Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd
[2024] FCA 1277
•7 November 2024
FEDERAL COURT OF AUSTRALIA
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277
File number: VID 61 of 2023 Judgment of: WHEELAHAN J Date of judgment: 7 November 2024 Catchwords: TRADE MARKS — shape marks – where the first applicant is the registered owner of a trade mark constituted by the shape of a cylindrical container with a stopper in Class 30 over coffee and instant coffee (the KDE shape mark) – where the respondent (Cantarella) released a 400-gram instant coffee product under its brand name “Vittoria” in a cylindrical jar with a stopper lid – whether the Vittoria 400-gram product infringed the KDE shape mark within the meaning of s 120(1) of the Trade Marks Act 1995 (Cth) – the jar of the Vittoria 400-gram product was not used as a trade mark within the meaning of s 120(1) – the jar of the Vittoria 400-gram product was not deceptively similar to the KDE shape mark – Cantarella has not infringed the KDE shape mark.
TRADE MARKS — shape marks – where Cantarella sought, by a cross-claim, the removal of the KDE shape mark from the Register under s 88(1)(a) or 92 on grounds including ss 41, 59, 62(b), 62A and 88(2)(e) – no ground of removal established.
TRADE MARKS — unjustified threats under s 129 of the Trade Marks Act – held: the applicants made unjustified threats within the meaning of s 129 – declaration and injunction refused – the question of damages, including additional damages, to be determined in a separate hearing.
CONSUMER LAW — whether Cantarella has contravened ss 18, 29 and 33 of the Australian Consumer Law, or committed the tort of passing off – held: there is no real risk that Cantarella’s use of its get-up will mislead or deceive persons familiar with the applicants’ product to believe that there is a commercial association between the Vittoria 400-gram product and the applicants or their products.
Legislation: Competition and Consumer Act 2010 (Cth) sch 2 ss 18, 21–2, 29, 33
Evidence Act 1995 (Cth) s 91
Trade Marks Act 1995 (Cth) ss 6(1), 7(3), 8, 8(1), 8(2), 8(3), 17, 41, 41(1), 41(2), 41(3), 41(3)(b), 41(4), 41(4)(b), 57, 59, 62(b), 62A, 88, 881(1)(a), 88(2)(a), 88(2)(e), 92, 92(4)(a), 92(4)(b), 120, 129(1), 129(2), 129(2)(a), 129(2A)
Patents, Designs and Trade Marks Act, 46 & 47 Vict, c 57, s 32
Cases cited: Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905; 308 ALR 74
Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik [2002] FCA 390; 56 IPR 182
Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; 209 ALR 93
Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641
Bosanac v Federal Commissioner of Taxation [2022] HCA 34; 275 CLR 37
Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; 159 FCR 397
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337
Cat Media Pty Ltd v Opti-Healthcare Pty Ltd [2003] FCA 133
Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511
Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107
Coca-Cola Co v PepsiCo Inc (No 2) [2014] FCA 1287; 109 IPR 429
Colorado Group Ltd v Strandbags Group Pty Ltd [2006] FCA 160; 67 IPR 628
Commonwealth Bank of Australia v Kojic [2016] FCAFC 186; 249 FCR 421
DC Comics v Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194
Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247; 139 FCR 215
Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Co [2018] FCA 1014; 262 FCR 76
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144
Firstmac Ltd v Zip Co Ltd [2023] FCA 540
Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; 201 FCR 565
Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161
Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139
Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82
Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9
Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514
Hemmes Trading Pty Ltd v Establishment 203 Pty Ltd [2024] FCA 1100
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816; 91 FCR 167
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA; 100 FCR 90
Landrey v Nine Network Australia Pty Ltd [2024] FCAFC 76
Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639; 86 IPR 581
Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312
Montana Tyres Rims & Tubes Pty Ltd v Transport Tyre Sales Pty Ltd (1998) 155 ALR 489
Murray Goulburn Co-Operative Co Ltd v New South Wales Dairy Corp (1990) 24 FCR 370
New South Wales Dairy Corp v Murray Goulburn Co-Operative Co Ltd (1989) 86 ALR 549
Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197
Productivity Partners Pty Ltd v Australian Competition and Consumer Commission [2024] HCA 27; 98 ALJR 1021
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; 302 FCR 285
Re Bali Brassiere Co Inc’s Registered Trade Mark and Berlei Ltd’s Application (1968) 118 CLR 128
Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186
Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd [2016] FCA 820; 120 IPR 478
Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 53 FLR 307
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; 234 FCR 549
Teubner v Humble (1963) 108 CLR 491
The Mond Staffordshire Refining Co Ltd v Harlem (1929) 41 CLR 475
Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; 143 IPR 1
Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82; 150 IPR 11
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281
General Electric Co (of USA) v General Electric Co Ltd [1972] 1 WLR 729
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
Unilever plc’s Trade Mark Applications [2002] EWHC 2709 (Ch); [2003] RPC 35
Frost R, Law and Practice Relating to Letters Patent for Inventions (4th ed, Stevens and Haynes, 1912)
Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 603 Date of last submission: 12 March 2024 Date of hearing: 20–3, 26–9 February 2024 and 4 March 2024 Counsel for the Applicants: Mr EJ Heerey KC with Mr S Rebikoff Solicitor for the Applicants: Davies Collison Cave Law Counsel for the Respondent: Mr AJL Bannon SC with Mr B Cameron and Ms N Gollan Solicitor for the Respondent: Herbert Smith Freehills ORDERS
VID 61 of 2023 BETWEEN: KONINKLIJKE DOUWE EGBERTS B.V
First Applicant
JACOBS DOUWE EGBERTS AU PTY LTD (ACN 051 278 409)
Second Applicant
AND: CANTARELLA BROS PTY LTD (ACN 000 095 607)
Respondent
ORDER MADE BY:
WHEELAHAN J
DATE OF ORDER:
7 NOVEMBER 2024
THE COURT ORDERS THAT:
1.The applicants’ claims be dismissed.
2.The cross-claimant’s claims for relief specified in paragraphs 1 to 7 of its amended notice of cross-claim be dismissed.
3.The question of the parties’ costs of the claim and the cross-claim be reserved until after the hearing and determination of the cross-claimant’s claims for damages and additional damages pursuant to s 129 of the Trade Marks Act 1995 (Cth).
4.Pursuant to ss 37AF and 37AG(1)(a) of the Federal Court of Australia Act 1976 (Cth), until further order, access to and disclosure (by publication or otherwise) of Confidential Annexure A to the reasons of the Court delivered on 7 November 2024, comprising paragraphs [564]–[603], be restricted to the persons identified below –
(a)the respondent;
(b)the legal representatives of the respondent; and
(c)those persons to whom access is allowed
(i)under the terms of the confidentiality regime agreed between the parties relating to information claimed to be confidential by the respondent; or
(ii)by express written permission from the respondent.
5.If any party wishes to apply for a further non-publication order under s 37AF of the Federal Court of Australia Act in relation to any part of the balance of the reasons for judgment, then that party may do so by emailing the Chambers of the Hon Justice Wheelahan by 12 noon on 8 November 2024 identifying with precision the part or parts of the reasons in respect of which a non-publication order is sought.
