Peter Bodum A/S v DKSH Australia Pty Ltd
[2011] FCAFC 98
•5 August 2011
FEDERAL COURT OF AUSTRALIA
Bodum v DKSH Australia Pty Limited [2011] FCAFC 98
Citation: Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 Appeal from: Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23 Parties: PETER BODUM A/S, BODUM (AUSTRALIA) PTY LIMITED ACN 104 809 672 and PI-DESIGN AG v DKSH AUSTRALIA PTY LIMITED ACN 005 059 307 File number: VID 325 of 2010 Judges: GREENWOOD, TRACEY AND BUCHANAN JJ Date of judgment: 5 August 2011 Catchwords: TRADE PRACTICES – consideration of whether the appellants enjoyed a substantial reputation in the pleaded features of their product described as the Bodum Chambord Coffee Plunger – consideration of whether the shape of the appellants’ product is distinctive of the appellants in the mind of consumers – consideration of the notion of secondary meaning or independent reputation in the features of a product or get‑up – consideration of whether a rival product adopts the features of the appellants’ product – consideration of whether steps taken by the respondents had the effect of differentiating their rival product from that of the appellants’ product – consideration of the principles governing a determination of whether conduct by a rival of selling or offering for sale a product embodying features of a rival found to be distinctive gives rise to a contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth) (as that Act applied at the relevant date) – consideration of whether the conduct of the respondents involved passing off their product as that of the appellants’ product
INTELLECTUAL PROPERTY – consideration of the principles relating to the subsistence of an independent or secondary reputation in the features of a product or the shape of a product – consideration of the principles governing a determination of whether the conduct of selling or offering for sale a rival product embodying features of shape found to be distinctive of the appellants involves a contravention of s 52 or s 53 of the Trade Practices Act 1974 (Cth) or passing off – consideration of the principles to be applied in determining whether conduct involves a contravention of s 52 or s 53 – consideration of the principles to be applied in determining whether conduct involves passing off by a representation to the public by reason of the selling or offering for sale of a product embodying the distinctive features of the appellants’ product
CONSUMER LAW – consideration of the principles to be applied in determining whether conduct involves a contravention of s 52 or s 53 of the Trade Practices Act 1974 (Cth)
Legislation: Trade Practices Act 1974 (Cth), ss 52, 53 and 80 Cases cited: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 257 – cited and quoted
Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 – cited and quoted
Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 - cited
General Electric Co (of USA) v General Electric Co Ltd [1972] 1 WLR 729 - cited
Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 - cited
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 – cited and quoted
SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 - cited
Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd (2000) 49 IPR 286 - cited
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 – cited and quoted
Reckitt & Colman Products Ltd v Borden Inc. and Others [1990] RPC 341 - – cited and quoted
Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 – cited and quoted
William Edge & Sons Limited v William Niccolls & Sons Limited [1911] AC 693 – cited and quoted
Numatic International Limited v Qualtex UK Limited [2010] EWHC 1237 – cited and quoted
Apand Pty Limited v The Kettle Chip Company Pty Ltd (1994) 52 FCR 474 - cited
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 – cited and quoted
Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45 – cited and quoted
Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 – cited and quoted
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 – cited and quoted
Hansen Beverage Co. v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579 – cited and quoted
ConAgra Inc. v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 – cited and quoted
S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 - cited
Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 - cited
National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 61 IPR 420 – cited and quoted
Nutrientwater Pty Ltd v Baco Pty Ltd (2010) 265 ALR 140 – cited and quotedDate of hearing: 9 and 10 November 2010 Date of last submissions: 10 November 2010 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 298 Counsel for the Appellants: Mr D Catterns QC with Ms S Goddard SC with Mr M Hall Solicitor for the Appellants: Mallesons Stephen Jaques Counsel for the Respondents: Mr B Caine SC with Mr G Dalton Solicitor for the Respondents: Arnold Bloch Leibler
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 325 of 2010
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: PETER BODUM A/S
First AppellantBODUM (AUSTRALIA) PTY LIMITED ACN 104 809 672
Second AppellantPI-DESIGN AG
Third AppellantAND: DKSH AUSTRALIA PTY LIMITED ACN 005 059 307
Respondent
JUDGES:
GREENWOOD, TRACEY AND BUCHANAN JJ
DATE OF ORDER:
5 AUGUST 2011
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The appeal be allowed.
2.Order 1 of the orders made by the primary judge on 14 April 2010 be set aside.
3.Orders 1 and 2 of the orders made by the primary judge on 13 May 2010 be set aside.
4.The matter be remitted to the primary judge for further consideration of the orders which should be made having regard to the scope of the relief claimed in the application.
5.The appellants’ costs of and incidental to the appeal be paid by the respondents.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 325 of 2010
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: PETER BODUM A/S
First AppellantBODUM (AUSTRALIA) PTY LIMITED ACN 104 809 672
Second AppellantPI-DESIGN AG
Third AppellantAND: DKSH AUSTRALIA PTY LIMITED ACN 005 059 307
Respondent
JUDGES:
GREENWOOD, TRACEY AND BUCHANAN JJ
DATE:
5 august 2011
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
GREENWOOD J
Background
The first appellant, Peter Bodum A/S (“Bodum”), is a Danish company founded in 1944. It is the holding company for the Bodum group of companies. It designs, manufactures and sells throughout the world, and in Australia, a range of household products including coffee plungers (and relevantly for the trial although no longer relevant on appeal, teapots).
The second appellant is a wholly owned subsidiary of Bodum which since 2003 has sold or licensed for sale in Australia particular Bodum products although Bodum products have been otherwise sold in Australia through distributors since 1973. The third appellant is a Swiss company related to Bodum. It owns a number of Australian registered designs which it licenses to Bodum companies ([6] of the primary judgment). No question of infringement of any registered design arose in the proceedings.
Unless otherwise relevant I will refer to the first two or primary appellants collectively as “Bodum”. The third appellant, Pi‑Design AG, is an owner and licensor of particular intellectual property rights. For example, “bodum” is a registered trade mark of the third appellant.
The respondent DKSH Australia Pty Limited (“DKSH”), an Australian company, is a subsidiary of a Swiss company DKSH Holdings Ltd. DKSH imports into Australia and sells by wholesale, homewares and kitchen products including a coffee plunger the subject of Bodum’s suit before the trial judge.
Bodum’s case, put simply, at trial against DKSH involved these contentions.
Since 1958, Bodum or its predecessors in title have manufactured and sold a coffee plunger exhibiting particular features embodied in a coffee plunger described as the Bodum Chambord Coffee Plunger. From at least April 1986, Bodum made substantial sales in Australia of the Bodum Chambord Coffee Plunger exhibiting those features. The Bodum Chambord Coffee Plunger has been promoted and advertised widely in Australia in many ways including through publications such as Australian Gourmet Traveller (AB Vol 7, Tab 48, pp 2496, 2497 and 2497A), Donna Hay Magazine (AB Vol 7, Tab 45, pp 2480 and 2485) and Vogue Australia (AB Vol 7, Tab 44, pp 2476, 2477 and 2478), among others. The particular features and shape of the Bodum Chambord Coffee Plunger will be described more fully later in these reasons in examining the findings of the primary judge. For present purposes, an image of the Bodum Chambord Coffee Plunger exhibiting those features is attached to these reasons marked Schedule 1. That image is described as Appendix A in the reasons of the primary judge. I have exhibited the image to these reasons for ease of reference.
Bodum further contended that the Bodum Chambord Coffee Plunger is packaged for sale in packaging that prominently depicts a photograph of the coffee plunger thus giving prominence and emphasis to the design features of the plunger within, rendering, it is said, the packaging, in a practical sense, transparent to the consumer. At the point of sale, the coffee plunger might be exhibited in its packaging or, for ease of examination of the plunger by a potential consumer, standing outside and near its packaging or independently of its packaging.
Bodum contended that by reason of these matters Bodum has acquired a substantial and valuable reputation in the features of the Bodum Chambord Coffee Plunger and the distinctive shape of the Bodum Chambord Coffee Plunger with the result that the sale in Australia of coffee plungers which embody those features or a significant number of them and the shape of the Bodum Chambord Coffee Plunger, signifies or is likely to signify to consumers in Australia, that such a coffee plunger is the Bodum Chambord Coffee Plunger or is made, promoted or sold by or with the licence, sponsorship or approval of Bodum (that is, relevantly associated with Bodum).
Bodum contended that independently of the hierarchy of trade marks a manufacturer uses in connection with a product in the course of the owner’s trade, such as the trade marks Bodum or Chambord, a secondary meaning or independent reputation can, as a matter of law, subsist in the features and shape of an article or the get‑up for a product which operates to associate products of that shape or those features in the mind of consumers with a particular trader although it is not necessary that the consumer knows the name of that trader. An iconic example of secondary meaning is said to be the independent reputation subsisting in the shape of the Coca‑Cola bottle which associates carbonated cola sold in a bottle of that shape with a particular trader. The presence of the Coca‑Cola trade mark on every bottle of that product sold, does not diminish, it is said by way of example, the secondary or independent reputation in the shape (or features) of the bottle itself, signifying to consumers that the product is the product of that particular company. Whether a secondary meaning or independent reputation exists in the features or shape of a particular product or its get‑up is, it is said, a question of fact to be determined having regard to all the relevant contextual circumstances.
Apart from the above analogical reference, Bodum relies upon the authorities, discussed in these reasons, as the source of the proposition. A brief observation should be made about the terms “secondary meaning” or “secondary reputation”. The question to be determined is whether the features or shape of the Bodum Chambord Coffee Plunger have acquired a reputation and have become distinctive in the minds of consumers or potential purchasers of its maker. The reputation, if made out on the facts, is only “secondary” in the sense that it subsists in the features of the product itself rather than a reputation that may or may not be isolated to a brand, label, mark, trade mark or house mark.
Bodum contended that DKSH from July 2004 began to distribute and sell in Australia a coffee plunger described as the Euroline Coffee Plunger which embodies each of the features, or features that closely resemble the features, of the Bodum Chambord Coffee Plunger. Aspects of the features and shape of the Euroline Coffee Plunger will be described later in these reasons. For present purposes, an image of the Euroline Coffee Plunger exhibiting its features and shape is attached to these reasons marked Schedule 2. That image derives from the image of the Euroline Coffee Plunger depicted on the front and back of the box (packaging) for the product described as Exhibit B2(a) at trial.
Bodum further contended that DKSH adopted, like Bodum, packaging (Schedule 2) giving prominent emphasis to a photographic representation of its coffee plunger; the Euroline Coffee Plunger is displayed at the point of sale either in its packaging or, for ease of examination by a potential consumer, outside (and away from) its packaging or, alongside the Bodum Chambord Coffee Plunger; the Euroline Coffee Plunger is not marked or engraved with any branding or labelling visible on the coffee plunger (other than the glass marked “Pyrex”) so as to distinguish it from the Bodum Chambord Coffee Plunger; and DKSH intended to mislead consumers by importing and selling a coffee plunger it knew to contain the features of the Bodum Chambord Coffee Plunger.
