LAWS3248 | Intellectual Property 2 26 September 2019
Issue(s) Whether R&C can be given monopoly of a packaging idea.
Held • HOL said that the shape and size of the lemon container was always associated with R&C Jif juice brand, which created a secondary meaning/brand identifier
• HoL said they needed evidence that consumers had come to associate the lemon shape as a brand element, which is a little unusual! Because with some products, even if it has unique packaging, the consumer might not associate that packaging with the brand! However, held in this case that it would lead to consumer confusion.
Notes Shape of brand was given renewed importance at this time… Key point here was that evidence they put forward was strong enough (unlike later Nutrient Water case).
R&C relied on packaging as a brand identifier.
Take-away
Point Reputation found in packaging/shape associated with Jif/was a brand identifier which would lead to consumer confusion; strong evidence.
Nutrientwater Pty Ltd v Baco Pty Ltd
Facts NutrientWater (‘NW’) sued Baco in 2009 for passing off in relation to the packaging of the bottle
Issue(s) Whether Baco replicated NW’s packaging, whether that amounts to passing off; key issue surrounded NW’s reputation.
Held • When NW sued Baco for passing off, NW had not established a reputation with features sufficiently distinctive from other competitors at the time, who – such as Vitamin Water – had much more similar packaging. By the time NW entered the market in 2009, many other traders had already entered.
• So the Court was careful about the concept of reputation: is the reputation in the features of NW’s packaging design, which had been replicated by Baco? The Court held that NW had not established reputation in the shape of the bottle and use of colour of the bottle; these were not distinctive of NW.
• The key & decisive factor for why the Court made this decision was intervening traders. The fact that brands such as Vitamin Water came too meant that by the time Baco started trading, the market was crowded and exclusive reputation could not be established.
• Court found against the plaintiff.
Notes What would have happened if the other competitors, such as Vitamin Water, did not exist? Michael thinks that NW might have failed even in absence of parties because it hadn’t been trading for a long period of time before Baco started trading; there wasn’t strong enough evidence amongst how consumers responded to NW’s products and whether they recognised shape of bottles and colours of labels associated by consumers with NW. So chances of success were low anyway.
Take-away Point
No reputation in NW’s bottle shape for two reasons; first, there were other traders like Vitamin water; second, weak evidence.
Peter Bodum A/S v DKSH Australia Pty Ltd
Facts Bodum tried to protect the shape and appearance of its French press coffee plunger.
Defendant sold a similarly shaped coffee plunger.
Issue(s) Whether Bodum’s reputation subsists in the product shape alone (divorced from the
‘Bodum’ TM)
LAWS3248 | Intellectual Property 2 30 September 2019
LAWS3248 | Intellectual Property 2 03 October 2019
SECTION 41 REQUIREMENTS
• The continuum allows for consideration of what is the supposed semantic relationship between the sign in question and the goods.
• In lots of cases, there is no logical relationship; e.g. Kit Kat.
Continuum
• Stylised words will push things further towards the left of the continuum
• Distinctiveness is only stage 1, because if your mark falls on problematic right side, this is not good for your mark; if on opposite side, it’s fine.
• It’s the marks to the right that raise concerns; means need to look at second stage, requiring acquired distinctiveness. Consumers will need to recognise the mark because of acquired distinctiveness. This may even require surveys.
• Australian law gets nasty because Australian law has 2 dividing lines (see diagram).
• Most jurisdictions don’t draw the distinction between 41(3) and 41(4) like we do
“Inherently adapted to distinguish” legal tests for locating marks on continuum
• Kandy: Absence of significations meaning mark falls on left side; e.g. ‘Tiger’ has an absent signification in relation to beer.
• Cantarella case (recent HCA decision) adopts a 2-step approach:
o (1) Ordinary signification to ordinary consumer
o (2) Would traders need to use ordinary signification to describe products?
• What is ordinary signification in relation to goods or services? Would other traders need to use mark for the sake of the signification? In most cases, it doesn’t make any real difference if you apply Clark equipment or Canterella; but it is relevant at the margins.
• Questions to ask: What is meaning of mark; who might be affected by it? Participants in the market?
SECTION 41(4)
• 41(4) deals with semi-descriptive marks; not right down end of spectrum/very descriptive in terms of quality/characteristics; but equally, wouldn’t want to let them on register without evidence of use. In language of the Act, these marks are called ‘marks not sufficiently inherently adapted to distinguish’.
LAWS3248 | Intellectual Property 2 17 October 2019
Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605
Facts • Diesel gets shoes on trade mark register easily. Diesel then tries to sue competitor that started selling a similar looking shoe.
• Question: If competitor uses the sole patent, are they using it as a trade mark?
Held • Sundberg J is tying in a test of consumer response; these are features consumers notice. So he ties it back to a more traditional Esso understanding. Would consumers understand them as indicating origin?
• So would the consumer look at the sole patent and see it as a TM, consumers will look at all the features of a shoe shape. The ones considered noticeable/striking/attractive will be what is being used as a trade mark
• So defendant thought to have used sole patent and shoe shape as a trade mark;
meant threshold was passed, and the question now was whether sole was deceptively similar
Notes • Diesel would’ve been able to get them registered because it’s not a pure shape TM (there’s a diesel logo on the sole); this shows the prima facie distinctive ‘D’ logo. So mark as a whole is still prima facie distinctive.
• Law now suggests that regarding shape trade marks, it’s a function of whether they’re non-functional, whether they can be said to be concocted, or whether features are noticeable/striking/attractive.
• Michael’s opinion – thinks it’s a strange way of considering consumer perception, because we don’t make purchasing decisions based on soles
• Clearly, defendant was using YD as a trade mark – that’s clearly TM use – other features arguably features of the product! They might not be functional, but doesn’t have to be to be considered TM!
Take Away Point
• Element of consumer perception tied into the question of whether the product is used as a trade mark (so is it noticeable/striking/attractive?) rather than for pure function.
Coke Cases on use as a TM
Coca-Cola Co v All-Fect
Distributors [1999] 96FCA 107 • Gummy lolly taking shape of Coke bottle held to be used as trade mark
Coca-Cola Co v PepsiCo Inc (No
2) [2014] FCA 1287 • Involving Pepsi; Pepsi starting selling a similar Pepsi shape. Court held that Pepsi bottle shape was used as a trade mark, but Coke lost because was thought that the marks were not deceptively similar to Coke’s.
• The more you have primary branding in infringement context, the more it pushes outsource identification functions it might have.
• Use as a trade mark, we should distinguish between complimentary or competing goods?
Useful distinction to think about.
• In Pepsi, its competitor – pushes it out for source competitor.
• However arguable that All-Fect is more complimentary to Coke (not competitor). Assume the court was right in the All-Fect case – a plausible consumer response might be to think there’s a commercial relationship between the parties