Shaping Up Protection – What the Coffee Jar Case Tells Us About Australian Shape Marks

In November 2024, the Federal Court of Australia handed down its decision on a trade mark dispute between the owners of the "Moccona" and "Vittoria" brands (Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 ("Koninklijke v Cantarella")). The trade mark in question was the shape of the container in which Moccona's instant coffee is sold.

As brand owners increasingly look to shape trade marks as an additional tool in their brand protection and enforcement strategy, this case highlights the key considerations for brand owners seeking to register shape trade marks as well as marketing strategies that shape trade mark owners should deploy to protect their shape marks.

 

Background Facts

Australian Trade Mark Registration No. 1599824, is a mark for the shape of a container ("the Shape Mark").

The owner of the Shape Mark and the authorised user of it (being the manufacturer of Moccona coffee) claimed that Cantarella Bros (the producer of Vittoria coffee) infringed the Shape Mark, contravened the Australian Consumer Law and engaged in passing off by using a similar cylindrical shape jar.

Cantarella Bros denied these claims and cross-claimed seeking to cancel the Shape Mark on various grounds, including lack of distinctiveness.

The graphics of the relevant products are shown in paragraphs [3] and [9] of the judgement.

 

Distinctiveness of a shape mark (s 41 of the Trade Marks Act)

Under s 41 of the Australian Trade Marks Act ("TMA"), an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services from those of other traders.

Similar to descriptive words, which are usually found to lack distinctiveness as they are not inherently capable of distinguishing the goods or services of one trader, shapes that are purely functional may also be challenged for lacking distinctiveness, as other traders may use similar shapes for similar goods. Careful consideration of a shape's functionality and distinctiveness is therefore required when considering whether to apply for a shape trade mark.

In Koninklijke v Cantarella, Wheelahan J stated that "there must be something 'extra' about the shape of the container to render it inherently adapted to distinguish". Based on evidence from industrial design experts, his Honour considered that the Shape Mark was primarily functional (e.g. cylindrical jar for the ease and cost-effectiveness of labelling, while providing sufficient volume; flat-topped lid for the ease of stacking and transport and appropriately sized opening). Further, to the extent that the Shape Mark was not functional but served aesthetic purposes (e.g. double-tiered lid, and the shoulder of the jar), his Honour formed the view that it drew on "features of the common heritage", which are "not apt to distinguish the goods" of another trader.

However, despite the above, his Honour considered that the Shape Mark had acquired distinctiveness through the Applicant's extensive use before the priority date. This met the requirements under section 41(3) of the TMA. The relevant factors that his Honour took into account included that the Applicant had developed a significant association between their coffee products and the shape of the jar through a significant amount of advertising (discussed below), and that the Applicant was the only user of the Shape Mark for coffee products in Australia for almost 20 years before the priority date of the application. These factors together persuaded his Honour that there was significant use of the Shape Mark as a badge of origin before the priority date.

 

Whether a shape is used "as a trade mark"

The court also looked at whether the shape was used "as a trade mark" – specifically, whether the shape of the Vittoria coffee jar was used as a badge of origin to indicate the source of the goods (noting that "trade mark use" is essential for a finding of trade mark infringement). His Honour's discussion on this issue is also relevant for prospective shape trade mark registrants in understanding whether a shape is registrable as a trade mark.

In determining if a shape is used as a trade mark, his Honour recognised a spectrum of shapes, from those that are "purely functional" to those that are "non-descriptive and non-functional".

In relation to the shape of the Vittoria coffee jar, his Honour concluded that it was not used as a trade mark. Firstly, the shape of the Vittoria coffee jar itself is not "elaborate" or "embellished", but "functional" and "relatively plain", making it less likely that the Vittoria coffee jar, in itself, served to distinguish the goods. Additionally, his Honour also considered how Vittoria coffee jars appeared in advertisements (see examples at paragraphs [462], [464], and [466] of the judgement). Unlike Moccona's coffee advertisements (discussed below), advertisements of Vittoria coffee did not "explicitly draw attention to the shape of the jar", or "expressly ask consumers to use it as a point of distinction from goods of other traders". Rather, the shape of the Vittoria coffee jar was "swamped" at all times by the Vittoria branding on the jar and elsewhere on the advertisement. Given this, his Honour considered that the jar was not functioning as a badge of origin. Lastly, his Honour clarified that "simply displaying a picture of a product in its packaging" does not mean that the shape of the packaging is used as a trade mark, even if the packaging is bigger than the label affixed to it.

In contrast, the Shape Mark was featured prominently in a number of Moccona advertisements before the priority date (see examples at paragraphs [46], [50], [53] and [66] of the judgement). His Honour noted that the Applicant had "singled out" the Moccona jar in the advertisements by featuring the unlabelled Moccona jar, to "emphasise" the shape of the jar "with the objective purpose of using it as a badge of origin". In fact, in one of the advertisements, which is a minute long, the Moccona label or logo did not appear until 50 seconds into the advertisement.

 

Key takeaways for brand owners

Case law around shape trade marks is evolving in Australia. Koninklijke v Cantarella provides useful insight for brand owners seeking to register or enforce shape trade marks. Importantly:

• Functionality matters: A shape that’s purely functional is unlikely to be registrable. To be registrable as a trade mark, the shape must include something distinctive – something “extra” that sets it apart.
• Design with distinction in mind: Aesthetic features should go beyond common design elements used in the industry. The goal is to create a shape that consumers associate with your brand.
• Use the shape strategically: Advertising plays a key role in building distinctiveness. Consider showcasing the shape prominently (without labels) and encouraging consumers to recognise it as a brand identifier.
• Document your design process: Keep records of how and why your product was developed. This can help defend against claims of imitation and may also support your case for distinctiveness.