Bodum’s central contentions
Thus, the central contention was (and is, on appeal by way of re‑hearing, in the face of contended error) that DKSH by advertising and selling the Euroline Coffee Plunger with the features of the Bodum Chambord Coffee Plunger, “without labelling or distinguishing it adequately or at all” (para 35, Statement of Claim), falsely represented to consumers in Australia that the Euroline Coffee Plunger is the Bodum Chambord Coffee Plunger or is made, promoted and sold with the licence, sponsorship or approval of Bodum, and by so doing, consumers and retailers are misled and deceived as to the true position or are likely to be misled or deceived as to the true position in contravention of ss 52, 53(c) and (d) of the Trade Practices Act 1974 (Cth).
Bodum also contended that by reason of the conduct earlier described, DKSH engaged in passing off the Euroline Coffee Plunger as the Bodum Chambord Coffee Plunger or as a product relevantly sponsored or approved by Bodum, thus causing damage to Bodum’s goodwill and reputation subsisting in the Bodum Chambord Coffee Plunger.
Bodum sought a declaration that DKSH’s conduct contravened ss 52, 53(c) and (d); an injunction under s 80 of the Trade Practices Act restraining DKSH from importing into and selling in Australia the Euroline Coffee Plunger or any coffee plunger embodying each of the features of the Bodum Chambord Coffee Plunger; a declaration that DKSH by engaging in the relevant conduct previously described, engaged in passing off; an injunction under s 80 of the Trade Practices Act and s 23 of the Federal Court of Australia Act restraining DKSH from making the representations (by conduct) and engaging in passing off in respect of the Euroline Coffee Plunger.
Bodum also claimed damages under s 82 of the Trade Practices Act, compensation under s 87 of that Act and other orthodox remedies (subject to election) arising out of the contended passing off, although the proceedings before the trial judge concerned only the question of liability.
DKSH’s response
For present purposes, before examining the findings of the primary judge, it is sufficient to note that DKSH put each of Bodum’s central contentions in issue and although it accepted that the Bodum Chambord Coffee Plunger exhibited the pleaded features, it contended that Bodum’s coffee plunger when offered for sale has always been marked or engraved with important additional names, marks or descriptions not present in the Euroline Coffee Plunger; the packaging for each product is different; the use of “Euro Line” on the packaging differentiates the products; and the history of Bodum look‑alikes in the market must be taken into account in determining whether DKSH’s conduct could be described as misleading or deceptive or likely to mislead or deceive consumers. DKSH supports the reasoning of the primary judge and contends that no error is demonstrated.
The relevance of the Playcorp proceedings
The proceedings before the trial judge involved two separate proceedings heard together in which evidence in one was ordered to be evidence in the other. The three appellants were the applicants in the DKSH proceeding and respondents in the second action, a proceeding commenced by Playcorp Group of Companies Pty Ltd and Playcorp Pty Ltd (collectively “Playcorp”). Each action was concerned only with questions of liability.
In the Playcorp proceeding, the question was whether Playcorp had engaged in conduct in contravention of s 52 of the Trade Practices Act or passed off their Baccarrat Venice Coffee Plunger and Baccarrat Devon Filter Teapot and saucer as and for the (contended) equivalent Bodum products, namely the Bodum Chambord Coffee Plunger and the Assam Teapot, respectively. Those claims and cross‑contentions were the subject of an earlier settlement agreement. Bodum contended that the settlement agreement precluded Playcorp from asserting that Bodum has an exclusive reputation and goodwill in the Bodum Chambord Coffee Plunger or that no secondary meaning subsists in the features and shape of the Bodum Chambord Coffee Plunger. Other questions arose for determination in relation to the settlement agreement and contended conduct by Playcorp leading to it.
The only questions alive on appeal concern the DKSH proceeding. However, a contextual reference to the Playcorp proceeding is necessary and important because some of the primary judge’s findings in the DKSH proceeding adopt a position as explained by the primary judge in dealing with a like issue in the Playcorp proceeding.
The findings of the primary judge
The parties filed an agreed statement of facts settling out the features of the Bodum Chambord Coffee Plunger and the Euroline Coffee Plunger. At [35] of the judgment, the primary judge set out the agreed comparative features in the following table:
Features Bodum Chambord Coffee Plunger DKSH Euroline Coffee Plunger Frame a frame, designed to hold a glass beaker, consisting of:
(i) one upper horizontal band of flat silver-coloured metal; and
(ii) four vertical bands of flat silver-coloured metal which:
(A) taper slightly at the point at which they are attached to the
upper horizontal band; and
(B) extend and curve underneath the glass beaker to form four feet.a frame, designed to hold a glass beaker, consisting of:
(i) a chrome plated upper horizontal band with cut out sections; and
(ii) four vertical bands of flat silver-coloured metal which:
(A) taper slightly at the point at which they are attached to the
upper horizontal band; and(B) extend and curve underneath the glass beaker to form four feet.
Beaker a clear glass beaker with a pouring spout a clear glass beaker with a pouring spout Handle a black curved handle attached to the frame by means of a stainless steel screw a black curved handle attached to the frame by means of a stainless steel or chrome screw Lid a domed or rounded stainless steel lid a domed or rounded chrome lid Knob a spherical black knob above the lid a chrome spherical knob above the lid Plunger a plunger device a plunger device Markings The name ‘bodum®’:
(a) is etched into a white label on the side of the glass beaker of the Bodum
Chambord Coffee Plunger;
(b) is engraved on one of the vertical bands forming part of the metal frame;
(c) is embossed into the black plastic lining of the lid; and(d) is printed on a translucent, removable sticker affixed to the glass beaker which is printed in red and white and also contains the words ‘THE Original’ and ‘FRENCH PRESS’ and ‘bodum®’.
The glass beaker has the word ‘pyrex’ permanently etched on it in white Instructions Instructions in both English and French are etched in white lettering beneath the white label on the side of the glass beaker. When offered for sale in Australia, the Bodum Chambord Coffee Plunger includes within the glass beaker a ‘bodum®’ branded instruction leaflet. An instruction sheet is placed in the glass beaker at the time of manufacture
The written description of these features (for either product) is apt to be a little antiseptic especially in the context of a claim of secondary meaning or independent reputation for the shape of a product said to be distinctive (and sometimes referred to as iconic) and thus it is important to look at the three‑dimensional products tendered in evidence at the trial. Nevertheless, the image at Schedule 1 also reveals the important features giving rise to the contended secondary meaning, which comprise, the horizontal band, the four tapered vertical bands attached to the horizontal band, the curvature of the bands underneath the glass beaker to create the feet of the cradle for the beaker, a domed or rounded lid, a prominent black curved handle attached to the frame (with a prominent screw fixing) and a plunger device.
At [26], the primary judge set out the features over time of the packaging adopted by Bodum for the Bodum Chambord Coffee Plunger in the following table:
Bodum Chambord Coffee Plunger Years Packaging Style November 1997 to
May 1999
White box with Garamond font, Bodum logo comprising red box with white characters, and square instructional images on the side Approx May 1999 to
2005White box with Franklin font, Bodum logo comprising red box with white characters, and round instructional images on the side Approx 2005 to
approximately March
2008Black box with Garamond font, Bodum logo comprising red box with white characters, and numbered instructional images on the side Approx March 2008 to
PresentPredominantly black box featuring photo of product set against a graphite background, Bodum logo comprising red box with white characters, and numbered instructional images on the side.
At [27], the primary judge attaches as Appendix C an image of “an example of some of the packaging style” of the Bodum Chambord Coffee Plunger. That image is also attached to these reasons marked Schedule 3. The primary judge’s example of Bodum’s packaging falls within category 3 or category 4 in the above table. Exhibit B18(c) at trial however is an example of the Bodum packaging for the Bodum Chambord Coffee Plunger at July 2004 when DKSH entered the market and began selling the Euroline Coffee Plunger. That style of packaging was adopted by Bodum from May 1999 to a date in 2005. It is a white box depicting on the front, back and sides of the box the images depicted in Schedule 4 to these reasons.
At [37], the primary judge set out the features of the packaging adopted by DKSH for the Euroline Coffee Plunger from approximately July 2004 to the date of judgment in the following table:
DKSH Euroline Coffee Plunger Years Packaging Style Approx July 2004 to present. Black and white box featuring prominent photo of the product with the words ‘Coffee’ in red and ‘Plunger’ in white at the top of the box. The brand ‘Euroline’ appears at the bottom left hand corner of the box, with ‘EURO’ in black and ‘LINE’ in white with black outlining.
An image of the DKSH packaging is Schedule 2 to these reasons being the DKSH packaging comprising Exhibit B2(a) at trial. It too has predominantly although not entirely a white (table background) depicting an image of the Euroline Coffee Plunger on the front and back of the box and the side images and words shown in Schedule 2. The box is marked “Coffee Plunger” and “EURO LINE”.
At trial, Bodum led evidence from an expert in industrial design, Associate Professor Douglas Tomkin, the Head of the School of Design at the University of Technology, Sydney. At [42], the primary judge noted this evidence:
Associate Professor Tomkin also provided expert evidence in relation to the comparison of the Bodum Chambord Coffee Plunger and the Euroline plunger, finding that they were so similar in their choice of materials, manufacturing techniques and appearance that ‘[i]t is unlikely that one could be conceived without reference to the other’. Bodum submitted that such an impression is analogous to the one that a consumer, acting reasonably, would form.
[emphasis added]The primary judge at [43] then observed:
It is to be observed that the Euroline plunger has no branding on the product. The word Pyrex is etched on the glass beaker. It only described the kind of glass, and is no distinguishing feature. Pyrex sells replacement beakers, which can be used in most types of plungers including Bodum plungers and Euroline plungers.
As to the qualitative nature of the differences in the Euroline Plunger, the primary judge at [44] noted this further evidence:
While Associate Professor Tomkin noted the three main differences in the Euroline plunger (namely, cavities in the top support ring of the frame, the plunger knob being metallic, and the absence of the safety skirt), he regarded the overall visual difference between the two products as ‘small’. The three differences in his opinion had marginal effect on the overall appearance.
[emphasis added]As to the probative value of Associate Professor Tomkin’s expert evidence, the primary judge said this at [47]:
No objection was made to the admission of the evidence of Associate Professor Tomkin. None of his evidence, in chief or under cross‑examination, was controversial. The evidence focused attention on what the Court itself could observe about the similarities and differences in the products themselves. However, it is for the Court, in a case such as this, to determine for itself by way of overall impression, the significance of these similarities and differences once they have been identified.
Although the primary judge noted at [47] that it is for the Court to determine for itself, as a matter of overall impression, the significance of the similarities and dissimilarities noted by Associate Professor Tomkin and “observ[able]” by the Court, the fact of those similarities and dissimilarities identified at [42], [43] and [44] seemed to be accepted by the primary judge.
