Shaping the state of Australian trade mark law: Federal Court finds Cantarella didn’t infringe Moccona’s jar shape mark

The Federal Court has determined that Cantarella Bros Pty Ltd, did not infringe Australian Trade Mark Registration No 1599824, which constitutes the shape of a container used to sell instant coffee under the “Moccona” brand name (Shape Mark). The Federal Court also dismissed a cross-claim by Cantarella seeking orders that the Shape Mark be cancelled and the Australian Trade Mark Register be rectified accordingly (Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277).

Background to the dispute

In 2022, Cantarella, which sells coffee products under the brand name “Vittoria” launched a freeze-dried instant coffee product in a cylindrical glass jar with a glass stopper lid. The applicants (the registered owner of the Shape Mark and the authorised user of the Shape Mark), subsequently sought relief against Cantarella on the grounds of trade mark infringement, contravention of the Australian Consumer Law and passing off.

Cantarella subsequently filed a cross-claim, seeking an order that the Shape Mark be cancelled on various grounds under the Trade Marks Act 1995 including lack of distinctiveness (section 41), lack of intention to use or authorise use (section 59), non-use (section 92), acceptance for registration on the basis of false evidence or representations (sections 62(b) and 88(2)(e)) and registration made in bad faith (section 62A).

The cancellation case – lack of distinctiveness

As a major element of its cancellation claim, Cantarella plead that the Shape Mark should be cancelled on the basis it was not inherently adapted to distinguish, or did not in fact distinguish the applicants’ goods from the goods of other traders, as is required by section 41 of the Act.

Justice Wheelahan found that the Shape Mark was not to any extent inherently adapted to distinguish the applicants’ goods. According to the authorities, in the case of containers, there must be something “extra” about the shape to render it inherently adapted to distinguish.

His Honour found that the Shape Mark did not take a form that was entirely determined by functional considerations and contained some aesthetic features with no functional purpose. These features included the Shape Mark’s “relatively squat proportions, double-tiered lid, and the particular slope of the shoulder between the body of the container and the lid.”

That said, his Honour accepted that the Shape Mark was reminiscent of containers used by third party coffee brands to market and sell their coffee, without improper motive, in using jars that were similar to the Shape Mark. There was evidence to show that other coffee traders, might for legitimate reason, seek to evoke the aesthetic of an old-fashioned jar in relation to their coffee by adopting a shape like the Shape Mark. While there were features of the Shape Mark that played an aesthetic role, that role was not necessarily inherently distinctive. The double tiered lid and the shoulder of the jar served to evoke particular traditions, forming part of the common heritage that were not adapted to distinguish the goods of any one trader.

However, his Honour was minded to find that that the use of the shape of the Moccona jar as a trade mark before the priority date was so extensive as to eclipse the ordinary signification of that shape in respect of coffee. The Shape Mark had therefore acquired distinctiveness in accordance with section 41(3) of the Act. In evidence was a significant amount of advertising to show that since 1981, the applicants had developed a significant association between their coffee products and the jar shape in which the products were sold. There was also no evidence that any other trader had used the Shape Mark in relation to coffee products after use by one specific third party product in the first half of the 1990s. There had therefore been a period of almost 20 years before the Shape Mark's priority date during which it was likely the applicants were the only users of the shape in Australia in relation to coffee. The applicants had therefore clearly deployed the Shape Mark as a badge of origin, particularly through its advertising in the lead-up to the priority date, so as to satisfy the threshold of acquired distinctiveness.

In coming to this conclusion, his Honour was also required to address Cantarella’s submission that the dominant use of the Moccona logo on the applicants’ jars reduced the likelihood that the shape of the jar could be regarded as use as a trade mark. His Honour referred to evidence of advertisements whereby the Moccona logo and name were not so dominant. In some cases, the jar appeared with the Moccona label removed entirely. The fact there were other advertisements which featured the Moccona logo and labelling more prominently did not gainsay this conclusion. The applicants had therefore singled out the Moccona jar for special attention in their marketing activities. The fact that on other occasions, the applicants had not sought to single out the shape of the jar did not rob it of the character of a brand.

