The Federal Court has rejected claims by global coffee company Koninklijke Douwe Egberts BV (KDE) that Australian coffee brand Vittoria was passing off its Vittoria-branded freeze-dried coffee as KDE’s Moccona brand by packaging the product in a plastic jar. glass.

KDE and its Australian subsidiary, Jacobs Douwe Egberts AU (JDE), launched legal action in May 2023, alleging that Australian coffee company Cantarella Bros engaged in misleading and deceptive conduct by packaging its freeze-dried Vittoria coffee in glass jars because customers might confuse the Vittoria pot with its Moccona pot.

Judge Michael Wheelahan said he could not conclude that Cantarella was “deliberately attempting to mislead consumers, or that it considered its pot shape to be likely to deceive or confuse”.

“The evidence shows that Cantarella was fully aware of Moccona’s presence in the freeze-dried coffee market and was seeking to enter that market with its own product. But for the reasons explained in the confidential annex, the final shape of the Cantarella pot was not developed with the aim of imitating the shape of the Moccona pot, nor of misleading consumers, but was largely the result of the functional considerations mentioned. in the annex,” Wheelahan said.

KDE is part of the multinational company JDE Peet’s, which is part of JAB Holding Company Sàrl. JDE Peet’s has a portfolio of more than 50 brands, including coffee brands Moccona, L’Or, Campos, Harris, Sacred Grounds and Piazza Doro Espresso, as well as tea brand Pickwicks.

Cantarella Bros’ Vittoria Coffee brand is an Australian family business that began in 1947. Since 1958, it has been roasting and supplying 100% Arabica coffee beans under the Vittoria brand. In 2021, Vittoria launched a 100 gram instant freeze-dried coffee in four blends. The following year, she threw the 400 gram jar at the center of the trial.

Finding the right pot

Judge Wheelahan said: “The evidence reveals that Cantarella wanted to enter the instant coffee market using its Vittoria brand, believing that the Vittoria market could be profitable and knowing that Moccona was a major brand in that market. He also reveals that Cantarella considered a range of packaging formats. Cantarella evaluated these formats based on various criteria, including the extent to which they were perceived as “premium.”

“Cantarella wanted to compete with the Moccona brand and launch a product that could be sold in supermarkets as widely as Moccona instant coffee. Cantarella also wanted to occupy a privileged position similar to that of Moccona in the instant coffee market. However, Cantarella chose a pot offered by a supplier as a starting point. As events progressed, this pot had to be modified to meet Cantarella’s requirements. One of the requirements was that it be large enough to hold 400 grams of coffee. Another problem was the height of the shelves. Together, these requirements led to an increase in diameter and a reduction in height.

Wheelahan said the Moccona pot had a “fairly stocky body that sits under a slowly sloping shoulder and a high lid.” About a third of the total height of the pot extended from the slope of the shoulder to the top of the lid. The shape and neck were also notable in terms of orientation, as was the thick ring around the opening of the pot, and the shape and height of the lid.

“These three characteristics are essential to the imperfect memory that the theoretical buyer would have. The fictional buyer would remember the shape of the KDE brand as a cylindrical body with, roughly in its upper third, a shoulder that slopes down to a thick neck ring topped with a two-tiered lid.

“There is no real risk that this theoretical buyer will think twice before concluding that there is no necessary commercial link between the coffee sold in the form of the Cantarella pot and the coffee sold under the KDE brand.

“The body of the Cantarella pot shape extends much further before the shoulder moves away. In terms of its proportions, this gives the appearance of a pot body that is much taller in relation to the width of the pot.

“Secondly, the consumer would notice that the shoulder is quite rounded and takes up very little height from the overall shape.

“Finally, the consumer will notice that the lid of the Cantarella pot shape appears, when the pot is closed, as a single disc wider than the neck of the pot. There is thus a distinct and perceptible seam between the neck of the pot and its lid.

“Given these key features of an otherwise fairly simple form, the fictional purchaser would be left with a strikingly different impression from the effect produced by the KDE form brand. The buyer would consider the Cantarella pot shape to be noticeably taller in its proportions, with a compressed neck section and a simple, low lid.

“Even with the imperfect recollection described above, there is no real risk that a buyer could confuse the shape of the Cantarella pot, given its distinct visual impression, with the KDE shape mark,” said the Judge Wheelahan.

Question of misleading similarity

The judge rejected KDE’s argument that, given the shape of the Moccona mark – a “simple and ordinary pot” – it was sufficient to have the shape of the Cantarella pot – a cylindrical pot with a flat cap lid – to establish a deceptive similarity.

When Justice Wheelahan asked KDE’s lead counsel whether the result of her arguments was that she had succeeded in registering “a round pot or container for coffee, without any distinguishing features, as a trademark”, the The lawyer responded that this was the case and that this reflected the “exceptional” nature of trademark law.

Justice Wheelahan said the question was whether a fictitious purchaser would entertain a “reasonable doubt as to the commercial source of the coffee sold in Cantarella pot form”.

“Whether an officer of IP Australia considered that the registered mark was inherently suitable to distinguish does not shed light on this issue. Such an agent is not the fictitious buyer, does not necessarily share the knowledge of the fictitious buyer and does not make the required comparison between the registered mark and an allegedly infringing mark,” it said.

He said KDE’s claim that its shape mark had no distinguishing features meant that any container shape used for instant coffee would be “deceptively similar”.

Justice Wheelahan noted that if a container does not have distinguishing characteristics, it is difficult to see what the consumer can rely on to determine whether another container is “like” or “similar”, rather than “different”. or “different” from it. . And if a trademark is registered, the owner benefits from broader protection, so in this case, “virtually any container could be confused with it.”

“There is, to say the least, something of a tension between the claim that the KDE-shaped mark had acquired distinctive character in fact and the claim that the KDE-shaped mark has no distinctive features that a consumer could use to distinguish it from other coffee containers. “, he said.

JDE said it was reviewing the decision.

Vittoria Coffee CEO Les Schirato said the company was “very pleased” with the ruling.

“We won against the largest coffee company in the world, Douwe Egberts, which owns many brands such as Moccona, Campos, L’Or, Harris and Sacred Grounds. Their complaints against us for deception, misleading and deceptive conduct and trademark infringement were all dismissed by His Honor.

“Vittoria Coffee is an Australian family business and a leading brand in the pure coffee market. This legal action cost our company a significant amount in legal fees and very few family-owned coffee businesses could have afforded such litigation.

“Vittoria’s 400g freeze-dried instant coffee pot offers fair competition in a 400g market segment that has been dominated by Douwe Egberts for many years. More competition can only mean better deals for Australian consumers.

“Vittoria would never want to try to pass off Moccona’s instant coffee reputation,” Schirato said.

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (2024) FCA 1277 (November 7, 2024)