Posts Tagged ‘shape mark’

Coke v Pepsi – “second” look

Monday, December 8th, 2014

Last week, Besanko J dismissed Coca-Cola Co’s claims that PepsiCo’s “Carolina” bottle shape infringed Coke’s trade marks, and was passing off and misleading or deceptive conduct.

Contour v Carolina

Some background

Coca-Cola Co relied on four trade marks: TM Nos 63697, 767355, 1160893 and 1160894 registered in class 32 for non-alcoholic beverages. The first two might be thought of as 2D representations of the shape of Coca-Cola Co’s “Contour” bottle, which has been in use in Australia since 1938.

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The second two were essentially the silhouette of the bottle; one image in white, the other in black.

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PepsiCo had introduced its Carolina bottle shape into Australia in August 2007 on a very small scale. It seems not to have been on the market at all between May 2008 and February 2009, when it was reintroduced on a larger, but still small scale. The Carolina bottle shape had apparently not been the subject of any advertising or promotion. At the time when PepsiCo introduced the Carolina bottle, there were 4, perhaps 6, other bottles used for soft drinks in the market with “waists of varying degrees” so the Contour bottle was not unique in that respect.

The trade mark infringement claims

Besanko J found that PepsiCo was using the Carolina bottle shape as a trade mark, but did not infringe because it was not deceptively similar to Coca-Cola Co’s trade marks.

In deciding that PepsiCo was using the overall shape of the Carolina bottle as a trade mark, Besanko J noted that the relevant goods were the beveage, a formless substance, and the bottle was just a container. So, the cases like Philips v Remington where the shape was the shape of the goods themselves did not apply. At [213], his Honour found that the shape was distinctive and intended to be so.

Besanko J was not prepared to find, however, that PepsiCo used the silhouette of the Carolina bottle as a trade mark. A number of factors played into this conclusion. His Honour accepted that the outline or shape of the bottle may be one of the first things seen by a consumer from a distance. However, that was not enough in itself. Among the factors that led to the finding, his Honour noted at [215]:

…. All bottles have an outline or silhouette and the fact that a bottle has a waist is not so extraordinary as to lead to the conclusion that that feature alone is being used as a trade mark.

and at [216]:

…. the outline or silhouette of the Carolina Bottle is likely to become less important in the consumer’s mind as he or she approaches the refrigerator or cooler and focuses on word marks, logos, and brands. As I have said, the fact that an aspect of a product may be seen at one point does not lead to the conclusion that consumers would see it as a badge of origin.

deceptive similarity

Besanko J agreed with the Full Court’s analysis of the shape depicted in TM Nos 63697 and 767355:

  • the sides of the bottle are curved rather than flat;
  • there is fluting on the top and lower portions of the bottle and no fluting in a central section;
  • the top and lower portions of the bottle have the same number of flutes; and
  • the bottle has a flat base and banded neck.

In contrast, PepsiCo’s Carolina bottle did not have flutes or the clear band; it had a horizontal “wave” feature and its waist was both more gradual and extended higher up the bottle. These differences at [235] were “significant”.

At [240], his Honour rejected Coca-Cola Co’s argument that the overall impression consumers would take away from the Carolina bottle was of “a bottle having a low waisted contoured shape”. Instead:

I do not accept that that is the view which would be held by the ordinary consumer. In my opinion, the waist, the horizontal wave feature, and, to a lesser extent, the frustoconical neck are the significant features of the Carolina Bottle.

Besanko J was not prepared to find that outline or silhouette of the bottle was the essential feature of thes trade marks. Rather, the vertical flutes and the clear belt band were as prominent. At [238]:

…. It cannot be said, for example, that a bottle with a waist is so extraordinary, or a bottle with vertical flutes and a clear belt band so common, that the outline or silhouette should be considered the essential feature.

