CLASS 99
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THURSDAY, 18 AUGUST 2011
A clear case of coffeeright infringement?
Bodum have succeeded in enforcing their trade dress rights in their classic Chambord cafetiere on appeal in Australia (Bodum v DKSH Australia Pty Limited [2011] FCAFC 98).
This marks the high point in what has been, to date, a chequered path. "French press" type coffee makers date back at least to 1928 (see GB 308993 for example), but in recent decades, Bodum and associated companies Pi-Design and Etabs Martin SA have led the field, in constant competition with competitors such as Household Articles (familiar to UK readers as a result of Bodum's unsuccessful attack on their UK design in Bodum (UK) Limited v. Household Articles Limited [1998] EWHC Patents 344).
The Chambord was protected by designs - US Design patent D386,040, GB 2010926 and AU 123181 for example - filed in the mid-1990s (though not, perhaps, that dissimilar to their own earlier designs such as US D342,414 and GB 2053735. As an aside, the Australian registration was as a 'set', with matching mug, the validity of which was approved in a parallel New Zealand case, Pi-Designs AG v The Commissioner of Designs [1997] NZIPODES 2).
However, all good things come to an end, and the designs have in some countries reached the ends of their natural lives (a little earlier than usual in the US, where a terminal disclaimer existed). Bodum attempted to enforce their Australian design against Houseware International (Bodum v Housewares International Limited [2007] FCA 44), but climbed down and surrendered the design when its validity was challenged on the basis of prior use.
Pi-Design attempted to register the design as a Community Trade Mark but were refused in Appeal Decision R 452/2001-2 (they seem also to have appealed on to the CFI but dropped that before trial). OHIM conceded that their evidence established distinctiveness in Denmark, their home territory, but were unimpressed by the UK evidence, and nothing else was tendered. The shape marks are registered marks in France (like anything else, of course), but were refused in several other territories including, funnily enough, Denmark. Hence, you may think, all the trade dress action.
Bodum started a bunch of trade dress cases in 2007 in Illinois, of which the Starbucks action (settled in January 2008) got the highest profile.
Their unsuccessful action against La Cafetiere (a company related to Household) was reported as Bodum USA, Inc. v. La Cafetière, Inc 621 F.3d 624 (2010), but although it contains plenty of interesting background, it appears to have been primarily a contract issue.
That takes us to the recent Australian cases claiming passing off and breach of ss 52 and 53 of the Trade Practices Act 1974. There, Bodum were refused at first instance (Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23) for reasons fairly clearly set out at para 82:
"I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger or in the Bodum Assam Teapot features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features or in the naked Teapot features (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products in any of the proceedings in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum. In the case of the Venice Coffee Plunger I do not even consider the product alone (even if not associated with its packaging) is sufficiently similar to give rise to the misrepresentation alleged by Bodum."
What changed on appeal? Whereas the first instance judgment focussed on the presence of Bodum's own mark, the majority on appeal focussed on 'the absence of something about the rival product (having regard to the relevant differentiation factors) which tells them that – “You are not looking at a Bodum Chambord Coffee Plunger here”.'. Thus, 'The real question to be determined in the proceeding is whether DKSH has done enough having regard to all the relevant differentiation factors to distinguish its rival product from the Bodum product.' It had not, in the view of the majority. They also found some evidence that Bodum's product had acquired a secondary meaning, from articles in journals and elsewhere.
This is clearly a case close to the line - essentially a design classic, for which the design system is the natural habitat. Have Bodum now obtained a perpetual monopoly in the shape - or only imposed a duty on competitors to adopt their own branding? Should it be relevant that the product was under design protection in the recent past, or is it reasonable to move seamlessly from design protection to passing off protection provided there is sufficient reputation? If the shape can be protected by passing off, can it now be registered as a trade mark? And will the same results obtain beyond the IP-friendly shores of Australia? Posted by: David Musker @ 15.08
Tags: australia, bodum, cafetiere, coffee maker, passing-off,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA271
A clear case of coffeeright infringement?
This marks the high point in what has been, to date, a chequered path. "French press" type coffee makers date back at least to 1928 (see GB 308993 for example), but in recent decades, Bodum and associated companies Pi-Design and Etabs Martin SA have led the field, in constant competition with competitors such as Household Articles (familiar to UK readers as a result of Bodum's unsuccessful attack on their UK design in Bodum (UK) Limited v. Household Articles Limited [1998] EWHC Patents 344).
The Chambord was protected by designs - US Design patent D386,040, GB 2010926 and AU 123181 for example - filed in the mid-1990s (though not, perhaps, that dissimilar to their own earlier designs such as US D342,414 and GB 2053735. As an aside, the Australian registration was as a 'set', with matching mug, the validity of which was approved in a parallel New Zealand case, Pi-Designs AG v The Commissioner of Designs [1997] NZIPODES 2).
However, all good things come to an end, and the designs have in some countries reached the ends of their natural lives (a little earlier than usual in the US, where a terminal disclaimer existed). Bodum attempted to enforce their Australian design against Houseware International (Bodum v Housewares International Limited [2007] FCA 44), but climbed down and surrendered the design when its validity was challenged on the basis of prior use.
Pi-Design attempted to register the design as a Community Trade Mark but were refused in Appeal Decision R 452/2001-2 (they seem also to have appealed on to the CFI but dropped that before trial). OHIM conceded that their evidence established distinctiveness in Denmark, their home territory, but were unimpressed by the UK evidence, and nothing else was tendered. The shape marks are registered marks in France (like anything else, of course), but were refused in several other territories including, funnily enough, Denmark. Hence, you may think, all the trade dress action.
Bodum started a bunch of trade dress cases in 2007 in Illinois, of which the Starbucks action (settled in January 2008) got the highest profile.
Their unsuccessful action against La Cafetiere (a company related to Household) was reported as Bodum USA, Inc. v. La Cafetière, Inc 621 F.3d 624 (2010), but although it contains plenty of interesting background, it appears to have been primarily a contract issue.
That takes us to the recent Australian cases claiming passing off and breach of ss 52 and 53 of the Trade Practices Act 1974. There, Bodum were refused at first instance (Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23) for reasons fairly clearly set out at para 82:
"I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger or in the Bodum Assam Teapot features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features or in the naked Teapot features (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products in any of the proceedings in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum. In the case of the Venice Coffee Plunger I do not even consider the product alone (even if not associated with its packaging) is sufficiently similar to give rise to the misrepresentation alleged by Bodum."
What changed on appeal? Whereas the first instance judgment focussed on the presence of Bodum's own mark, the majority on appeal focussed on 'the absence of something about the rival product (having regard to the relevant differentiation factors) which tells them that – “You are not looking at a Bodum Chambord Coffee Plunger here”.'. Thus, 'The real question to be determined in the proceeding is whether DKSH has done enough having regard to all the relevant differentiation factors to distinguish its rival product from the Bodum product.' It had not, in the view of the majority. They also found some evidence that Bodum's product had acquired a secondary meaning, from articles in journals and elsewhere.
This is clearly a case close to the line - essentially a design classic, for which the design system is the natural habitat. Have Bodum now obtained a perpetual monopoly in the shape - or only imposed a duty on competitors to adopt their own branding? Should it be relevant that the product was under design protection in the recent past, or is it reasonable to move seamlessly from design protection to passing off protection provided there is sufficient reputation? If the shape can be protected by passing off, can it now be registered as a trade mark? And will the same results obtain beyond the IP-friendly shores of Australia? Posted by: David Musker @ 15.08
Tags: australia, bodum, cafetiere, coffee maker, passing-off,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA271
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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