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Focus: Coffee appeal grounds upheld

16 August 2011

In brief: The Full Court of the Federal Court has overturned an earlier decision that servingware maker Bodum's reputation in its 'Chambord' coffee plunger was 'distinctly tied' to its Bodum name. Partner Tim Golder (view CV) and Senior Associate Anna Thorburn report on this latest decision.

How does it affect you?

  • The decision of the Full Court will be good news for those seeking to protect the 'get up' of their products.
  • The decision has the effect of giving quasi protection for shape where there is no design registration.

Background

Following Justice Middleton's first instance decision in February 2010, Bodum appealed against the finding that DKSH Australia Pty Ltd had not engaged in misleading or deceptive conduct or passing off by marketing and selling its Euroline coffee plunger, which is similar to Bodum's Chambord coffee plunger.

A key aspect of the first instance decision was the finding that Bodum's reputation did not lie in the 'naked' features of the Bodum products, but was 'distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name.'1

The decision

The Full Court of the Federal Court2 overturned Justice Middleton's decision, holding that DKSH had engaged in misleading and deceptive conduct and passing off by its sale of the Euroline coffee plunger.3

Secondary meaning or independent reputation

A central issue in the appeal was Bodum's criticism that the trial judge failed to properly consider the advertising material put before the court as evidence in support of Bodum's submission that it had a secondary meaning or independent reputation in the features of the Chambord coffee plunger.4

Justice Greenwood examined the 'vast' advertising and promotional material put before the court, which included 'catalogues, brochures, newspapers and magazine advertisements, press releases, promotional television material, internet websites, trade fairs, displays with retailers'5. Much of the material depicted close-up photos of the Chambord coffee plunger. Some of the material depicted the Chambord coffee plunger in use. Much of the material, however, featured some reference to the Bodum name or trade mark.6

After considering the material and the reputation arising from it, Justice Greenwood was satisfied that the evidence established '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 that this secondary reputation was not 'distinctly tied' to the Bodum name.7

Did DKSH do enough to distinguish its coffee plunger?

Justice Greenwood held that DKSH had not done enough to distinguish the Euroline coffee plunger from the Chambord coffee plunger.8 In considering that question, Justice Greenwood looked at the Puxu9 case, which set down the general principle that '[i]f an article is properly labelled so as to show the name of the manufacturer or the source of the article, its close resemblance to another article will not mislead an ordinary reasonable member of the public'10.

DKSH argued that the branding on the box for its Euroline coffee plunger was sufficient to bring it within the operation of the principle in Puxu.

Justice Greenwood stated that 'the true operation of the [Puxu] principle is that all of the contextual circumstances must be considered'11. In doing so, Justice Greenwood made a number of key observations in support of his finding against DKSH.

  • There was in fact significant evidence of the shape of the product having a reputation independent from the 'Bodum' name.
  • The respective products were often displayed outside of their packaging (although the packaging might be close by).
  • In many instances only one of the products is available in a particular store so consumers cannot make a comparison.
  • The Euroline coffee plunger copies the features of the Chambord coffee plunger.
  • DKSH's product does not have its trade mark on it – only on the packaging, and this was not enough.
  • In Puxu, the products themselves had labels which were in the sorts of places where consumers would look for a label.
  • The name used by the respondent 'Euroline' was descriptive and not well known, and was therefore not sufficient to clarify the position for consumers.
  • The use of a small sticker stating 'Made in Taiwan' on the base of the Euroline coffee plunger was not sufficiently distinguishing.

Justice Greenwood also disagreed with the trial judge's approach to the 'impulse purchase' cases, stating that it was 'an error of principle to simply put cases such as Red Bull and Apand to one side as purely "impulse purchase" cases in the circumstances of this case'12.

The Full Court also sought to distinguish (and give some warning about) the comment from the Mars case that Mars had become 'a victim of its own success' by so heavily promoting its distinctive product in conjunction with its trade mark, that in the absence of the mark no one would be likely to be misled. In the Mars case, a key feature of the get-up was 'the highly stylized and dominant word Maltesers' which appeared on the box.13 In contrast with the Bodum case, the confectionary product was boxed and unable to be independently inspected by consumers prior to purchase.

Dissenting judgment

Justice Buchanan gave a strong, concise dissenting judgment which shows the Judge's disquiet with the conclusions reached, in particular as to the consequence of a de facto protection for shape.14 Justice Buchanan referred to the fact that Bodum did not have independent proprietary rights or statutory protection, for example, by way of a design registration.15

Justice Buchanan disagreed with the majority judgment that the Puxu case 'depended on [the adequacy of] labelling'.16 His Honour approved Justice Brennan's statement in Puxu that the 'protection afforded by the common law stops short of according to a manufacturer a monopoly right to the manufacture and sale of goods of a particular design unless he is the owner of a design validly registered under the Designs Act 1906 (Cth) in respect of goods of that kind.' 17

Conclusion

Despite the dissenting judgment of Justice Buchanan, parties looking to rely on 'misleading and deceptive conduct' and passing off claims to protect product designs now have Full Federal Court authority to point to in support of such claims. However, such claims will depend on the relevant 'contextual circumstances', and do not replace the value of proprietary intellectual property rights such as design registrations.

Footnotes
  1. Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23 (2 February 2010) at [82].
  2. per Greenwood and Tracey JJ, Buchanan J dissenting.
  3. Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 (5 August 2011).
  4. Ibid. at [66].
  5. Ibid. at [134] (examination of advertising and promotional material [133] to [178]).
  6. Ibid. [187].
  7. Ibid. [197].
  8. Ibid. [244].
  9. Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.
  10. Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 per Chief Justice Gibbs at 200.
  11. Bodum at [261].
  12. Ibid. [262]. The trial judge distinguished those cases on the basis that they related to cheaper products where a consumer would be instantly drawn to the look and feel of the get-up and more likely to mistakenly select the respondent's product in the belief they were buying the applicant's product.
  13. Ibid. [197].
  14. Ibid. [273] – [298].
  15. Ibid. [279].
  16. Ibid. [292].
  17. Ibid. [290].

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