FEDERAL COURT OF AUSTRALIA

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277

ORDERS

THE COURT ORDERS THAT:

1.    The applicants’ claims be dismissed.

2.    The cross-claimant’s claims for relief specified in paragraphs 1 to 7 of its amended notice of cross-claim be dismissed.

3.    The question of the parties’ costs of the claim and the cross-claim be reserved until after the hearing and determination of the cross-claimant’s claims for damages and additional damages pursuant to s 129 of the Trade Marks Act 1995 (Cth).

4.    Pursuant to ss 37AF and 37AG(1)(a) of the Federal Court of Australia Act 1976 (Cth), until further order, access to and disclosure (by publication or otherwise) of Confidential Annexure A to the reasons of the Court delivered on 7 November 2024, comprising paragraphs [564]–[603], be restricted to the persons identified below –

(a)    the respondent;

(b)    the legal representatives of the respondent; and

(c)    those persons to whom access is allowed

(i)    under the terms of the confidentiality regime agreed between the parties relating to information claimed to be confidential by the respondent; or

(ii)    by express written permission from the respondent.

5.    If any party wishes to apply for a further non-publication order under s 37AF of the Federal Court of Australia Act in relation to any part of the balance of the reasons for judgment, then that party may do so by emailing the Chambers of the Hon Justice Wheelahan by 12 noon on 8 November 2024 identifying with precision the part or parts of the reasons in respect of which a non-publication order is sought.

6.    Upon receipt of any application in accordance with order 5 above, the Court will consider making an interim order in Chambers under s 37AI of the Act.

7.    The hearing of any application for a further non-publication order is fixed for 15 November 2024 at 9.30 am.

8.    By 4.00 pm on 14 November 2024, the legal practitioners for the parties are to confer in relation to procedural orders for the hearing and determination of the cross-claimant’s claims for damages and the hearing of any further applications for non-publication orders, including the final determination of applications that are the subject of existing interim orders.

9.    The proceeding is listed for further case management on 15 November 2024 at 9.30 am.

10.    Any proposed consent orders are to be emailed to the Chambers of the Hon Justice Wheelahan by 4.00 pm 14 November 2024.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

WHEELAHAN J:

1    This case concerns the shape of a glass jar in which the respondent, Cantarella Bros Pty Ltd (Cantarella), has marketed and sold freeze-dried instant coffee under its “Vittoria” brand. The applicants are associated with a brand of freeze-dried instant coffee, styled “MOCCONA”. The applicants claim that by the use of its glass jar Cantarella has infringed a registered trade mark, engaged in misleading and deceptive conduct, and committed the tort of passing off. Cantarella denies these claims and has cross-claimed seeking orders that the registered trade mark be cancelled and that the Register be rectified accordingly.

Background

Overview of the claims

2    The first applicant, Koninklijke Douwe Egberts BV (KDE), is the registered owner of Australian Trade Mark Registration No 1599824 (KDE shape mark), which is a mark constituted by the shape of a container. The applicants claim that the second applicant, Jacobs Douwe Egberts AU Pty Ltd (JDE AU) is an authorised user of the KDE shape mark in Australia, although this is contentious, and is one of the questions in this proceeding that require resolution.

3    JDE AU sells coffee — predominantly instant coffee — which is available for purchase from retailers throughout Australia under the Moccona name. Moccona-branded coffee products are sold in jars, capsules, soft packs, sticks, sachets, and tins. Below is an example of a Moccona-branded instant coffee product, namely a jar of “Moccona Classic Medium Roast” –

4    The following graphical representation of the KDE shape mark is entered on the Register –

5    The image description entered on the Register for the graphical representation is “CONTAINER, 5 VIEWS”. The Register also records that the kind of mark in question is a shape. KDE obtained registration of its shape mark with effect from 7 January 2014 in relation to “Class 30: Coffee; instant coffee”, with 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.

6    The dimensions of the KDE shape mark form no part of the registered mark. Nor does colour or material. For those reasons, while some of the evidence and submissions in this proceeding concerned 400-gram products contained in transparent glass jars with plastic stoppers bearing labels with gold detailing, it is important to appreciate from the outset that the KDE shape mark comprises only the “three-dimensional shape of a container as shown in the representations” entered on the Register.

7    Cantarella also sells coffee products which are available for purchase in retail stores throughout Australia. One of Cantarella’s major brands is Vittoria. As at May 2023, Vittoria was the highest-selling brand by value in Australia in the bean and ground coffee market, which was recognised in the evidence as being a different market from the instant coffee market.

8    In May 2021, Cantarella launched a 100-gram freeze-dried instant coffee product under the Vittoria brand, in four flavour variants. After being sold initially in Woolworths stores, the Vittoria 100-gram product began to be stocked and sold also in Coles stores from around November 2021. The Vittoria 100-gram product has been sold in a cylindrical glass jar with a gold-coloured plastic lid. Below is an image of the “classic” variant in the 100-gram jar –

9    In August 2022, Cantarella launched a new freeze-dried instant coffee product under the Vittoria brand: a 400-gram product, sold in a cylindrical glass jar with a glass stopper lid. From launch, the Vittoria 400-gram product also came in four flavour variants. A representative image of the “Classic” flavour is below, noting that the applicants’ claims extend also to each of the other three variants about which there was evidence, namely “Italian”, “Mountain Grown”, and “Latte” –

10    By their originating application, the applicants seek relief against Cantarella on three main grounds –

(1)    First, the applicants contend that Cantarella has, within the meaning of s 120 of the Trade Marks Act 1995 (Cth), infringed the registered KDE shape mark.

(2)    Secondly, the applicants allege that Cantarella has contravened ss 18, 29, and 33 of the Australian Consumer Law (ACL), which is sch 2 to the Competition and Consumer Act 2010 (Cth).

(3)    Thirdly, the applicants allege that Cantarella has, by various forms of conduct, passed off its coffee products as coffee products that emanate from, or are associated with, the applicants and their coffee products.

11    Cantarella denies that the applicants are entitled to relief. Further, by its cross-claim, Cantarella seeks the cancellation of the KDE shape mark under s 88 of the Trade Marks Act with effect from the priority date of 7 January 2014, on the grounds that –

(1)    at that time, the shape mark was not inherently adapted to distinguish, or did not in fact distinguish, KDE’s goods from the goods of other traders, as required by s 41 of the Trade Marks Act;

(2)    the Registrar of Trade Marks accepted the application for registration of the shape mark on the basis of evidence or representations that were false in material particulars, thereby engaging the ground of opposition in s 62(b) of the Act;

(3)    the shape mark was entered on the Register as a result of false suggestion or misrepresentation, thereby engaging the ground of cancellation in s 88(2)(e) of the Act;

(4)    the application for registration of the shape mark was made in bad faith, thereby engaging the ground of opposition in s 62A of the Act; and

(5)    as at the priority date, KDE did not intend to use the shape mark in Australia as a trade mark, to authorise its use in Australia as a trade mark, or to assign the shape mark to a body corporate for use as a trade mark by that body corporate in Australia, thereby engaging the ground of opposition in s 59 of the Act.

12    Alternatively, by its cross-claim Cantarella seeks to have the Register amended pursuant to s 92 of the Act by the removal of the KDE shape mark, with effect from the priority date, on the grounds set out in ss 92(4)(a)–(b) of the Trade Marks Act. In brief terms, this claim was put at trial on the footing that the KDE shape mark should be removed from the Register because –

(1)    KDE has not used the shape mark as a trade mark since the priority date;

(2)    KDE had no bona fide intention as at the priority date to use the shape mark, to authorise its use, or to assign it for use as a trade mark in the relevant way, and because KDE has not used the shape mark, or not used it in good faith, at any time before the period of one month ending on 24 March 2023; and

(3)    the shape mark remained registered for a continuous period of three years ending one month before 24 March 2023, and at no time during that period did KDE use the shape mark, or use the shape mark in good faith, as a trade mark, in Australia.

13    By its cross-claim, Cantarella also seeks a declaration pursuant to s 129(2)(a) of the Trade Marks Act that the applicants have made unjustified threats of trade mark infringement proceedings, together with claims for an injunction, damages, and additional damages in relation to those unjustified threats.

The parties

14    The corporate structure within which the applicants sit is fairly complex. Since some issues turn upon that corporate structure, it is necessary to be precise about the relationships between various entities within the structure.

15    The first applicant, KDE, was incorporated in the Netherlands in 1970. It remains incorporated there at the present day. KDE is an immediate, wholly owned subsidiary of JDE International BV, another company incorporated in the Netherlands.

16    JDE International BV is a wholly owned subsidiary of JDE Holdings BV, another company incorporated in the Netherlands. In turn, JDE Holdings BV is a wholly owned subsidiary of Jacobs Douwe Egberts BV, which is also incorporated in the Netherlands.

17    Jacobs Douwe Egberts BV is itself a wholly owned subsidiary of JDE Peet’s NV, a public limited liability company incorporated under the laws of the Netherlands, which is listed on the Euronext Amsterdam stock exchange. While roughly 55% of its share capital is owned by another company, JDE Peet’s NV may fairly be regarded as the parent company of a corporate group.

18    The second applicant, JDE AU, is a company incorporated in Australia. JDE AU is also owned by JDE International BV, via two interposed Australian companies, being DE Investments Australia Pty Ltd and DE Holdings Australia Pty Ltd. While one organisational chart showed the parent company of JDE AU as “DE Investments Pty Ltd”, I infer from other evidence that this should have read “DE Investments Australia Pty Ltd”. Accordingly, JDE AU also forms part of the corporate group that sits under JDE Peet’s NV.

19    There were two principal business divisions within that corporate group: the “Jacobs Douwe Egberts” business, and the “Peet’s Coffee” business. KDE and JDE AU are a part of the “Jacobs Douwe Egberts” business division. The origins of the Jacobs Douwe Egberts business can be traced back to 1753, when Egbert Douwes and Akke Thijsses opened a grocery store called, in English, “The White Ox” in Joure, in what is now the Kingdom of the Netherlands. That store sold various products, including coffee and tea. In the present day, the Jacobs Douwe Egberts business, and indeed the JDE Peet’s NV corporate group in general, carry on a “pure-play” coffee and tea business: that is, one that is focused primarily on sourcing, manufacturing, packaging, distributing, and selling coffee and tea products.

20    The respondent, Cantarella, was incorporated in Australia in 1951. The origins of its business lie in a business established in Australia in 1947 by brothers Orazio and Carmelo Cantarella. That business involved the importation into Australia of various European products, such as mineral water, parmesan cheese, preserved tomato products, wine, olive oil, and pasta. Since 1958, Cantarella has carried on a business distributing beans and ground coffee products under the trade mark “Vittoria” to delicatessens, cafes, and restaurants. In the early 1980s, Cantarella began supplying Vittoria coffee beans and ground coffee to supermarkets.