Bodum contended that the date for assessing the impugned conduct of DKSH for the purposes of passing off was July 2004 when DKSH first sold the Euroline Coffee Plunger. A question arose as to whether July 2004 (or February 2008 in the case of the Playcorp proceeding) was the correct date for the purposes of the s 52 cases. At [58], the primary judge noted in relation to both actions that in deciding whether the sale of a product involves misleading or deceptive conduct in contravention of s 52, the date when “the sale of the product commenced may influence the question as to whether it is the respondent that is the cause of the deception”. At [59], the primary judge said that he did not need to further consider the issue of competing dates relevant to that question because (relevantly for the DKSH proceeding) on the basis of the evidence:
… Bodum clearly had a strong reputation even prior to 2004. It may have been reinforced by subsequent events. This was contended to be so by reason of the fact that certain copy products had been discontinued and had left the market, and Bodum continued to sell the same products for many years and increased the sale and promotion of its own products. These facts I accept and are supported by the evidence.
[emphasis added]Specifically in relation to DKSH, the primary judge found at [61] that the relevant date for determining passing off is July 2004 being the date when DKSH entered the market. At [62], the primary judge noted DKSH’s acceptance, as to s 52, that if the sale of the Euroline Coffee Plunger was misleading or deceptive at July 2004, the consideration that DKSH had inherited the Euroline Coffee Plunger from other corporations by assignment (and sales of it had been made commencing in 1988), would not affect the July and post‑July 2004 finding, although it may affect the scope of the remedy.
At [76], the primary judge framed the question to be answered arising out of his assessment of the legal principles at [63] to [74] in these terms:
The question is whether the circumstances in which the accused products are presented to consumers are likely to mislead or deceive the ordinary reasonable shopper for housewares products, or coffee and tea makers, having regard to the reputation which Bodum has established in the particular presentation of the products which Bodum markets.
At [77], the primary judge noted the factors informing the answer to the question in these terms:
This depends upon a combination of visual impression and judicial estimation of the effect likely to be produced in the ordinary conduct of affairs, having regard to the reputation actually proved, in all the circumstances. It is not a side by side comparison. It is a comparison between the impression of Bodum’s products (including the packaging) retained in the ordinary reasonable customer’s mind and the impression made by the sort of consideration that the ordinary reasonable customer is likely to give to the accused product (including the packaging) before purchasing it. (authority cited)
At [78], the primary judge said this about the question posed at [76]:
In considering this question, one looks to all the information the potential customer may have prior to sale, which would include any advertising the potential customer may be exposed to even prior to gaining a foot in the trader’s door. However, the place and time of sale will in most cases be the important place and time to analyse the question of whether there was a misleading impression.
As to the contended reputation subsisting in the features and distinctive shape of the Bodum Chambord Coffee Plunger the primary judge said at [81] that:
… the question of any reputation that Bodum has (for instance) in the Bodum Chambord Coffee Plunger cannot be determined by looking at the Bodum Chambord Coffee Plunger features in isolation. The question must be considered by reference to all of the relevant circumstances, including all of the distinctive visual features of the Bodum Chambord Coffee Plunger, its branding, its markings, labelling and packaging and the manner by which it has been advertised and exposed to potential purchasers of coffee plungers in Australia. (authority cited)
The findings at [82] of the primary judgment
At [82], the primary judge summarised in a collective way findings relating to both actions. So far as those findings at [82] relate to DKSH, the findings are these [emphasis added].
First,
… while I am of the view that the Bodum brand itself has a significant reputation in the homewares/housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger …
Second,
I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name.
Third,
Bodum’s reputation does not exist in the naked Coffee Plunger features … (without its logo in place) alone.
Fourth,
If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products in any of the proceedings in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum.
At [86], the primary judge simply notes the categories of promotional material and advertising Bodum led in evidence of the reputation around the world, and more particularly in Australia, for the Bodum Chambord Coffee Plunger. That evidence was set out by Bodum in a schedule in detail.
As to actual sales and sales revenue, the data remained confidential and is not set out in the judgment although a confidential exhibit containing the data is before the Full Court. The primary judge found that sales of the Bodum Chambord Coffee Plunger in Australia from 1986 to 2009 “are extensive, dwarfing the respective sales of Playcorp and DKSH” at [87] [emphasis added]. At [88], the primary judge noted that there had been “no retail advertising by Playcorp [of its coffee plunger or teapot in issue in that proceeding] … during 2008 of [or] 2009”. That finding is relevant to DKSH because, at [88] the primary judge notes that “[a] similar picture exists in relation to the DKSH Euroline Coffee Plunger”.
At [90], the primary judge found that:
It is clear that there has been [a] vast amount of advertising of the Bodum brand and I find that Bodum had and has a significant reputation in Australia in that brand.
[emphasis added]
At [90], the primary elected to apply a “with or without test” and said, after noting the vast amount of advertising and significant Bodum “brand” reputation, “[h]owever, it is necessary to consider how this [the significant brand reputation] translates to a reputation in the Bodum Chambord Coffee Plunger … with or without its branding” [emphasis added].
At [91], the primary judge noted Bodum’s central contention that “the consistency, extent and duration of the sale and promotion of the Bodum products increased the likelihood that there will be a significant number of people to whom the features do have a signification for which Bodum contends”. [emphasis added]
At [92], the primary judge makes this finding about that contention:
I agree that there may be some such people, but very few. In any event, in the way that Bodum has marketed (by specific and consistent reference to its name and logo), the absence of such reference would readily lead to the view being held by consumers that the accused products are not part of the Bodum range.
[emphasis added]
The primary judge therefore found as a matter of overall impression at [47] and [77] that notwithstanding that the appearance of the Euroline Coffee Plunger could not be conceived in the mind of a reasonable consumer without reference to the Bodum Chambord Coffee Plunger (and one to the other) ([42], [43] and [44]), DKSH’s election (or commercial step) not to use or refer to Bodum’s name or logo in connection with the promotion and sale of its rival coffee plunger (presumably either on the box or on the product) would readily lead the cohort of reasonable consumers (that is shoppers, [76]), seeking to engage in a possible purchase or shopping transaction (presumably carrying into that engagement a sense of imperfect recollection), to the view that the rival coffee plunger is not a Bodum Chambord Coffee Plunger. The primary judge found that all but a very few potential purchasers would be readily led to that view.
The primary judge found that the absence of the Bodum name and logo in connection with the rival coffee plunger tells the reasonable consumer that the rival coffee plunger is not a Bodum product and thus no reasonable consumer is, or is likely to be, misled or deceived by the rival’s adoption of the features and shape alone, of the Bodum Chambord Coffee Plunger. It follows that passing off would thus not be made out either.
The criticism of the findings at [82]
The appellants attack this finding and the findings at [82] as an error of law in failing to give proper recognition to the jurisprudence on secondary reputation in features, shape and get‑up and as a finding of fact unsupported by the evidence; a finding made without any examination or consideration (at least so far as the exposed reasons of the primary judge reveal) of the content of the vast amount of advertising relied upon in support of the secondary reputation for the features and shape (not the brand); a finding that could not reasonably have been made had the advertising and promotional material been examined and considered; and, a finding made in disregard of the primary judge’s acceptance of the evidence of Associate Professor Tomkin which, although accepted, was not then weighed in the balance in the dispositive resolution of the central question.
Before examining those contentions, it is necessary to identify the remaining findings of the primary judge.
At [93], the primary judge recognised that there will be a variety of consumers who might seek to engage in potential purchase transactions. Some of them will not have been exposed to the Bodum Chambord Coffee Plunger at all. The primary judge accepted that others will have a knowledge of the features of the Bodum Chambord Coffee Plunger even if not by name. Some may have been exposed to copy products: [93]. As to those consumers having knowledge of the features or exposed to copy products, the primary judge concluded at [93] that:
I do not consider that they would conclude that the accused products or any copy products would be part of the Bodum range rather than just ‘copies’ or cheaper versions.
As to price, the primary judge found at [93]:
The fact that the accused products in these proceedings are ‘just under’ the price range of the Bodum products, does not confuse the consumer that they are part of the same range, but a cheaper version. The consumer would readily appreciate that these differently packaged products are just that, cheaper, and would not necessarily assume any association with Bodum. No persuasive evidence was led by Bodum to demonstrate otherwise.
[emphasis added]As to the steps taken by DKSH to distinguish its rival coffee plunger from the Bodum Chambord Coffee Plunger, the primary judge made this finding at [94]:
The accused products were clearly packaged to distinguish them from Bodum, with no reference to the distinctive name or logo of Bodum. No evidence was led by Bodum of actual confusion of a consumer.
[emphasis added]The findings at [94] of the primary judgment
At [94], the primary judge expressed the view that if a consumer was familiar with Bodum or the Bodum product range itself, then the observation of Burchett J (in the context of the matrix of fact then before Burchett J in the Full Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 at [45]) to the effect that “[t]he public is thoroughly accustomed to competing brands of almost identical products, which may or may not have some link” also applies to this case “even though the brands of the accused products are not well known” (at [94]). The point of distinction, of course, is that the Remington brand was “well‑known in its own right and, in Australia, [sold] more personal care products but fewer electric shavers than Philips” (Burchett J at [45], Hill and Branson JJ agreeing).
At [94], in that same context, the primary judge also cited an observation made by Sundberg, Emmett and Hely JJ in Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 at [38] (although the primary judge mis‑attributes the relevant paragraph to Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 which is the decision of the primary judge, Goldberg J, in that proceeding heard together with the Bata Shoe, Rivers and Windsor Smith proceedings) that the suggestion that a potential purchaser would think that footwear marked with the trade marks and names of the respondents (“ah! Soul”, “Rivers” and “JJ Lester & Co Ltd”) and sold so marked might be thought to be footwear sponsored or licensed by Dr Martens or that Dr Martens would allow its own footwear to be marked with the respondent’s trade marks, was “fanciful” and “bizarre”, and that such an observation also applied to this case, even though DKSH’s Euroline brand was “not well known”.
It should be noted, of course, that like Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd, the marks or names of the respondents were well‑known Australian brands. At [38], the Full Court said this:
It is to be recalled that the words on the sock of the Bata shoe are ‘JJ Lester & Co Ltd by Bata’. ‘Rivers’ and ‘Bata’ are well known Australian brands of footwear. Why would a potential purchaser of footwear labelled ‘Rivers’ or ‘Bata’ conclude that the footwear was in fact that of a rival trader?
[emphasis added]
In this context, it should also be recalled that DKSH’s Euroline Coffee Plunger had no branding on the product other than the glass mark “Pyrex” etched on the glass beaker and thus no use of the name or mark “Euro Line” or “Euroline coffee plunger” as a distinguishing cue or feature of the rival product (at [43] and [47]) on the product. DKSH’s product is naked of any differentiating name, mark or title. An instruction leaflet as to the safe use of the rival product sits inside the rival product and can be seen through the glass on examination of the rival product (see [104] of these reasons).
