The Federal Court has dismissed claims by global coffee company, Koninklijke Douwe Egberts BV (KDE) that Australian coffee brand, Vittoria, was passing off its freeze-dried Vittoria branded coffee as KDE’s Moccona brand by packaging the product in a glass jar.
KDE and its Australian subsidiary, Jacobs Douwe Egberts AU (JDE), launched legal action in May 2023, alleging Australian coffee company Cantarella Bros was engaging in misleading and deceptive conduct by packaging its freeze-dried Vittoria coffee in glass jars, because customers might mistake the Vittoria jar for its Moccona jar.
Justice Michael Wheelahan said he could not conclude that Cantarella “was deliberately attempting to mislead consumers, or that it considered that its jar shape was likely to deceive or confuse”.
“The evidence shows that Cantarella was well aware of Moccona’s presence in the market for freeze-dried coffee, and that it sought to enter that market with its own product. But for the reasons explained in the confidential annexure, the final shape of the Cantarella jar was not developed for the purpose of emulating the shape of the Moccona jar, or to mislead consumers, but was largely the result of the functional considerations that are referred to in the annexure,” 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 labels Moccona, L’Or, Campos, Harris, Sacred Grounds, and Piazza Doro Espresso, and tea brand Pickwicks.
Cantarella Bros’ Vittoria Coffee brand is an Australian, family-owned business that began in 1947. Since 1958 it has been roasting and supplying 100 per cent Arabica coffee beans under the Vittoria brand. In 2021, Vittoria launched a 100-gram instant freeze-dried coffee in four blends. The following year it launched the 400-gram jar at the centre of the court action.
Finding the right jar
Justice Wheelahan said, “The evidence reveals that Cantarella wished to enter the instant coffee market using its Vittoria brand, believing that the market for Vittoria might be profitable, and knowing that Moccona was a major brand in that market. It also reveals that Cantarella considered a range of packaging formats. Cantarella assessed those formats against various criteria, including the degree to which they were perceived as “premium”.
“Cantarella wished to compete with the Moccona brand, and to launch a product that was capable of being sold in supermarkets just as widely as Moccona instant coffee was sold. Cantarella also wished to occupy a similarly premium position in the instant coffee market to Moccona. However, Cantarella selected as a starting point a jar that was put forward by a supplier. As events transpired, that jar had to be modified to suit Cantarella’s requirements. One requirement was that it was actually large enough to hold 400 grams of coffee. Another was shelf height. In combination, these requirements led to an increase in diameter and a reduction in height.”
Wheelahan said the Moccona jar had a “fairly squat body that sits beneath a slowly sloping shoulder and a tall lid”. About one-third of the jar’s overall height was from the slope of the shoulder to the top of the lid. The shape and the neck were also noticeable in terms of their orientation, as was the thick ring around the opening of the jar, and the shape and height of the lid.
“These three features are essential to the imperfect recollection that the notional buyer would have. The notional buyer would recall the KDE shape mark as a cylindrical body with, in roughly its top third, a shoulder that slopes to a thick neck ring surmounted by a two-tiered lid.
“There is no real risk that this notional buyer would pause for thought before concluding that there is no necessary commercial connection between coffee sold in the Cantarella jar shape and coffee sold in the KDE shape mark.
“The body of the Cantarella jar shape extends far further before the shoulder slopes away. In terms of its proportions, this gives the appearance of a much taller jar body in relation to the width of the jar.
“Secondly, the consumer would notice that the shoulder is quite rounded and takes up very little height in the context of the shape as a whole.
“Finally, the consumer would note that the lid of the Cantarella jar shape appears, when the jar is closed, to be a single disk that is wider than the neck of the jar. There is thus a distinct and noticeable seam between the neck of the jar and its lid.
“Having regard to these key features of an otherwise fairly plain shape, the notional buyer would be left with a strikingly different impression from the effect produced by the KDE shape mark. The buyer would view the Cantarella jar shape as noticeably taller in its proportions, with a compressed neck section, and a plain, low lid.
“Even with the imperfect recollection outlined above, there is no real risk that a buyer could confuse the Cantarella jar shape, in view of its distinct visual impression, with the KDE shape mark,” Justice Wheelahan said.
Question of deceptive similarity
The judge rejected KDE’s submission that because the Moccona shape mark – a “plain, ordinary jar” – it was enough the Cantarella jar shape – a cylindrical jar with a flat-topped stopper lid – for deceptive similarity to be established.
When Justice Wheelahan asked KDE’s senior counsel if the upshot of its submission was that it had managed to have “a round jar or container for coffee, with no distinctive features, registered as a trademark”, counsel responded that was the case and a reflection of the “exceptional” nature of the Trade Marks Act.
Justice Wheelahan said the question was whether a notional buyer, would entertain a “reasonable doubt as to the trade source of coffee sold in the Cantarella jar shape”.
“Whether an officer of IP Australia considered the registered trade mark to be inherently adapted to distinguish does not inform this issue. Such an officer is not the notional buyer, does not necessarily share the notional buyer’s knowledge, and is not conducting the requisite comparison between the registered mark and an allegedly infringing mark,” he said.
He said that KDE’s submission that its shape mark had no particularly distinctive features, meant any container shape used for instant coffee would be “deceptively similar”.
Justice Wheelahan pointed out that if a container had no distinctive features, it’s difficult to see what the consumer can rely on to determine if another container is “like” or “similar” to it, rather than “unlike” or “dissimilar” to it. And if a mark is registered, the owner achieves a wider protection, so in this case, “practically any container could be confused with it”.
“There is, to put it mildly, something of a tension between the claim that the KDE shape mark had acquired distinctiveness in fact and the claim that the KDE shape mark has no distinctive features that a consumer could use to distinguish it from other coffee containers,” he said.
JDE said it is reviewing the decision.
Vittoria Coffee CEO, Les Schirato, said the company was “very happy” with the judgment.
“We were successful against the world’s largest coffee company, Douwe Egberts who own many brands such as Moccona, Campos, L’Or, Harris and Sacred Grounds. Their claims against us for passing off, misleading and deceptive conduct and trade mark infringement were all dismissed by His Honour.
“Vittoria Coffee is an Australian family-owned company and a market leading brand in the pure coffee sector. This legal action cost our company a significant amount in legal fees and very few family-owned coffee companies would have been able to afford such litigation.
“Vittoria’s 400g Freeze Dried Instant Coffee jar provides fair competition in a 400g market segment that had been dominated by Douwe Egberts for many years. More competition can only mean better deals for Australian consumers.
"The issue of trying to pass off on Moccona’s instant coffee reputation is not something Vittoria would ever want,” Schirato said.
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 (7 November 2024)