The evidence

21    Evidence in chief was given by affidavit, and most but not all of the documentary evidence, although organised in the court book, comprised annexures to the affidavit evidence. The lay witnesses whose affidavit evidence was read by the applicants were –

(a)    Ross Norman Tillman, the “Head of Category Development and Shopper Insights” of JDE AU, who made three affidavits and was cross-examined;

(b)    Louise Marie Smith, the “Director of Global Intellectual Property” of the JDE Peet’s group of companies, who addressed and was cross-examined on the group corporate structure and licensing arrangements between the applicants;

(c)    Linda Margaret Armstrong, the Finance Director of JDE AU, who produced documents and was cross-examined on issues relating to the applicants’ claim that JDE AU was an authorised user of the KDE shape mark; and

(d)    Georgia Rosemary Mae Christie, a lawyer employed by the applicants’ solicitors, who produced documents and who was not required for cross-examination.

22    Of the applicants’ witnesses who were cross-examined, only Mr Tillman’s evidence calls for any comment. Mr Tillman’s position with JDE AU placed him in a position of some expertise, as he demonstrated a high degree of familiarity and experience with the consumer coffee market in Australia. Mr Tillman was challenged in cross-examination in relation to a number of contentious opinions that he expressed. I formed the view that Mr Tillman was an honest witness, and no questions going to his credit arise. However, he was cautious about making concessions, and the evidence of his opinions on contentious issues concerning the claimed similarities and differences between the Moccona jars, the Vittoria jars, and other jars containing products such as scented candles, was coloured. This was demonstrated most clearly when Mr Tillman was taken to two jars containing scented candles with clear similarities to the Moccona jar, yet did not accept that they were similar. In relation to a third jar containing a lemongrass and ginger scented candle, Mr Tillman did not accept that it was different from the Moccona jar, or that it was similar to the Vittoria jar. These are opinions that I do not share. These are not criticisms of Mr Tillman, because he was not put forward as an independent witness, and his position with JDE AU precludes any conclusion that he came to his evidence with objectivity. Moreover, Mr Tillman’s opinions on these issues were never going to carry much weight, and it is evident that the forensic purpose of much of the cross-examination of Mr Tillman was to provoke responses to expose more completely some of the questions that the Court must decide for itself.

23    Otherwise, no issues of presentation or credit arise in relation to the lay witnesses of the applicants who were cross-examined. Both Ms Armstrong and Ms Smith answered questions in cross-examination clearly and directly.

24    The lay witnesses whose affidavit evidence was read by Cantarella were –

(a)    Matthew William Hill, the Chief Operating Officer of Cantarella, who gave evidence about Cantarella’s business and its decision to use the impugned jar for its 400-gram instant coffee product, and who was cross-examined;

(b)    Leigh Alfred Harrison, a director of Abel Lemon Trading Pty Ltd, who gave evidence about the importation and sale of “Park Avenue”-branded instant coffee in around 1993 in a jar similar to the KDE shape mark, and who was not required for cross-examination;

(c)    Sue Maree Gilchrist, a partner with Cantarella’s solicitors, who produced documents and who was not required for cross-examination.

25    When cross-examined, Mr Hill gave evidence in a direct, straightforward manner. I formed a favourable view of his presentation as a witness and considered that he gave honest, reliable evidence to the Court. Mr Hill stood up well to cross-examination on disputed factual issues and readily made concessions.

26    Expert evidence was given in two areas of expertise: (a) marketing; and (b) industrial design. For each area of expertise, a joint report was prepared and the evidence of the experts was given concurrently. The marketing experts were –

(a)    Richard Don O’Sullivan, Professor of Marketing at Melbourne Business School, who was engaged by the applicants; and

(b)    Paul Lindsay Blanket, Founder and Principal of First Impressions Pty Ltd, a marketing and communications consulting firm, who was engaged by Cantarella.

27    The expert marketing evidence presented difficulties. The difficulties had several dimensions. The first is that there were opinions given by both Professor O’Sullivan and Mr Blanket which I do not find persuasive. The second is that there are questions as to whether the marketing evidence addressed the same issues that the Court must decide, and whether the marketing evidence veered off into collateral issues, such as branding, and “brand elements”. The third is that ultimately the key questions, such as use of a sign as a mark of origin, deceptive similarity, and misleading and deceptive conduct, are questions of fact for the Court itself to determine by reference to legal standards, which brings into question the utility of the expert marketing evidence. I will address the marketing evidence in more detail later after setting out more background facts.

28    The industrial design experts were –

(a)    Andrew Charles Simpson, an industrial designer and principal of Vert Design Pty Ltd, who was engaged by the applicants; and

(b)    David Fulton Francis, a director at D3 Design, a specialist packaging and product design consultancy, who was engaged by Cantarella.

29    Both Mr Simpson and Mr Francis were impressive witnesses and presented as being clearly independent. These impressions may have been strengthened by the fact that there were large areas of agreement between them in relation to the matters that were the subject of their experience and expertise.

Factual setting

30    In light of how the parties joined issue at trial, it is necessary for me to make some more particular findings about various aspects of the parties’ businesses and the coffee industry over time. To resolve some of the questions raised at trial, attention must be given to how Moccona and Vittoria-branded products have been produced, distributed, marketed, and sold over the years. Understandably, the evidence about how particular products were packaged and marketed decades ago was not always clear. Nevertheless, much of the evidence that went towards establishing several of the key events in this period was uncontradicted. I will therefore make factual findings in the paragraphs that follow on the basis of that evidence. Where necessary, I will set out any points of contention between the parties and make explicit the findings I make.

History of the Moccona brand in Australia

31    Moccona-branded instant coffee was launched in Australia in 1960. The word “Moccona” was registered as a trade mark in Australia in respect of “Coffee, inclusive of coffee in powder form” from 5 April 1960.

32    There was an issue at trial as to when Moccona-branded instant coffee began to be sold in a glass jar with a glass stopper lid, substantially in the form of the KDE shape mark. While the applicants’ original position was that Moccona instant coffee was sold in “its cylindrical glass jar with flat-topped stopper” from the very beginning in 1960, there was no evidence beyond some hearsay representations in the 2020 annual report for JDE Peet’s NV, and a statement on a web site, to support that position. Since Cantarella disputed this claim, it is necessary to step through the evidence on this question.

33    The starting point is an advertisement for Moccona instant coffee that appeared in the 7 December 1960 issue of “The Australian Women’s Weekly” –

34    This advertisement depicts a tin, rather than a jar, of Moccona instant coffee. The text of the advertisement states a price of “3/11½” in respect of “2oz. tins or jars”. From the advertisement as a whole, I find that Moccona instant coffee was marketed at the time of the advertisement in both tins and jars, although I cannot conclude that the jar used at that time was in any way similar to the KDE shape mark.

35    The following advertisement, from the 2 December 1966 issue of “Dutch-Australian Weekly”, was also in evidence –

36    This advertisement appears to show Moccona-branded coffee being offered for sale in Australia in a cylindrical glass jar not entirely unlike the body of the KDE shape mark. The jar, however, seems to have a screw-top lid, not a stopper lid. Since a stopper lid is an inherent element of the KDE shape mark, this advertisement would not support a finding that Moccona-branded instant coffee was sold in a jar resembling the KDE shape mark from 1966.

37    Also in evidence was a photograph, dated September 1972, which was said to depict a factory in Joure, the Netherlands, where Moccona instant coffee was then produced –

38    This photograph appears to depict a conveyor belt carrying coffee in unlabelled glass jars of a shape similar to the KDE shape mark. The evidence did not establish, however, that in 1972 the Joure factory produced coffee in only one container. Indeed, as will appear below, Moccona-branded instant coffee was sold in a variety of containers in the 1970s, suggesting that the Joure factory may have used more than one shape of container during this period. Given that no Moccona labels appear on the jars in the photograph, and that there is no other indication that any of the depicted jars was ever shipped to Australia, I cannot find based on this photograph alone that Moccona-branded instant coffee was sold in a jar similar to the KDE shape mark in Australia by 1972.

39    Also in evidence was a photograph sourced from the National Archives of Australia, which was taken in a supermarket in 1977 –

40    This photograph shows, amongst other things, various coffee products for sale on shelves, including Moccona-branded instant coffee in a cylindrical glass jar with a glass stopper lid, as well as Moccona-branded instant coffee in at least one other form of packaging, being a transparent cylindrical jar bearing a red label with a gold lid. The shape of the jars with the glass stopper lids in the photograph appears to resemble the KDE shape mark.

41    More specifically, an advertisement in the 12 October 1977 edition of “The Australian Women’s Weekly” depicts a Moccona-branded cylindrical glass jar with a glass stopper lid containing instant coffee –

42    On the basis of the last two photographs, I find that by October 1977 Moccona-branded instant coffee was sold in Australia in a jar with a shape that was substantially similar to the KDE shape mark. However, based upon my own examination of the photographs and the applicants’ current products, I cannot exclude the possibility that the 1977 jars may have had some slight differences in shape, particularly of the angle of the shoulders of the jars and the height of the glass stopper lid.

43    To support their claim that Moccona instant coffee was sold in a jar similar to the KDE shape mark from earlier than 1977, the applicants drew attention to the reasons for judgment of Lockhart J in Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 53 FLR 307 (Stuart Alexander). The Court received those reasons into evidence without objection, and the parties proceeded on the basis that the Court could rely on Lockhart J’s reasons as evidence of the truth of matters asserted in that judgment. No objection was taken under s 91 of the Evidence Act 1995 (Cth) or by reference to any corresponding common law principle.

44    The applicants relied upon Lockhart J’s reference at 308 to a jar which was, in October 1981, “substantially the same as the jar in which Moccona ha[d] been sold for at least fifteen years”. It is clear that the jar in question had substantially the same shape as the KDE shape mark. From this, the applicants asked the Court to infer that Moccona has been sold in a jar like the KDE shape mark since 1966. Cantarella submitted that the evidentiary basis for Lockhart J’s finding was not apparent, and that his Honour did not need, in that case, to address the precise date on which the Moccona jar was first used. I accept Cantarella’s submission. I also note that the advertisement in the 2 December 1966 edition of the “Dutch-Australian Weekly”, reproduced at [35] above, shows a Moccona jar with a screw-top lid. Unless there were two Moccona jars available for purchase in 1966 that differed only in terms of their lids, this advertisement is inconsistent with the statement in Lockhart J’s reasons of 8 October 1981 that the same jar had been used for “at least fifteen years”. The more fundamental point, however, is that I am unable to identify the evidentiary foundation for his Honour’s finding. I therefore attribute it little weight, and conclude that I am not affirmatively persuaded on the evidence before me that Moccona instant coffee was sold in Australia in a jar with a shape like that of the KDE shape mark before October 1977.