Although the presence of well‑known Australian footwear brands such as “Bata” or “Rivers” or the description “JJ Lester & Co Ltd by Bata” on footwear (reflecting the features of the Dr Martens’ footwear or get‑up - the applicant’s footwear product in that case), positioned in the places where consumers would customarily look for a distinguishing brand (in the “sock” of the shoe and, more particularly, on the sole of the shoe where the price sticker is also located), resulted in the Full Court’s observation that the notion that consumers would be misled or deceived or be likely to be misled or deceived into thinking that the rival products so marked were sponsored, licensed or approved by Dr Martens, was “fanciful” or “bizarre”, a question properly arises as to whether such an observation applies in the circumstances of this case where the rival product (essentially indistinguishable in its features from Bodum’s product – [42], [43], [44], [182] and [155]) was not marked, etched on the glass, or otherwise engraved or labelled on the frame with any reference to a distinguishing name or logo and, in particular, the name or mark “Euro Line” or “Euroline coffee plunger”, which, DKSH says, as to the packaging, is a seminal point of differentiation between the rival products.
Why would such an important point of differentiation not be endorsed on the product itself, unless the internal instruction leaflet was thought to serve that purpose? The answer, as a matter of inference, might be that the entry into the market by DKSH in July 2004 of a coffee plunger essentially indistinguishable from the appearance of the Bodum Chambord Coffee Plunger and unmarked, as to the product itself (but for an irrelevant Pyrex glass mark), would be likely to lead consumers attracted to the rival product by the features of the Bodum product (handling the rival product and seeing nothing on it to suggest it was other than the product to which they had been attracted by the vast body of advertising), to the view that the rival product is the Bodum product. The use of the mark Euroline on the box for the rival product is discussed later in these reasons. The primary judge regarded the use on the box of the “Euro Line” brand, although “unknown” by consumers, as decisive of differentiation especially as Bodum “goes out of its way” to use its own name and logo: [176].
Having regard to the application, in the primary judge’s view, of the observations of the Full Court in Philips v Remington (and relevantly reinforced by the particular remarks of the Full Court in Dr Martens v Rivers) to the circumstances of this case (to the effect that consumers are thoroughly accustomed to competing brands of almost identical products which may or may not have some link), the primary judge concluded at [94] that:
The knowledgeable consumer would expect to see the name and the logo of Bodum on its products. This is how Bodum has in fact marketed its products for very many years. I am of the clear 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. In fact, the similarity may put the consumer on guard to ensure that he or she takes care to purchase ‘the original’. The evidence indicates that Bodum understood the need to (and did) educate the relevant market to beware of copyists, and to look for the ‘original’ Bodum.
[emphasis added]The appellants challenge this finding as reflecting appellable error.
The finding, they say, is simply wrong and thus unsustainable.
The criticism of the findings at [94]
Bodum says that the vast body of advertising does not demonstrate that Bodum has educated consumers to expect to see the name and logo of Bodum on the Bodum Chambord Coffee Plunger. Rather, the vast body of promotional and advertising activity over a period of 30 years has been directed to emphasising and giving prominence, they say, to the look or attractive force of the features and shape of its coffee plunger. Bodum contends that, unsurprisingly, the Bodum name or bodum® mark is used by Bodum in that material to connect and associate the product exhibiting those features, with its maker. Bodum contends that the burden of the advertising material however is to mark out or render distinctive, features of the product, that will resonate with potential consumers.
At the centre of the criticism of the finding at [94] is the submission that the primary judge either did not look at the vast body of advertising material put in evidence and relied upon by Bodum as the foundation of its secondary meaning or independent reputation for the features of the product, or alternatively, the primary judge failed to properly consider that evidence. Instead, it is said, the primary judge simply accepted that the body of promotional and advertising material was “vast” (thus obviating the need to examine it in total) and then, without considering that evidence in an exposed way in the reasons for judgment, fell into factual error (adverse to Bodum) by finding that the promotional evidence all ultimately led to Bodum building an expectation in the mind of the consumer to see the Bodum name or logo on its coffee plunger and if, in the mind of the consumer, the product is to be regarded as a Bodum Chambord Coffee Plunger the mark or name must be there. Put another way, the “brand itself” has a significant reputation ([82] and [90]); Bodum’s reputation is “distinctly tied” to its coffee plunger being properly labelled, packaged and sold “by reference to the Bodum name” ([82]); in the absence of the “bodum” name or mark ([92]) a secondary reputation does not subsist in the features or shape of the product; and, by force of this cultivated expectation, Bodum is “a victim of its own success” ([121] and [122]). The [121] and [122] matters are discussed at [89] to [94] of these reasons.
For my part, I am satisfied that there is force in the contention of the appellants that the exposed reasons of the primary judge do not examine the body of evidence relied upon by them at trial as the foundation for their contention of a secondary reputation. It seems to me that the finding of the primary judge which, on the facts, is adverse to the appellants, required an examination of at least the emblematic examples of Bodum’s advertising said to powerfully demonstrate that although the product is advertised in conjunction with the Bodum name or mark, the burden of the advertising shows that it is directed to establishing the attractive force of, and distinction and reputation in, the shape and features of the Bodum Chambord Coffee Plunger.
This is the foundation of the case brought to the Court for determination on the question of whether the respondent has engaged in misleading or deceptive conduct or passed off, by conduct, its product as that of the appellants.
The evidence of that case needs to be addressed and it falls to the Court in the exercise of its appellate jurisdiction to look at the evidence and especially those examples which are said to be the most powerful examples that make the appellants’ case good.
Although I have formed this view, it is not necessary to remit the matter to the primary judge to examine the promotional and advertising material although a determination of aspects of those matters is properly a “jury question” for the tribunal of fact (so too is the ultimate question of whether get‑up so nearly resembles another as to be deceptive or likely to deceive) and does not cease to be a jury question on appeal before a plurality of judges: General Electric Co (of USA) v General Electric Co Ltd [1972] 1 WLR 729 by Lord Diplock at 738; Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 per Gummow J at 387 (Black CJ and Lockhart J agreeing). Nevertheless, on questions such as these, as described by Lord Diplock, judges of appeal can apply their own assessments to the matter applying their own common sense, and the interests of justice require the material to be considered within the disposition of the appeal.
In making these observations, I am conscious of the considerations informing the proper role of the Court in the exercise of the appellate jurisdiction as discussed in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354, Weinberg and Dowsett JJ at [50] to [54]; SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1, French, Heerey and Lindgren JJ at [38]; Windsor Smith Pty Ltd v Dr Martens Australia Pty Ltd (2000) 49 IPR 286, Sundberg, Emmett and Hely JJ at [15] – [16].
The grounds of appeal
It is convenient in this context to note the grounds of appeal set out in the Amended Notice of Appeal filed 8 July 2010. Apart from the general statement (ground 1) that the appellants appeal from the whole of the judgment of the primary judge, there are 15 grounds of appeal although the second and third last grounds are both numbered 14. I do not propose to recite and address individually each of the 15 grounds of appeal. It seems to me that the grounds of appeal can be accurately framed in the following terms. The primary judge is said to have erred by:
1.holding that Bodum’s reputation in the features of its Chambord Coffee Plunger are distinctly tied to and do not operate separately from Bodum’s name or trade mark;
2.reaching that determination by acting upon an error of law in holding that a secondary meaning or independent reputation does not subsist in the features of shape of the Bodum Chambord Coffee Plunger;
3.reaching that determination by acting upon an error of fact in holding that a secondary meaning or independent reputation does not subsist in the features of shape in the Bodum Chambord Coffee Plunger when the vast body of advertising and promotional material leads to the conclusion that a secondary meaning or independent reputation does subsist in the features of shape of the Bodum Chambord Coffee Plunger associating that product in the minds of consumers or potential purchasers with the manufacturer of the product;
4.reaching that determination without considering the promotional and advertising material or at least without revealing in the exposed reasons the consideration of the promotional and advertising material;
5.having regard to all of the contextual circumstances relating to the features of the Bodum product; the features of the rival product; the evidence of Associate Professor Douglas Tomkin; the evidence of sale, display and promotion of the Bodum product and the rival product; the evidence of the packaging adopted by each trader; the history of the packaging; and the totality of the get‑up, the primary judge erred by finding that DKSH had differentiated and distinguished its rival product from Bodum’s product and that DKSH’s conduct did not and does not involve conduct which is misleading or deceptive of, or likely to mislead or deceive consumers and nor does DKSH’s conduct pass off its rival product as a Bodum Chambord Coffee Plunger or a coffee plunger made, promoted or sold with the licence, sponsorship or approval of Bodum;
6.failing to find that DKSH fraudulently intended to pass off its rival product as a Bodum product or a product relevantly associated with Bodum or that DKSH fraudulently intended to mislead or deceive consumers to that effect, having regard to, the similarities between the products; the inherently descriptive nature of the trade name adopted for the rival product, “Euroline”; the failure of DKSH to brand its rival product until the late addition of a removable swing tag and sticker after the commencement of the proceedings; and, the evidence of Associate Professor Douglas Tomkin.
So far as the grounds of appeal assert contended error in failing to have regard to the promotional and advertising material, counsel for the appellants was asked, in the course of the appeal, to identify the critical or emblematic examples of the advertising material relied upon by Bodum to make good its proposition. An annotated schedule has been put before the Full Court which is the schedule put before the primary judge (now annotated to the appeal record). The appellants rely upon each and every example in the schedule and urge the Court to look at their evidence. I have critically examined virtually all of the examples in the schedule including each of the examples the subject of oral submissions which, in the main, concern the examples set out at paras 49 to 53 in the appellants’ outline of submissions although I have not confined my consideration of the promotional material to only those examples.
Those matters are considered further in these reasons at [133] to [178].
The further findings of the primary judge
At [95], the primary judge sets out the evidence concerning additional features, relied upon by DKSH, under and by reference to which the Bodum Chambord Coffee Plunger has been sold in Australia since 1986. They are these:
·the name ‘bodum®’ presented in a stylised form in white on a bright red ‘flag’;
·the name Chambord;
·packaging which has been either predominantly white or black in colour;
·the words ‘The Original French Press’;
·a large red and white sticker affixed to the glass beaker bearing the words ‘the original French press’ and the name ‘bodum®’;
·an instruction leaflet bearing the name ‘bodum®’ and the words ‘French Press’;
·the permanent branding and instructions which appear on the Chambord Coffee Plunger product itself including:
- the name ‘bodum®’ engraved into the frame;
- the name ‘bodum®’ etched into the glass;
- the name ‘bodum®’ embossed on the black plastic skirt; and- (since 1998) safety/usage instructions in both English and French which are etched into the glass beaker in white lettering beneath the white label on the side of the glass beaker.
As to the use of the Bodum name, the primary judge noted Mr Bodum’s evidence (Mr Jorgen Bodum is a Director of the first appellant, Peter Bodum A/S) at [96]:
Mr Bodum gave evidence (which I accept) that Bodum had placed its trade mark on the packaging of all of its products and where any Bodum products were sold without boxes, they were sold by reference to the name ‘Bodum’ either appearing on the product itself or by some other means.
