Enforcing shape trade mark rights under Australian law, even in the case of famous shapes, has been a recurring problem.  The recent case of Coca-Cola Company v PepsiCo Inc1  has again highlighted the problems but also offered some hope for TM owners. The case concerned Coca-Cola’s well-known fluted/waisted bottle “Contour” shape and a new bottle from rival Pepsi called “Carolina” that included a pinched “waist”.  Images of the two bottles are reproduced below.

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Coca-Cola brought three claims against Pepsi – infringement of Coca-Cola’s trade mark registrations for the Contour shapes (drawings and silhouette, without COCA-COLA branding); passing off and misleading or deceptive conduct under the Trade Practices Act (now the Australian Consumer Law).

The passing off and misleading or deceptive conduct claims failed because of the prominent PEPSI branding on Pepsi’s Carolina bottle and the differences between the bottles including Carolina’s horizontal waves and Contour’s fluting, which the Court found would not lead to consumer confusion.  This result follows a long line of authority about the operative effect of branding on identical designs2).

In relation to trade mark infringement, the Court found that Pepsi had used the Carolina bottle shape as a whole as a trade mark (to identify the source of its goods), but not the bottle silhouette alone. However, the Court found that the Carolina shape was not deceptively similar to any of Coca-Cola’s trade mark registrations for the Contour shape. The key reasoning turned on the fact that the Carolina bottle featured a horizontal wave element and “frustoconical neck,” and a higher curved waist, and did not feature the Contour “fluting”, all of which distinguished the Carolina bottle from Coca-Cola’s trade mark registrations and avoided infringement.

So where does this leave registered shape trade marks in Australia? Things are looking up. Whereas previous cases had suggested the sale of a similarly shaped good did not even reach the first threshold for infringement because they never constituted use as a trade mark3, the Coca-Cola case suggests that there is much more scope for enforcement of shape trade marks in Australia. If so, there is no time to “waist”.