Coca-Cola Company v Pepsico Inc

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FEDERAL COURT OF AUSTRALIA

Coca-Cola Company v Pepsico Inc [2011] FCA 1069

Citation: Coca-Cola Company v Pepsico Inc [2011] FCA 1069
Parties: THE COCA-COLA COMPANY v PEPSICO INC, PEPSICO AUSTRALIA HOLDINGS PTY LIMITED (ACN 079 719 743) and SCHWEPPES AUSTRALIA PTY LTD (ACN 004 243 994)
File number: VID 876 of 2010
Judge: DODDS-STREETON J
Date of judgment: 15 September 2011
Catchwords: PRACTICE AND PROCEDURE – Discovery – Proceeding for trade mark infringement, misleading or deceptive conduct and passing off – Disputed category of discovery relating to indemnities requested by or provided to third respondent – Whether documents within disputed category should have temporal cut-off point – Breadth of formulation of disputed category
Legislation: Federal Court of Australia Act 1976 (Cth) s 37M
Federal Court Rules 2011 rr 20.11 and 20.14
Cases cited: Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 considered
World Import & Export Co Ltd & Anor v Shuey Shing Pty Ltd & Ors (1989) 17 IPR 289 cited
United Salvage Pty Ltd v Louis Dreyfus Amateurs SNC [2006] FCA 116 cited
Date of hearing: 15 September 2011
Date of last submissions: 15 September 2011
Place: Melbourne
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 40
Counsel for the Applicant: Mr P Wallis
Solicitor for the Applicant: Phillips Ormonde Fitzpatrick
Solicitor for the Respondents: Mr P Kerr of Allens Arthur Robinson

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 876 of 2010
BETWEEN:

THE COCA-COLA COMPANY
Applicant
AND:

PEPSICO INC
First Respondent

PEPSICO AUSTRALIA HOLDINGS PTY LIMITED (ACN 079 719 743)
Second Respondent

SCHWEPPES AUSTRALIA PTY LTD (ACN 004 243 994)
Third Respondent

JUDGE:

DODDS-STREETON J

DATE OF ORDER:

15 SEPTEMBER 2011

WHERE MADE:

MELBOURNE

THE COURT ORDERS BY CONSENT THAT:

1.The applicant give discovery in the agreed categories set out in Annexure ‘A’ on or before 17 October 2011.

2.The respondents give discovery in the agreed categories set out in Annexure ‘B’ on or before 17 October 2011.

3.Costs reserved.

ANNEXURE A

CATEGORIES OF DOCUMENTS TO BE DISCOVERED BY THE APPLICANT
A.       NOTES
The following definitions apply:
Contour Bottle means the bottle or bottles which the Applicant describes as the 'Contour Bottle'.
Document has the meaning given to it in the Dictionary in Schedule 1 to the Federal Court Rules.
Pepsi Products means PEPSI® or PEPSI MAX® cola beverage products in the glass bottle depicted in paragraph 16 of the Applicant's Statement of Claim.
B.       CATEGORIES
The Respondents propose that the Applicant discover documents falling within the following categories which are or have been in its possession, custody or power.

1.Documents upon which the Applicant reasonably expects to rely at trial evidencing the Applicant's goodwill or reputation in Australia in:

(a)the Contour Bottle;

(b)the silhouette of the Contour Bottle; and

(c)each of the signs which are the subject of Australian Trade Mark Nos. 63697, 767355, 1160893 and 1160894.

2.Documents evidencing, referring or relating to the advertising, promotion, offering for sale or sale of the Pepsi Products…

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Details
Case
[2011] FCA 1069
Decision Date

CaseChat Overview and Summary

The case of Coca-Cola Company v Pepsico Inc involved a dispute over trade mark infringement, misleading or deceptive conduct and passing off. The plaintiff, The Coca-Cola Company, sought relief including declarations, injunctions and damages against the respondents, Pepsico Inc, Pepsico Australia Holdings Pty Ltd, and Schweppes Australia Pty Ltd. The Coca-Cola Company alleged that the respondents had infringed its trade marks and engaged in misleading and deceptive conduct and passing off by using a bottle shape that was similar to its own Contour Bottle. The dispute related to the category of documents to be discovered in the proceeding, specifically whether there should be a temporal cut-off point for the documents and the breadth of the formulation of the disputed category.