The primary judge also noted that from as early as the year 2000, Bodum placed a bright red and white sticker on the glass beaker of each Bodum Chambord Coffee Plunger proclaiming that the product is “the original French Press bodum®”. The primary judge noted that the packaging in which each Bodum coffee plunger is sold bears prominently in bright red and white the words “the original French Press”. It should be noted that this phrase can be seen on the front and back image in the right‑hand corner of the box for the Bodum Chambord Coffee Plunger being Exhibit B1(a). However, it does not appear on the Bodum box being Exhibit B18(c) which is the form of packaging from 1999 until a date in 2005. Mr Thomas Fernando Perez was at the date of trial the President of Bodum USA and prior to that appointment had been Managing Director of Bodum Australia and remained at the date of trial a Director of the second appellant, Bodum (Australia) Pty Limited. At [98], the primary judge referred to the evidence of Mr Perez to this effect:
Mr Perez acknowledged in cross‑examination that the purpose of this emphasis on the Bodum Chambord Coffee Plunger as the ‘original’ was to draw attention to its French heritage, to educate consumers to watch out for look‑alikes and to distinguish its products from competitors’ look‑alikes.
At [99], the primary judge noted Bodum’s contention that there is nothing inherent in any aspect of packaging that makes DKSH’s packaging distinctive of their product. Bodum contended that marks used on the boxes are of much less significance than marks on the products themselves.
As to that matter, the primary judge found at [100]:
I do not consider that the evidence shows that the packaging of the products in suit plays a subsidiary and insignificant role in the advertising, promotion and sale of the products. The packaging of the accused products is distinctive of the brand displayed and is different from the Bodum packaging. Bodum’s packaging may have changed over the years, but the essential Bodum name and logo have been constant. The boxes of the products in suit have been used in many stores and they have been close enough physically to be connected to the product when out of the box, to be instructional and informative of the brand. Mr Perez acknowledged himself that a lot of attention was placed on Bodum’s gift boxes, as these helped promote and strengthen brand awareness.
[emphasis added]
At [104], the primary judge noted Bodum’s submission that the evidence of retail displays of coffee plungers shows that displaying the products themselves is of primary importance in selling the products. As to the method of display in that context, the primary judge found at [105] and [106]:
105.I accept on the evidence than in most shops, the packaging as well as the products are on display in varying ways. However, the packaging is most commonly displayed behind the plungers … and there will in almost all cases be some products displayed out of the packaging but corresponding packaging will be present.
106.In most cases (particularly in the larger stores) different brands are sold together, with different packaging on display indicating the different brands. Where the Bodum product is sold alone, it is sold by reference (in one form or another) to the Bodum name or logo. Where an accused product is sold alone, this seemed to occur in the context of the packaging alongside.
At [107], the primary judge noted Bodum’s contention that in the hierarchy of sensory cues, it is the product that is of most importance to consumers and that consumers will pick up the product and look at it with the result that the features of prominence will be those that convey the secondary meaning, that is, the horizontal band, the tapered legs, the Bodum style feet and the handle and “a not insubstantial number of people will have this secondary meaning by examining the product”.
At [108], the primary judge noted Bodum’s further contention that when the consumer looks to purchase a coffee plunger with those features mentioned at [107], and if the consumer is only confronted with the DKSH Euroline Coffee Plunger, he or she would be misled into thinking there is an association between the Euroline Coffee Plunger and Bodum. Bodum contended that the relevant deception would occur before the packaging would be able to influence the consumer otherwise and thus, for Bodum, the packaging adopted by DKSH “could not teach away from the secondary meaning” conveyed by the “features of prominence” described at [107].
As to those contentions, the primary judge found at [109]:
I do not agree. If the consumer was not aware of Bodum, or had not been exposed to the Bodum advertisements or promotional material, there is not the expectation of the kind relied upon by Bodum. A consumer aware of Bodum or exposed to the Bodum advertisements or promotional material may be specifically looking for the Bodum product (even if not by name), but would be aware of copies and would be educated upon viewing the products for sale of the different brands by the packaging and presentation of the product.
[emphasis added]
At [110], the primary judge recognised that “obviously” the product will be available for the consumer to “actually examine” and that the practice of displaying the products out of their packaging is adopted because consumers “will want to see and touch the product they are buying”. Mr Perez gave evidence, noted by the primary judge, that there seemed to be three main reasons why retailers display the products outside their packaging. First, retailers aim to simulate the “home environment” in which the products are used. Secondly, many of the relatively new homewares concept stores in Australia have sought to “reduce the level of individual product branding so as to enhance the feeling of the store being unique to the customer”. Thirdly, retailers seek to reduce the customer’s focus on price and increase differentiation of the products and build an association between the products and the individual store in which the goods are displayed out of the packaging.
The primary judge accepted at [111] Mr Perez’s evidence. Notwithstanding that, the primary judge observed that “the packaging is there for a purpose – to promote the brand”. The primary judge also said this at [111]:
Further, the packaging of the various products is different and is associated with the respective physical product depicted on the packaging. On the evidence before me, the packaging (whilst prominently featuring the product itself) has a significant role to play in informing the consumer of the different brand by reference to each product. All the packaging is clearly labelled and sufficiently distinctive to distinguish the various products.
[emphasis added]
At [112], the primary judge found that Bodum’s explicit branding and the presence of the logo served to reinforce Bodum’s advertising message with the result that, at [113], a purchaser is “left in no doubt about the provenance of the Bodum Chambord Coffee Plunger …”. At [114], the primary judge found that even though Bodum’s promotional material “other than in a store (eg. as in magazines) may not include the packaging, the promotion occurs by reference to the name Bodum, and when sold on display, the Bodum Chambord Coffee Plunger … retain[s] the stickers, named etchings and instructions which promote the Bodum brand”.
At [118], the primary judge considered that rival coffee plungers could properly be distinguished from other types of products of lesser price which might be the subject of an “impulse purchase” with the result that [118]:
A consumer would be expected to look at the products in suit carefully, and make a considered purchase after viewing the product and the packaging. This is a decision that would be made at the point of sale, even if promotional material gave rise to the impulse to seek out a coffee plunger in the first place.
[emphasis added]
As to the relevance and role of copyist plungers, the primary judge noted at [119] that such plungers had been sold in the market for many years but that in recent years the ranks of copyist products have “thinned”. At [120], the primary judge noted the emphasis placed by Playcorp and DKSH on the presence of copyists in terms of the contended dilution of Bodum’s reputation. Rather than diluting Bodum’s reputation, the primary judge considered that the presence of copyists had the effect of reinforcing Bodum’s reputation. At [120], the primary judge said this:
While Playcorp and DKSH contended that the presence of copyists was said to dilute Bodum’s reputation, I am of the view that it would have had the inverse effect. It appears to me that there was little or no advertising of the copy products, and before me, only limited evidence of sales. To the extent that these copyist products were promoted for sale, these products were always prominently displayed with a mark such as Avanti or Arcosteel. With the continued removal of the copyists from the market, a starker market has emerged, against which Bodum and the limited number of remaining coffee plunger manufacturers can be more distinctly seen. However, look‑alikes have been in the market for some period of time (since the late 1980s) and consumers were and are aware of look‑alikes. As I have indicated, Bodum itself taught consumers to beware of imitations and look for the ‘original’.
[emphasis added]
The findings at [121] and [122] of the primary judgment
As to the relationship between Bodum’s consistent advertising and promotion and the development of a reputation for its product, the primary judge made this finding at [121]:
When viewed in the light of Bodum’s consistent and extensive promotion and sale over a significant duration, I have already indicated that the Bodum products must be considered to be well known and appreciated. Bodum’s presence and dominance has created a situation where it is a well known brand of some level of sophistication with a separate and distinct identity from look‑alike products. This separate identity - its get‑up is never isolated from the Bodum Chambord Coffee Plunger.
[emphasis added]
Having made that observation at [121], the primary judge then further observed at [121] that Bodum’s “well‑known brand” and “separate identity” born out of its “consistent and extensive” promotion and “sale” over a “significant duration” has the result that Bodum “could be said to be ‘a victim of its own success’”. In making that finding, the primary judge adopted the phrase “a victim of its own success” from the observations of Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at [32]. In that case, Perram J observed that because the principal component of the Maltesers get‑up is the highly stylised word “Maltesers” emblazoned across the box for the product, “it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser” and “[i]n that sense, Mars is a victim of its own success”. It followed for the primary judge that the “consistent and extensive” promotion over a “significant duration” of the Bodum Chambord Coffee Plunger resulting in the product being “well known and appreciated” as a “well known brand of some level of sophistication” with a “separate and distinct identity”, that is, “its get‑up - is never isolated from the Bodum Chambord Coffee Plunger”, results, as a question of fact, in the position that unless the Bodum name and logo is on the rival product embodying the features and shape (or perhaps the rival product’s packaging), no ordinary consumer of coffee plungers could mistake something which is not called a Bodum for a Bodum.
That finding is further elaborated at [122] in these terms:
In all of the Bodum advertising shown, it is clear that the Bodum logo is prominent as is the relevant brand name. Therefore, even prior to entering the trader’s door, the potential consumer may be aware of the product, and that the product is a Bodum. Upon entering the trader’s door, by the way the products are displayed, the potential customer is directed to the Bodum product, as distinct from the other brands. If a brand other than Bodum is sold alone, the consumer has identified for him or her the brand name and identification, and would not assume any Bodum connection (whether by name or otherwise). A consumer would expect to see the Bodum mark or name, before making any association to Bodum.
[emphasis added]
The criticism of the findings at [121] and [122]
Bodum attacks these findings at [121] and [122] on the footing that they compound the contended error in the findings at [82] and [94] that the secondary reputation for the features and shape of the Bodum Chambord Coffee Plunger is inextricably or “distinctly tied” to the Bodum name or mark whereas, it is said, the use of the name or mark Bodum simply provides an orthodox trade link to the point of origin of the product in a particular corporation, Bodum, rather than operating to diminish the secondary reputation in the features and shape of the product to the point where a rival might lawfully sell or offer for sale an indistinguishable rival product (in appearance) by ensuring the absence of any reference to the name or mark Bodum on or near or in connection with the indistinguishable product.
Bodum contends that it is entirely counter‑intuitive to long‑standing well‑understood commercial behaviour to think that the manufacturer of the product will not use one or more trade names or marks in the hierarchy of house or brand marks such as Bodum or Chambord in connection with the coffee plunger product in the course of trade and further contends that the use of those marks in that orthodox way reinforces, rather than diminishes, the secondary meaning or independent reputation for the features and shape of the product, as a product with such features but relevantly connected, in terms of origin, to a particular trader. The contention is that the mark serves as a link to origin not a tie to secondary reputation. It is explanatory of origin, not constraining of independent reputation. Thus, they contend, the orthodoxy of using a trade mark with a product exhibiting the features of the Bodum Chambord Coffee Plunger does not result in the secondary or independent reputation for the features and shape of the Bodum coffee plunger being reduced, in effect, to zero, in the absence of the name Bodum or the bodum® mark.
The product, it is said, stands by its shape, distinctive or of repute, in its own right by virtue of its shape, as a coffee plunger of a particular trader, that happens to be known as Bodum, if known by the consumer by name at all (which, on the authorities, is not necessary as the primary judge determined at [143] and [144]). To the same effect, see Reckitt & Colman Products Ltd v Borden Inc. and Others [1990] RPC 341 at 406 per Lord Oliver of Aylmerton.
