Secondary reputation in coffee plunger not “distinctly tied” to BODUM mark

Australia

In Bodum v DKSH Australia Pty Limited ([2011] FCAFC 98, August 5 2011), the Full Court of the Federal Court of Australia, by a two-to-one majority, has held that the design of Bodum’s coffee plunger was sufficiently well known and distinctive that DKSH Australia Pty Limited’s adoption of a substantially similar design for its coffee plunger was misleading, deceptive and amounted to passing off.

The trial judge (at first instance) had dismissed Bodum’s allegations because he decided that the reputation and goodwill associated with Bodum’s coffee plunger was “distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name”.

In other words, the design of Bodum’s coffee plunger, of itself, absent the BODUM trademark, was not sufficiently distinctive to support its allegations of misleading and deceptive conduct and passing off. In reaching this conclusion, the trial judge was clearly influenced by Bodum’s extensive use of its trademark on the packaging of its products and on the products themselves. The judge concluded that consumers would expect to see the BODUM mark on a Bodum product. The trial judge expressed the view that:

consumers are now sophisticated enough (at least in the relevant market here) to understand the concept of competing brands with no trade connection, even though there may be an element of copying.”

DKSH’s coffee plunger was in fact packaged and branded to distinguish it from Bodum’s plunger and, therefore, in the opinion of the trial judge, consumers would not be misled or deceived.

Bodum appealed to the Full Court. There were two significant points of difference between the trial judge and the majority in the Full Court (the leading judgment being that of Justice Greenwood). First, Greenwood J accepted that Bodum’s extensive evidence of its marketing and advertising activities established that it had built up “a very significant secondary reputation” in the features of its coffee plunger and, most importantly, that this secondary reputation was not “distinctly tied” to the BODUM trademark (as the trial judge had thought).

The second point of difference was that Greenwood J thought that DKSH had not done enough to distinguish its coffee plunger by other means. Specifically, DKSH’s trademark EUROLINE was used only on the packaging of its plunger, not on the plunger itself. In any event, EUROLINE was considered to be a name that would be regarded as an abbreviated description of a product within a line of European products. The judge posed the rhetorical question:

What else could EUROLINE possibly mean other than a product in a line of European products, especially in the absence of pronounced advertising or sales which might have rendered such a description distinctive in some way?

Accordingly, the majority held that, by reason of DKSH’s adoption of the features of the distinctive Bodum coffee plunger, in circumstances where DKSH failed to adopt distinguishing or differentiating indicia for its own product, DKSH had engaged in misleading and deceptive conduct contrary to Sections 52 and 53 of the Trade Practice Act 1974 and that it had passed off its product as Bodum’s product.

It is worth briefly noting the dissenting judgment of Justice Buchanan. Buchanan J was clearly concerned not to allow the law of passing off and the operation of Sections 52 and 53 to extend (in practical terms) to the grant of a de facto monopoly over the shape of a product. In this regard, he cited with approval the observation of Justice Brennan in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd ([1982] HCA 44):

The protection afforded by the common law stops short of according to a manufacturer a monopoly right to the manufacture and sale of goods of a particular design unless he is the owner of a design validly registered under the Designs Act 1906 in respect of goods of that kind.”

Buchanan J concluded that:

“… the limitations upon the protection given by Section 52 [of the Trade Practice Act 1974] (ie, not to afford protection to designs which are copied, but not directly protected by the relevant statutory scheme) apply equally in the present case. An action in passing off cannot enliven, in this context, greater protection than Section 52 because the common law also does not go so far.”

The conclusion that can be drawn from this case is that Australian courts will protect well-known products with distinctive design features and product shapes from 'lookalikes', unless the manufacturer/distributor of the lookalike takes adequate steps to distinguish its product.

Julian Gyngell, Kepdowrie Chambers, Wahroonga

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