6.Upon receipt of any application in accordance with order 5 above, the Court will consider making an interim order in Chambers under s 37AI of the Act.
7.The hearing of any application for a further non-publication order is fixed for 15 November 2024 at 9.30 am.
8.By 4.00 pm on 14 November 2024, the legal practitioners for the parties are to confer in relation to procedural orders for the hearing and determination of the cross-claimant’s claims for damages and the hearing of any further applications for non-publication orders, including the final determination of applications that are the subject of existing interim orders.
9.The proceeding is listed for further case management on 15 November 2024 at 9.30 am.
10.Any proposed consent orders are to be emailed to the Chambers of the Hon Justice Wheelahan by 4.00 pm 14 November 2024.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
WHEELAHAN J:
This case concerns the shape of a glass jar in which the respondent, Cantarella Bros Pty Ltd (Cantarella), has marketed and sold freeze-dried instant coffee under its “Vittoria” brand. The applicants are associated with a brand of freeze-dried instant coffee, styled “MOCCONA”. The applicants claim that by the use of its glass jar Cantarella has infringed a registered trade mark, engaged in misleading and deceptive conduct, and committed the tort of passing off. Cantarella denies these claims and has cross-claimed seeking orders that the registered trade mark be cancelled and that the Register be rectified accordingly.
Background
Overview of the claims
The first applicant, Koninklijke Douwe Egberts BV (KDE), is the registered owner of Australian Trade Mark Registration No 1599824 (KDE shape mark), which is a mark constituted by the shape of a container. The applicants claim that the second applicant, Jacobs Douwe Egberts AU Pty Ltd (JDE AU) is an authorised user of the KDE shape mark in Australia, although this is contentious, and is one of the questions in this proceeding that require resolution.
JDE AU sells coffee — predominantly instant coffee — which is available for purchase from retailers throughout Australia under the Moccona name. Moccona-branded coffee products are sold in jars, capsules, soft packs, sticks, sachets, and tins. Below is an example of a Moccona-branded instant coffee product, namely a jar of “Moccona Classic Medium Roast” –
The following graphical representation of the KDE shape mark is entered on the Register –
The image description entered on the Register for the graphical representation is “CONTAINER, 5 VIEWS”. The Register also records that the kind of mark in question is a shape. KDE obtained registration of its shape mark with effect from 7 January 2014 in relation to “Class 30: Coffee; instant coffee”, with the following endorsements –
Evidence provided under subsection 41(3).
Shape - The trade mark consists of the three-dimensional shape of a container as shown in the representations attached to the application form.
The dimensions of the KDE shape mark form no part of the registered mark. Nor does colour or material. For those reasons, while some of the evidence and submissions in this proceeding concerned 400-gram products contained in transparent glass jars with plastic stoppers bearing labels with gold detailing, it is important to appreciate from the outset that the KDE shape mark comprises only the “three-dimensional shape of a container as shown in the representations” entered on the Register.
Cantarella also sells coffee products which are available for purchase in retail stores throughout Australia. One of Cantarella’s major brands is Vittoria. As at May 2023, Vittoria was the highest-selling brand by value in Australia in the bean and ground coffee market, which was recognised in the evidence as being a different market from the instant coffee market.
In May 2021, Cantarella launched a 100-gram freeze-dried instant coffee product under the Vittoria brand, in four flavour variants. After being sold initially in Woolworths stores, the Vittoria 100-gram product began to be stocked and sold also in Coles stores from around November 2021. The Vittoria 100-gram product has been sold in a cylindrical glass jar with a gold-coloured plastic lid. Below is an image of the “classic” variant in the 100-gram jar –
In August 2022, Cantarella launched a new freeze-dried instant coffee product under the Vittoria brand: a 400-gram product, sold in a cylindrical glass jar with a glass stopper lid. From launch, the Vittoria 400-gram product also came in four flavour variants. A representative image of the “Classic” flavour is below, noting that the applicants’ claims extend also to each of the other three variants about which there was evidence, namely “Italian”, “Mountain Grown”, and “Latte” –
By their originating application, the applicants seek relief against Cantarella on three main grounds –
(1)First, the applicants contend that Cantarella has, within the meaning of s 120 of the Trade Marks Act 1995 (Cth), infringed the registered KDE shape mark.
(2)Secondly, the applicants allege that Cantarella has contravened ss 18, 29, and 33 of the Australian Consumer Law (ACL), which is sch 2 to the Competition and Consumer Act 2010 (Cth).
(3)Thirdly, the applicants allege that Cantarella has, by various forms of conduct, passed off its coffee products as coffee products that emanate from, or are associated with, the applicants and their coffee products.
Cantarella denies that the applicants are entitled to relief. Further, by its cross-claim, Cantarella seeks the cancellation of the KDE shape mark under s 88 of the Trade Marks Act with effect from the priority date of 7 January 2014, on the grounds that –
(1)at that time, the shape mark was not inherently adapted to distinguish, or did not in fact distinguish, KDE’s goods from the goods of other traders, as required by s 41 of the Trade Marks Act;
(2)the Registrar of Trade Marks accepted the application for registration of the shape mark on the basis of evidence or representations that were false in material particulars, thereby engaging the ground of opposition in s 62(b) of the Act;
(3)the shape mark was entered on the Register as a result of false suggestion or misrepresentation, thereby engaging the ground of cancellation in s 88(2)(e) of the Act;
(4)the application for registration of the shape mark was made in bad faith, thereby engaging the ground of opposition in s 62A of the Act; and
(5)as at the priority date, KDE did not intend to use the shape mark in Australia as a trade mark, to authorise its use in Australia as a trade mark, or to assign the shape mark to a body corporate for use as a trade mark by that body corporate in Australia, thereby engaging the ground of opposition in s 59 of the Act.
Alternatively, by its cross-claim Cantarella seeks to have the Register amended pursuant to s 92 of the Act by the removal of the KDE shape mark, with effect from the priority date, on the grounds set out in ss 92(4)(a)–(b) of the Trade Marks Act. In brief terms, this claim was put at trial on the footing that the KDE shape mark should be removed from the Register because –
(1)KDE has not used the shape mark as a trade mark since the priority date;
(2)KDE had no bona fide intention as at the priority date to use the shape mark, to authorise its use, or to assign it for use as a trade mark in the relevant way, and because KDE has not used the shape mark, or not used it in good faith, at any time before the period of one month ending on 24 March 2023; and
(3)the shape mark remained registered for a continuous period of three years ending one month before 24 March 2023, and at no time during that period did KDE use the shape mark, or use the shape mark in good faith, as a trade mark, in Australia.
By its cross-claim, Cantarella also seeks a declaration pursuant to s 129(2)(a) of the Trade Marks Act that the applicants have made unjustified threats of trade mark infringement proceedings, together with claims for an injunction, damages, and additional damages in relation to those unjustified threats.
The parties
The corporate structure within which the applicants sit is fairly complex. Since some issues turn upon that corporate structure, it is necessary to be precise about the relationships between various entities within the structure.