The notion of Bodum’s reputation for its Chambord Coffee Plunger being “distinctly tied” to the Bodum name is the subject of the further finding of the primary judge at [142] in these terms:
Bodum carefully and universally employs the Bodum name and logo – and it is this the consumer looks for and expects when seeking to purchase a Bodum product.
Copying of many of the Bodum features
At [182], in the context of a discussion of fraudulent intention, the primary judge made this finding:
As in the Playcorp proceeding I am prepared to make the same assumptions relating to the adoption of a Bodum Chambord look‑alike product by DKSH.
The assumptions referred to at [182] are assumptions described at [155] in these terms:
I am prepared to assume in Bodum’s favour that there was a progressive and ultimate copying of many of the features of the Bodum products by Playcorp.
Although the primary judge found that the progressive copying by Playcorp of many of the features of the Bodum Chambord Coffee Plunger did not occur in a way that demonstrated Playcorp’s appropriation of Bodum’s goodwill, and that DKSH’s adoption of a Bodum Chambord Coffee Plunger look‑alike as its rival product did not suggest a failure on DKSH’s part to exhibit care to distinguish its rival product from Bodum’s coffee plunger, the primary judge nevertheless accepted that DKSH had copied (having regard to the operation of [182] and [155]) “many of the features of the [relevant] Bodum products [that is, the Bodum Chambord Coffee Plunger]”.
The Bodum product markings
An examination of the Bodum Chambord Coffee Plunger being Exhibit B18(c) reveals the following markings on the product itself. If the product is held in the right hand, the vertical band of flat silver, tapering to the top horizontal band immediately to the left of the handle, reveals a plainly visible engraved mark “bodum”. The mark “bodum®” is etched on the glass immediately adjacent to the handle in a way which gives some prominence to the mark as the etching is cast and contrasted within a solid white block. Underneath the mark bodum is a sequence of warnings in capital letters which read:
HOT FLUIDS MUST BE
HANDLED WITH CAREALWAYS USE COARSE
GROUND COFFEEPRESS DOWN VERY
GENTLYALWAYS STIR BEFORE
PRESSING DOWNThose warnings are then repeated in French.
Immediately to the left of the vertical band in which the name bodum is etched, is an adhesive sticker the top part of which is coloured red and the bottom section is clear. In the top section the words, in the following approximate proportion, appear:
THE
originalIn the bottom section the words, in the following approximate proportion, appear:
FRENCH PRESS
bodum®
A plastic “skirt” sits underneath the lid and on the back wall of the skirt appears the mark “bodum®”. Inside the coffee plunger is a leaflet which contains instructions for the use and particularly the safe use of the coffee plunger. The instructions are written in a range of languages. The front folded presentation page of the leaflet is marked in the following approximate proportion with these marks:
bodum®
FRENCH PRESS®
The DKSH product markings
The Euroline Coffee Plunger, Exhibit B2(a) has no marking on the product other than the Pyrex glass mark. However, the Euroline Coffee Plunger has within it an instructional leaflet and marked on the front and the back of the leaflet, in the following approximate proportion, are these words:
EUROLINE
COFFEE PLUNGER
Mr Perez gave evidence (AB 12, T 86, lns 25 ff) that Chambord was first used in relation to coffee plungers as part of the name Melior Chambord in the 1950s. The name Melior Chambord originated with a French company described in the proceedings compendiously as “Martin”. Bodum acquired Martin in 1991 and has since endeavoured in its promotional material to maintain a link with the French origins of the product. Mr Perez regarded Chambord as an important name. Bodum uses the name as a product line and to distinguish the coffee plunger from the product of competitors (AB 12, T 87, lns 25 to 45). Mr Perez accepted that a Bodum distributor had used the phrase “original Bodum Chambord plunger” to convey the idea that the product is the original product, not “some cheap copy” and, by reference to promotional material in 2007 (after July 2004), Bodum’s distributor had used the phrase “original Chambord” to tell customers that Bodum’s coffee plunger is the original Chambord coffee plunger (AB 12, T 100, lns 20 to 35).
As to the words “French Press”, Mr Perez accepted that the use of those words in promotional material by Bodum was for the purpose of describing the Chambord line of products and in particular the Chambord coffee plunger. The words were used to convey the “French heritage of the Bodum Chambord product” (AB 12, T 102, lns 1 to 7). Mr Perez gave evidence that Bodum also uses “French Press” to signify that its plungers come from no one else (AB 12, T 102, lns 26 to 27).
At AB 12, T 117 and 118, Mr Perez gave further evidence about the features of Bodum’s Chambord Coffee Plunger when removed from the box. Mr Perez accepted that the product is normally presented with the handle to the right as most people are right‑handed and the reason the product is exhibited out of the box is so that people can handle the product if they wish to, feel the weight of the product, assess its quality, determine whether the plunger moves easily and decide whether the product exhibits the elegance the consumer seeks (AB 12, T 117, lns 20 to 36).
Mr Perez accepted that if the product is held in the right hand, it is easy to see the name Bodum adjacent to the handle and next to the fingers of the person holding the product. As to the engraving of the name “bodum” on the vertical strap immediately to the left of the handle, DKSH’s counsel put to Mr Perez that a person would also be able to see the name Bodum on the strap. Mr Perez accepted in evidence that the engraved name could be seen, “yes, because I know where it is”: AB 12, T 118, lns 4 and 5.
It was put to Mr Perez that if a consumer held the product in his or her right hand, he or she would not fail to see the name “bodum” engraved on the strap. Mr Perez accepted that they probably would see the name “if they were looking for it”. It was also put to Mr Perez that if a consumer wanted to buy a Bodum product, such a consumer would look for the Bodum name. Mr Perez agreed that such a consumer would look for the Bodum name if it was his or her intention to buy a Bodum product.
Bodum contends, having regard to this evidence, that consumers within the cohort of consumers who might engage in a possible transaction for the purchase of a coffee plunger, include those consumers who expressly intend to purchase a Bodum Chambord Coffee Plunger by name, looking for the product marked Bodum. Such a consumer will look for and seek out the name Bodum and when holding the product will be likely to find and see the Bodum name and mark endorsed upon it. Such a consumer embarking upon a possible consumer transaction with that frame of reference would not be, or be likely to be, misled by the conduct of DKSH because such a consumer would reach an informed decision as to the particular product they want.
However, Bodum contends that within the cohort of consumers seeking to engage in a possible transaction is a group properly described as a not insignificant group (and thus not a trivial number of persons) who might seek out the possibility of purchasing a coffee plunger by reference to the distinctive features and shape of the Bodum Chambord Coffee Plunger, not conscious of or not looking for the Bodum name and perhaps having no immediate recollection of the Bodum name if they ever knew it with any sense of real recollection. That group, it is said, is misled and deceived, or is likely to be misled or deceived, by the conduct of DKSH selling or offering for sale its rival coffee plunger embodying the features and shape of the Bodum Chambord Coffee Plunger and not marked with any distinguishing or differentiating name, mark or logo which would otherwise, in the mind of the consumer, set it apart from the Bodum Chambord Coffee Plunger.
As to the informed consumer seeking out a Bodum Chambord Coffee Plunger by name, Mr Perez accepted these propositions at AB 12, T 118, lns 40 to 46 put to him by counsel for DKSH:
One thing that is perfectly plain is that a consumer is going to see the word ‘Bodum’ if they want to look for the name ‘Bodum’. The next thing they’ll see is the red and white sticker that says ‘The Original French Press’ and has the Bodum logo in red again.
[emphasis added]And that sticker was put there I think you said in 2004 or 2005 for the purpose of communicating the originality or authenticity of this product.
As to the packaging, it largely speaks for itself. However, those features require some explanation.
Exhibit B18(c) (Schedule 4) is the box for the Bodum Chambord Coffee Plunger at the moment in time when DKSH introduced its rival product into the market in July 2004. The front and back of the box contains a large scale photograph of the coffee plunger. Above it is the name Chambord and in the centre of the box is the Bodum trade mark in white letters against a red background. The background for the box on all sides and the top and bottom is white. The top of the box bears the Bodum trade mark, the word Chambord and in relatively small print the words, in the following approximate size:
FRENCH PRESS® COFFEE MAKER
Further aspects of the DKSH packaging
As to the packaging for the rival DKSH product, Exhibit B2(a) also largely speaks for itself. It is previously described in these reasons and the image is Schedule 2 to these reasons. It displays a large scale image of the rival product on the front and back of the box. At the top it bears the word “Coffee” in red on a black background and the word “Plunger” in white on a black background. Two‑thirds of the front and back of the box is white. The words “Coffee Plunger” appear above an image of the rival product on the sides of the box. At the base of the front and back of the box and on each side are the following words in reasonably large text :
EUROTM
LINE
Having regard to all of the factors I have mentioned, I am not satisfied that the adoption of the unknown brand name “Euroline” on the box for the rival product at July 2004 had the effect of distinguishing or differentiating the rival product from that of the Bodum Chambord Coffee Plunger or a product promoted and sold with the licence, sponsorship or approval of Bodum.
I am satisfied on the evidence that Bodum established at July 2004 a contravention of s 52 and s 53 of the Trade Practice Act 1974 (Cth) by reason of DKSH’s adoption of the features of the distinctive Bodum Chambord Coffee Plunger in circumstances where DKSH failed to adopt distinguishing or differentiating indicia for its rival product which made it plain to consumers attracted to the rival product by reason of the distinctive reputation and secondary meaning subsisting in the features of the Bodum Chambord Coffee Plunger that the rival product was not a Bodum Chambord Coffee Plunger or a coffee plunger promoted and sold with the licence, sponsorship or approval of Bodum. I am also satisfied that such conduct involved DKSH passing off its product as that of Bodum’s product or a product sold with the licence, sponsorship or approval of Bodum.
Placing “EURO LINE” on the box was not enough. Nor was placing the small sticker in the following small text “MADE IN TAIWAN” (Schedule 17) on the base of the beaker sufficient to distinguish DKSH’s rival product from that of the Bodum Chambord Coffee Plunger.
The important matter of what is not asserted by Bodum by its proceeding
It is important to remember that Bodum does not contend that it is entitled to a de facto monopoly in the features of the Bodum Chambord Coffee Plunger or, put more precisely, that it is entitled to remedial relief of any kind on the footing that DKSH has no right to import, sell and offer for sale a rival coffee plunger exhibiting the features of the Bodum Chambord Coffee Plunger. The contention is that DKSH cannot engage in that conduct by adopting the distinctive features of the Bodum Chambord Coffee Plunger,
… without labelling or distinguishing [the rival product] adequately or at all.
[para 35, Statement of Claim]
so as to ensure that no false representation is made to potential purchasers of the rival product that the rival product is the Bodum Chambord Coffee Plunger or is made, promoted and sold with the licence, sponsorship or approval of Bodum. From July 2004 to a date in 2008, the rival product was not marked with any label, tag, name or logo which differentiated it from the Bodum Chambord Coffee Plunger. Placing the Schedule 17 sticker on the base of the beaker did not achieve that result.
