A recent decision in the Full Federal Court has shown that while manufacturers are generally free to make goods according to a design that is not registered, care must be taken to ensure that those products are branded in a way that distinguishes them from the market leader. The court found that DKSH Australia Pty Ltd's sale of a replica of Bodum's Chambord coffee plunger constituted a breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth) (now sections 18 and 29 of the Australian Consumer Law) and passing off — even though the Bodum plunger was not protected by a valid design registration. This was because Bodum had acquired a reputation in the shape and design features of its Chambord coffee plunger, independent of the Bodum name and logo.

Implications of this decision

• Whether conduct is misleading or deceptive is a question of fact determined as a matter of overall impression. Interestingly, Greenwood J was prepared to re-examine the evidence and go behind the trial judge's findings on this issue.
• Businesses that sell look-a-like products must ensure that both the product and its packaging adopt features, such as clear branding, that distinguish it or differentiate it from the original. This is a matter of degree, and the fact that the four Federal Court judges (three on appeal and one at first instance) who reviewed the Euroline product were evenly split on the issue, reveals that the boundaries of lawful and unlawful copying are not clear.
• Creators of products with distinctive designs should still seek to protect them through registered designs and possibly shape trade marks, but this decision provides another, potentially perpetual, avenue of protection.

Background

Bodum had manufactured and sold a coffee plunger with particular design features known as the Chambord plunger since 1958. The product had been widely advertised, enjoyed substantial sales in Australia and acquired a significant reputation in its Bodum brand. The Chambord plunger was not protected by any registered designs. 

DKSH began advertising and selling a look-a-like plunger under the Euroline brand from July 2004. The plunger was sold with no branding on the product itself, though its packaging displayed the ‘Euroline’ name and also featured a large photograph of the Euroline plunger, similar to Bodum's packaging. It was marked as being made in Taiwan. 

The trial judge found that:

• there was no ‘secondary meaning or reputation’ in the shape or features of the Chambord plunger in and of themselves. Any reputation was tied to the Bodum name.
• even though the reasonable consumer viewing the Euroline plunger would inevitably think of the Chambord plunger, the absence of Bodum branding on the Euroline plunger and the presence of the Euroline name on the packaging, would readily lead reasonable consumers to think that it was not a Chambord plunger.
• there was a history of look-a-like products in the market and that Bodum itself had educated its consumers to be aware of copycat products and to look for the original Bodum product.
• consumers are sophisticated enough to appreciate that competing brands with no trade connection offer similar goods, and that similarity can put them on guard to seek out 'original' products.

Bodum contended that its advertising was mainly directed at emphasising the appearance and features of the Chambord plunger, not on educating consumers to look for the Bodum trade mark or logo on the plunger. The Bodum trade mark was used to connect and associate the product with its maker, but did not detract from the separate reputation acquired in the features and shape of the Chambord plunger itself. Bodum drew parallels with Coca-Cola’s reputation in the shape of its bottles noting that the presence of the COCA-COLA trade marks on those bottles did not diminish the secondary reputation in the shape.

Findings of the Full Court

The Full Court confirmed that the design of goods can acquire a reputation independently of the trade names used in connection with the products, citing examples including the Jif Lemon bottle, Red Bull energy drink and Dr. Martens boots.

The majority of the court (Greenwood J, Tracey J agreeing) undertook a detailed review of Bodum advertisements, noting that most presented the plunger in use, without any packaging and that there was a distinct focus on the appearance and features of the product. The court acknowledged that many of the advertisements also featured the Bodum trade mark but that it simply reinforced the link to the particular trader. The secondary reputation in the features and shape was not lost by association with the Bodum name. 

Greenwood J considered that there was nothing to suggest that the features of the Chambord plunger were generic features, as there were many different styles of coffee makers.

As such, consumers viewing a product with the distinctive features of the Chambord plunger were likely to think it was Bodum's Chambord plunger unless labelling or other differentiating factors of the rival product told them otherwise. 

His Honour placed great emphasis on the fact that the Euroline product was not marked with any branding, that the box used a non-distinctive and descriptive trade mark Euroline (to depict a product of ’ European style’), and that the product was regularly displayed outside of the product packaging. The only step taken to distinguish its product from Bodum’s was use of the Euroline name on the box, which was insufficient to differentiate it from Bodum's. 

Greenwood J held that the reasonable or ordinary consumer seeking to purchase a coffee plunger, would consider the Euroline plunger to be the Chambord plunger or that it was sold with the licence, sponsorship or approval of Bodum. This constituted a contravention of sections 52 and 53 of the Trade Practices Act, and passing off causing damage to Bodum’s goodwill and reputation in the Chambord plunger. 

The Court noted that the Trade Practices Act and the tort of passing off does not stop companies from capitalising on and copying an unregistered design of another company's product, so long as they make it clear (through sufficient labelling or marking on the products or associated packaging) that the copy product does not come from the original company or is sold with the authorisation of that company.