Issue (1) - Consideration: Use of the KDE shape mark as a trade mark
277 The question whether a mark is inherently adapted to distinguish does not permit consideration of actual use of the mark. However, for the purposes of s 41(3) of the Trade Marks Act, consideration is to be given to actual use prior to the filing date. The s 41(3) inquiry involves questions of degree.
278 The heading to s 17 of the Act poses the rhetorical question, "What is a trade mark?" -
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
279 Section 6(1) of the Act defines "sign" inclusively -
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
280 Two things may be noted about the definition of "sign". The first is that a sign includes a shape. The second is that a sign may include any combination of the elements referred to. The background to the introduction of shape marks in the 1995 Act has been referred to in other authorities: Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [1999] FCA 816; 91 FCR 167 at [17]-[27] (Lehane J); Kenman Kandy at [42]-[44] (French J), [61] (Lindgren J), [141] (Stone J).
281 The registered KDE shape mark is the three-dimensional shape of a container that is depicted in the five line drawings on the Register. As I have noted, the materials from which the container is made form no part of the mark, nor does the colour, nor does the size. It is the shape of the container alone that has been registered. The mark contains the following endorsements -
Evidence provided under subsection 41(3).
Shape - The trade mark consists of the three-dimensional shape of a container as shown in the representations attached to the application form.
282 The requirement in s 17 that a trade mark "distinguish" goods directs attention to the purpose of the mark. The function of a trade mark is to indicate the origin of goods to which the mark is applied. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are thus the essential characteristics of a trade mark: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 (E & J Gallo) at [42] (French CJ, Gummow, Crennan and Bell JJ).
283 Use "as a trade mark" is use as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186 (Self Care) at [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); E & J Gallo at [43]. The question of use of a sign as a trade mark is assessed objectively and by reference to context: Self Care at [24]. A sign may have a dual function of being descriptive of goods as well as being a badge of origin: Self Care at [25]; RB (Hygiene Home) at [93] (Nicholas, Burley and Hespe JJ).
284 In Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312 (Mayne), Greenwood J at [62] observed that, as with words that are merely descriptive of goods, "[w]here the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark". On the other hand, in Remington at [12] Burchett J gave as an example of a mark that is added so as to be something distinct from the goods liquid sold in a container "so formed as to constitute at once both container and mark". Likewise, in PepsiCo, Besanko J at [200] remarked that the fact that a bottle performs the function of a container in which otherwise formless goods are held "does not, of itself, mean that the shape of the bottle cannot operate as a trade mark". Besanko J further stated that "the fact that the shape of a bottle includes a decorative element does not mean the shape may not be used as a trade mark", citing Adidas, where one of the questions was whether stripes on sports shoes having a decorative element might also be used as a trade mark.
285 In Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161 (Global Brand), which concerned the use of the sole patterns of shoes as trade marks, Sundberg J at [61] referred to the authorities, including the Full Court's decision in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 (All-Fect), and helpfully summarised the principles in relation to the use of a shape as a trade mark as follows -
(a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is "extra" and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137].
(b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].
(c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]-[62].
(d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].
(e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].
(f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].
(g) Context "is all important" and will typically characterise the mark's use as either trade mark use or not: Remington at [19] and Mayne at [60]-[62].
286 Sundberg J then stated -
[62] As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.
[63] At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.
[64] Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.
287 This summary was referred to with approval by Besanko J in PepsiCo at [201].
288 It has been recognised that goods may be sold in a container so formed as to constitute at once both container and mark: Remington at [12] (Burchett J). However, it does not follow that consistent use of a container will constitute the use of its shape as a mark. More is required, in that the shape of the container must be used to distinguish the goods from those of other traders.
289 A trader may use concurrently more than one sign as a trade mark in relation to goods. Where more than one sign is used in combination, the dominance of one sign may affect the assessment of the effect of the others, but does not mean that the other signs cannot also act to distinguish the goods: Self Care at [25], citing Anheuser-Busch at [191] (Allsop J). Thus, the dominance of one sign may have the effect that other features are not, on an objective assessment, used to indicate origin. In the present case, one of the issues that arises is whether there was a dominant use of the "MOCCONA" logo on the applicants' jars such that the shape of the jar was not used as a trade mark to distinguish the goods.