The first applicant, KDE, was incorporated in the Netherlands in 1970. It remains incorporated there at the present day. KDE is an immediate, wholly owned subsidiary of JDE International BV, another company incorporated in the Netherlands.
JDE International BV is a wholly owned subsidiary of JDE Holdings BV, another company incorporated in the Netherlands. In turn, JDE Holdings BV is a wholly owned subsidiary of Jacobs Douwe Egberts BV, which is also incorporated in the Netherlands.
Jacobs Douwe Egberts BV is itself a wholly owned subsidiary of JDE Peet’s NV, a public limited liability company incorporated under the laws of the Netherlands, which is listed on the Euronext Amsterdam stock exchange. While roughly 55% of its share capital is owned by another company, JDE Peet’s NV may fairly be regarded as the parent company of a corporate group.
The second applicant, JDE AU, is a company incorporated in Australia. JDE AU is also owned by JDE International BV, via two interposed Australian companies, being DE Investments Australia Pty Ltd and DE Holdings Australia Pty Ltd. While one organisational chart showed the parent company of JDE AU as “DE Investments Pty Ltd”, I infer from other evidence that this should have read “DE Investments Australia Pty Ltd”. Accordingly, JDE AU also forms part of the corporate group that sits under JDE Peet’s NV.
There were two principal business divisions within that corporate group: the “Jacobs Douwe Egberts” business, and the “Peet’s Coffee” business. KDE and JDE AU are a part of the “Jacobs Douwe Egberts” business division. The origins of the Jacobs Douwe Egberts business can be traced back to 1753, when Egbert Douwes and Akke Thijsses opened a grocery store called, in English, “The White Ox” in Joure, in what is now the Kingdom of the Netherlands. That store sold various products, including coffee and tea. In the present day, the Jacobs Douwe Egberts business, and indeed the JDE Peet’s NV corporate group in general, carry on a “pure-play” coffee and tea business: that is, one that is focused primarily on sourcing, manufacturing, packaging, distributing, and selling coffee and tea products.
The respondent, Cantarella, was incorporated in Australia in 1951. The origins of its business lie in a business established in Australia in 1947 by brothers Orazio and Carmelo Cantarella. That business involved the importation into Australia of various European products, such as mineral water, parmesan cheese, preserved tomato products, wine, olive oil, and pasta. Since 1958, Cantarella has carried on a business distributing beans and ground coffee products under the trade mark “Vittoria” to delicatessens, cafes, and restaurants. In the early 1980s, Cantarella began supplying Vittoria coffee beans and ground coffee to supermarkets.
The evidence
Evidence in chief was given by affidavit, and most but not all of the documentary evidence, although organised in the court book, comprised annexures to the affidavit evidence. The lay witnesses whose affidavit evidence was read by the applicants were –
(a)Ross Norman Tillman, the “Head of Category Development and Shopper Insights” of JDE AU, who made three affidavits and was cross-examined;
(b)Louise Marie Smith, the “Director of Global Intellectual Property” of the JDE Peet’s group of companies, who addressed and was cross-examined on the group corporate structure and licensing arrangements between the applicants;
(c)Linda Margaret Armstrong, the Finance Director of JDE AU, who produced documents and was cross-examined on issues relating to the applicants’ claim that JDE AU was an authorised user of the KDE shape mark; and
(d)Georgia Rosemary Mae Christie, a lawyer employed by the applicants’ solicitors, who produced documents and who was not required for cross-examination.
Of the applicants’ witnesses who were cross-examined, only Mr Tillman’s evidence calls for any comment. Mr Tillman’s position with JDE AU placed him in a position of some expertise, as he demonstrated a high degree of familiarity and experience with the consumer coffee market in Australia. Mr Tillman was challenged in cross-examination in relation to a number of contentious opinions that he expressed. I formed the view that Mr Tillman was an honest witness, and no questions going to his credit arise. However, he was cautious about making concessions, and the evidence of his opinions on contentious issues concerning the claimed similarities and differences between the Moccona jars, the Vittoria jars, and other jars containing products such as scented candles, was coloured. This was demonstrated most clearly when Mr Tillman was taken to two jars containing scented candles with clear similarities to the Moccona jar, yet did not accept that they were similar. In relation to a third jar containing a lemongrass and ginger scented candle, Mr Tillman did not accept that it was different from the Moccona jar, or that it was similar to the Vittoria jar. These are opinions that I do not share. These are not criticisms of Mr Tillman, because he was not put forward as an independent witness, and his position with JDE AU precludes any conclusion that he came to his evidence with objectivity. Moreover, Mr Tillman’s opinions on these issues were never going to carry much weight, and it is evident that the forensic purpose of much of the cross-examination of Mr Tillman was to provoke responses to expose more completely some of the questions that the Court must decide for itself.
Otherwise, no issues of presentation or credit arise in relation to the lay witnesses of the applicants who were cross-examined. Both Ms Armstrong and Ms Smith answered questions in cross-examination clearly and directly.
The lay witnesses whose affidavit evidence was read by Cantarella were –
(a)Matthew William Hill, the Chief Operating Officer of Cantarella, who gave evidence about Cantarella’s business and its decision to use the impugned jar for its 400-gram instant coffee product, and who was cross-examined;
(b)Leigh Alfred Harrison, a director of Abel Lemon Trading Pty Ltd, who gave evidence about the importation and sale of “Park Avenue”-branded instant coffee in around 1993 in a jar similar to the KDE shape mark, and who was not required for cross-examination;
(c)Sue Maree Gilchrist, a partner with Cantarella’s solicitors, who produced documents and who was not required for cross-examination.
When cross-examined, Mr Hill gave evidence in a direct, straightforward manner. I formed a favourable view of his presentation as a witness and considered that he gave honest, reliable evidence to the Court. Mr Hill stood up well to cross-examination on disputed factual issues and readily made concessions.
Expert evidence was given in two areas of expertise: (a) marketing; and (b) industrial design. For each area of expertise, a joint report was prepared and the evidence of the experts was given concurrently. The marketing experts were –
(a)Richard Don O’Sullivan, Professor of Marketing at Melbourne Business School, who was engaged by the applicants; and
(b)Paul Lindsay Blanket, Founder and Principal of First Impressions Pty Ltd, a marketing and communications consulting firm, who was engaged by Cantarella.
The expert marketing evidence presented difficulties. The difficulties had several dimensions. The first is that there were opinions given by both Professor O’Sullivan and Mr Blanket which I do not find persuasive. The second is that there are questions as to whether the marketing evidence addressed the same issues that the Court must decide, and whether the marketing evidence veered off into collateral issues, such as branding, and “brand elements”. The third is that ultimately the key questions, such as use of a sign as a mark of origin, deceptive similarity, and misleading and deceptive conduct, are questions of fact for the Court itself to determine by reference to legal standards, which brings into question the utility of the expert marketing evidence. I will address the marketing evidence in more detail later after setting out more background facts.
The industrial design experts were –
(a)Andrew Charles Simpson, an industrial designer and principal of Vert Design Pty Ltd, who was engaged by the applicants; and
(b)David Fulton Francis, a director at D3 Design, a specialist packaging and product design consultancy, who was engaged by Cantarella.
