSH imported into Australia, and sold by wholesale, homeware and kitchen products including the Euroline Coffee Plunger. The Euroline Coffee Plunger possessed almost all the same physical features as the BCCP but is not marked in the same way. When sold it carried a sticker on its base which says 'Made in Taiwan'.

Not surprisingly, Bodum was far from pleased by DKSH's Euroline Coffee Plunger product on account of its similarities to the BCCP. It commenced actions for misleading and deceptive conduct under ss 52 and 53 of the Trade Practices Act 1974 and for passing off in the Federal Court. In particular, Bodum contended that the BCCP is packaged for sale in packaging that prominently depicts a photograph of the coffee plunger, thus giving prominence and emphasis to the design features of the plunger within, rendering, it is said, the packaging, in a practical sense, transparent to the consumer. According to Bodum, it had acquired a substantial and valuable reputation in the features and distinctive shape of the BCCP -- which meant that the sale in Australia of coffee plungers which embody those features (or a significant number of them) and the shape signifies to consumers that such a coffee plunger is the BCCP or is otherwise authorised by Bodum. Finally, Bodum contended that (independent of trade marks) a secondary meaning or independent reputation can subsist in the features and shape of an article or the get-up for a product which operates to associate products of that shape or those features in the mind of consumers with a particular trader although it is not necessary that the consumer knows the name of that trader.

At first instance in the Federal Court Justice Middleton found that DKSH had not engaged in misleading or deceptive conduct or passing off by marketing and selling its Euroline coffee plunger: Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23. At [82] he stated:

'I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger ... features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features ... (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products ... in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum'.

Bodum appealed to the Full Court of the Federal Court, being was critical of Middleton J's findings that the BCCP had not acquired a secondary meaning or independent reputation. In particular, it submitted (at [66]) that Middleton J 'did not look at the vast body of advertising material put in evidence and relied upon by Bodum as the foundation of its secondary meaning or independent reputation for the features of the product'.

A majority of the Full Federal Court (Greenwood and Tracey JJ; Buchanan J in dissent) reversed the decision of Middleton J and found in favour of Bodum: Bodum v DKSH Australia Pty Ltd [2011] FCAFC 98.

So what changed?

Writing the majority judgment, Greenwood J reviewed the relevant advertising material and was satisfied (at [197]) that

'the evidence establishes a very significant secondary reputation in the features of the Bodum Chambord Coffee Plunger associated in the mind of consumers with Bodum as the manufacturer of the product and, with respect to the primary judge, that reputation is not “distinctly tied” to Bodum in the sense that in the absence of the name Bodum there cannot be a secondary reputation in the features of the product'.

On this basis, according to Greenwood J (at [198]), the real question in the case is 'whether DKSH has done enough having regard to all the relevant differentiation factors to distinguish its rival product from the Bodum product'. Greenwood J answered the question in the negative. His Honour considered that:

• The BCCP enjoyed a substantial or significant reputation by reference to its features and shape (at [220]).
• 'Sales' of the BCCP were substantial, 'dwarfing the respective sales of ... DKSH' (at [222]).
• DKSH had not undertaken any retail advertising of its Euroline Coffee Plunger during 2008 or 2009 (at [223]).
• BCCP's features were 'strikingly similar' to the EuroLine Coffee Plunger (at [225]). Further, 'for all practical purposes, the overall appearance of the two products is the same' (at [227]).
• The Euroline Coffee Plunger had no branding, such as symbol, name or logo, on the product itself (at [231]). The branding was only on the packaging and this was not sufficient.
  
• The Euroline brand was 'not well known', being an 'unknown brand' (at [235]). It was 'not distinctive' and was thus 'very likely to be regarded as an abbreviated description of a product having a provenance as a product within a line of European products' (at [236]).

Having regard to these factors Greenwood J found (at [236]) 'it difficult to accept that DKSH has distinguished its product'.

This Kat says this decision should be welcomed by those seeking to rely on misleading and deceptive conduct and passing off claims to protect their product designs or 'get up'. However, he wonders whether the decision could mark the start of a slippery slope for seeking quasi protection for shapes rather than obtaining a registered trade mark or design.

Merpel, rather cheekily, questions whether the following cartoon (as shown on the Bodum website when trumpeting its success against DKSH) is the best way to encapsulate the majority decision of the Full Federal Court...