No inference of subjective intention arises
I am not satisfied that an inference arises that DKSH adopted the features of the Bodum Chambord Coffee Plunger (without marking or labelling the rival product itself and by adopting a form of packaging which marked the rival product only by reference to a descriptive unknown trade name “Euroline”), with the subjective intention or purpose of passing off its rival product as that of the Bodum Chambord Coffee Plunger or a coffee plunger in the Bodum line of coffee plungers bearing the features and shape of the Bodum Chambord Coffee Plunger, or with the subjective intention or purpose of leading consumers to the view, wrongly, that the rival product is a Bodum Chambord Coffee Plunger or a coffee plunger in the Bodum line of coffee plungers bearing the features and shape of the Bodum Chambord Coffee Plunger.
Notwithstanding that no subjective intention or purpose of that kind is proven, there is no doubt, in my view, that the conduct of DKSH passed off its rival product in the way already described and that DKSH’s conduct involved conduct in contravention of s 52 and s 53(c) and (d) of the Trade Practices Act.
In 2008, DKSH sought to affix a sticker to the product itself, no doubt, with a view to differentiate its product from Bodum’s distinctive product. It may be that the conduct of DKSH which contravenes ss 52 and 53 and passes off its rival product, ceased in or about October 2008. That question may need to be considered further by the primary judge.
I am satisfied that the appellants have demonstrated error in terms of the synthesised grounds 1, 3, 4, 5 and 6 of appeal set out at [72] of these reasons. Accordingly, the appeal ought to be upheld. Order 1 of the orders of the primary judge made on 14 April 2010 ought to be set aside. Orders 1 and 2 of the orders made by the primary judge on 13 May 2010 ought to be set aside. The question before the primary judge concerned one of liability only. The matter ought now be remitted to the primary judge to address the form of the orders having regard to the scope of the relief claimed in the application.
The appellants’ costs of and incidental to the appeal ought to be paid by the respondents.
I certify that the preceding two hundred and seventy one (271) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate:
Dated: 5 August 2011
SCHEDULE 1
SCHEDULE 2
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SCHEDULE 5
SCHEDULE 6
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SCHEDULE 16SCHEDULE 17
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 325 of 2010
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: PETER BODUM A/S
First AppellantBODUM (AUSTRALIA) PTY LIMITED
Second AppellantPI-DESIGN AG
Third AppellantAND: DKSH AUSTRALIA PTY LIMITED
Respondent
JUDGES:
GREENWOOD, TRACEY AND BUCHANAN JJ
DATE:
5 aUGUST 2011
PLACE:
Melbourne
REASONS FOR JUDGMENT
TRACEY J:
I agree with the judgment of Greenwood J and I would allow the appeal.
I certify that the preceding one (1) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Tracey. Associate:
Dated: 5 August 2011
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 325 of 2010
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: PETER BODUM A/S
First AppellantBODUM (AUSTRALIA) PTY LIMITED
Second AppellantPI-DESIGN AG
Third AppellantAND: DKSH AUSTRALIA PTY LIMITED
Respondent
JUDGES:
GREENWOOD, TRACEY AND BUCHANAN JJ
DATE:
5 aUGUST 2011
PLACE:
Melbourne
REASONS FOR JUDGMENT
BUCHANAN J:
The Bodum coffee plunger is well known. It possesses a number of readily identified and reasonably distinctive features and is marked with the Bodum name in a number of places. When sold it also bears a prominent sticker on which the Bodum logo appears. The Euroline coffee plunger possesses almost all the same physical features but is not marked in the same way. When sold it carries a sticker on its base which says “Made in Taiwan”.
In the statement of claim the following assertions, which are at the heart of the proceedings, were made by the appellants (at [35]–[36]):
35By promoting, advertising and selling the Euroline Coffee Plunger with the features as set out … and without labelling or distinguishing it adequately or at all, the Respondent has represented to consumers in Australia that the Euroline Coffee Plunger is the Bodum Chambord Coffee Plunger or is made, promoted or sold by or with the licence, sponsorship or approval of the [appellants].
36Further or in the alternative and by reason of the matters pleaded … consumers and retailers are likely to be misled or deceived in the manner set out in paragraph 35 above.
These assertions raised the common law action of “passing off” and the statutory prohibition then contained in s 52 of the Trade Practices Act 1974 (Cth) (“the TP Act”) against misleading or deceptive conduct in trade or commerce. In order to succeed in each cause of action the appellants needed to prove an adequate reputation in the Bodum plunger as a foundation for the assertion that offering, promoting and selling the look-alike Euroline plunger conveyed the representation pleaded in paragraph 35 of their statement of claim.
The trial judge was prepared to assume that the Euroline plunger copied the features of the Bodum plunger. However, the fact that a product is copied is not enough to make out a case of passing off or of misleading or deceptive conduct. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 (“Puxu”) a manufacturer of lounge suites and chairs made and sold furniture which closely resembled the “Post and Rail” furniture of distinctive appearance and design known as the “Contour” range manufactured and sold by Puxu Pty Ltd and its predecessors. Gibbs CJ observed (at 196):
… it is difficult to escape from the conclusion that the appellant deliberately copied the design and appearance of the respondent’s chairs. However, it does not follow that the appellant had any intention to mislead or deceive. One manufacturer may copy the product of another, because that product has proved successful and with the intention of taking advantage of an available market for a product of that kind, but with no intention of passing off his own product as the product of the original manufacturer.
…
… the respondent’s claim that the conduct of the appellant was misleading or deceptive, or likely to mislead or deceive, rests solely on the fact that the appellant sold goods which were virtually identical in appearance to those sold by the respondent. There is no suggestion of false labelling or false description.
Deliberate imitation was found to be insufficient in Puxu to make out a case for relief. Puxu was concerned with the operation of s 52 of the TP Act, rather than with the common law tort of passing off. Section 52 was designed primarily to protect consumers whereas the tort of passing off protects the proprietary rights of the holder of goodwill. Making due allowance for those differences, however, the following observations by Gibbs CJ (at 199) bear repetition in connection with the present proceedings:
Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by [sic] regarded as contemplating the effect of the conduct on reasonable members of the class. The heavy burdens which the section creates cannot have been intended to be imposed for the benefit of persons who fail to take reasonable care of their own interests.
His Honour went on (at 200):
There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the article serves. In some cases indeed no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public.
Bodum had a clearly established reputation in its name and logo. (It will be convenient, at times, to refer to the appellants’ interests by the generic term “Bodum”.) The appellants were entitled to protect Bodum’s goodwill and proprietary interest in the name and logo at common law and entitled to insist, relying on s 52 of the TP Act, that other traders’ goods were not represented as its own. However, there were no independent proprietary rights or statutory protection (e.g. by way of registered design, trademark or copyright) in the features of the Bodum plunger. The appellants’ case was, therefore, that Bodum had, in addition, a reputation or “secondary meaning” in the features of the Bodum plunger which did not depend upon a direct association in the minds of consumers with the Bodum name or logo. The trial judge came to the view on the evidence, much of which was provided by the appellants, that Bodum had succeeded in its own advertising and promotion in distinguishing and differentiating itself from look-alike versions of the plunger sold by other traders.
It was not in dispute that, although expert evidence was called to deal with the significance of various features of the two plungers and make a comparison between them, it was ultimately a matter for the trial judge to decide, as a matter of overall impression, whether the pleaded representations had been made. The trial judge made reference to the expert evidence which was led by the appellants. He observed (at [47]):
47… This evidence focussed attention on what the Court itself could observe about the similarities and differences in the products themselves. However, it is for the Court, in a case such as this, to determine for itself by way of overall impression, the significance of these similarities and differences once they have been identified.
In the present case, the Euroline plunger did not represent in any overt or express way that it was a Bodum plunger. The trial judge rejected the argument that the intentional similarities of the Euroline plunger to the Bodum plunger demonstrated that the purpose of the respondent was to appropriate the goodwill in the Bodum plunger or to mislead consumers as alleged in the statement of claim. There were a number of matters which contributed to this conclusion. The trial judge’s findings were summarised by him as follows (at [184]):
184In my view, the promotion and sale of the Euroline Coffee Plunger does not convey the representation that it is the Bodum Chambord Coffee Plunger or is otherwise associated with Bodum. The name Euroline is placed fairly and squarely before the consumer, even if not widely known. When regard is also had to the some [sic] visual differences between the products; the fact that Bodum has always promoted, advertised and sold its products by reference to the name Bodum and other indicia of trade source; the fact that potential consumers have been warned to be aware of the availability of look-alike plungers; the manner in which the products are displayed for sale in retail stores; and the fact that there is no evidence that any consumer has ever been misled by the sale of the Euroline plunger, I readily conclude that DKSH has not engaged in misleading or deceptive conduct or passing off.
In the discussion which preceded this summary, there were two critical conclusions reached by the trial judge requiring attention on the appeal, which were outlined at the outset of his analysis of the issues (at [82]):
82I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger … features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features … (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products …in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum …
These conclusions (that the appellant had no secondary reputation in the features of the Bodum plunger, apart from the Bodum name and logo, and that, in any event, there was sufficient product differentiation at point of sale that there was no misrepresentation) were explained in some detail in the discussion which followed. His Honour accepted that Bodum had a significant reputation in its brand but he rejected an argument that the features of the Bodum plunger could be considered to be significant in their own right and in the absence of the Bodum name and logo. Those more detailed findings were expressed as follows (at [90]–[94]):
90It is clear that there has been vast amount of advertising of the Bodum brand and I find that Bodum had and has a significant reputation in Australia in that brand. However, it is necessary to consider how this translates to a reputation in the Bodum Chambord Coffee Plunger … with or without its branding.
91It was submitted by Bodum that the consistency, extent and duration of the sale and promotion of the Bodum products increased the likelihood that there will be a significant number of people to whom the features do have a signification for which Bodum contends.
92I agree that there may be some such people, but very few. In any event, in the way that Bodum has marketed (by specific and consistent reference to its name and logo), the absence of such reference would readily lead to the view being held by consumers that the accused products are not part of the Bodum range.
93Of course, there will be a variety of consumers. Some will not have been exposed to Bodum products at all. They will have no pre-conception or knowledge of the Bodum features relied upon by reference to the Bodum range. Other potential consumers will have a knowledge of the Bodum range and the Bodum features even if not by name. They may or may not have been exposed to copy products. I do not consider that they would conclude that the accused products or any copy products would be part of the Bodum range, rather than just ‘copies’ or cheaper versions. The fact that the accused products in these proceedings are ‘just under’ the price range of the Bodum products, does not confuse the consumer that they are part of the same range, but a cheaper version. The consumer would readily appreciate that these differently packaged products are just that, cheaper, and would not necessarily assume any association with Bodum. No persuasive evidence was led by Bodum to demonstrate otherwise.