Advertisements for the Moccona brand in Australia

45    As this discussion shows, there is a long history of Moccona instant coffee advertisements in Australia. In what follows, I will describe a series of Moccona instant coffee advertisements, which were relied upon by the parties for various purposes. It was not in dispute that these advertisements had been published in Australia.

46    The applicants relied upon a campaign in 2008, centred around a television advertisement entitled “Cinderella”. The advertisement is obviously a play on the “Cinderella” fairy tale, in which a prince tries to find the woman whose foot fits a glass slipper. In the advertisement, a man is shown sitting on a wall next to a beach, holding a glass stopper lid that resembles the Moccona lid, as appears below –

47    The man goes from door to door with his glass stopper lid in hand. Each of the doors is opened by a woman who has a coffee jar, but no lid. The jars have a range of different shapes. The man and each woman test whether the lid fits the jar. At each door before the last one, the lid fails to fit the jar. At the final door, the woman’s jar is a Moccona Classic Medium Roast jar, with which the man’s lid fits perfectly. The advertisement features a close-up depiction of the Moccona jar and lid in the hands of the man and woman, as appears below –

48    The advertisement ends on the following frame, which shows a dramatically lit Moccona jar against a black background, above the gold cursive motto “Never settle for less than Special” and a gold URL for “www.moccona.com.au” –

49    The next advertisement relied upon by the applicants was entitled “Candles”. It was screened on free-to-air and pay television channels from at least 2010. This advertisement depicts a woman purchasing Moccona jars from a man behind the counter of a store. Behind the man, Moccona jars are stacked in a row, two jars high –

50    A close-up shot of the Moccona jar, with label, follows. The advertisement then depicts the woman purchasing more jars from the man on further occasions. The culmination of the advertisement comes when the man leaves the store at night to find that the woman has placed a candle in an empty Moccona jar (without its lid) on the setts of the street –

51    In fact, there are several of these Moccona jar candles, which lead in a line to the woman’s apartment building. The man follows the path they create and encounters the woman drinking something — presumably coffee — from a mug. At the bottom of the shot appears the Moccona logo, as part of the tagline “New Moccona Inspirations Range” –

52    The next advertisement was titled “Keepsakes”. This advertisement was broadcast in 2011. Ancillary advertisements were published in other media as part of the same campaign. The “Keepsakes” advertisement opens with a series of shots depicting a woman’s romantic stay in a luxury hotel. Several shots prominently feature her room key and a tag emblazoned with the number “18”. In one such shot, the woman drops the key. The next shot in the advertisement depicts the key dropping into a glass Moccona jar –

53    As this picture demonstrates, only the cylindrical body of the Moccona jar is visible. The woman is then shown drinking coffee and wistfully remembering her hotel stay. She places a glass stopper lid on the jar containing the key, and in this shot the entire Moccona jar with lid is visible in profile, without any label or the word “Moccona” –

54    A glass jar containing coffee, with a Moccona label, is depicted on the woman’s kitchen bench in the same shot as the unlabelled jar. The unlabelled jar is then placed on a shelf alongside a series of other unlabelled glass jars containing keepsakes –

55    The final shot of the “Keepsakes” advertisement is a close-up of a labelled Moccona jar with the taglines “INDULGE IN THE MOMENT”, “Specialty Blends” and “For Lovers of Coffee” –

56    A subsequent version of the “Keepsakes” advertisement was broadcast in 2012. That version depicts the same woman placing a glass jar on a shelf with other jars that contain keepsakes. This time, however, the jars on the shelf have decorative patterns, though still no labels –

57    The advertisement ends on a shot of three limited-edition jars of Moccona, in “EXOTIC”, “INDULGENCE” and “RICH” flavour varieties, above the Moccona logo and the tagline “For Lovers of Coffee” –

58    One video played during Mr Tillman’s cross-examination was titled “Moccona Me-Time Moments: Emma (60”)”. This video was downloaded from YouTube, having been posted on the Moccona YouTube page on 14 July 2021. The video, which had garnered more than 32,000 views, depicts the eponymous Emma engaging in various forms of community volunteering, as well as making and drinking a cup of Moccona instant coffee. This footage was accompanied by an audio voiceover of Emma describing her activities. A partially obscured Moccona-branded jar appears in the background of the video while Emma is cooking –

59    A partially obscured Moccona-branded jar, with a detached but visible lid, is also shown more prominently when Emma spoons out some instant coffee –

60    Also played during the cross-examination of Mr Tillman was a YouTube video titled “The Quest – Moccona (15”)”, which was posted on the Moccona YouTube channel on 1 March 2021 and which had recorded over 460,000 views. This video depicted a woman making a cup of Moccona instant coffee and choosing to drink her coffee rather than socialise with her friends. One image in the video shows the woman smelling an open jar of Moccona instant coffee, with the jar’s lid held in her right hand –

61    Another relevant image from the video is the final image of a mug and three Moccona-branded products, being a box of sachets, a jar of instant coffee, and a box of capsules. Each of these products bears the Moccona logo –

62    Another video played during the cross-examination of Mr Tillman was titled “Moccona Me-Time Moments: Katie (60”)”. This video was posted to the Moccona YouTube channel on 14 July 2021 and had recorded over 160,000 views. The video follows a similar format to the video featuring Emma, which I have already described. Relevantly, the video opens with an image of the Moccona logo and the tagline “Giving a little me-time to deserving Aussies” in front of a blurred image of Katie and her family –

63    Later in the video, Katie’s husband is shown spooning instant coffee out of a Moccona-branded jar, which is partially obscured –

64    The video also contains images of Katie at a beach, drinking from a Moccona-branded cup –

65    The video’s concluding image is of a Moccona logo superimposed over Katie drinking from the same Moccona-branded cup –

66    Counsel for Cantarella also played a video entitled “Dec Jar 2022”, which was posted to the Moccona YouTube channel on 8 July 2022 and has attracted over one million views. The evidence established that this video related to the “Be Inspired” range of limited-edition Moccona glass jars. A campaign involving these jars, which ran between at least June 2022 and December 2022, was run on several social media platforms. The video depicts a range of six limited-edition Moccona jars. Initially, the six jars are presented together above the Moccona logo –

67    Each jar is also presented individually, as in the case of the following jar –

68    At the conclusion of the video, the six jars are again presented together above the Moccona logo –

69    Throughout the video, each of the jars depicted is filled with freeze-dried instant coffee, and bears a decorative design. Nowhere in the video is a jar shown with a Moccona label affixed.

70    Another video played by counsel for Cantarella was titled “Moccona Sleeping Beauty”. This video was posted to the Moccona YouTube channel on 12 April 2014, and has been viewed more than 19,000 times. This video opens with various suitors attempting to wake a sleeping woman, using loud noises such as a cockerel, an accordion and a band. None of these methods succeeds. As these failed attempts unfold, there are brief images of a man with a jar of Moccona instant coffee –

71    Eventually, the man is shown opening the Moccona jar and making a cup of coffee –

72    This causes the sleeping woman to stir, and she eventually awakes when the man brings the coffee to her chamber. The video ends on an image of a labelled jar of Moccona “Awaken” instant coffee, next to the taglines “WAKE UP TO SOMETHING SPECIAL” and “For Lovers of Coffee” –

73    Another video shown by counsel for Cantarella was titled “Moccona Chase (15”)”, which was posted to the Moccona YouTube channel on 7 March 2018 and had more than 440,000 recorded views. This video shows a man running after a woman on a tram, with a labelled jar of Moccona instant coffee in hand –

74    The video then shows the man reaching the woman inside a building and handing her the labelled jar of Moccona instant coffee –

75    The video finishes on an image of a labelled Moccona jar next to the tagline “FOR LOVERS OF COFFEE” –

76    Another video shown by counsel for Cantarella was titled “Moccona by Peter Alexander”, which was posted on 23 March 2018 and has recorded over 500 views. This video forms part of a campaign run by JDE AU in collaboration with the Australian sleepwear company Peter Alexander. The campaign involved limited-edition “Wake Up In Style” glass jars, and ran between at least February 2018 and October 2018. Around 950,000 of these jars were sold during that period. The advertising campaign involved billboards, social media, and other online advertising, an event in Sydney at which Peter Alexander himself appeared, and various other forms of promotion. This particular video opens on a cascading shot of four decorative glass Moccona jars containing freeze-dried instant coffee. The word “Moccona” does not appear on the jars, or anywhere else in the opening sequence –

77    The video then finishes on an image of a decorative glass Moccona jar, without a label, next to the Moccona logo and the tagline “WAKE UP IN STYLE” –

78    The next video played by counsel for Cantarella was titled “Fall in love with coffee at home with Moccona”. This video was posted to the Moccona YouTube channel on 13 May 2020, and had recorded more than 2,500 views. The video opens with a coffee bean turning into a love heart, before a jar of Moccona instant coffee, along with its label, is featured –

79    The video then features two other Moccona products, being a box of “Cappuccino” sachets, and a tin of “Barista Reserve” –

80    The video concludes with an image of four Moccona products, being a tin of “Barista Reserve”, a box of “Cappuccino” sachets, a 100-gram jar of Moccona Classic freeze-dried instant coffee, and a box of “Ristretto” capsules. The jar of Moccona instant coffee is placed at the front of the range –

81    Counsel for Cantarella also played a video titled “Moccona Upcycling #InspiredByMoccona”, which was posted to the Moccona YouTube channel on 21 July 2020 and which had more than 1,500 recorded views. The video is an advertisement for Moccona that illustrates how, once the coffee inside has been used, Moccona jars can be used for purposes other than storing coffee. The video opens on an image of the Moccona logo above the tagline “Be inspired” –

82    The video then shows some unlabelled Moccona jars before showing an image of a labelled jar of Moccona instant coffee –

83    The next shot in the video shows, from above, coffee being spooned out of a jar of Moccona instant coffee, without its lid. The word “Moccona” does not appear in this shot, and it is not clear whether the jar has any label attached to it –

84    Following these images comes a series of images that illustrate the uses to which empty Moccona jars can be put. The jars are variously used as water vessels, candle holders, and vases. In each case, the body of the Moccona jar is visible, though the lid is not always present –

85    The next video played by counsel for Cantarella was titled “Inspire your moment with Moccona (15”)”, which was posted to the Moccona YouTube channel on 17 August 2020 and which had more than 2.4 million recorded views. This video centres on a woman painting a watercolour bird, which comes to life and imparts a design onto a plain and unlabelled jar of Moccona instant coffee. The video opens on a shot of a woman drinking coffee from a mug, with an unlabelled jar of Moccona instant coffee next to a small easel on the table in front of her –

86    In the next shot, the woman puts the finishing touches on the watercolour of a bird carrying a garland of flowers. The bird magically flies off the page and floats above the unlabelled Moccona jar –

87    The bird then flies around the jar and wreathes it with the garland of flowers, which is imparted on the jar as a decorative design –

88    In the final shot, the jar with the decorative design expands into six jars, each with its own design. The jars, which do not bear a Moccona label, are placed above a glinting Moccona logo and the tagline “INSPIRE YOUR moment” in the final frames –

History of the Vittoria brand in Australia

89    As I have noted, Cantarella’s Vittoria business focused, for most of its existence, on beans and ground coffee. For at least some time between the late 1950s and the late 1970s, however, Cantarella also sold a Vittoria-branded instant coffee product, in a jar that appears below –

90    At other times, Cantarella has sold instant coffee products under different brands. There was no suggestion that any Vittoria-branded instant coffee product had been sold in Australia between the late 1970s until the launch of the Vittoria 100-gram instant coffee product in 2021.