Both Mr Simpson and Mr Francis were impressive witnesses and presented as being clearly independent. These impressions may have been strengthened by the fact that there were large areas of agreement between them in relation to the matters that were the subject of their experience and expertise.
Factual setting
In light of how the parties joined issue at trial, it is necessary for me to make some more particular findings about various aspects of the parties’ businesses and the coffee industry over time. To resolve some of the questions raised at trial, attention must be given to how Moccona and Vittoria-branded products have been produced, distributed, marketed, and sold over the years. Understandably, the evidence about how particular products were packaged and marketed decades ago was not always clear. Nevertheless, much of the evidence that went towards establishing several of the key events in this period was uncontradicted. I will therefore make factual findings in the paragraphs that follow on the basis of that evidence. Where necessary, I will set out any points of contention between the parties and make explicit the findings I make.
History of the Moccona brand in Australia
Moccona-branded instant coffee was launched in Australia in 1960. The word “Moccona” was registered as a trade mark in Australia in respect of “Coffee, inclusive of coffee in powder form” from 5 April 1960.
There was an issue at trial as to when Moccona-branded instant coffee began to be sold in a glass jar with a glass stopper lid, substantially in the form of the KDE shape mark. While the applicants’ original position was that Moccona instant coffee was sold in “its cylindrical glass jar with flat-topped stopper” from the very beginning in 1960, there was no evidence beyond some hearsay representations in the 2020 annual report for JDE Peet’s NV, and a statement on a web site, to support that position. Since Cantarella disputed this claim, it is necessary to step through the evidence on this question.
The starting point is an advertisement for Moccona instant coffee that appeared in the 7 December 1960 issue of “The Australian Women’s Weekly” –
This advertisement depicts a tin, rather than a jar, of Moccona instant coffee. The text of the advertisement states a price of “3/11½” in respect of “2oz. tins or jars”. From the advertisement as a whole, I find that Moccona instant coffee was marketed at the time of the advertisement in both tins and jars, although I cannot conclude that the jar used at that time was in any way similar to the KDE shape mark.
The following advertisement, from the 2 December 1966 issue of “Dutch-Australian Weekly”, was also in evidence –
This advertisement appears to show Moccona-branded coffee being offered for sale in Australia in a cylindrical glass jar not entirely unlike the body of the KDE shape mark. The jar, however, seems to have a screw-top lid, not a stopper lid. Since a stopper lid is an inherent element of the KDE shape mark, this advertisement would not support a finding that Moccona-branded instant coffee was sold in a jar resembling the KDE shape mark from 1966.
Also in evidence was a photograph, dated September 1972, which was said to depict a factory in Joure, the Netherlands, where Moccona instant coffee was then produced –
This photograph appears to depict a conveyor belt carrying coffee in unlabelled glass jars of a shape similar to the KDE shape mark. The evidence did not establish, however, that in 1972 the Joure factory produced coffee in only one container. Indeed, as will appear below, Moccona-branded instant coffee was sold in a variety of containers in the 1970s, suggesting that the Joure factory may have used more than one shape of container during this period. Given that no Moccona labels appear on the jars in the photograph, and that there is no other indication that any of the depicted jars was ever shipped to Australia, I cannot find based on this photograph alone that Moccona-branded instant coffee was sold in a jar similar to the KDE shape mark in Australia by 1972.
Also in evidence was a photograph sourced from the National Archives of Australia, which was taken in a supermarket in 1977 –
This photograph shows, amongst other things, various coffee products for sale on shelves, including Moccona-branded instant coffee in a cylindrical glass jar with a glass stopper lid, as well as Moccona-branded instant coffee in at least one other form of packaging, being a transparent cylindrical jar bearing a red label with a gold lid. The shape of the jars with the glass stopper lids in the photograph appears to resemble the KDE shape mark.
More specifically, an advertisement in the 12 October 1977 edition of “The Australian Women’s Weekly” depicts a Moccona-branded cylindrical glass jar with a glass stopper lid containing instant coffee –
On the basis of the last two photographs, I find that by October 1977 Moccona-branded instant coffee was sold in Australia in a jar with a shape that was substantially similar to the KDE shape mark. However, based upon my own examination of the photographs and the applicants’ current products, I cannot exclude the possibility that the 1977 jars may have had some slight differences in shape, particularly of the angle of the shoulders of the jars and the height of the glass stopper lid.
To support their claim that Moccona instant coffee was sold in a jar similar to the KDE shape mark from earlier than 1977, the applicants drew attention to the reasons for judgment of Lockhart J in Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 53 FLR 307 (Stuart Alexander). The Court received those reasons into evidence without objection, and the parties proceeded on the basis that the Court could rely on Lockhart J’s reasons as evidence of the truth of matters asserted in that judgment. No objection was taken under s 91 of the Evidence Act 1995 (Cth) or by reference to any corresponding common law principle.
The applicants relied upon Lockhart J’s reference at 308 to a jar which was, in October 1981, “substantially the same as the jar in which Moccona ha[d] been sold for at least fifteen years”. It is clear that the jar in question had substantially the same shape as the KDE shape mark. From this, the applicants asked the Court to infer that Moccona has been sold in a jar like the KDE shape mark since 1966. Cantarella submitted that the evidentiary basis for Lockhart J’s finding was not apparent, and that his Honour did not need, in that case, to address the precise date on which the Moccona jar was first used. I accept Cantarella’s submission. I also note that the advertisement in the 2 December 1966 edition of the “Dutch-Australian Weekly”, reproduced at [35] above, shows a Moccona jar with a screw-top lid. Unless there were two Moccona jars available for purchase in 1966 that differed only in terms of their lids, this advertisement is inconsistent with the statement in Lockhart J’s reasons of 8 October 1981 that the same jar had been used for “at least fifteen years”. The more fundamental point, however, is that I am unable to identify the evidentiary foundation for his Honour’s finding. I therefore attribute it little weight, and conclude that I am not affirmatively persuaded on the evidence before me that Moccona instant coffee was sold in Australia in a jar with a shape like that of the KDE shape mark before October 1977.
Advertisements for the Moccona brand in Australia
As this discussion shows, there is a long history of Moccona instant coffee advertisements in Australia. In what follows, I will describe a series of Moccona instant coffee advertisements, which were relied upon by the parties for various purposes. It was not in dispute that these advertisements had been published in Australia.
