The war between Coke and Pepsi over the shape of a bottle is alive and well.
Last week the parties were in court fighting over discovery.
By the tie of the hearing what was actually in dispute was quite narrow. In the end, Dodds-Streeton J ruled that Coca Cola should be allowed to get discovery amongst other things from Schweppes, Pepsi’s bottler in Australia, relating to whether or not Schweppes had sought any indemnities from Pepsi, either before or after the proceedings commenced. Schweppes et al. conceded discovery relating to any request before proceedings commenced.
It was argued that such discovery was potentially relevant to the respondents’ state of mind on the basis of the Australian Woollen Mills‘ principle that a defendant who tries to pass off is giving a sort of expert evidence that deception or confusion can be expected.
Given the concession that discovery directed to requests before proceedings commenced and there was no suggestion that the further discovery was oppressive, Dodds-Streeton J considered that discovery of any requests made after proceedings were commenced was appropriate as:
in passing off and s 52 actions, the applicant’s reputation is to be assessed at the date of the conduct complained of. As Gummow J explained in Thai World Import & Export Co Ltd & Anor v Shuey Shing Pty Ltd & Ors (1989) 17 IPR 289 at 302, that principle reflects that the reputation is not to be taken to be eroded by infringing activities which occurred before proceedings are instituted.
Other cases appeared to consider that the relevant time in (what used to be called) s 52 actions was still unresolved, but in passing off the relevant time was when the respondent commenced its conduct. (See e.g. Playcorp v bodum  to ).
Dodds-Streeton J’s reason provide a fair bit more detail about the nature of Coca-Cola’s claims; not so much about Pepsi’s defence, although apparently it had been using its “new” bottle shape since 2007 (that of course would still be well within the 6 year limitation periods).
The orders may also provide you with a useful starting point for discovery requests:
Coca-Cola Company v Pepsico Inc  FCA 1069