However, Besanko J also found that the Carolina bottle was not deceptively similar to the silhouette marks represented in TM Nos 1160893 and 1160894. His Honour found that the Carolina bottle was distinctive in itself and, therefore, not deceptively similar. So, at [247], his Honour said:

Even if the outline or silhouette is the only feature of the marks, or is the essential idea of the marks, the comparison is with the sign the alleged infringer has used as a trade mark. In this case, I have found that is the whole shape of the Carolina Bottle. The following are the distinctive features of the Carolina Bottle which I think are distinctive but are not part of the registered marks:

(1) the Carolina Bottle has a gently curving waist at a higher point than that in the marks and does not have an abrupt pinch near the base;

(2) the Carolina Bottle has a cylindrical shoulder, not a curved shoulder;

(3) the Carolina Bottle has a frustoconical neck, not a curved neck;

(4) the Carolina Bottle has a twist top enclosure, not a cap lid seal; and

(5) the Carolina Bottle has a distinctive horizontal embossed wave pattern across the bottom half of the bottle.

Then, at [248], his Honour pointed out that the first 4 factors related to the silhouette and “it seems to me … the outline or silhouette of the Carolina Bottle would not be deceptively similar to either [trade mark].”

I am not at all sure, with respect, that the question is whether the accused sign is distinctive in its own right. Perhaps this means that, in a market where there are other low waisted bottles, the differences were sufficiently important that consumers would not be caused to wonder whether there was a connection with the trade mark owner.

Passing off / misleading or deceptive conduct

On this part of the case, Besanko J thought it was difficult to see why the ordinary consumer would not make his or her purchase on the basis of the [famous] brand names, device marks or logos. However, “not without some hesitation”, his Honour was prepared to find at [270] that a sufficient number of consumers who select a bottle from the store’s refrigerated drinks cabinet themselves “may well make their selection based on overall bottle shape” as a result of their minimal involvement in the purchase.

There was no likelihood of deception or confusion, however, as the shape of the bottles was too different. At [271]:

The difficulty for [Coca-Cola Co] is that, even accepting that and accepting that both bottles will contain dark brown cola and be sold within a similar, if not the same, context, I do not think that such a consumer would be misled or deceived, or would be likely to be misled or deceived, in the case of overall bottle shape because I think he or she would detect quite clearly the difference between the Contour Bottle and the Carolina Bottle. The most noticeable difference between the two bottles is that the Contour Bottle has the very distinctive fluting and the Carolina Bottle has the distinctive horizontal waves. Other noticeable features are the different shaped neck and shoulders and the fact that the waist on the Contour Bottle is lower and more pinched. In other words, if overall bottle shape is the cue, I do not think that there is any real likelihood of deception.

The role of intention

On all 3 aspects of the case, Coca-Cola Co contended that PepsiCo had intentionally designed the Carolina bottle to take advantage of the reputation in the Contour bottle. While Besanko J noted there were features of the relevant PepsiCo executive’s evidence “which caused me to scrutinise it carefully”, his Honour was not prepared to find an intention to deceive or cause confusion.

In any event, Besanko J did not think the resemblance of the Carolina bottle to the Contour shape was sufficiently close for PepsiCo’s intentions to lead to findings of infringement, passing off or misleading or deceptive conduct.

Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287

On the Contour of things

Monday, November 8th, 2010

Further to my earlier post, Amanda Scardamaglia has a detailed consideration of the issues raised by Coca Cola’s pleading in the battle of the bottle shapes against Pepsi.

Kit Kat shape trade mark

Wednesday, March 17th, 2010

Nestlé has successfully appealed Aldi’s opposition to registration of a 4 bar Kit Kat as a trade mark:

Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218

The trade mark is TM No. 822780 for this:

The endorsement reads:

The trade mark consists of the shape of the goods, being four bars attached to one another by a thin base as depicted in the representations attached to the application form.* * Accepted under the provisions of subsection 41(6).*

Now, the appeal was resolved by consent. There is an interesting practice point there Nicholas J, an experienced IP practitioner before going to the Bench, explains the rationale for allowing appeals on this basis.

The larger questions are of course how did Nestlé get it accepted and what can they do with it?

