Aussie lawyers predict Pepsi v. Coke 'contour bottle' shape scrap will continue
Coke’s action arose out of the release from Pepsi of the glass ‘Carolina Bottle’, which Coke said infringed the rights and reputation of its own bottle or its outline or silhouette.
Coca-Cola has been sold in variety of different shaped Contour Bottles in Australia since 1937; the release of Pepsi’s Carolina Bottle in August 2007 (the two bottles are pictured above, in an image supplied by the court) led to Coke initiating action for declarations, injunctions, damages and other relief in October 2010.
The Australian case is not unique – Coke has had similar claims against Pepsi dismissed in New Zealand (Coca-Cola Co v Frucor Soft Drinks Ltd. 2013) and Germany (LG Hamburg 315 O 310/11), with both those decisions now subject to appeal.
Coke claimed that the Carolina Bottle infringed four of its Australian registered trademarks for Contour under the nation’s Trade Marks Act 1995, and that Pepsi had engaged in misleading or deceptive conduct and committed the tort (crime) of ‘passing off’.
Coke’s trademark infringement case rested on the fact that Pepsi used the outline or silhouette of the Carolina bottle as a trademark, as well as the whole bottle shape.
In addition, Coke alleged that Pepsi had engaged in misleading and deceptive conduct – since Coke’s business and goods rely on Australian consumer knowledge of the Contour Bottle and Coke marks.
Members of public in Australia expect to be dealing with Coke or its associates when offered Pepsi beverages for sale in the Carolina bottle, Coke claimed, while also accusing Pepsi of ‘passing off’ Pepsi in such bottles as products of, or licensed by Coke.
Rejecting all of Coke’s claims in November 2014, Justice Besanko concluded that Pepsi was using the Carolina Bottle as a trademark (since consumers would recognise it as distinctive) but dismissed Coke’s claim that the outline or silhouette of the bottle was an additional, separate trademark.
Coke had claimed that Carolina’s ‘low waisted shape’ was its most significant design aspect, and that only the bottle’s outline or silhouette would be “readily observable and eye-catching, relative to other aspects of the shape of the bottle”, in a cooler or refrigerator.
Justice Besanko disagreed and held that the overall bottle shape was the trade mark – with the silhouette and outline simply part of the overall shape.
On the deceptive similarity question, Besanko said the Carolina bottle was not deceptively similar to Coca-Cola’s essential trademarks, rejecting Coke’s argument that its low-waisted contoured shape was the essential or dominant feature of its trademarks. It was one of many features, he said.
Despite broad similarities between the two bottles, Besanko added, unique features made each distinct – the fluting and belt band of Coca-Cola’s marks, for instance, and Pepsi’s horizontal waves.
Dismissing Coke’s ‘passing off’ claim Besanko said that ordinary consumers would clearly detect the difference between the two bottles, accepting expert evidence that branding (i.e. ‘Coca-Cola’ and ‘Pepsi’) was the ‘most valid clue’ for consumers when selecting cola products.
Reflecting on the case, Minter Ellison, Rahul Bhattarcharya and Alexander Horton from Sydney-based MinterEllison Lawyers said: “The decision is a reminder that despite what a manufacturer considers to be distinctive about its products, distinctiveness must be assessed by reference to the audience or consumer. Usually this will be a significantly higher threshold.
“For the time being, it seems that tensions between the two cola giants will continue to bubble under the surface. Watch this space for news of an appeal,” they added.
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