Jif Lemon comes to Australia

Would you mistake this:

for this:

If not, you’re too sophisticated.

The Full Court (Greenwood and Tracey JJ, Buchanan J dissenting) has upheld Bodum’s appeal from Middleton J’s finding that the Euroline product was not likely to misrepresent an association with Bodum or its Chambord coffee plunger.

Now, due to my involvement in the other case (which was not appealed), I cannot say much about this.

I will draw your attention to Greenwood J’s finding that Bodum did in fact have a reputation (but not a monopoly see [266]) in the features of the coffee plunger alone, divorced from its branding insignia.

192 The advertising material is vast. It has endured over a long period. It is reinforced by substantial sales of the product. The reputation for the product by reason of its aesthetic features reflected in the pleaded elements of the shape of the product, is very significant. The presence of the bodum® trade mark operates to reinforce the association in the mind of consumers or potential purchasers between the distinctive product and its maker which is established by the reputation subsisting in the features of the product itself.

….

194 Two examples (among many) speak loudly to the independent or secondary reputation in the features of the product at approximately each end of the chronological spectrum. The first is the feature article as early as 17 June 1986 addressing the coffee-drinking behaviours and coffee preferences of consumers, in the Good Living section of The Sydney Morning Herald which depicts as the signature image for the article a large Bodum Chambord Coffee Plunger standing next to a mound of coffee beans. Presumably, the publishers of the article in that section of the newspaper thought that consumers would immediately identify with the image. The second is the front page of the 2008 Myer Christmas Catalogue. In that catalogue Myer placed the Bodum Chambord Coffee Plunger at the apex of the Christmas tree of products presumably on the footing that consumers ready to engage in purchase transactions in the Christmas retail cycle would identify and associate with the products on the cover of the catalogue including, for present purposes, the Bodum Chambord Coffee Plunger.

195 What further evidence could be needed of a significant independent reputation in the features of the product itself connecting consumers with the maker of the product (even if the name of the maker may not readily be called to mind) although, in fact, the promotional material is, as found, vast.

196 As to the distinctiveness of those features, there is no evidence which suggests that the features of the Bodum Chambord Coffee Plunger are simply generic features. There are many different coffee makers which exhibit many different shapes. The evidence within the advertising material contains many images of different styles of coffee makers. Moreover, the primary judge found at [120] that although copyists had entered the market from time to time, the presence of copyists had not diluted Bodum’s reputation. Rather, it “would have had the inverse effect” having regard to the factors mentioned by the primary judge at [120].

197 I am satisfied that the evidence establishes a very significant secondary reputation in the features of the Bodum Chambord Coffee Plunger associated in the mind of consumers with Bodum as the manufacturer of the product and, with respect to the primary judge, that reputation is not “distinctly tied” to Bodum in the sense that in the absence of the name Bodum there cannot be a secondary reputation in the features of the product. The primary judge considered that Bodum, like Mars Australia Pty Ltd, had become “a victim of its own success” by so heavily promoting its distinctive product in conjunction with its trade mark, Bodum, that in the absence of the mark, no potential purchaser would be, or would be likely to be, misled into believing that a rival product is a Bodum Chambord Coffee Plunger. Care should be taken in applying this notion as a general principle. As a conclusion on the facts in the case of the Maltesers get-up, the highly stylized and dominant word Maltesers as the principal component of the get-up emblazoned on the box of the confectionary product meant that purchasers of similar confectionary would not think a rival boxed product not exhibiting the highly stylized Maltesers mark was a box of Maltesers. However, it should be remembered that the product in question was a boxed product in which the confectionary could not be examined by a potential buyer independently of its packaging.

You should also note the importance his Honour placed on (a) the absence of product branding on the Euroline product itself and (b) the generic or descriptive and unknown nature of the branding that it did have. For example:

244 It seems to me that the adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product which for all practical purposes embodies all of the features (that is, copies those features) of the product exhibiting the pronounced and substantial reputation at July 2004 of the Bodum Chambord Coffee Plunger, is not sufficient to distinguish the rival product from the distinctive product sought to be copied. This is especially so as the rival product and the Bodum product are regularly displayed outside the packaging for each product notwithstanding that it may be that the products are displayed in stand-alone fashion, proximately located to the packaging and in some locations in front of the boxes. It would have been a simple matter for DKSH to mark its name prominently on the box or mark its trade mark and product name prominently on the rival product itself (or at least as prominently as Bodum marks its product) or both. A plainly distinctive differentiating trade mark might also have been selected for use on the box and on the product.