290 In considering the question of use, it is to be borne in mind that mere use is not the same as use as a trade mark. To adapt the analysis of Jacob J in British Sugar at 302, one must be careful before concluding that mere use, however substantial, of a functional container denotes the mark of a particular trader, particularly when it is used in conjunction with another sign that is obviously a trade mark. At least to some extent, that is the position here. The evidence showed that the KDE shape mark was commonly used in conjunction with the registered word mark, "MOCCONA", and its logo. In the television and YouTube advertising showing jars without labels, the Moccona name appeared visually, audibly or both at some point during the advertisements. On the other hand, the fact that the registered word mark "MOCCONA" and its logo was used as a mark on the jars and in advertising does not preclude the possibility that the KDE shape mark was also used as a mark, even if it was not the dominant mark. Any dominance of the "MOCCONA" word mark is relevant to the question of degree whether the KDE shape mark was used to distinguish the goods.
291 The ultimate question is whether, as Kitto J put it in Clark Equipment at 515, the applicants' use of the KDE shape mark as a trade mark means that the KDE shape mark "has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification".
292 I do not accept Cantarella's claim that the KDE shape mark did not acquire, in relation to coffee and instant coffee, a distinctiveness in fact in this sense prior to the priority date. My reasons are as follows.
293 First, the coffee products that were depicted in evidence before the Court came in a range of containers. These containers ranged from those of the most plain variety, namely tins of International Roast, Bushells, and Nescafé Blend 43. There were also jars of coffee with plastic lids having a plain appearance. There were other jars of coffee with more ornate, distinctive shapes, namely the jars of Robert Timms and Nescafé Blend 43. Amongst all the containers of coffee, the Moccona jars using the KDE shape mark are aesthetically distinct. As I have alluded to, the most notable characteristics are at the upper level of the sealed jar, involving the combination of the shoulder, the opening of the jar, and the stopper lid, which are depicted in the visual representation of the shape recorded on the Register.
294 Secondly, the 1981 Andronicus advertisement is relevant to the question whether the KDE shape mark in fact operated to mark out the coffee of the applicants from that of other traders. I have described that advertisement at [131]-[138] above. Of particular significance is the opening shot -
295 As I have already noted at [138], Lockhart J found at 310 of Stuart Alexander that "people who look at the television commercial would associate the first jar with Moccona instant coffee", based on the evidence of witnesses along with other evidence. As I will explain, I would make the same association on the basis of the evidence in this case of other uses before the priority date. This association may derive, in part, from factors other than the appearance of the jar itself. But the fact that this association is made despite the visually unadorned appearance of the stark, unlabelled jar leads me to accept the applicants' submission that this is an indication that, by as early as 1981, the shape of the Moccona jar was capable of functioning as a signal of the trade origin of Moccona coffee.
296 It is important to clarify that I do not attribute weight to this evidence on the footing that it represents relevant use of a jar in the form of the KDE shape mark for the purposes of s 41(3)(b). For one thing, the advertisement in question was in fact produced by a trade competitor of the applicants' corporate group. Moreover, the evidence was that JDE AU came to be responsible for the marketing and distribution of Moccona coffee in Australia in 1992. There was little evidence about which entities would be capable, before this date, of using the mark in the relevant way. The significance that I see in the evidence of events before 1992 goes to the acquired capacity of the KDE shape mark to mark out the trade source of Moccona-branded coffee. This acquired capacity then provides the contextual starting point from which to judge whether use by JDE AU between 1992 and the priority date satisfies the requirements of s 41(3)(b). I will explain later, from [316] onwards, why I consider that JDE AU's use of the KDE shape mark during this time is relevant to this question.
297 Thirdly, there was no evidence that any other trader had used the shape comprising the KDE shape mark in relation to coffee products after its use in relation to the Park Avenue product in the first half of the 1990s. There was, therefore, a period of almost 20 years before the priority date during which it is likely that the applicants were the only users of the shape in Australia in relation to coffee.
298 Fourthly, and in this context, the history of Moccona advertisements before the priority date that feature the KDE shape mark prominently is significant.
299 The "Cinderella" advertisement from 2008 focuses keenly on the shape of the Moccona jar, including its lid. The unlabelled lid of the jar appears several times over the course of the advertisement as the man searches for the "Cinderella" jar into which it fits. Until 50 seconds into the minute-long advertisement, no Moccona label, logo or jar is featured. Now, it is true that a voice says the word "Moccona" towards the very end of the advertisement, that the "Cinderella" jar bears a Moccona label, and that a labelled Moccona jar is featured in the final shot. In my view, however, this does not swamp the significance of the jar itself. The advertisement is premised on the idea that there are many brands of coffee, but that one way of identifying Moccona coffee is to use the lid along with the jar into which it fits. While the Moccona logo and the spoken word "Moccona" are undoubtedly used as trade marks in the advertisement, it is notable that the lid alone is the focus of the majority of the advertisement. Consumers are being asked to consider the lid of the Moccona jar and to conclude that the lid and jar distinguish Moccona coffee from the other brands of coffee featured in the advertisement. This is especially significant considering that the jar is used to distinguish before the word "Moccona" appears or is spoken. This advertisement contributes to my finding that the jar has been used as a trade mark.