91    The Vittoria 100-gram instant coffee product began to be sold by Woolworths in May 2021. As I have mentioned, the Vittoria 100-gram product has been sold in a tall, cylindrical glass jar with a gold-coloured plastic lid, with Vittoria branding involving the use of registered trade marks owned by Cantarella. The 100-gram product is available in four varieties –

(1)    Original Classic, with a predominantly gold label;

(2)    Mountain Grown, with a predominantly black label;

(3)    Latte, with a predominantly white label; and

(4)    Italian, with a predominantly brown label.

92    The evidence was that these four varieties mirror varieties of coffee beans and ground coffee sold under the Vittoria brand.

93    From around November 2021, Coles also began to stock the Vittoria 100-gram product. The Vittoria 100-gram product was initially priced at $10.00 per jar, and subsequently at $11.00 per jar. Since its launch, it has often been discounted and sold for prices between $6.00 and $7.60.

94    In July 2023, Cantarella launched a 300-gram, Vittoria-branded instant coffee product range that is sold in a resealable pouch. The evidence suggested that this product range is sold in independent supermarkets and grocers, rather than Coles and Woolworths stores. A stock image of an “Original Classic” variety resealable pouch of Vittoria instant coffee was in evidence –

95    Also in evidence were photographs of “Original Classic” and “Mountain Grown” variety resealable pouches of Vittoria instant coffee, as they appeared on the shelves of independent supermarkets and grocers –

Development of the Vittoria 400-gram product

96    The parties adduced evidence relating to the development of the Vittoria instant coffee range, including the 400-gram product and its packaging. Much of the evidence was confidential, and was heard in closed court. In general terms, the evidence related to precisely how, why, and with what knowledge and motivation Cantarella settled on the packaging it ultimately adopted for the Vittoria 400-gram product. Because of its confidentiality, I will deal with aspects of the evidence concerning the development of the Vittoria instant coffee range in a confidential annexure to these reasons. I will, however, explain in these open reasons the outline of my reasoning in relation to this topic.

97    The evidence on this topic was said to be relevant to the applicants’ infringement case, and the misleading or deceptive conduct and passing off cases. Now, it is not an element of any of those causes of action that the respondent intended to deceive. It was common ground that, for example, deceptive similarity or a likelihood of misleading or deceiving can be established whether or not Cantarella intended to achieve those results. In their statement of claim, the applicants pleaded as part of their infringement case that the –

[r]espondent’s Infringing Shape Mark is deceptively similar to the [a]pplicants’ Shape Mark … in that a number of Australian consumers … are at a real risk … of being confused … particularly given that … there is no requirement to prove an actual subjective intention to cause confusion, but in any event … the [r]espondent chose to adopt packaging “sailing close to the wind” of the [a]pplicants’ Shape Get-Up …

98    Similar allegations were made in relation to the applicants’ ACL claim.

99    The evidence about the development of the Vittoria 400-gram product’s packaging has to be understood in this context. The applicants submitted that the process by which the packaging for the Vittoria 400-gram product was developed reinforced the conclusions that Cantarella had used the shape of the 400-gram product as a trade mark, and that the shape of the 400-gram product was likely to be confused by some notional consumers with the shape registered by the KDE shape mark. The applicants sought to engage the principle that, where a trader consciously emulates aspects of a competitor’s get-up, it is a reasonable inference that the trader believes there will be a market benefit in doing so, in the form of attracting custom that would otherwise have gone to the competitor. From those propositions, it was said, it is an available inference that the trader considered that such emulation was “fitted for the purpose and therefore likely to deceive or confuse”: see Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Australian Woollen Mills) at 657 (Dixon and McTiernan JJ). The applicants cited Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; 234 FCR 549 (Sydneywide) at [117] (Weinberg and Dowsett JJ) in support of these propositions.

100    Of course, whether the respondent believed that the Vittoria 400-gram product’s jar was fitted for the purpose of attracting custom that would otherwise have gone to the applicants is not, without more, relevant to any cause of action. I understood the applicants’ case to be that, where these facts arise, the Court may infer more readily that Cantarella’s jar was (a) used as a trade mark; and (b) deceptively similar to the KDE shape mark, or likely to mislead or deceive consumers on the ground that these facts at least provide “a reliable and expert opinion” on the question whether what was done was in fact likely to deceive: see Australian Woollen Mills at 657.

101    Without disclosing the contents of confidential evidence, I will summarise the salient features of the development process.

102    In May 2020, Cantarella conducted a market review dealing with the pre-mixed sachet and instant coffee segments of the coffee market. The review identified the instant coffee segment as a large segment of the coffee market. By August 2020, Cantarella had decided to launch a Vittoria-branded instant coffee product. Various formats and packaging options were considered. For various reasons, Cantarella decided to launch a 100-gram product. Once that product was launched in May 2021, Cantarella resumed its consideration of other formats for Vittoria instant coffee products, including a 400-gram product. Again, various packaging options were considered. Among these options were a glass jar with a plastic screw-top lid, and a glass jar with a metal clamp lid. In mid-2021, a potential supplier sent to representatives of Cantarella two proposed packaging options, both of which were glass jars with glass stopper lids. Cantarella selected the second jar as the preferred option. Some time later, Cantarella received a physical version of that glass jar as a sample. That sample jar was in evidence, and a photograph of it appears below –

103    It became apparent that this jar was not large enough to hold 400 grams of freeze-dried instant coffee. Further, concerns were raised as to whether it was too tall for the standard-sized height of supermarket shelves such as those on which 400-gram Moccona jars were displayed. The dimensions of the jar were therefore adjusted: the height was reduced, so as to better fit the supermarket shelves; and the diameter of the cylindrical body was increased, so that the jar could hold 400 grams of coffee. The result was a jar in the shape that Cantarella ultimately used for the Vittoria 400-gram product.

104    Ultimately, I am not persuaded that the evidence about the development of the Vittoria 400-gram jar bears on the issues in this case. The evidence reveals that Cantarella wished to enter the instant coffee market using its Vittoria brand, believing that the market for Vittoria might be profitable, and knowing that Moccona was a major brand in that market. It also reveals that Cantarella considered a range of packaging formats. Cantarella assessed those formats against various criteria, including the degree to which they were perceived as “premium”. Cantarella wished to compete with the Moccona brand, and to launch a product that was capable of being sold in supermarkets just as widely as Moccona instant coffee was sold. Cantarella also wished to occupy a similarly premium position in the instant coffee market to Moccona. However, Cantarella selected as a starting point a jar that was put forward by a supplier. As events transpired, that jar had to be modified to suit Cantarella’s requirements. One requirement was that it was actually large enough to hold 400 grams of coffee. Another was shelf height. In combination, these requirements led to an increase in diameter and a reduction in height.

105    I find that for the purposes of sale of instant coffee products in supermarkets where a share of the instant coffee market could be expected to be gained at the expense of other suppliers, it is unremarkable that Cantarella should decide that its 400-gram jar should have a similar height to that of the Moccona 400 gram jar, which at the time of launch was the only competing 400-gram freeze-dried coffee in a jar. Nescafé Gold was introduced in 400-gram jars a month or two after the Vittoria 400-gram product was introduced. The Nescafé Gold 400-gram jar is slightly taller than the Moccona and Vittoria 400-gram jars. Mr Tillman accepted that, generally speaking, supermarkets prefer not to have significant headspace in their shelving because it would be a waste of space, and that generally supermarkets want products to conform. Some of the contemporary photographs of consumer items displayed on supermarket shelves that were in evidence showed competing products on the same shelf. In the case of instant coffee, a photograph on p 71 of Professor O’Sullivan’s first report showed a number of shelves displaying competing products. Taller products, such as large tins of International Roast and Nescafé Blend 43, and 400-gram jars of Moccona, Vittoria, and Nescafé Gold were on the two lowest shelves. The tallest product by a margin appeared to be the 400-gram jars of Nescafé Gold –

106    The statements of Dixon and McTiernan JJ in Australian Woollen Mills and of Weinberg and Dowsett JJ in Sydneywide should not be understood as erecting a rule of law. They constitute appellate guidance in relation to fact-finding, which is plain from the statement of Dixon and McTiernan JJ in Australian Woolen Mills at 658 that “in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained”. Intention is but one factor that the court may take into account in its factual evaluation, perhaps in a borderline case: Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; 385 ALR 514 at [68] (Nicholas, Yates and Burley JJ). I do not conclude from the entire series of events, only aspects of which I have canvassed in these open reasons, that Cantarella was deliberately attempting to mislead consumers, or that it considered that its jar shape was likely to deceive or confuse. I do not accept the applicants’ claim that Cantarella was attempting to “sail close to the wind” in any relevant sense. The process by which Cantarella developed its jar is, therefore, irrelevant to the pleaded causes of action. The questions of trade mark use, deceptive similarity, and likelihood of misleading or deceiving are to be considered in this case by reference to the objective facts alone.

107    In arriving at the above conclusions, and the supporting findings set out in the confidential annexure, I have had regard to the applicants’ submission about the significance of Cantarella’s failure to call as witnesses three persons involved in the process of selecting the Cantarella jar shape: Les Schirato, Roland Schirato, and Mathias Stamm. The applicants submitted that I should more comfortably draw inferences adverse to Cantarella by reason of their absence from the witness box. However, for the reasons that I give, the evidence does not get to the point where I would contemplate drawing the inferences for which the applicants contended. What Cantarella did is well documented, as detailed in the confidential annexure. And Cantarella did call Mr Hill, to whom Mr Stamm reported, and who in turn reported to Mr Les Schirato. Mr Hill was cross-examined. It was put to Mr Hill that in developing and finalising the design of its 400-gram jar, Cantarella was consciously trying to align the shape and size of its jar as close to the Moccona shape as it could, which Mr Hill denied. As I stated at [25] above, I formed a favourable view of Mr Hill as a witness. I accept Mr Hill’s evidence. The evidence shows that Cantarella was well aware of Moccona’s presence in the market for freeze-dried coffee, and that it sought to enter that market with its own product. But for the reasons explained in the confidential annexure, the final shape of the Cantarella jar was not developed for the purpose of emulating the shape of the Moccona jar, or to mislead consumers, but was largely the result of the functional considerations that are referred to in the annexure.

