Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 92 IPR 222, Full Court of the Federal Court of Australia, 5 August 2011
Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jpr206, first published online: January 22, 2012
In what has been described by Bodum's lawyers as a landmark legal battle that is possibly the first of its kind in Australia, the Full Court of the Federal Court of Australia has found in favour of the Danish designer and manufacturer of coffee plungers, protecting the distinctive shape and features of its Chambord plunger from imitation, in the absence of design or trade mark registration.
The tort of passing off and the related statutory cause of action for misleading and deceptive conduct protect the reputation or goodwill embodied in or attached to certain indicia, including trade marks, trade names, the get-up or packaging of goods, or other forms of activity or material used by a trader, which have acquired a secondary meaning as being distinctive of the trader's goods or services. While these complementary causes of action are widely and successfully used as an adjunct to claims for trade mark infringement, in Australia, the majority of recent claims for passing off and misleading and deceptive conduct based on the reputation in a product's get-up alone have failed.
Some of these cases, including the recent Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 decision, failed because the courts found that no secondary reputation subsisted in the features of the product, independent of the trader's distinctive trade mark or other indicia. In other cases, such as 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, the courts held that the respondents had sufficiently distinguished their products from the applicant.
That is not to say that a trader has not successfully protected the get-up of its goods in a claim for passing off and misleading and deceptive conduct. See for example Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354.
Bodum goes further, with the Full Court of the Federal Court of Australia recognizing the applicant's reputation in the get-up of its goods, independent of any proprietary rights in the shape or design of its product. In doing so, this decision has raised a number of questions, particularly as to its significance and interpretation in the future. For example, does the decision have the effect of providing quasi design or trade mark protection for the design or shape of a product via the tort of passing off and the statutory prohibition of misleading and deceptive conduct? Or does the case reflect the proper application of the principles of passing off (and misleading and deceptive conduct) which, according to Deane J in Moorgate Tobacco (1984) 156 CLR 414 at 445, have been adapted over time ‘… to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality, or endorsement which belongs or would belong to goods or services, of, or associated with another or others’.
At first instance, Middleton J dismissed the application (Playcorp Group of Companies Pty Ltd and Another v Peter Bodum A/S and Others (2010) 84 IPR 542). Middleton J accepted that the Bodum brand has a significant reputation in the homeware market, but he did not consider that Bodum had acquired a secondary meaning or reputation in the features of the Chambord plunger. Rather, Middleton J found that the reputation acquired in the Bodum brand was ‘… distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name’. Critical to his reasoning was the fact that
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 … In this sense, Bodum could be said to be ‘a victim of its own success’ [citing Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at 13].Even if Bodum had acquired a secondary reputation, Middleton J remained unsatisfied that DKSH's products were sufficiently similar to give rise to the misrepresentation alleged by Bodum. Thus in applying, the ‘with or without’ test, Middleton J found that the absence of the Bodum name and logo on the Euroline plunger meant that a reasonable consumer would understand that the Euroline was not a Bodum product; accordingly, no reasonable consumer was or would likely be misled or deceived by DKSH's adoption of the features and shape alone of the Chambord plunger. Nor would a case for passing off be made out.
Bodum appealed the decision to the Full Court of the Federal Court, where Greenwood and Tracey JJ (Buchanan J dissenting) overturned the trial judge's decision, allowing the appeal.
On appeal, the majority found that Middleton J had erred in failing to examine the evidence relating to Bodum's secondary reputation in the shape and features of its coffee plunger. Thus, reviewing the evidence which the trial judge failed to consider, the majority found that Bodum enjoyed a substantial reputation in the features and shape of its Chambord plunger, as those features had become distinctive of the product and its maker. Contrary to the argument of the respondent, the Full Court found that ‘[t]he reputation in the features of the Bodum Chambord Coffee Plunger had been reinforced over time by Bodum's use of its trade mark but that use did not diminish the substantial reputation in the aesthetic features of the product itself’.
As to whether DKSH had sufficiently distinguished its goods from Bodum, the Full Court also disagreed with Middleton J. Noting that the question is ultimately a matter of impression, Greenwood J (with whom Tracey J agreed) noted:
… the adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product which for all practical purposes embodies all of the features (that is, copies those features) of the product exhibiting the pronounced and substantial reputation … of the Bodum Chambord Coffee Plunger, is not sufficient to distinguish the rival product from the distinctive product sought to be copied. This is especially so as the rival product and the Bodum product are regularly displayed outside the packaging for each product notwithstanding that it may be that the products are displayed in stand-alone fashion, proximately located to the packaging and in some locations in front of the boxes. It would have been a simple matter for DKSH to mark its name prominently on the box or mark its trade mark and product name prominently on the rival product itself (or at least as prominently as Bodum marks its product) or both. A plainly distinctive differentiating trade mark might also have been selected for use on the box and on the product.The court concluded that members of the relevant class were likely to think that the largely indistinguishable product embodying the Chambord features was the Bodum product, a version of the Bodum product or in some way sponsored or approved by Bodum.
Despite suggestions to the contrary, this decision does not extend the penumbra of the law of passing off and misleading and deceptive conduct into the domain of designs and shape trade marks. In fact, the majority of the Full Court was at pains to emphasize this point at , in clarifying 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.Thus rather than render design and trade mark protection redundant, this decision appears to encourage manufacturers of products with distinctive designs to protect them under the registered design system and possibly register those designs as a shape trade mark, in order to obtain the kind of monopoly protection referred to.
In the absence of registration, the only thing Bodum was entitled to claim, and what the Full Court found, was that DKSH could not adopt the distinctive features of the Chambord coffee plunger without sufficient distinguishing labelling, so as to ensure that no false representation is made to potential purchasers.
As a consequence, nothing in this decision changes the position set out in Interlego AC v Croner Trading Pty Ltd  FCA 624: in the absence of any infringement of a formal IP right, a rival trader may enter the market and copy the product of another and seek to take some of its market share—so long as the rival does not mislead or deceive the public or pretend that its goods are those of another trader. This decision does, however, highlight to rivals the importance of sufficiently distinguishing their goods, something which the courts have long required [Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191].
So while there is no substitute for the protection afforded by the registered design and trade mark system, this decision provides another avenue of protection for traders against rivals with products using similar designs. A manufacturer will only succeed if it has acquired a secondary reputation in the design and the rival has failed to sufficiently distinguish their products.