Bodum v DKSH Australia Pty Limited  FCAFC 98
On 5 August 2011, the majority of the Full Federal Court (Greenwood and Tracey JJ with Buchanan J dissenting) held that Bodum had acquired a distinctive secondary reputation in the shape and features of its Chambord coffee plunger, and that by failing to properly distinguish its look-alike product from the original, DKSH had engaged in misleading and deceptive conduct and passing off.
FACTS OF THE CASE
Peter Bodum A/S (Bodum), through distributors and then an Australian subsidiary, had sold its “Bodum Chambord” coffee plunger in Australia since 1973. The Bodum Chambord coffee plunger featured the mark “bodum®” etched on the product in a number of places, and the Bodum name and logo also appeared on the product box and instruction leaflet. The Bodum product had achieved substantial sales and been advertised widely.
From July 2004, DKSH Australia Pty Limited (DKSH) imported and sold a coffee plunger which substantially adopted the shape and features of the “Bodum Chambord” coffee plunger. The DKSH coffee plunger had no relevant branding on the product but its packaging and instructions were marked with the name “Euroline”. There had been minimal advertising of the Euroline coffee plunger and its sales had been “dwarfed” by sales of the Bodum product.
On 2 February 2010, the primary judge (Middleton J) dismissed Bodum’s claims that DKSH had engaged in passing off and misleading and deceptive conduct. The primary judge held that because Bodum had prominently and consistently marketed its product under the “Bodum” name, its reputation in the features of its coffee plunger was “distinctly tied” to the “Bodum” brand. The primary judge held that Bodum did not have a secondary reputation in the features or shape of its product. Therefore, where the Bodum brand was not used, consumers would understand that they were looking at a rival product (such as the DKSH product). In this regard, the primary judge referred to Bodum as “a victim of its own success” adopting the phrase from Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354.
On 5 August 2011, the majority of the Full Federal Court overturned the decision of the primary judge. Justice Greenwood (with Tracey J agreeing) found that Bodum had established a substantial “secondary reputation” in the features of the Bodum Chambord coffee plunger. The majority held that the respondent’s use of the “Euroline” mark on the packaging only and not on the product itself was not sufficient to distinguish the Euroline product from the Bodum product, where the overall appearance of the Euroline product was for all practical purposes the same as the Bodum product.
Bodum’s reputation After undertaking a detailed review of Bodum’s “vast” advertising, Greenwood J disagreed with the primary judge and held that Bodum had established a “very significant secondary reputation” in the features of its product, independent of the Bodum trade mark. It was important that large and prominent images of the Bodum plunger had been used in advertising material, even though the Bodum mark or name was usually also present. His Honour found that the use of the Bodum name had reinforced the association between the manufacturer and its distinctive product but that did not diminish the secondary reputation of the product itself. Greenwood J noted that care should be taken in applying the notion that consumers are not likely to be misled where a trader has heavily promoted its distinctive product in conjunction with its trade mark.
Misleading or deceptive conduct and passing off
Justice Greenwood stated that the real question in the proceeding was whether DKSH had done enough to differentiate its rival product from the Bodum product.
To succeed in an action for misleading and deceptive conduct, Greenwood J stated that the Court must have regard to all the contextual circumstances and consider the effect of the conduct on reasonable or ordinary members of the class of prospective buyers (citing Parkdale Custom Built Furniture v Puxu (1982) 149 CLR 191per Gibbs CJ at 199, Mason J at 205; Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45 at ). The question is whether a not insignificant number within that class have been or are likely to be misled or deceived, whether in fact or by inference: Hansen Beverage Co. v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579.
By comparison, Greenwood J noted that passing off protects a trader’s goodwill. Passing off is made out where the plaintiff has established (i) a reputation attached to the goods or services, (ii) a misrepresentation by the defendant that leads or is likely to lead the public to believe that the goods or services have an association, quality or endorsement that they do not have, and (iii) actual or likely damage to the plaintiff by reason of the misrepresentation. Justice Greenwood noted that there is no requirement that there be an intention to mislead, but where the defendant has deliberately copied the plaintiff’s getup to try to trade off the plaintiff’s reputation, the Court is entitled to presume that the defendant’s product is “fitted for the purpose” and therefore likely to deceive or confuse (citing Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641).
Ultimately, Greenwood J noted that these questions are matters of impression for the Court, taking into account all relevant contextual considerations.
Justice Greenwood considered the relevant principles and held that DKSH had engaged in misleading and deceptive conduct and passing off. His Honour found that the use of the unknown and descriptive brand name “Euroline” on the box only was not enough to inform consumers, who were drawn to the product by Bodum’s substantial secondary reputation in the features of its coffee plunger, that the product was not associated with Bodum. His Honour emphasised that the test was not applied to sophisticated consumers who might examine the product specifically for the Bodum name. Justice Greenwood held that labelling the packaging was not sufficient to distinguish the product, in circumstances where the products were often displayed outside the box. The conclusion of Greenwood J was that if a consumer did not see the Euroline box, there was no indication from DKSH on the product itself that it was not a Bodum product or a product from the Bodum range. It was also relevant that the DKSH and Bodum products were around the same price and 86% of sales for each product occurred in separate locations.
Justice Greenwood was not, however, willing to infer that in adopting the features of the Bodum Chambord coffee plunger and inadequately labelling its own product, DKSH had intended to mislead or deceive consumers.
The matter was remitted to the primary judge to address the form of the orders having regard to the Full Court’s decision.
As noted by Greenwood J, it is important to remember that Bodum did not contend that DKSH should be restrained from selling a coffee plunger which adopts the features of the Bodum coffee plunger. Each of the judges hearing the appeal affirmed that a trader is free to adopt the features of a rival product (in the absence of any infringement of a formal intellectual property right) so long as the trader does not falsely represent that its goods are those of another: Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348. The relief sought by Bodum was to restrain DKSH from selling a coffee plunger “without labelling or distinguishing [its product] adequately or at all”.
In the last decade or so, there have been few successful claims of passing off and misleading and deceptive conduct based on reputation in a product’s “get-up” alone (that is, the product’s features or packaging separate from the trade mark used to market and sell the product). In some cases, the Court has held that no secondary reputation subsists in the features of the product independent of the trader’s distinctive trade mark (for example in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 concerning Maltesers). In other cases, the Court has held that the respondent’s labelling of its products was sufficient to avoid false representations as to any association with the applicant’s product (see, for example, Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 and Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136).
This Full Court decision is noteworthy as an example of when the Court is likely to recognise a reputation in the get-up of goods independent of any proprietary rights, and of the approach taken to determine whether the respondent has done enough to distinguish its rival products from those of the applicant. In this case, it was central to the decision that the overall appearance of the DKSH product was “for all practical purposes” the same as the Bodum product and DKSH had failed to distinguish its product from the original in circumstances where a substantial reputation lay in the design features of the Bodum product alone, independent of the Bodum mark.
However it is equally important to remember that these cases turn on their particular facts and are ultimately a matter of impression for the Court. Of course traders can have greater certainty in protecting the get-up of their products by obtaining formal intellectual property rights such as by registering designs and shape trade marks.
THIS FULL COURT DECISION IS NOTEWORTHY AS AN EXAMPLE OF WHEN THE COURT IS LIKELY TO RECOGNISE A REPUTATION IN THE GET-UP OF GOODS INDEPENDENT OF ANY PROPRIETARY RIGHTS, AND OF THE APPROACH TAKEN TO DETERMINE WHETHER THE RESPONDENT HAS DONE ENOUGH TO DISTINGUISH ITS RIVAL PRODUCTS FROM THOSE OF THE APPLICANT.