The applicants relied upon a campaign in 2008, centred around a television advertisement entitled “Cinderella”. The advertisement is obviously a play on the “Cinderella” fairy tale, in which a prince tries to find the woman whose foot fits a glass slipper. In the advertisement, a man is shown sitting on a wall next to a beach, holding a glass stopper lid that resembles the Moccona lid, as appears below –
The man goes from door to door with his glass stopper lid in hand. Each of the doors is opened by a woman who has a coffee jar, but no lid. The jars have a range of different shapes. The man and each woman test whether the lid fits the jar. At each door before the last one, the lid fails to fit the jar. At the final door, the woman’s jar is a Moccona Classic Medium Roast jar, with which the man’s lid fits perfectly. The advertisement features a close-up depiction of the Moccona jar and lid in the hands of the man and woman, as appears below –
The advertisement ends on the following frame, which shows a dramatically lit Moccona jar against a black background, above the gold cursive motto “Never settle for less than Special” and a gold URL for “>
The next advertisement relied upon by the applicants was entitled “Candles”. It was screened on free-to-air and pay television channels from at least 2010. This advertisement depicts a woman purchasing Moccona jars from a man behind the counter of a store. Behind the man, Moccona jars are stacked in a row, two jars high –
A close-up shot of the Moccona jar, with label, follows. The advertisement then depicts the woman purchasing more jars from the man on further occasions. The culmination of the advertisement comes when the man leaves the store at night to find that the woman has placed a candle in an empty Moccona jar (without its lid) on the setts of the street –
In fact, there are several of these Moccona jar candles, which lead in a line to the woman’s apartment building. The man follows the path they create and encounters the woman drinking something — presumably coffee — from a mug. At the bottom of the shot appears the Moccona logo, as part of the tagline “New Moccona Inspirations Range” –
The next advertisement was titled “Keepsakes”. This advertisement was broadcast in 2011. Ancillary advertisements were published in other media as part of the same campaign. The “Keepsakes” advertisement opens with a series of shots depicting a woman’s romantic stay in a luxury hotel. Several shots prominently feature her room key and a tag emblazoned with the number “18”. In one such shot, the woman drops the key. The next shot in the advertisement depicts the key dropping into a glass Moccona jar –
As this picture demonstrates, only the cylindrical body of the Moccona jar is visible. The woman is then shown drinking coffee and wistfully remembering her hotel stay. She places a glass stopper lid on the jar containing the key, and in this shot the entire Moccona jar with lid is visible in profile, without any label or the word “Moccona” –
A glass jar containing coffee, with a Moccona label, is depicted on the woman’s kitchen bench in the same shot as the unlabelled jar. The unlabelled jar is then placed on a shelf alongside a series of other unlabelled glass jars containing keepsakes –
The final shot of the “Keepsakes” advertisement is a close-up of a labelled Moccona jar with the taglines “INDULGE IN THE MOMENT”, “Specialty Blends” and “For Lovers of Coffee” –
A subsequent version of the “Keepsakes” advertisement was broadcast in 2012. That version depicts the same woman placing a glass jar on a shelf with other jars that contain keepsakes. This time, however, the jars on the shelf have decorative patterns, though still no labels –
The advertisement ends on a shot of three limited-edition jars of Moccona, in “EXOTIC”, “INDULGENCE” and “RICH” flavour varieties, above the Moccona logo and the tagline “For Lovers of Coffee” –
One video played during Mr Tillman’s cross-examination was titled “Moccona Me-Time Moments: Emma (60”)”. This video was downloaded from YouTube, having been posted on the Moccona YouTube page on 14 July 2021. The video, which had garnered more than 32,000 views, depicts the eponymous Emma engaging in various forms of community volunteering, as well as making and drinking a cup of Moccona instant coffee. This footage was accompanied by an audio voiceover of Emma describing her activities. A partially obscured Moccona-branded jar appears in the background of the video while Emma is cooking –
A partially obscured Moccona-branded jar, with a detached but visible lid, is also shown more prominently when Emma spoons out some instant coffee –
Also played during the cross-examination of Mr Tillman was a YouTube video titled “The Quest – Moccona (15”)”, which was posted on the Moccona YouTube channel on 1 March 2021 and which had recorded over 460,000 views. This video depicted a woman making a cup of Moccona instant coffee and choosing to drink her coffee rather than socialise with her friends. One image in the video shows the woman smelling an open jar of Moccona instant coffee, with the jar’s lid held in her right hand –
Another relevant image from the video is the final image of a mug and three Moccona-branded products, being a box of sachets, a jar of instant coffee, and a box of capsules. Each of these products bears the Moccona logo –
Another video played during the cross-examination of Mr Tillman was titled “Moccona Me-Time Moments: Katie (60”)”. This video was posted to the Moccona YouTube channel on 14 July 2021 and had recorded over 160,000 views. The video follows a similar format to the video featuring Emma, which I have already described. Relevantly, the video opens with an image of the Moccona logo and the tagline “Giving a little me-time to deserving Aussies” in front of a blurred image of Katie and her family –
Later in the video, Katie’s husband is shown spooning instant coffee out of a Moccona-branded jar, which is partially obscured –
The video also contains images of Katie at a beach, drinking from a Moccona-branded cup –
The video’s concluding image is of a Moccona logo superimposed over Katie drinking from the same Moccona-branded cup –
Counsel for Cantarella also played a video entitled “Dec Jar 2022”, which was posted to the Moccona YouTube channel on 8 July 2022 and has attracted over one million views. The evidence established that this video related to the “Be Inspired” range of limited-edition Moccona glass jars. A campaign involving these jars, which ran between at least June 2022 and December 2022, was run on several social media platforms. The video depicts a range of six limited-edition Moccona jars. Initially, the six jars are presented together above the Moccona logo –
Each jar is also presented individually, as in the case of the following jar –
At the conclusion of the video, the six jars are again presented together above the Moccona logo –
Throughout the video, each of the jars depicted is filled with freeze-dried instant coffee, and bears a decorative design. Nowhere in the video is a jar shown with a Moccona label affixed.
