Brand Extension
123 Bodum has previously undertaken brand extension or licensing type activities in conjunction with third party retailers of coffee products and coffee related accessories - specifically, Bodum's global arrangements with Starbucks International and with Gloria Jeans outlets throughout Australia.
124 Mr Jorgen Bodum gave evidence that he first approached the Chairman of Starbucks in the late 1980's with regard to the sale of Bodum coffee plungers in Starbucks stores worldwide. Since that time, wherever a Starbucks store is opened, Bodum coffee plungers have been offered for sale, with some several million Bodum coffee plungers having been supplied around the world, including Australia. Sale commenced in Australian Starbucks at least from 30 July 2004, and up until 2008, there were 85 Starbucks cafes in Australia. The plungers produced for Starbucks were the original Bodum Chambord Coffee Plunger and a special Bodum design for Starbucks.
125 The Bodum coffee plungers sold in Starbucks featured both Bodum and Starbucks branding and trade marks.
126 Bodum also developed such a relationship with Gloria Jeans cafes, whereby Bodum coffee plungers were sold in Gloria Jeans outlets throughout Australia. The evidence of Mr Perez was that the plungers produced for Gloria Jeans were the standard Bodum Chambord Coffee Plunger, with a sticker that read to the effect 'produced for Gloria Jeans' or 'Gloria Jeans by Bodum'.
127 In terms of sales figures, Mr Perez deposed that some 5,526 Bodum Chambord Coffee Plungers were sold to Gloria Jeans in Australia from 17 July 2003 to 26 September 2005.
128 From this evidence led by Bodum it is fair to say that when Bodum sold coffee plungers under licence or in connection with another brand, the product and packaging was co-branded. This is an important element to bear in mind when considering the absence of co-branding from the accused products or packaging.
129 Bodum also led evidence from Mr Perez regarding its own brand extension practises and he was cross-examined about Bodum's range. Mr Caruana also gave evidence about consumer's awareness of this practice.
130 Mr Bodum gave evidence that over the years Bodum's designers had created various products which extended the features in the Chambord Coffee Plunger range to other products such as coffee mugs, sugar bowls and creamers. These products have been sold in Australia since approximately 1988 in reasonable quantities. In addition, Bodum had a number of products which have similar features to the Chambord such as the Melior, Java, Jesper and Bean, examples of which appear in Bodum catalogues and advertising.
131 Bodum has used, and continues to use, the Chambord name on not just the Bodum Chambord Coffee Plunger but on an extensive range of products, including teapots, woks, milk frothers, frying pans, coffee and tea glasses, kettles and kitchen scales. Indeed, Mr Perez gave evidence that Bodum uses the name 'Chambord' to distinguish the Bodum Chambord Coffee Plunger not only from other coffee plungers in its own range, but also to distinguish the Bodum Chambord Coffee Plunger from the products of its competitors.
132 The central thrust of this evidence was to support the view of Bodum's secondary meaning submission, such that, it was conceivable that consumers would draw a link between Baccarat and Euroline as sub-brands, or products made under licence, of Bodum.
133 Bodum's secondary meaning claim is best illustrated from its written closing submissions.
102 The Bodum advertising material places greater stress on the Bodum mark. The principal effect of this is to strengthen the secondary meaning: the products shown are connected with Bodum. Bodum does accept that, the awareness of the Bodum mark and the significance that consumers might give to its absence will also fall in a spectrum of responses. This will depend on consumers' familiarity with the mark, the extent to which they look for or notice marks, and so on.
103 There will be a range of circumstances of sale. A common one is when a Bodum Chambord (or Assam Teapot) is displayed in front of its box while beside it or on the next shelf, there is a Baccarat Venice plunger or Devon tea pot. There are numerous examples of this … .
104 In such a case, the question is whether the consumer will (to the extent they place significance on the brand) think that the absence of Bodum and presence of Baccarat means, different source, no association. The answer, Bodum submits, is that some consumers will think this, but some will think that Baccarat is a sub-brand, somehow related to Bodum, and that the Venice or Devon product is a new product that is part of the Bodum range, or is licensed by Bodum.
