TCCC AND THE CONTOUR BOTTLE
25 As I have said, TCCC's case is that it has developed substantial goodwill and reputation in the Contour Bottle in Australia and in the signs which are the trade marks. Furthermore, its case is that, in Australia, its business and goods have become widely and favourably known and identified in the minds of consumers by reference to the Contour Bottle. It adduced evidence, primarily from Ms Davis and Ms Le, to establish a factual basis for those propositions.
26 In 1886, Mr J S Pemberton, a pharmacist, created a syrup beverage in Atlanta in the United States. The name "Coca-Cola" was chosen for the beverage and a Spencerian script adopted for use in advertising of the beverage. In 1892, TCCC was incorporated in Georgia in the United States. In 1916, TCCC adopted the Contour Bottle for its Coca-Cola beverage and, at about that time, it was patented in the United States.
27 From 1916, when TCCC adopted the Contour Bottle as the standard bottle for the Coca-Cola beverage and until 1955, throughout the world the 6½ ounce Contour Bottle was the only container used for the sale of the Coca-Cola beverage. In 1955, TCCC introduced larger sized Contour Bottles for the Coca-Cola beverage. In 1993, TCCC introduced into the market in the United States a 20 ounce PET bottle which was based on the Contour Bottle. PET refers to polyethylene terephthalate, which is a material commonly used for plastic beverage bottles, particularly for carbonated soft drinks.
28 In Australia, the Coca-Cola beverage has been sold in the Contour Bottle since 1937. In late 1937, TCCC commenced small scale bottling of the Coca-Cola beverage in Australia in North Sydney. In 1938, the first Coca-Cola bottling plant was set up in Waterloo in Sydney, where the 6½ ounce Contour Bottle was produced. In 1939, additional bottling operations were set up in South Melbourne, in Brisbane and in Adelaide. A further bottling plant was established in Perth during the Second World War. Over time, TCCC granted franchises in the major capital cities and in Newcastle, New South Wales. From 1963, the Coca-Cola beverage was sold in cans as well as bottles.
29 The Contour Bottle came in various sizes, including the 6½ ounce bottle and a 10 ounce bottle. In the 1970s, a 1 litre bottle was introduced. Other sizes to be produced have included a 237 ml bottle and a 185 ml bottle. For a short time, there was even an aluminium bottle based on the Contour Bottle.
30 The Coca-Cola beverages in the Contour Bottle are currently available in Australia in the following sizes: 175 ml, 250 ml, 330 ml, and 385 ml. Each of these bottles has been in continuous use from at least a date Ms Davis was able to identify by reference to archival material available to her (175 ml since 2006, 250 ml since 2003, 330 ml since 2001, and 385 ml since 2006).
31 In 1983, the Diet Coke beverage, which contains artificial sweeteners rather than sugar, was introduced into Australia. It is also sold in 175 ml, 250 ml, 330 ml, and 385 ml Contour Bottles. In January 2006, the Coke Zero beverage, which is a low kilojoule variety of the Coca-Cola beverage that contains no sugar, was introduced into Australia. It is also sold in 175 ml (2006 - 2009), 250 ml, 330 ml, and 385 ml Contour Bottles.
32 The Coca-Cola beverages in PET bottles, which TCCC claims were based on the Contour Bottle, are sold in Australia in the following sizes: 300 ml, 390 ml, 450 ml, 600 ml, 1.25 litre, 1.5 litre, and 2 litre.
33 The dominant colours of the regular Coca-Cola beverage are red and white, the dominant colours of the Diet Coke beverage are silver and white, and the dominant colours of the Coke Zero beverage are black and white.
34 At the present time, TCCC uses four primary trade marks to promote the Coca-Cola beverages. These are the word marks COCA-COLA and COKE, the Contour Bottle, and a ribbon device displayed on PET bottles and cans containing the Coca-Cola beverages. The Coca-Cola beverages are sold in three principal forms, being the traditional or regular formulation and two lower calorie formulations. The lower calorie formulations are promoted under the trade marks DIET COKE (known as COKE LIGHT in some markets) and COKE ZERO.
35 It is convenient at this point to mention that TCCC's "Brand Identity and Design Standards" set out "Defining Elements" and "Supporting Elements" of the Contour Bottle. There are six Defining Elements and they are as follows:
(1) Contoured Shoulder;
(2) Flutes;
(3) Scalloped Transitions;
(4) Pinch Waist;
(5) Champagne Base; and
(6) Overall Proportions (silhouette) (relationship of elements to each other, from base to pinch waist to label area to shoulder).