Another video played by counsel for Cantarella was titled “Moccona Sleeping Beauty”. This video was posted to the Moccona YouTube channel on 12 April 2014, and has been viewed more than 19,000 times. This video opens with various suitors attempting to wake a sleeping woman, using loud noises such as a cockerel, an accordion and a band. None of these methods succeeds. As these failed attempts unfold, there are brief images of a man with a jar of Moccona instant coffee –
Eventually, the man is shown opening the Moccona jar and making a cup of coffee –
This causes the sleeping woman to stir, and she eventually awakes when the man brings the coffee to her chamber. The video ends on an image of a labelled jar of Moccona “Awaken” instant coffee, next to the taglines “WAKE UP TO SOMETHING SPECIAL” and “For Lovers of Coffee” –
Another video shown by counsel for Cantarella was titled “Moccona Chase (15”)”, which was posted to the Moccona YouTube channel on 7 March 2018 and had more than 440,000 recorded views. This video shows a man running after a woman on a tram, with a labelled jar of Moccona instant coffee in hand –
The video then shows the man reaching the woman inside a building and handing her the labelled jar of Moccona instant coffee –
The video finishes on an image of a labelled Moccona jar next to the tagline “FOR LOVERS OF COFFEE” –
Another video shown by counsel for Cantarella was titled “Moccona by Peter Alexander”, which was posted on 23 March 2018 and has recorded over 500 views. This video forms part of a campaign run by JDE AU in collaboration with the Australian sleepwear company Peter Alexander. The campaign involved limited-edition “Wake Up In Style” glass jars, and ran between at least February 2018 and October 2018. Around 950,000 of these jars were sold during that period. The advertising campaign involved billboards, social media, and other online advertising, an event in Sydney at which Peter Alexander himself appeared, and various other forms of promotion. This particular video opens on a cascading shot of four decorative glass Moccona jars containing freeze-dried instant coffee. The word “Moccona” does not appear on the jars, or anywhere else in the opening sequence –
The video then finishes on an image of a decorative glass Moccona jar, without a label, next to the Moccona logo and the tagline “WAKE UP IN STYLE” –
The next video played by counsel for Cantarella was titled “Fall in love with coffee at home with Moccona”. This video was posted to the Moccona YouTube channel on 13 May 2020, and had recorded more than 2,500 views. The video opens with a coffee bean turning into a love heart, before a jar of Moccona instant coffee, along with its label, is featured –
The video then features two other Moccona products, being a box of “Cappuccino” sachets, and a tin of “Barista Reserve” –
The video concludes with an image of four Moccona products, being a tin of “Barista Reserve”, a box of “Cappuccino” sachets, a 100-gram jar of Moccona Classic freeze-dried instant coffee, and a box of “Ristretto” capsules. The jar of Moccona instant coffee is placed at the front of the range –
Counsel for Cantarella also played a video titled “Moccona Upcycling #InspiredByMoccona”, which was posted to the Moccona YouTube channel on 21 July 2020 and which had more than 1,500 recorded views. The video is an advertisement for Moccona that illustrates how, once the coffee inside has been used, Moccona jars can be used for purposes other than storing coffee. The video opens on an image of the Moccona logo above the tagline “Be inspired” –
The video then shows some unlabelled Moccona jars before showing an image of a labelled jar of Moccona instant coffee –
The next shot in the video shows, from above, coffee being spooned out of a jar of Moccona instant coffee, without its lid. The word “Moccona” does not appear in this shot, and it is not clear whether the jar has any label attached to it –
Following these images comes a series of images that illustrate the uses to which empty Moccona jars can be put. The jars are variously used as water vessels, candle holders, and vases. In each case, the body of the Moccona jar is visible, though the lid is not always present –
The next video played by counsel for Cantarella was titled “Inspire your moment with Moccona (15”)”, which was posted to the Moccona YouTube channel on 17 August 2020 and which had more than 2.4 million recorded views. This video centres on a woman painting a watercolour bird, which comes to life and imparts a design onto a plain and unlabelled jar of Moccona instant coffee. The video opens on a shot of a woman drinking coffee from a mug, with an unlabelled jar of Moccona instant coffee next to a small easel on the table in front of her –
In the next shot, the woman puts the finishing touches on the watercolour of a bird carrying a garland of flowers. The bird magically flies off the page and floats above the unlabelled Moccona jar –
The bird then flies around the jar and wreathes it with the garland of flowers, which is imparted on the jar as a decorative design –
In the final shot, the jar with the decorative design expands into six jars, each with its own design. The jars, which do not bear a Moccona label, are placed above a glinting Moccona logo and the tagline “INSPIRE YOUR moment” in the final frames –
History of the Vittoria brand in Australia
As I have noted, Cantarella’s Vittoria business focused, for most of its existence, on beans and ground coffee. For at least some time between the late 1950s and the late 1970s, however, Cantarella also sold a Vittoria-branded instant coffee product, in a jar that appears below –
At other times, Cantarella has sold instant coffee products under different brands. There was no suggestion that any Vittoria-branded instant coffee product had been sold in Australia between the late 1970s until the launch of the Vittoria 100-gram instant coffee product in 2021.
The Vittoria 100-gram instant coffee product began to be sold by Woolworths in May 2021. As I have mentioned, the Vittoria 100-gram product has been sold in a tall, cylindrical glass jar with a gold-coloured plastic lid, with Vittoria branding involving the use of registered trade marks owned by Cantarella. The 100-gram product is available in four varieties –
(1)Original Classic, with a predominantly gold label;
(2)Mountain Grown, with a predominantly black label;
(3)Latte, with a predominantly white label; and
(4)Italian, with a predominantly brown label.
The evidence was that these four varieties mirror varieties of coffee beans and ground coffee sold under the Vittoria brand.
From around November 2021, Coles also began to stock the Vittoria 100-gram product. The Vittoria 100-gram product was initially priced at $10.00 per jar, and subsequently at $11.00 per jar. Since its launch, it has often been discounted and sold for prices between $6.00 and $7.60.
In July 2023, Cantarella launched a 300-gram, Vittoria-branded instant coffee product range that is sold in a resealable pouch. The evidence suggested that this product range is sold in independent supermarkets and grocers, rather than Coles and Woolworths stores. A stock image of an “Original Classic” variety resealable pouch of Vittoria instant coffee was in evidence –
Also in evidence were photographs of “Original Classic” and “Mountain Grown” variety resealable pouches of Vittoria instant coffee, as they appeared on the shelves of independent supermarkets and grocers –
Development of the Vittoria 400-gram product
The parties adduced evidence relating to the development of the Vittoria instant coffee range, including the 400-gram product and its packaging. Much of the evidence was confidential, and was heard in closed court. In general terms, the evidence related to precisely how, why, and with what knowledge and motivation Cantarella settled on the packaging it ultimately adopted for the Vittoria 400-gram product. Because of its confidentiality, I will deal with aspects of the evidence concerning the development of the Vittoria instant coffee range in a confidential annexure to these reasons. I will, however, explain in these open reasons the outline of my reasoning in relation to this topic.
The evidence on this topic was said to be relevant to the applicants’ infringement case, and the misleading or deceptive conduct and passing off cases. Now, it is not an element of any of those causes of action that the respondent intended to deceive. It was common ground that, for example, deceptive similarity or a likelihood of misleading or deceiving can be established whether or not Cantarella intended to achieve those results. In their statement of claim, the applicants pleaded as part of their infringement case that the –
[r]espondent’s Infringing Shape Mark is deceptively similar to the [a]pplicants’ Shape Mark … in that a number of Australian consumers … are at a real risk … of being confused … particularly given that … there is no requirement to prove an actual subjective intention to cause confusion, but in any event … the [r]espondent chose to adopt packaging “sailing close to the wind” of the [a]pplicants’ Shape Get-Up …
Similar allegations were made in relation to the applicants’ ACL claim.
The evidence about the development of the Vittoria 400-gram product’s packaging has to be understood in this context. The applicants submitted that the process by which the packaging for the Vittoria 400-gram product was developed reinforced the conclusions that Cantarella had used the shape of the 400-gram product as a trade mark, and that the shape of the 400-gram product was likely to be confused by some notional consumers with the shape registered by the KDE shape mark. The applicants sought to engage the principle that, where a trader consciously emulates aspects of a competitor’s get-up, it is a reasonable inference that the trader believes there will be a market benefit in doing so, in the form of attracting custom that would otherwise have gone to the competitor. From those propositions, it was said, it is an available inference that the trader considered that such emulation was “fitted for the purpose and therefore likely to deceive or confuse”: see Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Australian Woollen Mills) at 657 (Dixon and McTiernan JJ). The applicants cited Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; 234 FCR 549 (Sydneywide) at [117] (Weinberg and Dowsett JJ) in support of these propositions.
