Coca Cola Company v PepsiCo Inc (No 2): Close Contours of the Bottle Type
Thursday 4 December 2014 @ 12.41 p.m. | IP & Media
In a branding war between Coke and Pepsi that has had almost as many episodes as a Spielberg franchise, yet another installment recently played out in the Federal Court of Australia Case of Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287 decided on 28 November 2014. The case was an application by The Coca Cola Company (TCCC) for declarations, injunctions, damages and other relief against PepsiCo Inc and others (“PepsiCo”) relating to claims alleging breaches of TCCC's trademarks as well as tort and trade practices infringements.
Details of TCCC's Claims
TCCC alleged three causes of action against Pepsico and the other respondents.
In the first cause of action, TCCC alleged that Pepsico's "Carolina Bottle" infringed one or more of four trade marks held by TCCC in its "Contour Bottle" within the meaning of s 120(1) of the Trade Marks Act 1995(Cth) which provides for when a registered trade mark infringed a registered trade mark infringed.
The alleged trade mark infringement raised two issues:
- Whether the respondents have used the shape of their Carolina Bottle or, in the alternative, that part of the shape of the bottle which comprises the outline or silhouette, as a trade mark within the meaning of sections 17 and 120(1) of the Trade Marks Act.
- Whether the shape of the Carolina Bottle, or, the outline or silhouette of the bottle, was deceptively similar to one or more of TCCC’s four trade marks. (This second issue would only arises if the answer to issue one above was found to be "yes").
In the second and third causes of action, TCCC alleged that the respondents had committed the tort of "passing off" and contravened sections 52 and 53(c) of the Trade Practices Act 1974 (Cth) (TPA) (note: TCCC commenced the proceeding on 14 October 2010 before the commencement of item 7 in Schedule 7 of the Trade Practices Amendment (Australian Consumer Law) Act (No 2) 2010 (Cth) and, therefore, the TPA continued to apply although, TCCC’s application for injunctions was taken to be proceedings for an injunction under section 232 of the Australian Consumer Law (ACL) (see - Schedule 2 of the Competition and Consumer Act 2010 (Cth)).
In relation to the second and third causes, TCCC claimed that it had developed in Australia "substantial goodwill and a valuable reputation in the Contour Bottle and in the signs comprising the four trade marks". TCCC claimed that its business and goods have become “widely and favourably known and identified in the minds of consumers throughout Australia by reference to the Contour Bottle and the signs” comprised in its four trade marks. As TCCC argued that members of the public in Australia expected to be dealing with TCCC, or persons authorised or approved by or otherwise associated with TCCC, when they were offered for sale the Pepsi beverages in the "Carolina Bottle". TCCC claimed that offering for sale and the sale of the Pepsi beverages in the "Carolina Bottle" constituted the "passing off of the Pepsi beverages as products of TCCC or products licensed by TCCC". Additionally, it claimed that such acts constitute a contravention of sections 52 and 53(c) of the TPA.
The Decision
In dismissing TCCC's application, Besanko J found that while there was no disputing that TCCC had a reputation in its brand name and the words written in Spencerian script on its products and a reputation in the "Contour Bottle" it could not be claimed that such applied to the "outline or silhouette [of the bottle] by itself" nor that such influenced the decision to purchase or otherwise to a point where its trade mark rights were infringed. At paragraph 269 he says:
"It seems to me that it is one thing to say that a consumer would regard a bottle with these features as a TCCC bottle. It is another to say that he or she would make a decision to purchase having regard to these features alone, that is to say, without regard to the word mark and other branding. Professor Klein thought that a consumer would probably not do that. She considered that a consumer was most likely to rely on brand names and logos as the most valid cue. In other words, as Professor Klein said, the shape of a bottle might be memorable without necessarily being a diagnostic cue of origin. Professor Klein did acknowledge that her “opinion” had not been verified by empirical studies. Nevertheless, I think that there is a good deal of force in Professor Klein’s view that the consumer would treat the branding on the bottle as the most valid cue. After all, this is not a case where the manufacturer of the product is not well known, or the labeling is not prominently displayed or is in some way difficult to access. For example, this case does not involve a label on a container next to goods displayed out of their container, or a label or tag underneath a sofa or chair. Furthermore, the brands “Coca Cola” and “Pepsi” are very well known, as are their word marks and device marks. The word marks and device marks are prominently displayed on the bottles for the purpose of identifying the source of the product. Furthermore, I accept, as was said in the course of evidence, that the words “Coca Cola” in Spencerian script would be one of the world’s most recognisable advertising images. In all of those circumstances, it is difficult to see why an ordinary consumer would not make his or her purchasing decision by reference to the brand names, device marks, or logos."
For reasons similar to the ones given for dismissing the trade marks claims the passing off and trade practices claims were also dismissed.
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Sources:
Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287