36 Ms Davis said, and I accept, that, except for a relatively rare case where the bottle is sold in a plastic sleeve masking those features, the Contour Bottle always has the above features.
37 Between the years 2008 to 2012, approximately 40% of the carbonated soft drink market in Australia was comprised of Coca-Cola beverages and, in the same period, the market share of Pepsi for its cola products (Pepsi and Pepsi Max combined) was between about 10 to 12%.
38 The Coca-Cola beverages in the Contour Bottle have been sold in Australia in significant volumes. The Coca-Cola beverages in the Contour Bottle are sold through a variety of trade channels and Ms Davis provided the following estimates of the percentage of all Contour Bottles sold through each channel: the convenience and petroleum channel (10%), the grocery channel (15%), the immediate consumption channel (35%), and the hotels, restaurants and cafes channel ("HORECA") (30%).
39 I have already referred to the role of CCSP. Coca-Cola Amatil (Aust) Pty Ltd, a subsidiary of Coca-Cola Amatil Limited, is currently the exclusive Australian bottler for TCCC in Australia.
40 From time to time, Coca-Cola Amatil (Aust) Pty Ltd, with the approval of TCCC, produces and sells in Australia what it calls "Limited Edition" or "Commemorative" Contour Bottles. For the 2003 Rugby World Cup, a 330 ml Contour Bottle in limited edition packs was produced and sold. As part of a Christmas 2006 promotion, two 330 ml Contour Bottles in four packs were produced and sold. For the 2008 Rugby League State of Origin Grand Final, two 385 ml Contour Bottles were produced and sold in Queensland and New South Wales exclusively in Caltex stores. Finally, in 2008, and as part of a promotion of the Rugby League team Saint George Illawarra, a special Contour Bottle, available only to consumers who signed up as members of the club in 2008, was produced and sold.
41 Coca-Cola products are heavily advertised in Australia. CCSP and Coca-Cola Amatil (Aust) Pty Ltd work together in formulating these advertising campaigns. CCSP conducts approximately five to six national advertising campaigns each year and each campaign can cost between $3 and $5 million and, on occasions, more than that.
42 These advertising campaigns focus on the Coca-Cola brand and its symbols, which include the Spencerian script, the Contour Bottle, the colour red, and the dynamic ribbon device, and they also focus on an association of the Coca-Cola brand with ideas of good times, happiness, fun, family, and friends.
43 Ms Davis gave evidence of various advertising campaigns which she said were examples of the type of campaigns which had been conducted.
44 In 2005, CCSP conducted an extensive advertising campaign in Australia to launch a new flavour of the Coca-Cola beverage known as "Coke Lime". The campaign included outdoor advertising, television, radio and on-line advertising, as well as prominent in-store point of sale advertising and product placement. A black silhouette of a bottle (among other colours) was used during this campaign. In some of the material, it seems to accord fairly closely with TM 1160894, but in other material it seems to have a different cap shape or, more importantly, a different contour shape.
45 The "Coke Side of Life" campaign was conducted between 2006 and 2008 and the campaign involved outdoor advertising on billboards, on the back of buses, on vending machines, on vehicles, in and around stores, on television, on-line, in magazines, and in cinemas. In addition, there was advertising signage at railway stations. The image of the Contour Bottle was a prominent part of this campaign. I do not need to refer to all of the material produced by Ms Davis. It shows that key features of the Coke Side of Life campaign were the Contour Bottle, the Spencerian script, and the colour red. The expenditure on the campaign was very substantial and, by way of example, Ms Davis said that approximately $3.2 million was spent on advertising in the three month period from January to March 2007.
46 CCSP has conducted other campaigns in Australia of a similar nature to the Coke Side of Life campaign. The Contour Bottle is a prominent feature of the advertising in these campaigns. They include the "Open Happiness" campaign in 2009 and campaigns during Christmas, Easter, the summer holiday period (for example, the "Summer of Us" campaign for the summer of 2007/2008), and the football seasons for the Australian Football League ("AFL") and the National Rugby League ("NRL").