94The accused products were clearly packaged to distinguish them from Bodum, with no reference to the distinctive name or logo of Bodum. No evidence was led by Bodum of actual confusion of a consumer. If a consumer was familiar with Bodum or the Bodum product range itself, then in my view the comments made in Koninklijke Philips Electronics NV (2000) 48 IPR 257 at [45] and Dr Martens (1999) 44 IPR 281 at [38] referred to above apply here even though the brands of the accused products are not well known. The knowledgeable consumer would expect to see the name and logo of Bodum on its products. This is how Bodum has in fact marketed its products for very many years. I am of the clear 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. In fact, the similarity may put the consumer on guard to ensure that he or she takes care to purchase ‘the original’. The evidence indicates that Bodum understood the need to (and did) educate the relevant market to beware of copyists, and to look for the ‘original’ Bodum.
There was an abundance of evidence before the trial judge to establish the proposition that the Bodum plunger was advertised and promoted in close association with the Bodum name and logo, one or other of which was virtually always published in close proximity to any photograph of the Bodum plunger and in a prominent way. The close association with the name and logo was also a feature of the point of sale marketing and display arrangements for the Bodum plunger. The trial judge recorded (at [95]–[98]):
95It is convenient to mention some aspects of the evidence relating to the promotion of the Bodum Chamboard Coffee Plunger. The Bodum Chambord Coffee Plunger has been sold in Australia since 1986 primarily under and by reference to the following features:
•the name ‘bodum®’ presented in a stylised form in white on a bright red ‘flag’;
• the name Chambord;
•packaging which has been either predominantly white or black in colour;
• the words ‘The Original French Press’;
•a large red and white sticker affixed to the glass beaker bearing the words ‘the original French press’ and the name ‘bodum®’;
•an instruction leaflet bearing the name ‘bodum®’ and the words ‘French Press’;
•the permanent branding and instructions which appear on the Chambord Coffee Plunger product itself including:
- the name ‘bodum®’ engraved into the frame;
- the name ‘bodum®’ etched into the glass;
- the name ‘bodum®’ embossed on the black plastic skirt; and-(since 1998) safety/usage instructions in both English and French which are etched into the glass beaker in white lettering beneath the white label on the side of the glass beaker.
96Mr Bodum gave evidence (which I accept) that Bodum had placed its trade mark on the packaging of all of its products and where any Bodum products were sold without boxes, they were sold by reference to the name ‘Bodum’ either appearing on the product itself or by some other means.
97Since at least as early as the year 2000, Bodum has placed a bright red and white sticker on the glass beaker of each Bodum Chambord Coffee Plunger, as well as its other coffee plunger products sold in Australia proclaiming that the product is ‘the original French Press bodum®’. Similarly, the packaging in which each Bodum coffee plunger is sold bears prominently in bright red and white the words ‘the original French Press’.
98Mr Perez acknowledged in cross-examination that the purpose of this emphasis on the Bodum Chambord Coffee Plunger as the ‘original’ was to draw attention to its French heritage, to educate consumers to watch out for look-alikes and to distinguish its products from competitors’ look-alikes.
and also (at [113]–[114]):
113The packaging is emblazoned with the bright, distinctive Bodum logo of white writing on red background, with the distinctive name ‘Chambord Coffee Plunger’ given prominence through large type face. A purchaser is left in no doubt about the provenance of the Bodum Chambord Coffee Plunger …
114To me, these aspects encapsulate the Bodum get-up that has been advertised and marketed as the promotional material shows. Even though promotional material other than in a store (eg as in magazines) may not include the packaging, the promotion occurs by reference to the name Bodum, and when sold on display, the Bodum Chambord Coffee Plunger … retain[s] the stickers, named etchings and instructions which promote the Bodum brand.
No challenge was made to those findings. Rather, the appellants’ attack was directed to the conclusions which proceeded from them. In particular, the appellants challenged the conclusion of the trial judge (at [121]) that Bodum was the “victim of its own success” in establishing for itself “a separate and distinct identity from look-alike products”.
In my respectful view, these conclusions, the more general conclusion that Bodum had no “secondary reputation” in the features of the plunger and the findings from which the respective conclusions proceeded, were clearly open on the evidence before the trial judge.
Furthermore, although the appellants argued on the appeal that the trial judge was wrong to find that Bodum had no independent reputation or “secondary meaning” in the features of the plunger alone, separate from the Bodum name or logo, I do not understand how the concept of a secondary meaning might assist the appellants on the facts of the present case. First, reputation must be established to make out either of the causes of action (i.e. passing off or breach of s 52 of the TP Act). Thus, if reliance on a reputation independent of brand or logo is intended then that independent reputation must nevertheless be sufficiently established. The trial judge found, on the facts, that it was not. Furthermore, I do not regard the present as a case involving a “secondary meaning”. In my view, that notion does not apply to a design or to physical features of a product itself of the kind relied upon.
The trial judge found that the features of the Bodum plunger were not, in fact, distinctive or exclusive, either historically or at the time of the trial and that “… Bodum itself taught consumers to be aware of imitations and look for the ‘original’”. I do not understand those factual findings to be challenged. In those circumstances, any suggestion that consumers were misled merely by the similarity of features between the Euroline plunger and the Bodum plunger is a surrogate contention that copying or imitation of an original concept or product is banned. The authorities do not support that contention.
I earlier referred to the judgment of Gibbs CJ in Puxu. It is also instructive, in my respectful view, to note the observations of the other two Justices who, with Gibbs CJ, constituted the majority. In Puxu, Mason J said (at 209):
Conduct does not breach s. 52(1) merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source.
Brennan J, in Puxu, dealt with the matter in more detail. His Honour said (at 219):
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 (Cth) in respect of goods of that kind.
and (at 225):
Conduct cannot be held to fall within s. 52 unless a consumer, not labouring under any mistake or imperfection of understanding of law, would be or would be likely to be misled or deceived by that conduct. Section 52 operates in a milieu of the external legal order, so that the character of conduct which falls for consideration under s. 52 is to be determined by reference to the external legal order as it exists when the conduct is engaged in. Therefore, a manufacturer who exercises his freedom to manufacture goods according to a design which is not protected by valid registration does not engage in conduct which is misleading or deceptive or which is likely to mislead or deceive. If consumers or potential consumers believe that all goods of a particular design are manufactured by him who first establishes a market reputation as a manufacturer of those goods, that belief is or may be erroneous. The error may be attributed to a preconceived belief that the manufacturer who first establishes a market reputation has a monopoly in the manufacture and sale of goods of that kind but, unless the manufacturer has acquired a statutory monopoly, that belief is also erroneous and the error flows from a misconception of law. A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a consumer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer’s goods is self-induced.
In my view, the limitations upon the protection given by s 52 of the TP Act (i.e. 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 s 52 of the TP Act because the common law also does not go so far.
In Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 (“Dr Martens”) a Full Court dealt with an attempt to confine the limitations expressed in Puxu, with a view to leaving room for actions protecting so-called distinctive features of goods. The attempt failed (see especially at [40]–[42]). Although this judgment has been explained as turning on adequacy of labelling (see Koninklijke Philips Electronic NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90), in my respectful view, neither Puxu or Dr Martens depended in principle upon labelling, although it is true that a case of misleading get-up (as opposed to copy of a design) would not survive adequate labelling (see Dr Martens at [40]). To the extent that Reckitt & Colman Products Ltd v Borden Inc [1991] All ER 873 (“the Jif Lemon Case”) might hold that a legally enforceable monopoly may be acquired in a design, it is not readily reconciled with Puxu, although the principle recognised by the House of Lords in the Jif Lemon Case was nominally the same as that applied by the High Court in Puxu – namely that the common law does not protect a monopoly in goods. In the Jif Lemon Case the House of Lords focussed on get-up, rather than design of goods. The lemon looking bottle was found to represent a distinctive get-up for the presentation to the public of the lemon juice it contained. The present case is not one which may, in my view, be approached that way. The present case is concerned with the design of goods themselves, not their distinctive container. In my view, the analysis in Puxu must prevail, with the result that neither cause of action in the present case should succeed.
In all the circumstances, I cannot subscribe to the outcome of the very thorough analysis by Greenwood J, which has also persuaded Tracey J, about this aspect of the case. Nor, I regret to say, can I join with their Honours concerning the other principal issue in the appeal.
To the extent that the claimed reputation (or “secondary meaning”) in the features alone might actually exist, the relevant enquiry is whether it has been made sufficiently clear to a consumer at the point of sale that the product they are about to purchase is not a Bodum plunger. In that connection the trial judge made the following findings (at [171]–[174] and [176]):
171The Euroline packaging features the prominent use of DKSH’s trade mark, EUROLINETM. EUROLINETM is printed on all six panels of the packaging. It is printed in large, stylised type on the bottom left-hand side of the front, back, top and two side panels. It is printed in smaller capital letters on the bottom panel in the statement, EUROLINETM is a registered trade mark of DKSH.
172The EUROLINETM trade mark on DKSH’s packaging is at least as large as the BODUM trade mark on Bodum’s packaging. The photographs of in-store displays demonstrate that the EUROLINE trade mark is not concealed when the glass plunger is displayed in front of the packaging. Even if it was concealed, anyone interested in purchasing the plunger would reveal the packaging when they picked up the plunger.
173A prominent photograph of the Euroline Coffee Plunger appears on the front and back panels of the packaging. A smaller photograph of the plunger appears on the side panels. As I have already indicated, it is common practice in the housewares industry for products to be displayed and sold in packaging that features a photograph of the product that is inside the packaging. When the plunger is displayed outside its packaging, the photograph and the name Euroline enables consumers to match the product and its packaging.
174In context, I do not accept that the branding with the name ‘Euroline’ as it appears on the box does little to distinguish the DKSH product.
…
176I do accept that the Euroline brand is not well known. However, that is not to say that a potential customer will assume that this ‘unknown brand’ is connected in someway to Bodum, particularly whether Bodum goes out of its way to use its own name and logo, and the features of the product are different. In any event, I consider the use of ‘Euroline’ on the packaging does indicate clearly a different brand.
Again, in my respectful view, the findings were clearly open to the trial judge as a matter of impression, making the judgment for himself once the relevant matters had been sufficiently identified for him if necessary. In addition, the trial judge recorded at [163(e)] that “at all times the Euroline plunger has had a gold ‘Made in Taiwan’ sticker on its base”. That appears to me to be substantially destructive of a claim of a “secondary meaning” arising simply from the features shared between the Bodum and Euroline plungers, even if the sticker seems not wholly consistent with the name “Euroline”.
However the matter is examined, therefore, there is no basis to conclude that the trial judge made any error in the evaluation of the evidence, or in the application of relevant principles, which might provide a ground to uphold the appeal.
Finally, the trial judge observed that there was no evidence of any consumer being actually misled. That was a relevant, even though not determinative, matter. It provided a practical touchstone against which to test what was otherwise a debate concerned with possibilities and competing versions of available impressions.
In my view, no appellable error has been demonstrated in either of the critical conclusions stated by the trial judge at [82] of his reasons, or in his more detailed analysis of the evidence. In my respectful view, the trial judge was correct to conclude that there had been no breach of s 52 of the TP Act. His Honour was also correct to conclude that a case of passing off had not been established. In my opinion, the appeal should be dismissed with costs.
I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Buchanan. Associate:
Dated: 5 August 2011
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