The legal issues before the court included whether the disputed category of documents relating to indemnities requested by or provided to a third party should be subject to a temporal cut-off point and the appropriate scope of the formulation of the disputed category. The court considered the nature of the proceedings, the relevance of the documents, and the proportionality of the discovery process. The court also considered the need to balance the rights of the parties and the need to avoid unnecessary delay and expense.

The court held that the disputed category of documents relating to indemnities should have a temporal cut-off point of three years prior to the commencement of the proceeding. The court also held that the formulation of the disputed category was too broad and should be narrowed to exclude documents that were not relevant to the issues in the proceeding. The court found that the proposed categories of documents were too broad and that a more focused approach was required. The court also found that the temporal cut-off point was necessary to avoid unnecessary delay and expense and to ensure that the discovery process was proportionate to the issues in the proceeding.

The court made orders for the discovery of documents within the narrowed category and with the temporal cut-off point. The court also made orders for costs associated with the filing and service of written submissions in relation to the disputed categories. The court found that the parties had acted reasonably in negotiating the categories of documents and that the costs associated with the written submissions should be borne by the parties equally.

Orders

Orders of the court

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Background

Background to the litigation

On 15 September 2011, I made the orders above. My reasons for making those orders are as follows.BACKGROUND By an affidavit sworn on 10 June 2011, Gregory Chambers, of the solicitors for the applicant, deposed to the parties’ objections to proposed categories of documents for discovery and exhibited relevant correspondence. The objections narrowed in the course of negotiation and discussion between the parties. The parties filed and served written submissions in relation to the remaining disputed categories. In this proceeding, the applicant, The Coca‑Cola Company (“Coca‑Cola”), which is incorporated in the United States and (with its licensees) is the worldwide manufacturer of Coca‑Cola beverages, by an application and statement of claim dated 14 October 2010, seeks relief including declarations, injunctions and damages against the first respondent, Pepsico Inc, the second respondent, Pepsico Australia Holdings Pty Ltd, and the third respondent, Schweppes Australia Pty Ltd, for infringement of Coca‑Cola’s trade marks and for misleading and deceptive conduct and passing off. Coca-Cola’s trade marks are various signs depicting a bottle or the representation of a shape of a bottle, which were registered on and from various dates in class 32 in respect of various non‑alcoholic beverages. Coca-Cola alleges that its various registered trade marks comprise a depiction of “the Contour Bottle” which has a characteristic shape and contour (a pinch in the bottom portion, a relatively wide portion of the bottle above the pinch and a tapering of the bottle from the wider portion up to the neck) in which, since 1916 in the United States and at least 1938 in Australia, it has sold the Coca‑Cola beverage. By paragraph 15 of the statement of claim, Coca-Cola alleges that it has advertised and marketed its Coca‑Cola beverage making extensive and repeated use of the Contour Bottle or its silhouette, and that the bottle is a distinctive identifier of Coca‑Cola products. The particulars are as follows:i.In Australia the COCA-COLA beverage has been sold in glass Contour Bottles since 1938 and plastic Contour Bottles since 1994.ii.The Contour Bottle is a mark or sign which is readily recognised by its shape alone as the "Coca-Cola" or "Coke" bottle.iii.A significant proportion of the marketing of the COCA‑COLA beverage in Australia has used or promoted the image of the Contour Bottle, including as follows:a.COCA-COLA advertisements have regularly featured the Contour Bottle as a distinctive identifier of COCA‑COLA products, including certain advertising which has used the Contour Bottle alone without the words "Coca-Cola" or "Coke";b.packaging of COCA-COLA beverages has regularly included a two dimensional pictorial representation of the Contour Bottle;c.the Applicant has a comprehensive merchandising program for a wide range of products including clothing, bags, bottle openers, drinking mugs, fridge magnets and key chains, in relation to which the Contour Bottle is used as a trade mark.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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