The Federal Court recently published judgment in Koninklijke Douwe Egberts (KDE) BV v Cantarella Bros Pty Ltd [2024] FCA 1277, (Wheelahan J) a decision of interest to Trademark practitioners.
The case concerned whether Canterella Bros, the producer of the Vittoria Coffee 400g jar, infringed the trademark of Moccona (manufactured by KDE). The relevant KDE trademark is constituted by the shape of a cylindrical jar with a stopper in its relevant Moccona coffee and instant coffee products. KDE contended that the Vittoria jar shape infringed its trademark. Canterella cross claimed for the cancellation of the KDE shape mark.
The Court dismissed KDE’s claim for trademark infringement. KDE’s contention was that Cantarella’s jar was (a) used as a trade mark; and (b) deceptively similar to the KDE shape mark, or likely to mislead or deceive consumers. KDE submitted that Canterella was attempting to “sail close to the wind” and design a jar as similar to Moccona as possible. Evidence was adduced of Canterella’s product design, including the requirements to package the product in a jar that would fit on supermarket shelves and hold 400g of coffee.
At [107], the Court held that on the evidence: “the final shape of the Canterella jar was not developed for the purpose of emulating the shape of the Moccona jar, or to mislead consumers, but was largely the result of functional considerations.”
On the Cross-Claim, which was also dismissed, Canterella adduced evidence of other brands of coffee sold in cylindrical jars in support of a submission that the Moccona jar lacks distinctiveness. The Court considered the extent to which the Moccona jar was developed to distinguish, and the extent of the use of the jar shape trademark. An extensive survey of Moccona marketing campaigns was in evidence. While the jar was not inherently adapted to distinguish, the trademark was sufficiently used to warrant dismissal of the cross claim.
The Court held at [306] that “use of the shape of the Moccona jar as a trade mark before the priority date was so extensive as to eclipse the ordinary signification of that shape in respect of coffee. I have already expressed my conclusion that the KDE shape mark is not, in itself, inherently adapted to distinguish the applicants’ coffee from that of other traders.”
Benjamin Cameron of Banco Chambers appeared for Canterella, with Tony Bannon SC and Nicola Gollan. They were instructed by Herbert Smith Freehills.