The infringement case

In addressing the infringement case, it was necessary to answer two questions:

• does the use by Cantarella of its jar constitute use of the jar as a trade mark?; and
• is Cantarella’s jar substantially identical with, or deceptively similar to, the Shape Mark?

In answering the first question, his Honour considered the Cantarella jar shape to be “relatively plain.” Unlike the Shape Mark, the Cantarella jar shape did not possess a two-tiered lid to embellish the appearance of the jar. His Honour referred to Justice Sundberg’s reasoning in Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161 which concerned the spectrum of shapes from those that are “purely functional” to those that are “non-descriptive and non-functional”, the latter being more likely to have the effect of distinguishing the goods from those of others. Justice Wheelahan subsequently reasoned that Cantarella had ultimately chosen to select a simple, rather than elaborate shape, and there was evidence to show that in designing the jar, Cantarella was concerned with ensuring that the materials used were seen by consumers as premium, rather than being concerned with the nature of the shape itself.

The applicants sought to rely on various advertisements for the Vittoria Product as examples of infringing trade mark use, and in particular, the use of “aisle fin” advertisements in supermarkets. His Honour ultimately found that such use was not use as a trade mark, and distinguished the present case from RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; 302 FCR 285 and the Full Federal Court’s finding that the use of the Somat logo on the aisle fins was use as a trade mark. In comparison, his Honour found the Cantarella jar shape to be a “far subtler and restrained piece of design”, thereby affecting the degree to which the images of the jar shape on the aisle fins were “striking to the eye” and reducing the likelihood that the jar shape alone would be functioning as a badge of origin, and therefore as a trade mark. Furthermore, his Honour made reference to the fact that many of the Vittoria advertisements were “swamped” with repeated instances of Vittoria branding on the jar and elsewhere, undermining the prospect that the shape of the jar would be itself functioning as a trade mark.

For completeness, his Honour also sought to address the question of whether the Vittoria Product was deceptively similar to the Shape Mark. In his Honour’s view the notional buyer would recall the Shape Mark as “a cylindrical body with, in roughly its top third, a shoulder that slopes to a thick neck ring surmounted by a two-tiered lid.” In contrast, the buyer would notice the Cantarella jar shape as being “noticeably taller in its proportions, with a compressed neck section, and a plain, low lid.” As such, even with an imperfect recollection, there would be no real risk that a buyer could confuse the Cantarella jar shape with the Shape Mark. The Vittoria Product was therefore not deceptively similar to the Shape Mark.

The misleading and deceptive conduct case and passing off case

In the context of the Australian Consumer Law and passing off, the applicants’ submitted that the applicants’ shape get-up consisted of “a clear glass jar substantially in the form of the shape mark.”

With reference to the glass jar only, and based on the bulk of Moccona advertising material already addressed for the purposes of the cross-claim, his Honour found that the applicants’ promotion and sale in Australia of coffee products in a clear glass jar had resulted in the acquisition of substantial distinctive goodwill and reputation.

To assess whether the Cantarella Product was likely to lead persons familiar with the Moccona Product to conclude a commercial connection between the Cantarella Product and the applicants’, it was agreed amongst the parties that it was legitimate to consider the overall appearance of the Cantarella Product, including the trade marks it bore and the context in which consumers came across it. In assessing the degree to which the shape of the Cantarella Product was similar to that of the applicants’ shape get-up, his Honour largely transposed the reasoning in respect of deceptive similarity. He concluded that consumers would not likely to be caused to wonder whether, or conclude that there is a connection between the Cantarella Product and the commercial source of the applicants’ shape get-up. Additionally, in light of the significant amount of Vittoria branding used across the product and Vittoria’s reputation in respect of coffee in Australia, it was likely that consumers would not draw a blank as to the commercial source of instant coffee labelled “Vittoria.”