4/12/24 | Reading time: 3 minutes
In part 3 of this series, we explore a recent shape trade mark dispute that has been brewing in the Federal Court.
In November 2024, the Federal Court of Australia ruled on a trade mark dispute between 2 major coffee producers in Australia – the company behind the Moccona brand, Koninklijke Douwe Egberts BV (Moccona), and the makers of Vittoria coffee, Cantarella Bros Pty Ltd (Vittoria)[1]. The dispute centred around the shape of the glass jars used to package the 2 brands’ instant coffee.
Moccona is the registered owner of a 3-dimensional shape trade mark[2] in the form of a glass jar and lid, registered with effect from 7 January 2014 in ‘class 30: coffee; instant coffee’, as depicted below:
Moccona claimed that Vittoria’s jar shape was too similar to its own iconic jar, potentially misleading consumers. They argued that this similarity constituted trade mark infringement, misleading and deceptive conduct, and passing off. Vittoria denied these claims and cross-claimed for the cancellation of Moccona’s shape trade mark, arguing that the registration should be cancelled as it does not distinguish the applicant’s goods from those of other persons.
Images of their respective coffee jars are reproduced below
Vittoria further claimed that Moccona’s shape trade mark registration should be removed on the ground of non-use as a trade mark. That is, that ‘the applicant’s glass jar is a utilitarian shape which does not involve the use of a trade mark for reasons including that it is not inherently distinctive’.
Justice Wheelahan dismissed Moccona’s claims against Vittoria. He said there was no real risk a shopper would ‘pause for thought’ or be misled and there was ‘no necessary commercial connection between coffee sold’ in both jars. Instead, any similarity between the 2 jars was largely the result of functional considerations, such as fitting on supermarket shelves and holding 400 grams of coffee.
The court also dismissed Vittoria’s cross-claim for the cancellation of Moccona’s shape mark. Justice Wheelahan noted that Moccona’s use of the Moccona jar shape as a trade mark before the priority date was so extensive that it had acquired distinctiveness. This included authorised use by related entity, Jacobs Douwe Egberts AU Pty Ltd, a company in which Moccona exercised ‘quality control’ over the Moccona coffee it sold. Dismissing all of the parties’ claims against the other resulted in both parties retaining their right to use their respective coffee jars.
This decision highlights the importance of distinctiveness and functionality in trade mark disputes. It also demonstrates the need for companies to carefully consider the design and functionality of their packaging to avoid potential legal issues.
Many factors influence whether a shape can be registered as a trade mark and if legal actions to protect it are justified. Here are two important points traders should remember:
1. To register a shape as a trade mark, the shape should have an extra, non-functional feature that distinguishes it from the product’s usual form.
2. If the shape is primarily functional, it can still become a trade mark if it is used extensively as a symbol of origin in many advertisements over time. This was successfully shown by Vittoria in their case.
Director
Jeremy Szwider is the managing director of Bespoke and one of its founders. He is regarded as a pre-eminent commercial lawyer across Australia (and has (Read more)