Advertisements for the Vittoria brand in Australia

108    Over various periods from 30 October 2022 to 22 July 2023, television advertisements for the Vittoria 100-gram product were broadcast on various Channel 9 channels. One of the advertisements in question was a 30-second advertisement that focused on the process of coffee growing and processing. Relevantly, it includes a shot of a man holding up a cylindrical glass jar full of coffee beans. The jar in question is unlabelled, but it appears to be similar in shape to the Vittoria 100-gram product –

109    The advertisement ends on a shot of all four varieties of the labelled Vittoria 100-gram product, next to the tagline “Now in Instant”, as a ray of light passes over and illuminates the four jars –

110    In a 15-second version of the advertisement broadcast on the Channel 9 channels (which does not feature the empty jar), the final image appears as follows –

111    Advertising of the Vittoria 100-gram product has taken a range of other forms. As well as television advertisements, Cantarella has employed sponsorships, radio advertisements, print advertisements, posters, and billboards to advertise its Vittoria 100-gram product. Now, there was no issue in the case concerning whether Cantarella has used the shape of the Vittoria 100-gram product as a trade mark. Some of the following advertisements, however, provide context in which to place Cantarella’s advertisements for the Vittoria 400-gram product.

112    Cantarella placed a full-page advertisement for the Vittoria 100-gram product in the 4 August 2021 edition of the “Sunday Mail”. That advertisement prominently features an image of the 100-gram product, beneath the word “Instantaneous.” and above the phrase “Now in instant.” –

113    This advertisement and variations of it in relation to other flavour varieties were placed in several newspapers and magazines in 2021, along with half-page versions.

114    In two phases between 4 October 2022 and 1 January 2023, Cantarella also ran an outdoor campaign for the Vittoria 100-gram product that involved placing advertisements on over 100 “panels”. A photograph of an example bus-stop panel featured the Vittoria 100-gram product beneath the tagline “Instant classic” –

115    The same advertisement was featured on bills posted on streets in Sydney, Melbourne, and Brisbane in January, April, and May 2023 –

116    In late 2022 and mid-2023, Cantarella also caused the following billboard to be displayed near Melbourne’s Tullamarine Airport –

117    Across various periods from June 2021 to May 2023, Woolworths displayed aisle fins for the Vittoria 100-gram product, which featured a picture of that product as well as a separate Vittoria logo. The aisle fins were displayed in all Woolworths stores in Australia, and in Coles stores nationally. An aisle fin is essentially an advertising placard hung perpendicular to the shelves in a supermarket aisle. An example of one of the Woolworths aisle fins appears below –

118    Cantarella has also engaged in several marketing campaigns for the Vittoria 400-gram product. The applicants relied on these marketing campaigns to support the submission, within their infringement case, that the respondent had used its Vittoria 400-gram jar as a trade mark. I will therefore set out the advertisements that I consider to be salient to that question.

119    Between September 2022 and June 2023, Cantarella commissioned 10 full-page colour advertisements and two half-page colour advertisements for the Vittoria 400-gram product in major metropolitan newspapers. The Court received into evidence an A3 copy of parts of the 25 September 2022 edition of the “Sunday Age”, which was as close as possible to the actual size of that newspaper. The mock-up included a full-page colour advertisement for the “Original Classic” Vittoria 400-gram product. An electronic version of the double-page spread on which this advertisement appeared is below –

120    The advertisement prominently features an image of the 400-gram product, beneath the tagline “Instant classic” and above the phrase “Now in 400g”. As I noted at [114] above, the tagline “Instant classic” was also used in connection with the Vittoria 100-gram product. The applicants stressed that full-page advertisements cost more because they have a greater effect. I understand this to mean that advertisers are willing to secure full-page advertisements, despite their greater cost, because those advertisements are more effective. While the image I have reproduced here is small, I have taken into account the impression created by the size it would have had in the newspaper. The applicants also stressed that this advertisement contains minimal text or branding beyond the jar itself.

121    The Vittoria 400-gram product was also advertised on billboards. A photograph of one such billboard, which was posted between 21 November 2022 and 18 December 2022 near Tooronga railway station in Malvern, Victoria, is below –

122    The applicants again emphasised that this billboard featured the jar with minimal text or additional branding, though I note that there is an additional Vittoria logo.

123    Cantarella also used social media to advertise its Vittoria 400-gram product at various periods in 2022 and 2023. The applicants drew attention to one such advertisement, which fairly represents the overall nature of the advertisements, and pointed out that it featured the jar prominently with minimal text or additional branding –

124    Another way in which the Vittoria 400-gram product was advertised was through the use of aisle fins in more than 800 Coles supermarkets. These aisle fins were displayed from November 2022 to December 2022, and again from May 2023 to June 2023. Some of the aisle fins featured the Vittoria 400-gram product alone –

125     Other aisle fins featured the Vittoria 400-gram product alongside the 100-gram product –

126    The applicants pointed out that the aisle fins prominently feature the Vittoria 400-gram jar, again with minimal text or additional branding.

Other coffee brands sold or marketed in Australia using a jar similar to the KDE shape mark

127    In support of its cross-claim, Cantarella drew attention to the existence of other brands of coffee that have sold, or proposed to sell, instant coffee in a cylindrical glass jar substantially in the form of the KDE shape mark.

128    The first of these brands in time was the “Andronicus” brand. The dispute that provided the occasion for Lockhart J’s judgment in Stuart Alexander concerned instant coffee, and in particular the Moccona and Andronicus brands. As I have noted, Lockhart J’s reasons were received into evidence for all purposes.

129    The Court received into evidence the originating application that commenced the proceeding which culminated in Lockhart J’s reasons reported as Stuart Alexander. That originating application records that the applicants in the proceeding were “Stuart Alexander & Co (Interstate) Pty Limited” and “Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV”, and the respondent was “Blenders Pty Limited”. Relatedly, the evidence was that, in around 1975 or 1976, an Australian company trading as Stuart Alexander was appointed as the Australian distributor of Moccona-branded instant coffee. The distribution arrangement involving Stuart Alexander ended on 1 July 1992. From that date onwards, JDE AU took over the importation and distribution of Moccona-branded instant coffee in Australia. The reasons of Lockhart J at 308 state that the second applicant to that proceeding, Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV, was the manufacturer of Moccona-branded coffee.

130    Lockhart J’s reasons also state at 308 that Andronicus was a well-known brand name in Australia, which was associated with premium quality instant coffee. Lockhart J stated at 308 that, in the middle of 1981, Andronicus coffee began to be sold “in a jar substantially the same as the jar in which Moccona ha[d] been sold for at least fifteen years”. I have already dealt with the evidentiary weight of Lockhart J’s statement as to the length of time for which Moccona had been using a jar in the shape of the KDE shape mark. Nevertheless, given the immediacy of the event in question, I consider his Honour’s statement that Andronicus coffee began to be sold in a jar similar to the KDE shape mark to be probative.

131    More specifically, Stuart Alexander focused on a particular television advertisement for Andronicus coffee. That advertisement, which Lockhart J noted at 309 was screened in August 1981, was in evidence in this case. The advertisement opens on an image of an unlabelled, cylindrical glass jar with a glass stopper lid, which is similar in form to the KDE shape mark –

132    That glass jar gradually fills up with coins while a voiceover can be heard to say: “Some imported coffees come in a beautiful jar, but they cost the earth” –

133    Next, a plain cylindrical glass jar with a plastic screw-top lid appears next to the previous jar. The new jar itself begins to fill with a smaller pile of coins, as the voiceover says: “Other coffees come in a plain jar, at a much lower price” –

134    The frame then grows to include a third jar within its compass. The third jar, which is the same shape as the first jar, fills with a pile of coins roughly the same size as the pile in the second jar.

135    In the next shot, a hand rotates the third jar as an Andronicus label appears on it. At the same time, the voiceover states: “Only one offers you the right combination of quality and value: Andronicus, the taste of coffee from the heart of the bean” –

136    The advertisement concludes with a sequence showing the three jars back in the same frame. This time, the jar on the right is full of coffee, and is labelled as an Andronicus product. The piles of coins in the first and second jars collapse, as the voiceover states: “Andronicus: premium instant coffee, at a sensible price” –

137    The Andronicus advertisement was relevant in Stuart Alexander because the applicants in that case alleged that the respondent had engaged in misleading or deceptive conduct, and made certain false or misleading statements, by procuring the broadcast of the advertisement. In particular, the applicants in Stuart Alexander attacked the advertisement on the grounds that it suggested that while Moccona coffee was imported, Andronicus coffee was not imported, whereas in fact Andronicus coffee was also imported. The second aspect of the applicants’ case was that the labelling and general appearance of the jars containing Andronicus instant coffee would mislead consumers.

138    As Lockhart J noted at 309, both of these attacks assumed that the viewer of the advertisement would associate the first jar with Moccona coffee. His Honour found as a fact at 310 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 the fact that only three brands of instant coffee used the “apothecary”-style jar, of which only Moccona and Andronicus were sold widely in supermarkets.

139    Also in evidence was a full-page advertisement for Andronicus coffee from the 12 May 1982 edition of “The Australian Women’s Weekly” –

140    There were further advertisements for Andronicus coffee in evidence, which spanned the years between 1982 and 1985. The advertisement from 1985 was a small, black-and-white drawing in a catalogue within the 13 March 1985 edition of “The Canberra Times”. It appears to show Andronicus being offered for sale in a jar substantially similar to the KDE shape mark, as do all the intervening advertisements –

141    The Court also received into evidence a cylindrical glass jar with a glass stopper lid, which was identified as an Andronicus jar with its label removed. This jar was substantially in the form of the KDE shape mark –

142    On the basis of the evidence I have identified, I am satisfied that instant coffee was sold in Australia under the Andronicus brand in a jar substantially resembling the KDE shape mark from the middle of 1981 to at least 13 March 1985.

143    The second of the brands to which Cantarella drew attention on its cross-claim was the “Park Avenue” brand. As noted above, Cantarella read to the Court an affidavit of Leigh Alfred Harrison, who has been a director of Abel Lemon Trading Pty Ltd since 1992. Mr Harrison was not required for cross-examination, and his evidence was therefore unchallenged. In his affidavit, Mr Harrison referred to his inability to remember certain details. I accept, however, that Mr Harrison’s evidence about the “Park Avenue” brand can be relied upon in relation to the matters it positively addresses.