The endorsement indicates that the sign was accepted on the basis of acquired distinctiveness under s 41(6). It would appear from the Opposition decision, there was (as you would expect) enormous sales and advertising and a survey indicating 77% of the public would identify the shape as Kit Kat.

Consistently with the approach taken by the Full Court in BP Green (cf [118] and [121-122]), the Hearing Officer upheld the opposition on the ground that the shape was not used as a trade mark. Decision here (pdf –  I couldn’t find it on Austlii).

Of course, we don’t know what evidence, if any, Nestlé filed in support of its appeal, which might have persuaded Aldi to withdraw.

Next, what happens if Aldi or Coles or Woolworths start selling a chocolate with 4 bars like the shape above wrapped in their own packaging? At the Opposition hearing, Nestlé argued that post sale use, such as unwrapping the chocolate after sale, could constitute use as a trade mark citing Kabushiki Kaisha Sony Computer Entertainment v Nuplayer Ltd [2005] EWCH 1522 (Ch D) in support. Given his conclusions on other points, it was sufficient for the Hearing Officer to assume this was the case. How it sits with Re Yanx’ TM might be another matter.

What happens to those people who are selling 1 finger or 2 bar variations on a theme? Shades of Adidas’ 3 stripe wars.

Shape and colour trade marks

Friday, September 11th, 2009

Julian Lee, in the Age yesterday, reported on the concerns of “marketers” about how hard Australian regulators are making it to register a shape as a trade mark, in the wake of:

  1. last month’s ruling by Sundberg J against Guylian’s sea-horse shaped chocolate; and
  2. the commencement of Nestle’s appeal against Aldi’s successful opposition to registration of the shape of a Kit Kat bar as a trade mark (BDW discussed the decision here, but the decision itself seems to be hiding on-line).

To digress for a moment from the “shape” issue – Mr Lee also reports that Cadbury and Darrell Lea have settled their long running litigation and Cadbury has secured registration of its trade mark for the colour purple.

Back to “shape” marks, you might have thought from the tenor of Mr Lee’s article that Australia is yet again embarking on anutochthonous experience, but it seems that the Europeans are playing hardball too; e.g. here and here.

Sea-horse shaped chocolate not a trade mark

Thursday, August 20th, 2009

Having secured an International Registration, Guylain tried to register a chocolate in this shape

as a trade mark in Australia through the Madrid Protocol (TM App 936483).

Sundberg J, on appeal from the Registrar’s refusal, has also rejected it as incapable of distinguishing Guylain’s goods (pralines and chocolate, to be precise) under s 41.

Not inherently adapted — enough

First, Sundberg J was satisfied that the sea-horse shaped chocolate was inherently adapted to distinguish to some extent, but not enough to be distinctive.

Guylain argued:

31. its shape is a “fanciful stylised” representation of a seahorse, which “depart[s] radically from the shape of seahorses found in nature”. The departure, it says, arises from two particular features of its chocolate shape:
(a) the tail that wraps up behind the spine of the creature, rather than forwards; and
(b) the solid and “chunky” appearance, as opposed to the more slender and elongate shape of a real seahorse.

31. … its shape is a “fanciful stylised” representation of a seahorse, which “depart[s] radically from the shape of seahorses found in nature”. The departure, it says, arises from two particular features of its chocolate shape:

(a) the tail that wraps up behind the spine of the creature, rather than forwards; and

(b) the solid and “chunky” appearance, as opposed to the more slender and elongate shape of a real seahorse. (my emphasis)

Accepting this to some extent, Sundberg J considered nonetheless:

[77] …. there is a danger that first impressions will be sidelined when an analysis of a shape’s individual components or features is undertaken. In this case, the immediate impression one has of the mark in suit is of an ordinary seahorse. I would not expect most ordinary consumers to know that the tails of seahorses do not curl backwards, only forwards. I think most would know that seahorses have a tail and expect that they curl up in some direction. Accepting that the tail and the stocky appearance might, to a studious observer, appear unusual, I consider on balance that the average consumer would see it as a relatively ordinary representation of a seahorse. The possibility for confusion therefore between Guylian’s shape and any other seahorse shapes is, I think, a real one. (my emphasis)

Test this for yourself: do you think either of these would be deceptively similar to Guylain’s shape (if it were registered)?

