An Australian judge has brought a dispute between Koninklijke Douwe Egberts BV (KDE), makers of Moccona coffee, and Cantarella Bros Pty Ltd, makers of Vittoria coffee, to an end. KDE had made claims of trade mark infringement, breaches of Australian consumer law and passing off against Cantarella. In response, Cantarella counterclaimed for the cancellation of KDE’s mark. However, the judge ultimately decided that the counterclaim, the claim for infringement, breaches of consumer law and passing off had failed.
KDE owns a trade mark in Australia for the shape of their glass coffee jar, which they use as the packaging for their Moccona instant coffee products. This mark has been registered since 2014 in class 30 (for coffee and instant coffee). While Cantarella does not have a trade mark for their packaging, they have been selling their Vittoria product since 1958. Vittoria was also the highest selling bean and ground coffee brand sold in Australia in 2023.
Cantarella started selling a new instant coffee product in a cylindrical glass jar with a glass stopper lid in 2022. KDE alleged that this product infringed their shape mark and used this as the basis for consumer law and passing off arguments. On the infringement point, the judge held that KDE had failed to use the shape of the jar as a badge of origin and therefore there could be no infringement and stated that there was no real risk that a notional buyer could confuse the Cantarella jar shape with the KDE shape mark. On the consumer law and passing off points, the judge concluded that it is unlikely that consumers would not be able tell the difference between the Vittoria and Moccona products, meaning the test for passing off could not be met.
Cantarella had counterclaimed for the cancellation of KDE’s shape mark on the basis that it lacked distinctiveness and claimed that KDE had no intention of actually using the mark. While the judge recognised that the shape of the Cantarella jar “draws on features of the common heritage that are not apt to distinguish the goods of any one trader”, he found that it had acquired distinctiveness. This was based on the fact that KDE had been the only coffee brand using this shape jar in Australia for a period of 20 years and the jars had featured on various adverts without any labels. Therefore, the distinctiveness argument failed and subsequently, the lack of use argument failed, meaning the mark could not be cancelled.
Because of the multitude of issues raised, the case provides a succinct summary of many aspects of Australian trade mark law, which includes traces of UK law.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