134 Bodum suggested the following critical facts supported this submission:
(a) Baccarat in fact began life as a sub-brand.
(b) Baccarat was acquired by Playcorp in June 2007, so by February 2008 there was very little association between Baccarat and Playcorp.
(c) Baccarat is not a mark which is sufficiently distinctive of Playcorp so as to indicate anything other than a vaguely European or classy connotation - a connotation that will not dispel connection with Bodum. The advertising extolled a French sounding pronunciation, 'ooh ah Baccarat'.
(d) There is in fact an upmarket crystal glass brand called Baccarat.
(e) Some consumers think that the Baccarat brand produces inferior copies of more premium brands.
(f) Notably, at 'House' stores (which have been owned by the Playcorp group of companies since approximately 2007 or franchised by them) coffee plungers have been mostly displayed outside of their boxes. Sometimes the boxes for the products have been on display on the shelves. However, there are many examples of various coffee plungers and the boxes of different brands of coffee plungers being displayed next to one another and other examples of coffee plungers displayed in front of the wrong box.
(g) Examples of different brands of coffee plungers being mixed up on shelves were shown in an exhibit demonstrating that on the one shelf from left to right an HWI Baccarat Plunger, two Baccarat Venice Coffee Plungers, a Baccarat Roma Plunger, a Euroline Coffee Plunger, a Baccarat Venice Coffee Plunger, a Baccarat Roma Coffee Plunger and Euroline Coffee Plunger.
135 I do not consider these matters support Bodum's submissions. The fact stated in (a) that Baccarat began its life as a sub-brand is not information that a consumer would be armed with in purchasing the competing product. If a consumer held such detailed knowledge, then I would expect that consumer to be well informed about all brands, sub-brands and strategic licensing arrangements as to never be misled.
136 Again, fact (b) provides no support for the submission. Consumers would probably be unfamiliar with Playcorp and the Baccarat brand, due to Playcorp's limited advertising. Otherwise, the fact is irrelevant to the association sought to be contended for by Bodum.
137 Similarly, fact (c) is of little assistance to Bodum. It is clear that Baccarat is a mark in its own right. Just as it is not 'distinctive' of Playcorp, I find no suggestion from the product or its packaging that it is somehow distinctive of Bodum and its coffee plunger line. While the name Baccarat may seem 'vaguely European' or possess a 'classy connotation', it is not something I would consider as being linked with the brand of Bodum.
138 In fact, I find support for this observation from fact (d) that there is already a well established upmarket crystal glass brand called Baccarat. If that is so, then I would expect a consumer would more quickly tie an association with that brand before Bodum. Fact (e) supports the view that consumers are aware of look-alikes, and that consumers are aware of copying more premium brands, and that the source of this copying is not the lead or premium brand itself.
139 Facts (f) and (g) do not support the submission even if true. My own impression on the evidence is that the coffee plungers, even if displayed outside their packaging, were in most cases displayed in front of the relevant packaging or easily and readily associated with the relevant packaging.
140 I do not accept that consumers will take the view that the Baccarat brand is a sub-brand somehow connected to Bodum.
141 As already shown, when Bodum undertakes a licensing or line extension, it does so by appropriately branding its goods. On each occasion of brand extension or licensing, Bodum has been diligent in branding its products with its insignia, its logo, and similar cues, like the use of the word Chambord in relation to other kitchenware.
142 Bodum carefully and universally employs the Bodum name and logo - and it is this the consumer looks for and expects when seeking to purchase a Bodum product.
143 I should indicate that whilst in the course of submissions and in these reasons, reference has been made to 'Bodum', it is clear that the consumer does not necessarily need to be misled by reference to this name. If the consumer is misled as to the particular origin of the accused products, even though not aware of 'Bodum' by name, this will be sufficient for establishing passing off or misleading and deceptive conduct. In other words, a person can for example pass off his goods as the goods of another if that person passes them off to consumers who will accept them as the manufacture of another, even though the consumer will not know that other by name or description.
144 However, it is convenient to make reference to 'Bodum' in this context, as long as it is to be recalled that the wrongful conduct will arise if the mistaken belief of the consumer is that they are looking at products of a particular origin, not necessarily knowing of Bodum by name or description.