It takes all kinds – the Federal Court issues a decision on Moccona and Vittoria’s trade mark dispute over the use of coffee jars, dismissing the infringement claim and cross-claim for cancellation

By Shehana Wijesena, Sanya Bhatnagar & Jonathan Wong

In a country where coffee culture reigns supreme, it comes as no surprise that coffee products are often the subject of litigation in Australia.

Most recently, two major coffee producers in Australia – Koninklijke Douwe Egberts BV (KDE), who sells coffee under the “Moccona” brand, and Cantarella Bros Pty Ltd (Cantarella), who sells coffee under the “Vittoria” brand – came head-to-head in the Federal Court, fighting over the right to use their respective coffee jars.

KDE claimed that by using its glass jar to sell Vittoria coffee, Cantarella engaged in trade mark infringement, misleading or deceptive conduct and passing off.

Cantarella denied these claims and cross-claimed, seeking orders that KDE’s coffee jar shape mark be cancelled from the Trade Mark Register.

Images of their respective coffee jars are reproduced below (the image on the left is KDE’s Moccona coffee jar; the image on the right is Cantarella’s Vittoria coffee jar):

On 7 November 2024, the Federal Court delivered its judgment in Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277. Upon detailed analysis, the judge dismissed all of KDE’s claims against Cantarella as well as Cantarella’s cross-claim against KDE, resulting in both parties retaining their right to use their respective coffee jars.

In this article, we will explore how the Federal Court reached its decision and highlight key lessons traders can learn from this turn of events.

Cross-claim for cancellation

The judge first examined Cantarella’s cross-claim for cancellation of KDE’s shape mark.

KDE’s shape mark was registered with effect from 7 January 2014 in “class 30: coffee; instant coffee”. The shape mark comprised only of the three-dimensional shape of a jar as shown in the image below. The dimensions, colour and material of the jar did not formed part of the registered mark.

Ultimately, the judge dismissed Cantarella’s cross-claim for cancellation for the following reasons:

1. The KDE shape mark had acquired distinctiveness and is therefore capable of being registered: Although the KDE shape mark is not inherently adapted to distinguish because the shape is primarily functional, KDE’s use of the Moccona jar shape as a trade mark before the priority date was so extensive in its marketing activities that it eclipsed the ordinary signification of that shape in respect of coffee. Accordingly, the KDE shape mark acquired factual distinctiveness in relation to coffee and instant coffee prior to the priority date;
2. There was authorised use of the shape mark within three years of the cross-claim being filed and thus, the non-use ground for cancellation must be dismissed: the judge found that in the relevant period, KDE had authorised Jacobs Douwe Egberts AU Pty Ltd (JDE AU) to sell Moccona coffee that used the shape mark in Australia. In particular, commercial and corporate documentary evidence indicated that KDE exercised “quality control” over the Moccona coffee that was sold by JDE AU in Australia and a “unity of purpose” existed between KDE and JDE AU;
3. The KDE shape mark was not entered on the Register as a result of fraud, false suggestion or misrepresentation: the judge found that KDE falsely represented to the Trade Mark Examiner that Moccona coffee had been sold in a unique jar since 1960 when in fact it was only sold since October 1977 and there were other instant coffee brands like “Andronicus” and “Park Avenue” that used similar jars in Australia. However, the false statement was not material because the Examiner explicitly noted in her report that “there has been no documentary evidence demonstrating use of either shape any earlier than 2008 and I have examined this application based on the evidence submitted and my own additional research”. Therefore, the judge was not persuaded that the false statement played a part in the Examiner’s ultimate decision to enter the shape mark on the Register; and
4. The KDE shape mark was not registered in bad faith: Cantarella argued that the KDE shape mark was registered in bad faith because a person with proper standards would not try to register the shape of a jar that is generic, and which had been used by other traders. The judge rejected this argument and found that KDE was only seeking to obtain protection of a jar shape that had been used by KDE alone for many years, and which it regarded as having become synonymous with the Moccona brand. The fact that the relevant authority in the UK had refused KDE’s application to register the shape mark was also of limited weight.

Trade mark infringement claim

After considering and dismissing Cantarella’s cross-claim, the judge examined KDE’s trade mark infringement claim against Cantarella.

The trade mark infringement claim ultimately failed for two key reasons. Firstly, Cantarella has not used the Cantarella jar shape as a trade mark in relation to instant coffee. This is because:

• The Cantarella jar shape is not elaborate or embellished;
• Cantarella’s Vittoria coffee advertisements never explicitly draw attention to the shape of the jar and never expressly ask consumers to use it as a point of distinction from the goods of other traders; and
• The Vittoria branding is found all over the jar and lid, which further undermines the prospect that the shape of the jar functions in itself as a trade mark.

The second reason is that there is no real, tangible risk that a notional buyer would be misled to think that the instant coffee sold in the Cantarella jar shape has the same commercial source as coffee sold in the KDE shape mark. According to the judge, a notional buyer would recall the KDE 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, a notional buyer would recall the Cantarella jar shape as “noticeably taller in its proportions, with a compressed neck section, and a plain, low lid.”

Misleading or deceptive conduct and passing off claims

The judge also dismissed KDE’s misleading or deceptive conduct and passing off claims. Although KDE’s promotion and sale in Australia of Moccona coffee in a clear glass jar resulted in substantial distinctive goodwill and reputation in that get-up, Cantarella’s get-up is ultimately not misleading because the Vittoria branding could be found all over the get-up (on its front, back, lid, base and on the join between its lid and its body) and Vittoria is, as established by evidence, a well-known coffee brand among Australian consumers.

Key lessons

As demonstrated in this decision, many factors can influence whether a shape can be registered as a trade mark and whether legal actions to protect the shape mark is actually warranted. Two key factors that traders should keep in mind include:

• There are many ways a particular shape can be registered as a trade mark. One would be to ensure that the shape has a non-functional feature that is “extra” and distinct from the inherent form of the particular goods. Failing that, it is still possible for a shape that is primarily functional to acquire distinctiveness and become registrable through evidence of extensive use as a trade mark. An example of extensive use as a trade mark would be consistently and prominently displaying the shape alone as a badge of origin in numerous advertisements over a period time, which is what KDE successfully demonstrated in this case; and
• What amounts to trade mark use and non-trade mark use often depends on the facts and circumstances of the case. As the present case has conveyed in relation to Cantarella’s Vittoria coffee advertisements, simply featuring a product in its packaging as part of an advertisement does not necessarily constitute trade mark use of that packaging. Rather, one must examine the advertisement objectively as a whole and identify, for example, whether express attention was placed to the packaging itself.