144    Mr Harrison became the Sales Director for Abel Lemon Food Services (a predecessor of Abel Lemon Trading Pty Ltd) in 1993. Mr Harrison deposed that, in around 1993, Abel Lemon Food Services imported approximately four to six shipping containers (each 20 feet in length) of a coffee product known as “Park Avenue” from Brazil. Annexed to Mr Harrison’s affidavit was an excerpt from the 21 April 1993 edition of the “Australian Supermarket News”, which contained an article about Park Avenue instant coffee, accompanied by the following photograph –

145    Mr Harrison stated that Park Avenue coffee was not sold in any packaging format other than the one depicted in this photograph. Park Avenue coffee was sold only in the two sizes shown in the photograph, being a 100-gram size and a 200-gram size. Mr Harrison stated that Park Avenue coffee was sold in supermarkets nationally, though he could not recall which particular supermarkets stocked it. He also deposed that Park Avenue coffee was advertised using in-store promotions in addition to the article in the “Australian Supermarket News”.

146    Mr Harrison stated that Abel Lemon Food Services did not continue to import the Park Avenue coffee product, or place any further orders, after the initial order. Based on his experience, Mr Harrison stated that he believed it would have taken supermarkets around six to 12 months to sell through the supplied stock of Park Avenue instant coffee.

147    The third brand relied upon by Cantarella in support of its cross-claim was the “Bomcafé” brand. Unlike Andronicus and Park Avenue, there is no evidence that any instant coffee has ever been sold in Australia under the Bomcafé brand. In evidence, however, was a copy of a web page for Bomcafé, part of which showed three clear jars of instant coffee substantially in the form of the KDE shape mark –

148    I have said that there is no evidence Bomcafé was ever sold in Australia. The web page that is in evidence contains several indications that support a finding that no Bomcafé products had been sold in the jar depicted, at least by the date the copy of the web page was made. For example, the web page states –

(a)    “We aim to offer masterly crafted coffee-based products”;

(b)    “Bomcafé will offer a truly exceptional specialty coffee”;

(c)    “Our unique range … will include” various products;

(d)    “Here are a few samples of our 60+ products and an overview of proposed design concepts for a new line to be developed”; and

(e)    “Artwork designs, illustrations and photographs/images on this website and in our brochures depict finishes and features of the proposed packaging for the brand. Artwork designs and all rendered packaging concepts displayed herein are for presentation only and may be subject to changes before packaging manufacturing process and/or a product launch”.

149    Indeed, while nothing particularly turns on this, I am not satisfied that any Bomcafé product has ever been sold in Australia, or that Bomcafé has any reputation in Australia.

The marketing experts

150    As I mentioned earlier, the parties called two witnesses with expertise in marketing, namely Professor Richard Don O’Sullivan, who was called on behalf of the applicants, and Mr Paul Lindsay Blanket, who was called on behalf of Cantarella.

The applicants’ marketing expert — Professor O’Sullivan

151    Professor O’Sullivan is a Professor of Marketing at Melbourne Business School within The University of Melbourne. Professor O’Sullivan has held various positions at Melbourne Business School since 2008. Before this, he was a Lecturer in Marketing at University College Cork (in Ireland) from 1992 to 2007, except for a period between 2000 and 2003, when he worked as the Director of Strategic Marketing at a marketing services company called TecBrand. At TecBrand, Professor O’Sullivan’s duties involved advising clients on marketing strategy and brand management. Professor O’Sullivan has attained the degrees of Bachelor of Commerce, Masters in Business Studies, and Doctor of Philosophy within University College Cork. Alongside his research and teaching in marketing at Melbourne Business School, he spends about a quarter of his time working as a marketing consultant to businesses.

152    Professor O’Sullivan produced two reports of his own, as well as contributing to a joint report with Mr Blanket.

Professor O’Sullivan’s first report

153    Professor O’Sullivan’s first report was dated 26 May 2023. This report addressed eight questions put to Professor O’Sullivan by the applicants’ solicitors in a letter of instructions dated 24 March 2023. In his first report, Professor O’Sullivan proceeded on the basis of assumptions and material provided to him in that letter, as well as further assumptions provided in a supplementary letter from the applicants’ solicitors dated 3 May 2023.

154    Professor O’Sullivan commenced his first report by explaining some key concepts he deployed to ground his opinions. He explained that, in a marketing context, the term “brand” refers to a “name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers”. Professor O’Sullivan explained that, in accordance with the usage of marketing academics and practitioners, he treated the terms “brand” and “trade mark” as having the same meaning. He also explained that he used the term “brand element” when referring to any feature that identifies one seller’s good or service as being distinct from those of other sellers. He stated that the expression “line extension” refers to the use of an established brand to market products in a new market segment, while the expression “brand extension” refers to the use of an established brand to promote a completely different type of product, in a new category.

155    He further stated that, in a marketing context, “involvement” refers to the perceived relevance of an object to a consumer and is based on their inherent needs, values, and interests. He opined that consumers tend to engage in a more considered assessment of available information when they are more highly involved.

156    Professor O’Sullivan stated that a “diagnostic cue” is any stimulus that people rely on in order to categorise objects, and that “brand elements” operate as diagnostic cues when they are relied upon by consumers engaged in brand search and identification. Professor O’Sullivan opined that consumers, when faced with multiple diagnostic cues, tend to place greater weight on cues that are perceived to be more useful in identifying the brand or differentiating between products from different brands in the same category. In Professor O’Sullivan’s view, for consumers to rely on a brand element as a diagnostic cue, it must be an element that consumers both notice and link uniquely to the brand. He stated that, while consumers may rely on a logo as a diagnostic cue, they may also rely on cues like colour and other elements of packaging to identify and notice specific brands. Professor O’Sullivan gave his opinion that packaging is an important aspect of the way brands are identified, particularly for brands sold in supermarkets.

157    Professor O’Sullivan was asked to comment on how the principles explained in the first section of his report applied in the context of instant coffee products for sale in Australia. Professor O’Sullivan relied upon prior studies, which in his view “point[ed] to instant coffee being a low-involvement product category for consumers”. Professor O’Sullivan also stated that, in a supermarket context, consumers will select from a wide array of products and brands in a matter of one or two seconds. He stated that it was his opinion that, in line with the “principle” of diagnostic cues, consumers will tend to seek out distinctive brand elements and screen out stimuli that are not diagnostic. Consumers looking for their usual brands, Professor O’Sullivan opined, are likely to search for the brands’ key elements, including logo, package shape, and other distinctive elements. Professor O’Sullivan opined that package shape is used as a brand element by several instant coffee brands available in Australian supermarkets, most notably Moccona, Robert Timms, and Nescafé Blend 43.

158    Professor O’Sullivan was also asked to give his opinion as to what consumers would recognise as the key branding elements in relation to Moccona instant coffee products. As part of his response to this question, Professor O’Sullivan identified the Moccona logo, sub-brands, the colour scheme, imagery, numbering on labels, descriptors, and packaging shape and material as elements that appear in relation to Moccona instant coffee products. With respect to their weighting, Professor O’Sullivan stated that, as well as appearing on jars of Moccona coffee, the Moccona logo appears on products such as packets of ground or bean coffee, coffee capsules, and sachets. He opined that, as the Moccona logo is common to a range of products, consumers searching for Moccona instant coffee products may not rely upon the Moccona logo as the most diagnostic cue. By contrast, he opined that the cylindrical glass jar with a flat-topped glass stopper is likely to be perceived by consumers as being highly diagnostic, and thus relied on heavily when searching for Moccona instant coffee products. The basis for this opinion was that Moccona is offered for sale in a form of packaging that is unique within the category and uniform across the jars in the range, and which has remained consistent since the brand’s introduction to the market.

159    Professor O’Sullivan was asked whether consumers were likely to perceive the shape of the Moccona jar as indicating a connection in the course of trade between the product and Moccona. He stated that, in his opinion, many consumers are likely to perceive the shape of the Moccona jar as indicating such a connection. In brief terms, the considerations that formed the basis for this opinion were identified as the following –

(a)    the brand has been present and prominently displayed in supermarkets in Australia for many years;

(b)    awareness of the cylindrical glass jar with a flat-topped glass stopper, and association of it with the Moccona brand, is likely to be high due to the uniqueness of this packaging in the instant coffee category;

(c)    the Moccona jar is unique to Moccona instant coffee products, and so consumers are likely to have relied upon this feature when searching for products in store;

(d)    the Moccona jar will be familiar through actual regular usage of the jar to consumers who have purchased it;

(e)    efforts have been made over many years to associate in the minds of consumers the cylindrical glass jar with a flat-topped glass stopper with the Moccona brand; and

(f)    advertising of Moccona instant coffee products has, at times, presented the jar as an item of value in itself, not simply as a container, and these advertising initiatives would only have been repeated if they “generated meaningful participation from consumers”.

160    Professor O’Sullivan was also asked to consider what consumers would recognise as the key branding elements of the Vittoria 400-gram product. He identified the Vittoria logo, the label on the jar, the package shape, and the branded packing trays in which the products were displayed as the key branding elements of the Vittoria 400-gram product.

161    Professor O’Sullivan was asked to consider whether consumers were likely to perceive the shape of the Vittoria 400-gram jar as indicating a connection in the course of trade between the product and Vittoria. In response, he opined that consumers were likely to perceive the shape of the Vittoria 400-gram jar as indicating such a connection. He gave his opinion that package shape is used as a brand element for the Vittoria 400-gram product, and reiterated that a brand element identifies one seller’s good or service as distinct from those of other sellers. Professor O’Sullivan further opined that it was a highly noticeable feature of the Vittoria 400-gram product that it was packaged in a cylindrical glass jar with a flat-topped glass stopper. Because it was a highly noticeable feature, Professor O’Sullivan opined that consumers were likely to view package shape as a brand element. He also expressed the opinion that consumers were likely to rely on the package shape when identifying the Vittoria 400-gram product. To adopt Professor O’Sullivan’s terminology, that would appear to mean that package shape also constitutes a “diagnostic cue” in relation to the Vittoria 400-gram product.

162    Professor O’Sullivan was asked whether there is a “real risk” that consumers who know, but have an imperfect recollection of, the shape of the Moccona jar will see the shape of the Vittoria jar and be caused to wonder whether it might not be the case that the products come from the same source or are otherwise related. Professor O’Sullivan stated that, in his opinion, there is such a risk. The gist of the reasoning underpinning his opinion was that –

(a)    consumers are likely strongly to associate Moccona instant coffee products with a cylindrical glass jar with a flat-topped glass stopper;

(b)    consumers searching for Moccona instant coffee are likely to look for a cylindrical glass jar with a flat-topped glass stopper;

(c)    some consumers are likely to have an imperfect recollection of the Moccona jar;

(d)    the way that Moccona products and the Vittoria 400-gram product are displayed, presented, and marketed could lead consumers into confusion;

(e)    a lack of recognition of the Vittoria brand in the instant coffee category would amplify the risk of confusion, as consumers faced with a Vittoria product would pay less attention to the brand name, and presumably focus on other “diagnostic cues” instead; and

(f)    the Moccona jar and the Vittoria 400-gram jar have a similar appearance.

