Cafetier specialist Bodum was not best pleased when DKSH Australia Pty Ltd imported into Australia and sold the “Euroline Coffee Plunger”. It had almost identical physical features to the Bodum equivalent. Bodum sued inter alia for passing off. Eugenia Kolivos of Sydney law firm Corrs Chambers Westgarth reports the appeal verdict.
Topic: Labelling and packaging
Who: Bodum (a Danish homeware company) and DKSH Australia (an Australian distributor of the Euroline coffee plunger)
When: 5 August 2011
Where: Australia
Law stated as at: 29 September 2011
What happened:
On 5 August 2011, the Full Federal Court of Australia (in a split decision) overturned Justice Middleton’s trial judgment and found that DKSH’s sale of its “Euroline” branded coffee plunger was misleading or deceptive in breach of the Trade Practices Act and comprised passing off.
Bodum’s claims against DKSH were not based on their registered trade marks, or any registered design. Rather Bodum relied on a secondary reputation that was contended to subsist in the distinctive features and shape of its Bodum Chambord Coffee Plunger. Bodum argued that consumers would recognise coffee plungers with those characteristics as emanating from Bodum.
In the primary judgment, Justice Middleton did not recognise that such a reputation vested in the “naked” product’s features independent of its labelling, but rather found that Bodum’s reputation was “distinctly tied” to its labelling and packaging. His Honour further held that even if Bodum did have a reputation in its “naked” product the DKSH packaging or manner in which the product was exposed to potential customers was sufficient to distinguish it from Bodum’s product.
The Full Federal Court disagreed with Justice Middleton on both the above points. After considering the vast marketing evidence produced in the primary proceedings, the Full Federal Court stated:
there is little more … Bodum could have done to reach out to the cohort of consumers … interested in coffee-drinking, coffee-making or particular homeware appliances to hold out the Bodum Chambord Coffee Plunger as a product exhibiting a particular distinctive look…
The court found that Bodum labelling in the marketing material reinforced the origin of the features and design of the product, and considered that consumers familiar with the product would prima facie believe a product exhibiting the same features and design to be a Bodum Coffee Plunger. The court concluded that Bodum possessed a “very significant secondary reputation in the features of the Bodum Chambord Coffee Plunger”. In doing so, the court distinguished the circumstances of the case with those in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354, in which the Maltesers chocolate brand was found to be so well known that it was highly unlikely that a consumer would mistake something that is ‘not called a Malteser a Malteser’ – and in this sense, Mars became a victim of its own success. Notably, the Maltesers label was highly stylised and a prominent part of the get-up, and the product was a boxed product in which the contents could not be examined by potential purchasers independently of its packaging.
The court found that DKSH had not done enough to distinguish its product from the Bodum product and that DKSH’s conduct constituted passing off and misleading or deceptive conduct under sections 52 and 53 of the Trade Practices Act (now sections 18 and 29 of schedule 2 of the Competition and Consumer Act 2010). An ordinary consumer would likely be drawn to the “copy” product in the belief it was a Bodum product, and the packaging and labelling of the “copy product” were not sufficient to communicate that the product was not a Bodum Coffee Plunger. In so finding, the court noted that:
- the Euroline plunger had the same overall appearance as Bodum’s plunger;
- the Euroline plunger itself bore no name or mark to differentiate itself from Bodum;
- the “Euroline” brand was unknown and could be regarded as a description of the produce as being within a line of European products;
- homeware stores where the coffee plungers are sold often display products out of their packaging so that customers can physically examine the product; and
- consumers “seek out the product not the box”.
Why this matters:
The Full Federal Court has sounded a warning to manufacturers and distributors of products that closely resemble the shape and features of a well-known product. If the “copy” product is not branded such that it adequately differentiates itself from the well-known product, the product may be in breach of the Australian Consumer Law and be engaging in passing off. In particular, the product itself (as opposed to its packaging) needs to be adequately labelled if it is sold out of its packaging and is a considered purchase. For brand owners whose well-known products are copied in the market, this case presents an opportunity to take action against poorly labelled copyists. On the flip side, sellers of inadequately labelled “copy products” may need to review the adequacy of their branding practices.
Eugenia Kolivos
Partner
Corrs Chambers Westgarth
Eugenia.Kolivos@corrs.com.au
Dan Thompson
Lawyer
Corrs Chambers Westgarth
Dan.thompson@corrs.com.au
