Another shape mark decision was handed down last week in Koninklijke Douwe Egberts v Cantarella. KDE owns a registered mark for the shape of the jars for its Moccona-branded coffee. It failed to enforce that registration against Cantarella’s new Vittoria-branded instant coffee, or to establish a contravention of the ACL or passing off (which seemed adventurous given the clear Vittoria branding).
KDE failed to persuade the judge that the Vittoria jar was deceptively similar to the registered mark, which I found unsurprising given the clear differences in appearance.
More interesting was the Court’s consideration of whether Cantarella had used the shape of its jar as a TM. The Court considered that advertisements featuring images of the product were merely showing the appearance of the product, and as to KDE’s prominence argument, it stood to reason that the jar was larger than the Vittoria mark on its label. While emphasising that every case must be decided on its own facts, at [469]-[472] the Court carefully differentiated the reasoning of the Full Court in RB (Hygiene Home) from early this year, which found the shape of a dishwasher tablet had been used as a TM.
Wheelahan J considered that the Vittoria jar was relatively plain, which pointed against it being used as a TM, and that no advertisements drew attention to the shape of the jar itself. This was a case that clearly fell on the “not use as a TM” side of the line, but there was some interesting consideration of when a shape might be used as a TM because of Cantarella’s cancellation action for non-distinctiveness. The Court found that the consistent use of a jar, which was distinct in appearance from those of competitors, together with extensive advertising that focused on the appearance of the jar, had resulted in acquired distinctiveness. This involved an inference that the advertisements were effective, despite no survey evidence showing whether consumers actually rely on the shape of the Moccona jar to indicate commercial origin.
Would that reasoning also mean that Cantarella’s jar shape will at some point become sufficiently associated that it becomes distinctive, and is then used as a TM, even if that is not Cantarella’s aim? Or is some sort of advertising campaign essential in practice, whether shown to be effective or not?
In particular following the RB (Hygiene Home) decision this feels like murky territory, given the Full Court’s treatment of “diagnostic cues” which appeared to almost equate such a cue with use of a sign as a TM (see my earlier post). Wheelahan J’s treatment at [190] was more careful, saying that the diagnostic cue “concept is broader than the legal concept of a trade mark. Anything that is discernible and distinctive about goods can be used as a diagnostic cue.” He then gave as an example a 750g jar, that was larger than any competitor’s product, but quite when and how does a diagnostic cue mature into a trade mark?