47 Ms Davis accepted that, with some exceptions, it was not until the "Open Summer" campaign in 2009/2010 that a silhouette image of the Contour Bottle appeared without any writing on it or other features. The exceptions were the Coke Lime campaign in 2005, an AFL football shaped as a Contour Bottle in 2005, and cans produced as part of the Summer of Us campaign in early 2008. Ms Davis said that in 2009 there was a directive from the headquarters of TCCC to the effect that the unadorned silhouette was to be emphasised in advertising. The significance of the date upon which the unadorned outline or silhouette of the Contour Bottle was emphasised in advertising will become clear when I come to deal with TCCC's passing off and Trade Practices Act claims.
48 Ms Le provided further evidence of CCSP's approach to the marketing of Coca-Cola beverages. It is very sophisticated. Ms Le said that CCSP divides the path to purchase of a consumer into four zones - the proximity zone, the transition zone, the impulse zone, and the destination zone - and formulates an advertising strategy for each zone. The proximity zone is about 600 m from a retail outlet, and the destination zone is at the primary beverage location within a store and is either a shelf or a refrigerator where the products are available for purchase. Packaging is a key component in TCCC's communication to customers at the destination zone, and, furthermore, distinctive TCCC packaging often appears in the transition zone and the impulse zone so as to "resonate" with products available at the destination zone.
49 Ms Le confirmed Ms Davis' evidence that TCCC uses four primary trade marks to promote the Coca-Cola beverages in Australia (and throughout the world) and they are the word marks COCA-COLA and COKE, the Contour Bottle, and the dynamic ribbon device.
50 Ms Le said, and I accept, that the Contour Bottle, being a glass bottle, is the premium packaging for the Coca-Cola beverages in Australia. That was accepted by all of the witnesses who were asked to comment on the issue.
51 Ms Le gave evidence of the trade channels through which the Coca-Cola beverages, whether in the Contour Bottle or otherwise, are sold. Her categories were the same as Ms Davis, except that she added a fifth category of quick service restaurants. She also referred to a vending channel (i.e., vending machines). She said that examples of the outlets in the convenience and petroleum channel are convenience stores, such as 7-Eleven stores, and petroleum outlets, such as those operated by BP and Shell. Examples of the grocery channel are supermarkets, such as Coles, Woolworths, and independent supermarkets, as well as large retail stores, such as K-Mart and Big W. Examples of the outlets in immediate consumption channel are corner stores and milk bars, fish and chip shops, pizza, and takeaway chicken outlets. She said that the HORECA channel included bistros, coffee shops, hotels, and restaurants, and quick service restaurants included chains such as McDonalds and Hungry Jacks. The Coca-Cola beverages in the Contour Bottle are principally sold through the convenience and petroleum channel, the immediate consumption channel, and the HORECA channel.
52 The Coca-Cola beverages are currently sold in the Contour Bottle in sizes which are designed to be consumed immediately or soon after purchase. Coca-Cola beverages sold in the Contour Bottle are typically refrigerated. They are kept in refrigerators or open air coolers. The refrigerators are enclosed, or at least partly enclosed.
53 Again, like Ms Davis, Ms Le gave evidence of advertising campaigns involving the use of the Contour Bottle as follows: Ruby League State of Origin series between Queensland and New South Wales (mid 2009); "Open Summer" campaign (summer 2009/2010); Easter campaign (Easter 2010); FIFA World Cup (April 2010); and AFL and NRL Final Series (winter/spring 2010).
54 Ms Le described an incident in late 2010 or early 2011 when she saw one of the respondents' products on display in a refrigerator. Initially, she mistakenly believed it was a Coca-Cola beverage in the Contour Bottle until she was close enough to see the blue cap on the bottle. At that point, she realised that it was not a Coca-Cola beverage.
55 The evidence of Ms Davis and Ms Le dealt with two important matters in terms of the issues in this case.
56 The first matter is relevant to the context in which the Contour Bottle is offered for sale and sold. Ms Davis offered some percentage estimates with respect to the trade channels through which the Contour Bottle is sold. The evidence was fairly general and I do not think I can, or indeed need to, make a finding in precise terms. I find that substantial sales of the Contour Bottle are effected in circumstances where a consumer selects the beverage that he or she wants from a refrigerator or open air cooler.
57 The second matter relates to TCCC's advertising of the Contour Bottle and this is relevant to TCCC's reputation in the Contour Bottle. Due to the issues in this case, in examining the evidence of TCCC's advertising, I considered the circumstances in which the whole of the Contour Bottle was shown, including, for example, the vertical fluting, and circumstances where only the outline or silhouette of the Contour Bottle was shown. I also considered the extent to which the Contour Bottle, either its whole shape or only its outline or silhouette, appeared with other signs such as word marks, and the extent to which the Contour Bottle, or only its outline or silhouette, was the prominent feature in the advertisement.