To those who might wonder who on Earth would want to sell a chocolate in a sea-horse shape if it hadn’t been for Guylain’s success, Sundberg J had earlier explained:

71   … In my view, it is quite possible that as at the priority date other traders might want to depict a seahorse, along with starfish, crabs, prawns for example, in a way that is similar enough to cause potential confusion in the minds of consumers. …. [after noting that no-one in Australia was in fact selling sea-horse shaped chocolates at the priority date, his Honour continued] ….  It might be thought that that fact, together with the fact that Guylian had been selling its seahorse shape in Australia for a long time (since the 1980s), would diminish the likelihood that, as at 2002, other legitimately motivated traders might in the ordinary course of their business wish to sell seahorse chocolate shapes. However, the absence of other seahorses on the market does not in my view mean it was unlikely that others may in the future wish to depict that particular sea creature. (His Honour’s emphasis)

Not qualified under s 41(5) either

Guylain has been selling its sea-horse shaped chocolates in Australia since 1980 as part of its sea shells range. In recent years, reatail sales of the sea shells range had exceeded tens of millions of dollars each year and millions of dollars were spent each year on advertising and promotion. The sea-horse shaped chocolate was not sold by itself, however. There seem to have been some rather small sales of sea-horse shaped chocolates by other brands, at various points, although they seem to have been after the priority date.

Nonetheless, survey evidence before the Court showed that 40% of the sample identified the sea-horse shaped chocolates as coming from Guylain, unprompted. Conversely, all the other brands mentioned accounted for only 13% of the sample; the highest of these, Lindt, reached 1.7% and no other brand reached 1%.

Given that level of association, why wasn’t the sea-horse shape distinctive of Guylain?

Because, following Woolworths v BP (No 2), the association must be shown to have arisen from use of the sea-horse as a trade mark, not just use. His Honour quoted with approval from Jacob LJ’s explanation of the distinction in the Vienetta case:

There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.

As in that case, his Honour found that Guylain had not in fact used its sea-horse shape as a trade mark and the public would not have understood it as being used in that way. For example, his Honour found that this wasn’t use of the sea-horse shape as a trade mark:

The fact that other traders, such as Darrell Lea, sold sea-horse shaped products in boxes with their own brands on them contributed to this conclusion, as did the prominence of the Guylain and, in many case, a stylised ‘G’ on the packaging. Sales of Guylain’s sea shell range in sea-horse shaped boxes didn’t help either as the evidence did not suggest the sales were particularly significant.

The presumption of registrability

Sundberg J also addressed the “presumption of registrability” wars, which his Honour broke down into 2 parts.

First, his Honour explained that s 33 requires that the trade mark be registered unless the Registrar is satisfied that a ground of rejection exists. Thus, in the case, of the distinctiveness inquiry under s 41, the trade mark must be registered unless the Registrar is satisfied that the trade mark is not sufficiently inherently adapted to distinguish as to be capable of distinguishing. If the Registrar was satisfied that the trade mark had insufficient inherent adaptation, the words of s 41(5) and 41(6) plainly imposed the onus on the applicant to satisfy the Registrar that the trade mark had in fact become distinctive (s 41(6)) or otherwise did have the necessary capacity. See [21]. The wonders of plain English drafting!

Secondly, Sundberg J joined the gang (so far comprising Finkelstein and Gyles JJ) rejecting any standard other than the Registrar being satisfied on the balance of probabilities.

The role of the Registrar

Somewhat unusually, the Registrar went to the lengths of filing evidence about other uses of sea-horse shaped chocolate. Those practitioners who have seen their valiant efforts in scrambling around the internet to assemble evidence snidely dismissed will note that the Registrar was reduced to much the same course.

Interestingly, Sundberg J noted:

54. …. Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant’s use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian’s goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. ….

Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891