245 An inference is open that at July 2004 DKSH’s get-up of its product was such as to lead consumers to believe, or be likely to lead consumers to believe, that when they engaged with the rival product they were actually engaging with Bodum’s product or a product in the Bodum line of products even if they saw the words Euroline on the box when engaging in the sequence of steps leading up to selection and purchase of a coffee plunger. If they did not see the box and were drawn to the rival coffee plunger by reason of the distinctive features of the Bodum product, a consumer might well pick up the rival product and handle and examine it, and if a potential purchaser did so, there is no indication from DKSH on the product itself that the consumer was not looking at a Bodum product or a product in the Bodum line of products, but looking at a DKSH product.

246 The references in the primary judgment to the association between the distinctive features of the Bodum product and the use of Bodum’s name and logo inverts the real question to be addressed. A consumer looking specifically for the Bodum Chambord Coffee Plunger by reference to the name Bodum could pick up the Bodum product as displayed out of its box, hold it (as put in cross-examination – even at arms-length in the right hand) and see the Bodum name and trade mark. That might well be so for a consumer looking for the product specifically by name because they know the product by name. They may be replacing a Bodum product they already own; or they may have seen the product closely in particular settings at a restaurant, in a home or in many other settings which attracted their attention to its features and the Bodum name as well as the features. The real question is what impression is made on the mind of the reasonable or ordinary member of the class of consumers seeking to buy a coffee plunger (rather than sophisticated members of the class, which applies a more stringent and incorrect test) drawn to the rival product by reason of the copying of the distinctive features of the Bodum product and conscious of the reputation associating the product distinctly with Bodum (although the name might not be immediately recalled), when such a consumer examines the rival product without any differentiating name, title or logo on the product at all to signify that it is not actually a Bodum product. As a matter of impression, it seems to me entirely rational to conclude that such a member of the class is very likely to think that the largely indistinguishable product embodying those features (as DKSH chose to do) is the Bodum product, a version of the Bodum product or in some way sponsored or approved by Bodum. The only step taken by DKSH to differentiate its product is the placing of the Euroline name on the box for the product. The instruction sheet as to safe use of the product does not reasonably tell a potential purchaser that “this is not a Bodum coffee plunger”.

Note in particular that the branded leaflet inside the product itself was inadequate.

Note also there was not a marketing expert or a parade of consumers anywhere to be seen.

Parkdale v Puxu was distinguished on its facts at 254 – 257. Philips v Remington and Dr Martens  were distinguished as the products themselves were labelled in the appropriate places (and the rival traders’ marks were well-known).

Greenwood J put to one side arguments about “impulse purchase” products being the subject matter of cases such as Jif Lemon and Red Bull :

262 It seems to me to be an error of principle to simply put cases such as Red Bull and Apand to one side as purely “impulse purchase” cases in the circumstances of this case. Those cases at least raise for proper analogical consideration the question of whether the use of a label on the rival product itself (or packaging for a product) aided, in context, in distinguishing a rival product from the product it closely resembles whether by features of shape or other distinctive get-up. In similar terms, the adoption of the trade name REALEMON on the rival get-up for the rival product in Reckitt & Colman Products Ltd v Borden Inc. (Schedule 16) was not enough to establish differentiation for the rival product from the distinctive lemon get-up of Borden’s product.

Bodum v DKSH Australia Pty Limited [2011] FCAFC 98

Apple v Samsung

Nilay Patel at Thisismynext.com has embarked on an in depth examination of Apple’s new court action against Samsung.

Unlike the spectacularly unsuccessful war against Windows (based on copyright and ‘look and feel’), this action involves:

* patents;

* design patents; and

* trade dress.

The “thing that distinguishes this case from Apple’s other actions against other Android products is the trade dress component (and the piquancy of Samsung being a supplier of major components for the iPhone and the iPad).

Read Nilay’s take here. Marty’s view

Now, this case is not being brought in Australia but, if it were, one would wonder about the trade dress prospects given the clear Samsung branding in light of Parkdale v Puxu and its progeny such as Playcorp v Bodum. The only case where the trade dress got up in the face of clear branding is really the Jif Lemoncase, in which there was survey evidence showing an overwhelming preponderance of supermarket shoppers declaring they had bought a Jif Lemon, notwithstanding the swing tags and other clear branding.

Those cases did not, of course, involve design registrations as well (or the functional patents). And, even on trade dress, Apple’s complaint is at great pains to point out the level of detail at which resemblances can be drawn.

I guess we’ll see.