Chocolate or coffee? Stopping 'lookalike' sales

The Federal Court has recently stopped a company from selling "look alike" coffee plungers (copied from the well-known BODUM coffee plunger). In 2009 it allowed a manufacturer of a confectionery product copied from the well-known MALTESERS product (imaginatively called "Malt Balls") to continue to sell its product in Australia. Has there been a change in the law?  No there hasn't, but the decision in the Bodum Case provides important guidelines on where the packaging or shape of a product will attract protection in its own right (as distinct from through a trade mark registration). 

On 18 October 2011 the Federal Court ordered that DKSH Australia Pty Limited deliver up to Bodum (Australia) Pty Limited or destroy each of the 2011 Euroline Coffee Plungers in the possession or control of DKSH (and all related promotional material). The decision of the Federal Court in Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 was particularly interesting as at no time did DKSH use the BODUM trade mark (or a deceptively similar trade mark) on its Euroline Coffee Plungers nor did it infringe any other registered trade mark or registered design of Bodum. The case revolved around Bodum's right to protect the distinctive shape of its product.

In the Full Court's decision Justices Greenwood, Tracey and Buchanan considered whether Bodum had a separate and protectable right in the visual features of its products. Greenwood J (with Tracey J agreeing) decided that Bodum had established that it had a reputation in the design of its coffee plunger that was separate from its reputation in the word BODUM. Having found that a secondary meaning or secondary reputation existed in the shape of the Bodum Coffee Plunger it became necessary for the defendant, DKSH, to clearly distinguish its product from the BODUM product in order to ensure that it did not engage in conduct likely to mislead or deceive consumers or pass off its product as that of Bodum.  As DKSH did not place any trade mark actually on its plunger itself, and used a non-distinctive name "Euroline Coffee Plunger" on its packaging, the majority found it had not sufficiently distinguished its product from the genuine BODUM products and accordingly was liable for misleading and deceptive conduct, a breach of section 53 of the Trade Practices Act 1974 (Cth) and in passing off.

It is interesting to compare this decision with the decision of the Full Courtin the MALTESERS Case (Mars Australia Pty Limited v Sweet Rewards Pty Limited (2009) FCAFC 174). In the MALTESERS Case the Full Court found that Sweet Rewards Pty Limited was not liable for trade mark infringement, misleading and deceptive conduct or passing off in its supply of a confectionery product that was very similar to the MALTESERS product and was contained in packaging that bore striking similarities to the MALTESERS packaging. The Sweet Rewards product was referred to on the packaging as "Malt Balls" and the packaging of the products mainly used red as the background colour and showed pictures of whole "malt balls" and "malt balls" cut in half to display the inside of the product. While the Full Federal Court noted that there were striking similarities between the packaging of both products it found that the absence of the highly distinctive MALTESERS trade mark on the Sweet Rewards product, and the use instead of Sweet Reward's own trade mark (consisting of the word DELFI and the image of a skier), sufficiently distinguished the Sweet Rewards product from the genuine MALTESERS product. 

In his judgment in the Bodum Case, Greenwood J noted that in the MALTESERS get-up the word MALTESERS was a highly stylised and dominant feature which meant that purchasers of similar confectionery would not think a rival's boxed product, not exhibiting the highly stylised MALTESERS mark, was a box of MALTESERS. He noted in particular that the MALTESERS product was a pre-packaged product in which the confectionery could not be examined by a potential buyer independently of the packaging. In contrast the DKSH and BODUM coffee plungers were often displayed in retail outlets outside of their packaging and, in the case of the DKSH coffee plunger, there was no trade mark on the coffee plunger itself (other than the Pyrex trade mark in relation to the material used in production of the coffee plungers). This meant that at the point when customers were examining coffee plungers with a view to purchase they would not be aware that the DKSH products were not a BODUM product. He found it likely that the consumer would rely on the independent or secondary reputation in the features of the product at the time of purchase and assume that if it looked like a BODUM product it would be a product made or authorised by Bodum.

So what is the difference between coffee and chocolate? An analysis of the two cases shows that manufacturers of pre-packaged products with a distinctive name on the packaging will find it harder to establish an independent or secondary reputation in the features of the packaging rather than the word trade mark. In contrast, products that are displayed outside of their packaging, and particularly without a clear distinguishing word trade mark, are more likely to build an independent or secondary reputation in their features.  In addition manufacturers of "copy" products will also be more at risk where they do not adopt their own distinctive trade mark or other distinguishing features to distinguish their product from the original.

One final point - manufacturers should consider whether distinctive elements of their packaging should be registered as a trade mark separately from registrations featuring a word trade mark. This may provide the manufacturer with useful additional rights against suppliers of "copy cat" products.