163    The next question put to Professor O’Sullivan was whether, in his view, there was a likelihood that consumers who know the Moccona instant coffee products would see the Vittoria 400-gram product and believe it to be connected, associated, or affiliated with Moccona or its products. Professor O’Sullivan stated that, in his opinion, a strong likelihood of this existed in relation to a not insignificant proportion of consumers. As well as the points addressed in his response to the previous question, Professor O’Sullivan referred to the concept of “co-branding” in support of his opinion. “Co-branding” occurs when brands owned by separate traders are used together to promote a product. Professor O’Sullivan’s opinion was that consumers may infer that the Vittoria 400-gram product represented an alliance between Vittoria and Moccona.

Professor O’Sullivan’s second report

164    Professor O’Sullivan’s second report was dated 25 August 2023. For the purposes of this second report, Professor O’Sullivan was asked to consider Mr Blanket’s first report and to comment on any matters discussed in that report with which Professor O’Sullivan did not agree, or on which he otherwise wished to comment.

165    In this report, Professor O’Sullivan expressed particular disagreement with Mr Blanket’s opinions regarding –

(a)    the meaning and application of the concept of diagnostic cues;

(b)    the circumstances in which packaging can amount to a brand element;

(c)    the concepts of line extension and brand extension;

(d)    the likelihood of consumer confusion between Moccona instant coffee and the Vittoria 400-gram product; and

(e)    the likelihood that consumers would perceive a connection between the traders standing behind Moccona and Vittoria.

166    Professor O’Sullivan also provided commentary on the evidence of Mr Hill, the Chief Operating Officer of Cantarella, as well as his opinions as to the similarities and differences between the shapes of the KDE shape mark and the Vittoria 400-gram product. In particular, Professor O’Sullivan identified as key similarities his opinion that (a) both jars have a flat-topped stopper; (b) both jars are cylindrical; and (c) both jars have a high shoulder. He also noted some differences between the jars, being that the KDE shape mark has a taller stopper, and that the KDE shape mark has a taller shoulder.

Cross-examination of Professor O’Sullivan

167    Professor O’Sullivan was cross-examined at length in the concurrent evidence session with Mr Blanket. The topics upon which Professor O’Sullivan was examined included his precise conception of “brand elements”, the various sources on which he relied, his views on consumer behaviour, and the similarities and differences between the Vittoria 400-gram product and Moccona instant coffee. Professor O’Sullivan’s evidence generally adhered to the positions taken in his reports and the joint expert report. Cross-examination did, however, expose some difficulties with aspects of Professor O’Sullivan’s evidence, which I will explain further below when I explain my conclusions on the weight that I give to the marketing expert evidence.

Cantarella’s marketing expert — Mr Blanket

168    As I mentioned earlier, Mr Blanket is the Founder and Principal of First Impressions Pty Ltd, a marketing and communications consulting firm, which he established in 1987. From 1974 to 1980, he was employed by Unilever Australia Pty Ltd in various marketing positions, including as Group Product Manager for Streets ice cream. From 1980 to 1987, Mr Blanket was employed as a Group Account Director for an advertising agency. Mr Blanket has attained the degrees of Bachelor of Commerce (Marketing) and Master of Commerce (Marketing) within the University of New South Wales. He has also completed postgraduate programs such as the University of Melbourne Management Program. Mr Blanket is a Fellow of the Australian Marketing Institute and has gained Certified Practising Marketer status. He is also an Adjunct Professor of Marketing and Sessional Academic at the Macquarie Graduate School of Management and Macquarie Business School. Mr Blanket has experience in the marketing of coffee products.

169    Mr Blanket produced two reports of his own, as well as contributing to the joint report with Professor O’Sullivan.

Mr Blanket’s first report

170    Mr Blanket’s first report was dated 28 July 2023. For the purposes of this report, Mr Blanket was asked by Cantarella’s solicitors to provide his understanding of various marketing issues, and to comment on Professor O’Sullivan’s first report.

171    Mr Blanket was asked to provide an outline of his understanding of certain marketing concepts and theory. Mr Blanket explained what he understood by the terms “brand”, “consumer involvement”, “diagnostic cues” and “heuristics”, and “line extension” and “brand extension”. In some respects, Mr Blanket’s understanding of these terms differed from the way Professor O’Sullivan deployed them. Some of the differences related to questions of definition or labelling. These differences are not material to any question, provided the evidence of both witnesses is understood according to the substance of what it conveys, rather than by picking up and deploying terms of art in marketing as being determinative of any legal question. Other differences were more substantive, and related to questions such as how consumers form preferences, and factors that influence buyer behaviour other than involvement.

172    Mr Blanket was also asked to explain his understanding of the coffee market in Australia. Essentially, Mr Blanket proffered the view that the retail coffee market has three segments: fresh coffee, instant coffee, and coffee-making equipment. He also explained the concept of co-branding, and the dual role of packaging as performing a function and communicating something to the consumer.

173    Mr Blanket was asked to consider the Vittoria 400-gram product and identify the brands in use in relation to it. Mr Blanket identified three primary diagnostic cues, being the Vittoria brand name, the Vittoria logo, and the vertical stripe adjacent to the Vittoria name in the Vittoria logo. He also identified various secondary diagnostic cues, including gold stripe accents, the use of the Vittoria logo on the lid of the jar, and the embossed Vittoria logo on the base of the jar. Mr Blanket expressed the opinion that the shape of the Vittoria 400-gram glass jar did not operate as a brand. That was because, first, “it is only where packaging is truly innovative and breaks the mould that it can operate as a brand”, and because the jar has a functional purpose. Mr Blanket stated that because various packaging types are used across the range of Vittoria products, consumers would not associate any particular packaging format with the Vittoria brand.

174    Mr Blanket was also asked to consider a variety of Moccona instant coffee products and identify the brands in use in relation to them. He identified as primary diagnostic cues the Moccona brand name and the Moccona logo. Mr Blanket did not consider the shape of the Moccona jar to be a primary diagnostic cue. One reason the shape of the Moccona jar was not a primary diagnostic cue in Mr Blanket’s opinion was that it varied across the range, with the 150-gram jar being relatively taller and thinner in its proportions. This opinion was not displaced by his review of various advertisements for Moccona. Mr Blanket identified the slight curve at the top edge of the label on Moccona instant coffee products as a weak secondary diagnostic cue.

175    Mr Blanket was asked to offer his opinion on the similarities and differences between the appearance of Moccona instant coffee products and the Vittoria 400-gram product, and to explain whether consumers would perceive any connection between the Vittoria 400-gram product and Moccona. Mr Blanket identified the following features as visual similarities –

(a)    the containers for both products are jars made of glass;

(b)    both jars have transparent sections above and below the product label; and

(c)    the lids of both jars are largely flat on top and use a plastic or rubber seal.

176    Mr Blanket identified the following features as visual differences –

(a)    differences between the labels in terms of brand name, colour, and logo;

(b)    differences in the shape and structure of the products’ lids, with the Moccona jar having a deeper lid as a proportion of the overall height, with a stepped profile;

(c)    the presence of a label on the top of the Vittoria 400-gram product’s lid; and

(d)    the embossed Vittoria logo on the base of the Vittoria 400-gram product.

177    In view of these features, Mr Blanket expressed the opinion that consumers would not perceive any connection between the Vittoria 400-gram product and Moccona instant coffee products.

178    Mr Blanket also made observations on related topics and points arising out of the first report of Professor O’Sullivan. He also provided his opinion on the diagnostic cues that were used in relation to the Andronicus and Park Avenue brands of instant coffee.

Mr Blanket’s second report

179    Mr Blanket’s second report was dated 3 October 2023. Mr Blanket’s second report addressed points arising out of Professor O’Sullivan’s second report, identified areas where Mr Blanket believed he and Professor O’Sullivan agreed or disagreed, and otherwise contained comments on Professor O’Sullivan’s second report.

180    In his second report, Mr Blanket responded to various points raised in Professor O’Sullivan’s second report. In particular, Mr Blanket gave his opinions on certain questions of methodology, consumer behaviour, and the meaning of diagnostic cues. A theme that ran through Mr Blanket’s evidence in this report, in addition to his first report, was that consumers will generally rely on a feature of a product to identify the source of that product when the feature is used consistently across the range of products produced as part of that brand. His distinction between “primary” and “secondary” diagnostic cues picks up on this theme, and states that the strength of a diagnostic cue depends on the uniqueness of the cue and the consistency with which it is used across the range of products.

Cross-examination of Mr Blanket

181    Mr Blanket was also cross-examined as part of the concurrent evidence session with Professor O’Sullivan. Mr Blanket was cross-examined on many of the same topics as Professor O’Sullivan. A main area of focus in the cross-examination of Mr Blanket related to the definitions of various terms, and whether Mr Blanket considered that particular jars, or other features of products, amounted to a brand element. Mr Blanket also offered his opinions on consumer behaviour and the realities of marketing brands in a supermarket context. As I will explain, there were certain aspects of Mr Blanket’s evidence in cross-examination which, while offered in a forthright manner, revealed inconsistencies that limit the weight to be given to some aspects of Mr Blanket’s evidence.

The joint report of the marketing experts

182    Professor O’Sullivan and Mr Blanket also produced a joint report setting out their opinions on six topics. Those topics concerned –

(a)    the key principles of marketing and consumer decision-making relevant to the facts of this case;

(b)    the brand(s) used in relation to Moccona instant coffee products;

(c)    whether the shape of the Moccona jar would be perceived by consumers as a brand;

(d)    the brand(s) used in relation to the Vittoria 400-gram product;

(e)    whether the shape of the Vittoria 400-gram product would be perceived by consumers as a brand; and

(f)    whether consumers would see the Vittoria 400-gram product and believe that it was connected, associated or affiliated with Moccona or Moccona products.

183    With respect to the first topic, the experts agreed to a fair extent on the principles of marketing that relate to “brands”, “involvement”, “diagnostic cues”, “line extension”, “co-branding”, and the “principles of packaging”. The experts disagreed, however, as to whether and when a package shape can be a brand element, and whether there is any utility in drawing a distinction between “primary” and “secondary” diagnostic cues.

184    There was less agreement with respect to the remaining topics, and the experts largely reiterated the positions they had adopted in their individual reports on related questions.

Analysis of the evidence of the marketing experts

185    As the preceding summary shows, the evidence of the marketing experts focused on how traders create and deploy “brands”, and how consumers interact with “brands” in the context of retail purchases. The six topics canvassed in the joint expert report were essentially designed to explain the concept of a “brand” and some related concepts, to identify what brands were used in relation to jars of Moccona instant coffee and the Vittoria 400-gram product, and ultimately to offer an opinion on whether consumers would perceive a connection in the course of trade between the two, or between the Vittoria 400-gram product and the traders that stand behind the Moccona brand.