58 Furthermore, in considering this evidence, there is another issue to be borne in mind. There is a dispute between the parties as to the date upon which TCCC's reputation in the Contour Bottle is to be assessed. The respondents submitted that the relevant date is August 2007 and that TCCC's advertising after this date is irrelevant. TCCC submitted that the relevant date is February 2009 and that I can take into account TCCC's advertising up until that date. I deal later in these reasons with the issue of the correct date.
59 The Contour Bottle with all its features, including, for example, the vertical fluting, was featured in TCCC's Australian advertising prior to August 2007, together with the word marks, Spencerian script, and the colour red. Some of the advertising prior to August 2007 involved other signs, but with only the outline or silhouette of the Contour Bottle. Prior to August 2007, the circumstances in which the outline or silhouette of the Contour Bottle dominated the advertising were isolated and fairly rare. The most notable occasion upon which this occurred was the "Coke Lime" campaign in 2005 and, even in the case of that campaign, a somewhat imprecise silhouette of the Contour Bottle was used. Circumstances where only the outline or silhouette of the Contour Bottle was used, such as with the AFL football, were so rare that I do not think that they can form a basis for any conclusion. In 2009, TCCC decided to emphasise the unadorned silhouette in its advertising and issued a directive to that effect. I am not able to detect any significant change in TCCC's advertising between August 2007 and February 2009, and, as I will explain later in these reasons, I do not think TCCC's reputation in the Contour Bottle is any different as between those two dates.
60 Ms Van Ruiten was asked by TCCC to make investigations into single serve non-alcoholic carbonated beverages in Australia. She was instructed to investigate the range of different bottles in which such beverages were packaged and to purchase a broad sample of such products, having particular regard to bottles made from glass and bottles having a waisted or tapered side wall section. She carried out those instructions in February 2013 and purchased 17 bottles (plus the respondents' Pepsi Max beverage), and these 17 bottles were referred to in evidence as the "third party" bottles. Three of these bottles may be described as having waists, although they are different in shape and degree. Those bottles are the Lucozade, Schweppes and PET bottles. However, other than the Schweppes bottle, which was on the market before August 2007, there was no evidence before me as to when the third party bottles first came onto the market.
61 The respondents put in evidence a number of other bottles and I will refer to these as the "additional bottles". All of these additional bottles clearly had waists of one sort or another. However, the evidence went no further than establishing that three of these bottles - a Mount Franklin bottle, a H2Go bottle, and a Mizone bottle - were on the market in August 2007.
62 I think the evidence establishes that, apart from the Contour Bottle, there were at least four, perhaps six, bottles with waists of varying degrees on the Australian market in August 2007. It follows that the fact that the Contour Bottle had a waist was not a unique feature in August 2007. In addition, as the respondents submitted, I think that the fact that the additional bottles have waists illustrates the legitimate desire of manufacturers and traders to use that feature otherwise than as a trade mark in the same way as widespread use of a descriptive word might indicate that it is not being used as a trade mark.
63 Ms Van Ruiten was also instructed to photograph the manner in which single serve non-alcoholic carbonated beverages were displayed for sale in refrigerators within retail outlets such as convenience stores or food service outlets. She carried out her instructions in May 2013 and 26 photographs were tendered in evidence. In a number of cases, the beverages are kept in enclosed refrigerators with glass doors or in open coolers. In other cases, the beverages are displayed on open shelves.
64 Ms Peterson is employed by CCSP as the Business Unit Counsel. She is responsible for overseeing and managing legal issues which arise as a result of the marketing, advertising, and promotion of products by CCSP under the TCCC trade marks in the South Pacific region. CCSP monitors the market in Australia for potential breaches of TCCC's trade mark rights. Employees of both CCSP and Coca-Cola Amatil (Aust) Pty Ltd are given a certain level of training and instruction about TCCC's trade marks. In November 2009, it was brought to Ms Peterson's attention that a Pepsi RAW Bottle might have been displayed for sale in Melbourne. The Pepsi RAW Bottle was a bottle sold in England which was the equivalent of the Carolina Bottle. In January and February 2010, Ms Peterson became aware that the Carolina Bottle was being offered for sale and sold in Australia. TCCC commenced this proceeding on 14 October 2010.