Of course, whether the respondent believed that the Vittoria 400-gram product’s jar was fitted for the purpose of attracting custom that would otherwise have gone to the applicants is not, without more, relevant to any cause of action. I understood the applicants’ case to be that, where these facts arise, the Court may infer more readily that Cantarella’s jar was (a) used as a trade mark; and (b) deceptively similar to the KDE shape mark, or likely to mislead or deceive consumers on the ground that these facts at least provide “a reliable and expert opinion” on the question whether what was done was in fact likely to deceive: see Australian Woollen Mills at 657.
Without disclosing the contents of confidential evidence, I will summarise the salient features of the development process.
In May 2020, Cantarella conducted a market review dealing with the pre-mixed sachet and instant coffee segments of the coffee market. The review identified the instant coffee segment as a large segment of the coffee market. By August 2020, Cantarella had decided to launch a Vittoria-branded instant coffee product. Various formats and packaging options were considered. For various reasons, Cantarella decided to launch a 100-gram product. Once that product was launched in May 2021, Cantarella resumed its consideration of other formats for Vittoria instant coffee products, including a 400-gram product. Again, various packaging options were considered. Among these options were a glass jar with a plastic screw-top lid, and a glass jar with a metal clamp lid. In mid-2021, a potential supplier sent to representatives of Cantarella two proposed packaging options, both of which were glass jars with glass stopper lids. Cantarella selected the second jar as the preferred option. Some time later, Cantarella received a physical version of that glass jar as a sample. That sample jar was in evidence, and a photograph of it appears below –
It became apparent that this jar was not large enough to hold 400 grams of freeze-dried instant coffee. Further, concerns were raised as to whether it was too tall for the standard-sized height of supermarket shelves such as those on which 400-gram Moccona jars were displayed. The dimensions of the jar were therefore adjusted: the height was reduced, so as to better fit the supermarket shelves; and the diameter of the cylindrical body was increased, so that the jar could hold 400 grams of coffee. The result was a jar in the shape that Cantarella ultimately used for the Vittoria 400-gram product.
Ultimately, I am not persuaded that the evidence about the development of the Vittoria 400-gram jar bears on the issues in this case. The evidence reveals that Cantarella wished to enter the instant coffee market using its Vittoria brand, believing that the market for Vittoria might be profitable, and knowing that Moccona was a major brand in that market. It also reveals that Cantarella considered a range of packaging formats. Cantarella assessed those formats against various criteria, including the degree to which they were perceived as “premium”. Cantarella wished to compete with the Moccona brand, and to launch a product that was capable of being sold in supermarkets just as widely as Moccona instant coffee was sold. Cantarella also wished to occupy a similarly premium position in the instant coffee market to Moccona. However, Cantarella selected as a starting point a jar that was put forward by a supplier. As events transpired, that jar had to be modified to suit Cantarella’s requirements. One requirement was that it was actually large enough to hold 400 grams of coffee. Another was shelf height. In combination, these requirements led to an increase in diameter and a reduction in height.
I find that for the purposes of sale of instant coffee products in supermarkets where a share of the instant coffee market could be expected to be gained at the expense of other suppliers, it is unremarkable that Cantarella should decide that its 400-gram jar should have a similar height to that of the Moccona 400 gram jar, which at the time of launch was the only competing 400-gram freeze-dried coffee in a jar. Nescafé Gold was introduced in 400-gram jars a month or two after the Vittoria 400-gram product was introduced. The Nescafé Gold 400-gram jar is slightly taller than the Moccona and Vittoria 400-gram jars. Mr Tillman accepted that, generally speaking, supermarkets prefer not to have significant headspace in their shelving because it would be a waste of space, and that generally supermarkets want products to conform. Some of the contemporary photographs of consumer items displayed on supermarket shelves that were in evidence showed competing products on the same shelf. In the case of instant coffee, a photograph on p 71 of Professor O’Sullivan’s first report showed a number of shelves displaying competing products. Taller products, such as large tins of International Roast and Nescafé Blend 43, and 400-gram jars of Moccona, Vittoria, and Nescafé Gold were on the two lowest shelves. The tallest product by a margin appeared to be the 400-gram jars of Nescafé Gold –
The statements of Dixon and McTiernan JJ in Australian Woollen Mills and of Weinberg and Dowsett JJ in Sydneywide should not be understood as erecting a rule of law. They constitute appellate guidance in relation to fact-finding, which is plain from the statement of Dixon and McTiernan JJ in Australian Woolen Mills at 658 that “in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained”. Intention is but one factor that the court may take into account in its factual evaluation, perhaps in a borderline case: Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514 at [68] (Nicholas, Yates and Burley JJ). I do not conclude from the entire series of events, only aspects of which I have canvassed in these open reasons, that Cantarella was deliberately attempting to mislead consumers, or that it considered that its jar shape was likely to deceive or confuse. I do not accept the applicants’ claim that Cantarella was attempting to “sail close to the wind” in any relevant sense. The process by which Cantarella developed its jar is, therefore, irrelevant to the pleaded causes of action. The questions of trade mark use, deceptive similarity, and likelihood of misleading or deceiving are to be considered in this case by reference to the objective facts alone.
In arriving at the above conclusions, and the supporting findings set out in the confidential annexure, I have had regard to the applicants’ submission about the significance of Cantarella’s failure to call as witnesses three persons involved in the process of selecting the Cantarella jar shape: Les Schirato, Roland Schirato, and Mathias Stamm. The applicants submitted that I should more comfortably draw inferences adverse to Cantarella by reason of their absence from the witness box. However, for the reasons that I give, the evidence does not get to the point where I would contemplate drawing the inferences for which the applicants contended. What Cantarella did is well documented, as detailed in the confidential annexure. And Cantarella did call Mr Hill, to whom Mr Stamm reported, and who in turn reported to Mr Les Schirato. Mr Hill was cross-examined. It was put to Mr Hill that in developing and finalising the design of its 400-gram jar, Cantarella was consciously trying to align the shape and size of its jar as close to the Moccona shape as it could, which Mr Hill denied. As I stated at [25] above, I formed a favourable view of Mr Hill as a witness. I accept Mr Hill’s evidence. The evidence shows that Cantarella was well aware of Moccona’s presence in the market for freeze-dried coffee, and that it sought to enter that market with its own product. But for the reasons explained in the confidential annexure, the final shape of the Cantarella jar was not developed for the purpose of emulating the shape of the Moccona jar, or to mislead consumers, but was largely the result of the functional considerations that are referred to in the annexure.
Advertisements for the Vittoria brand in Australia
Over various periods from 30 October 2022 to 22 July 2023, television advertisements for the Vittoria 100-gram product were broadcast on various Channel 9 channels. One of the advertisements in question was a 30-second advertisement that focused on the process of coffee growing and processing. Relevantly, it includes a shot of a man holding up a cylindrical glass jar full of coffee beans. The jar in question is unlabelled, but it appears to be similar in shape to the Vittoria 100-gram product –
The advertisement ends on a shot of all four varieties of the labelled Vittoria 100-gram product, next to the tagline “Now in Instant”, as a ray of light passes over and illuminates the four jars –
Cantarella also alleged that the applicants’ threats were flagrant, so as to engage the Court’s discretion to award additional damages. The applicants denied this allegation.