300 The "Candles" advertisement from around 2010 also emphasises the shape of the Moccona jar - this time, the body of the jar more than the lid. I cannot view this advertisement simply as suggesting a use for an empty Moccona jar. Rather, the images of the empty Moccona jar (without its lid) on the setts of the street emphasise that viewers should take the shape of the jar as marking out Moccona coffee. Viewed objectively, one of the functions performed by the jar in the "Candles" advertisement is communicating that the shape of the jar marks out Moccona coffee from the coffee of other trade sources. This is so despite the fact that labelled jars of Moccona, as well as the Moccona logo itself, appear elsewhere in the advertisement.
301 The "Keepsakes" advertisement from 2011 emphasises the shape of the Moccona jar yet further. In this advertisement, the body of the jar and the lid are both displayed prominently without a Moccona label. Again, the Moccona label is featured over the course of the advertisement. But one purpose of featuring the unlabelled shape of the jar is to draw attention to the shape of the jar, so as to present the jar to consumers as a means of identifying Moccona coffee. Similar observations can be made about the 2012 version of "Keepsakes".
302 As I understood it, Cantarella also contended that the use of other trade marks in the advertisements, such as the Moccona logo and the word "Moccona", diminished the likelihood of the shape of the jar being regarded as a brand. In this context, Cantarella relied upon the fact that all Moccona jars are sold with a large label affixed to them, featuring the Moccona name and logo, which Cantarella sought to characterise as "dominant". This submission sought to engage with the statement of Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ in Self Care at [25] that "[w]here there are several words or signs used in combination, the existence of a clear dominant 'brand' is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods". The submission also drew on the Court's statement in Self Care at [56], that went to the findings of fact in that case, that -
[o]f particular significance was that the phrase "instant Botox® alternative" appeared alongside two clear badges of origin … This diminishes the likelihood that the phrase "instant Botox® alternative" could be objectively understood to indicate origin in itself. This is because its use was not as dominant as the use of the other signs …
(Emphasis added, citations omitted.)
303 In my view, however this analysis may play out in relation to the jar as it appears on the shelf of a supermarket, it does not advance Cantarella's case in relation to the advertisements. For the reasons I have explained, the jar shape was used as a trade mark in the advertisements to which I have referred above, and the use of the Moccona logo and name were not so dominant as to swamp the prominence of the jar, and its use as a mark.
304 Nor do I consider that other advertisements, which feature Moccona packaging other than the jar itself, gainsay this conclusion. The question is whether the KDE shape mark, in the form of the Moccona jar, had been used as a trade mark before the priority date. If the jar were always shown alongside forms of packaging that were plain and not distinctive, such as tins or soft packs, the submission would have some force. As the facts stand, however, the applicants have singled out the Moccona jar for special attention in their marketing activities. They have done so to emphasise the shape of the jar with the objective purpose of using it as a badge of origin. The fact that, on other occasions, the applicants have not sought to single out the shape of the jar does not rob the shape of the jar of the character of a brand, which it has acquired through the applicants' use.
305 For completeness, I also note that Cantarella did not seek to submit that the shape of the Moccona jar is used in the advertisements as part of a composite mark consisting of the jar shape and the glass material. This would have raised other issues, on which the applicants would, no doubt, have sought to lead evidence and make submissions. I have confined my analysis to the question whether the jar shape was used as a trade mark, irrespective of the material from which it was manufactured.
306 For these reasons, I consider that use of the shape of the Moccona jar as a trade mark before the priority date was so extensive as to eclipse the ordinary signification of that shape in respect of coffee. I have already expressed my conclusion that the KDE shape mark is not, in itself, inherently adapted to distinguish the applicants' coffee from that of other traders. But from when the Andronicus advertisement was broadcast in 1981, the applicants developed a significant association between their coffee products and the jar shape in which those products were sold. In the two decades immediately preceding the priority date, there were no competitors using jars that were apt to detract from the effectiveness of this use as a badge of origin. That provides the context in which the advertisements described above must be understood. Especially by means of those advertisements, which I find to have been extensive given the amount of revenue spent on advertising that was the subject of confidential evidence, the applicants clearly deployed the KDE shape mark as a badge of origin in the last decade before the priority date. In all of the circumstances, I consider that this amounted to such significant use of the KDE shape mark as a badge of origin before the priority date as to satisfy the test of use under s 41(3)(b).