Issue (13) — Cantarella’s submissions
Cantarella’s submissions on this issue were very brief, and concerned just two points.
First, Cantarella submitted that the threats made by the applicants were unjustified because the Vittoria 400-gram product did not infringe the KDE shape mark.
Secondly, Cantarella submitted that the applicants’ conduct in making the threats was “particularly egregious” given the “obvious differences” between the KDE shape mark and the shape of the jar used for the Vittoria 400-gram product. Cantarella submitted that the Court should award additional damages to Cantarella on the basis that the applicants had engaged in “flagrant conduct”.
Issue (13) — The applicants’ submissions
The applicants submitted that, as the threats are admitted, the only question for the Court is whether the threats are unjustified. The applicants accepted that this question turned on the results of the cross-claim and the infringement claim. Saliently, the applicants accepted that Cantarella’s action under s 129 would succeed if the applicants’ infringement claim were dismissed.
The applicants submitted in view of the orders made on 24 April 2023, to which I have referred above, that there was no occasion at this stage of the proceeding for the Court to make any findings as to Cantarella’s entitlement to damages, let alone additional damages.
The applicants submitted that there might be no utility in the Court granting declaratory relief under s 129, given Cantarella’s delay in making an application under s 129 only by cross-claim, and because the relief has been rendered inutile by the bringing of the infringement proceeding. In this last respect, the applicants relied on the decision of O’Bryan J in Urban Alley at [290].
Issue (13) — Consideration
In light of how the parties presented their cases, and my conclusions on other questions, the issues for consideration are straightforward.
For the reasons I have already explained, the applicants’ infringement case has failed. The applicants conceded that it would follow from the failure of their infringement case that Cantarella’s s 129 action would succeed. That concession was properly made.
The scheme of s 129 is that a person aggrieved by a threat may bring an action under s 129(1). Putting ss 129(5)–(6) to one side, the primary defence to an action under s 129(1) is located in s 129(4). Section 129(4) supplies a defence in cases where, essentially, the threats were made in relation to conduct that actually did constitute infringement of a registered trade mark. As Moshinsky J put it in Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd [2016] FCA 820; 120 IPR 478 at [233] –
It appears from the text and structure of s 129 that, where the terms of s 129(1) apply, subject to subs (5) and (6), a defendant to an action under s 129 can only succeed if the defendant satisfies the court of the matters referred to in s 129(4), namely that the trade mark is registered and that the acts of the threatened person in respect of which the defendant threatened to bring an action constitute an infringement of the trade mark. Thus it is insufficient for the defendant to show, for example, a bona fide belief that the acts of the threatened person constituted infringement; the defendant must establish infringement: cf Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154 at 193; 157 ALR 247 at 284; 41 IPR 593 at 630 per Drummond J, in relation to s 202 of the Copyright Act 1968 (Cth); and Bradken Resources Pty Ltd (ACN 098 300 988) v Lynx Engineering Consultants Pty Ltd (ACN 059 949 469) (2008) 78 IPR 586; [2008] FCA 1257 at [39] per Emmett J, in relation to ss 128 and 129 of the Patents Act 1990 (Cth).
See also Urban Alley at [278] (O’Bryan J); Firstmac Ltd v Zip Co Ltd [2023] FCA 540 at [400] (Markovic J).
In other words, s 129 does not call for a roving inquiry into whether the person who made the threats acted reasonably. The action created by s 129(1) will succeed where s 129(1) is engaged, unless an express defence is established. For the purposes of that particular question, there is no call to engage in a broader inquiry as to whether the threats were “unjustified” in any other sense of the word.
Accordingly, Cantarella was entitled to bring an action under s 129(1).
It is a separate question, however, whether Cantarella is entitled to any remedy on that account. As I have explained, Cantarella sought a declaration, an injunction, and damages in relation to its action under s 129.
In view of the orders I made on 24 April 2023, Cantarella’s entitlement to damages, including any component awarded as “additional damages”, is not for determination at this point. Any such entitlement, however, may well be subject to the observations I will make in connection with the other remedies Cantarella has sought.
On the subject of remedies under s 129, then, the only live questions relate to the declaration and injunction that Cantarella seeks. On both of these questions, discretionary considerations loom large. In exercising my discretion, I am keenly aware of the statutory purpose of s 129. As O’Bryan J put it in Urban Alley at [290], “[t]he section affords relief to a person who is aggrieved by the threat of infringement proceedings, and provides an avenue to seek redress in the face of such threats”. That purpose accords with that of the antecedents of s 129, and has its genesis in s 32 of the Patents, Designs and Trade Marks Act, 46 & 47 Vict, c 57, which overcame some of the shortcomings as an effective remedy of seeking an interlocutory injunction to restrain the commission of the common law tort of malicious falsehood, which requires proof of special damage, falsity, and malice: see Frost R, Law and Practice Relating to Letters Patent for Inventions (4th ed, Stevens and Haynes, 1912) at 308–9. I do not consider that a declaration as sought by Cantarella would have any utility. The applicants threatened to commence an action for trade mark infringement, and did so. They pursued the action to judgment. The applicants’ case has failed. The orders of the Court dismissing the proceeding will serve to vindicate Cantarella’s position that it did not infringe the KDE shape mark. In these circumstances, I am not minded to make a declaration under s 129.
Nor, in my view, is it appropriate for an injunction to issue in these circumstances. To start with, the terms of the injunction sought by Cantarella are not sufficiently precise. Plainly, it would be necessary to read in some further requirement that the threats must relate to the shape of the Vittoria 400-gram product. But moreover, putting aside the imprecision with which the injunction sought was expressed, I am not satisfied that there is any reason to think that, apart from foreshadowing an appeal, the applicants will make any further threats to bring an action against Cantarella on the ground that Cantarella has infringed the KDE shape mark by its use of the jar of the Vittoria 400-gram product. The orders dismissing this proceeding will constitute a res judicata and give rise to issue estoppels rendering the prospect of the threat of any further action by competently represented parties almost fanciful.
None of this discussion forecloses evidence and submissions that Cantarella may put forward concerning loss or damage sustained as a result of the threats that were made, which are the subject of the admission on the pleadings. Different considerations arise in that context, which do not influence my discretion on the questions of the declaration and injunction sought by Cantarella.
Conclusion
The applicants’ claims will be dismissed. The several claims made by Cantarella in its cross-claim that have failed will also be dismissed. I will hear the parties on costs, and on any other orders that should be made for the further hearing and determination of the question of damages, including additional damages, sought by the cross-claim.
CONFIDENTIAL ANNEXURE A
[This section is intentionally blank, and takes the place of Confidential Annexure A, which comprised paragraphs [564]–[603].]
I certify that the preceding six hundred and three (603) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Wheelahan. Associate:
Dated: 7 November 2024
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