186    Viewed broadly, the expert evidence was presented on the footing that it was relevant to several questions in the case. The evidence as to the use of “brands” on the Moccona jar, including whether the shape of the jar is used as a “brand”, was directed towards the non-use case on Cantarella’s cross-claim. Conversely, evidence concerning whether the shape of the Vittoria 400-gram jar amounted to a “brand” was directed towards the applicants’ infringement case. Evidence about the likelihood of consumers confusing the two, or perceiving some connection between them, was directed towards the question of deceptive similarity on the infringement case, as well as the claims for misleading or deceptive conduct and passing off.

187    In my analysis, the evidence of the marketing experts does not greatly assist in deciding these issues. There are three main reasons for this.

188    First, the language and — more importantly — the concepts deployed by the marketing experts were the language and concepts of marketing, not trade mark law. This is no criticism, as the experts were invited to give evidence on the basis of their expertise, which lay in marketing. But it became clear that there were large mismatches between the questions the experts were addressing, and those the Court must decide.

189    Take the concept of a “brand”. The same word appears in the definition of “sign” in s 6(1) of the Trade Marks Act. The principles that determine whether a given “sign” is, in fact, being used as a trade mark are those I explain below. In brief terms, the question of trade mark use requires the Court to determine whether a given sign is being used a badge of origin to indicate a connection in the course of trade between goods and their source. But this was not the question the experts answered.

190    Professor O’Sullivan’s evidence emphasised the concept of a “diagnostic cue”, or a feature that is used by consumers to identify something or distinguish it from something else. This concept is broader than the legal concept of a trade mark. Anything that is discernible and distinctive about goods can be used as a diagnostic cue. For example, if only one producer of instant coffee were to market a 750-gram jar, consumers could successfully rely on the size of the jar as a “diagnostic cue” for identifying that producer’s coffee. But, without more, nothing about this example suggests that the size of the jar is being used as a badge of origin. In this way, the concepts deployed by Professor O’Sullivan were too broad to answer the narrower question the Court must confront.

191    Nor did Mr Blanket’s evidence align sufficiently with the questions before the Court. This time, however, the concepts he deployed were narrower than the legal concept of a trade mark. In cross-examination, Mr Blanket emphasised the concept of the “core elements of a brand”. He seemed to suggest that a feature will not amount to a core element of a brand, or perhaps even a brand element at all, if the feature does not appear consistently in relation to the entire range of products within the brand, or if it is not necessary for consumers to use for the purposes of identifying products within that brand. During cross-examination, examples were given of the Coca-Cola bottle and the triangular prism involved in the Toblerone packaging. Mr Blanket appeared to suggest that the bottle and packaging would not amount to core brand elements because some Coca-Cola and Toblerone products are sold without them. There is no corresponding rule of law that a trade mark must be used in relation to all products sold under a particular head “brand”. Indeed, the fact that Pepsi was also sold in packaging other than the Carolina bottle did not prevent Besanko J from concluding that the Carolina bottle was used as a trade mark in relation to Pepsi: see Coca-Cola Co v PepsiCo Inc (No 2) [2014] FCA 1287; 109 IPR 429 (PepsiCo) at [74], [76].

192    For this reason, while the concepts Professor O’Sullivan and Mr Blanket deployed are doubtless relevant to the theory and practice of marketing, they did not correspond to the questions before the Court. I have found that my analysis on questions of trade mark use is not assisted much by the evidence of either expert.

193    The second reason that the evidence of the marketing experts does not provide great assistance is that it was addressed to issues that are, ultimately, for the Court. This is not a trial by expert. The questions of trade mark use, deceptive similarity, and confusion in passing off are questions of fact, which require the Court to decide for itself issues of characterisation and evaluation against legal standards. More than that, the question of deception or confusion has repeatedly been described as a “jury question”. In General Electric Co (of USA) v General Electric Co Ltd [1972] 1 WLR 729 at 738, Lord Diplock, with whom Lord Reid, Lord Simon and Lord Kilbrandon agreed, stated –

[W]here goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a “jury question.” By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.

The question does not cease to be a “jury question” when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge’s approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. … That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established …

194    This statement was endorsed by the Full Court in Murray Goulburn Co-Operative Co Ltd v New South Wales Dairy Corp (1990) 24 FCR 370 at 377 (Lockhart, Pincus and von Doussa JJ). It has also been applied by judges of this Court at first instance: see, eg, Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik [2002] FCA 390; 56 IPR 182 (Anheuser-Busch) at [151] (Allsop J); Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905; 308 ALR 74 (Adidas) at [215] (Robertson J). Similar observations have been made in relation to the limited assistance given by expert evidence in determining whether consumers are likely to be misled for the purposes of misleading and deceptive conduct claims, because that too is ultimately a matter for the Court’s impression: Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139 (Global Retail Brands) at [29] (Nicholas, Katzmann and Downes JJ); Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247; 139 FCR 215 at [21]–[22] (Wilcox, Heerey and RD Nicholson JJ); Cat Media Pty Ltd v Opti-Healthcare Pty Ltd [2003] FCA 133 at [55] (Branson J).

195    Consequently, the Court’s task is not simply to weigh the opinions of experts on these questions. The Court’s task is to make its own assessment, based on all the evidence and keeping in mind the legal question that is being asked. In making my assessment, I have not found it helpful to give much weight to the opinions of marketing experts on whether consumers are likely to confuse the Vittoria 400-gram product with Moccona instant coffee. I have preferred to reach my own conclusions of the likelihood of deception and confusion, based on my assessment of the Vittoria 400-gram product, the KDE shape mark, and the Moccona jar more generally when relevant, as well as the retail setting in which they are sold.

196    The third reason why the expert marketing evidence will not greatly assist the Court is that there were certain aspects of the evidence that I did not find persuasive, even in their own terms.

197    For example, Professor O’Sullivan was asked questions during cross-examination about some of the scholarly sources cited in his evidence. One proposition in Professor O’Sullivan’s first report was that consumers make purchase decisions “commonly within one or two seconds of arriving at the category in a supermarket aisle”. During cross-examination, however, Professor O’Sullivan accepted that participants in the study cited to support this proposition were “asked to make a choice within three seconds”. In other words, the study did not provide evidence for how long consumers would take to make a choice when left to their own devices. Nevertheless, Professor O’Sullivan contended that this study did provide support for the proposition put forward in his report. Professor O’Sullivan also pointed to other published works that indicated that consumers would make a decision within a short time, but the Court was not taken to a paper showing that they do so within one or two seconds. I was left with the impression that Professor O’Sullivan’s opinion on this subject reflected his own extrapolation from the studies cited, rather than the unadulterated results of those studies. While the opinions themselves may be unexceptionable, it has not always been easy to tell where the sources cited by Professor O’Sullivan shade into his own analysis and extrapolation.

198    There were also some points of difficulty with the evidence of Mr Blanket. For example, Mr Blanket expressed his agreement in the joint expert report with the proposition that a brand is “a name, term, design, symbol, or other feature that identifies one seller’s good or service as distinct from those of other sellers”. During cross-examination, Mr Blanket described various coffee jars as being “secondary diagnostic cues”. He described diagnostic cues as “elements that manufacturers create that consumers take out to determine and to recognise particular brands”, albeit that some (primary) diagnostic cues are more effective than other (secondary) diagnostic cues. Mr Blanket also made comments, both in the joint expert report and in cross-examination, to the effect that certain coffee jars were secondary diagnostic cues, “not … brand element[s]”. But Mr Blanket did not explain why he considered that a jar used, to some extent, by consumers “to determine and to recognise particular brands” could not be a “feature that identifies one seller’s good or service as distinct”. It was not always clear that Mr Blanket was deploying relevant terminology in a consistent way.

The industrial design experts

199    I can deal with the evidence of the parties’ industrial design experts more briefly, as their evidence was more confined in scope, and generally less contentious.

The applicants’ industrial design expert — Mr Andrew Simpson

200    Mr Simpson is an industrial designer and a principal of Vert Design Pty Ltd, an industrial design consultancy firm. He has attained the degree of Bachelor of Design (Industrial) within the University of Technology Sydney. As well as his experience in industrial design, Mr Simpson has experience as a glass-blower and glass-designer. Mr Simpson’s industrial design experience includes work in the coffee industry with brands such as Nescafé, amongst others. In 2018, Mr Simpson received a Churchill Fellowship to gain knowledge of glass-mould-making for art, craft and industrial production. As part of that fellowship, Mr Simpson travelled to glass studios, museums and factories in several countries to learn about the production of glass moulds.

201    Mr Simpson produced a report dated 4 September 2023. In his report, he explained the design process he adopts when working with a client on a new brief. That process has several stages, including: discovery and research; concept-generation; concept-development; design-refinement; a first round of prototyping; cost-optimisation; detailed design for manufacture and design-handover documentation; and a second round of prototyping.

202    Mr Simpson opined that good design attempts to meet consumers’ needs in three ways, by creating a product that is functional, desirable, and rationalised. Mr Simpson explained that “functional” requirements are the minimum requirements that need to be met for the product to be used as intended. He also said that “desirability” is essentially about making the product desirable to a consumer, and that “rationalisation” is about the justification for the purchase, whether that be based on value, sustainability, re-usability or other factors.

203    Mr Simpson expressed his view that it is necessary to consider the “affordance” that a product or its packaging conveys to a consumer. He explained that the term “affordance” is generally used to mean the properties a product provides to the user, or to describe the relationship between the product and the user. Mr Simpson identified, by way of example, that a chair provides the affordance of sitting to a user.

204    Mr Simpson was asked to comment on the matters that he would consider if a client briefed him to design new packaging for an instant coffee product. Mr Simpson opined that any packaging for instant coffee must meet the following two functional requirements –

(a)    it must be fillable and transportable in a way that keeps the coffee as dry as possible; and

(b)    it must allow the instant coffee to be accessible by a consumer in a variety of settings.

205    Mr Simpson said that once those two functional requirements were met, there was substantial freedom when designing instant coffee packaging. Mr Simpson referred to the varieties of packaging in which instant coffee is sold in Australia to illustrate this last proposition.

206    Mr Simpson also acknowledged that packaging needs to meet other requirements, depending on the channel through which the product in question is sold. By way of example, Mr Simpson referred to the fact that products sold in supermarkets may have to meet requirements imposed by supermarkets as to minimum or maximum heights.

207    In terms of “softer” requirements, Mr Simpson opined that it may also be necessary to consider whether there are any design characteristics generally present in products of a particular kind that might give consumers a cue that they are shopping within a particular product category.

208    Mr Simpson also offered some responses to aspects of Mr Francis’s report, which I will summarise next. In particular, Mr Simpson expressed a view that differed from Mr Francis’s opinion as to the practical and functional benefits of a flat-topped lid on a jar. Mr Simpson said that –

(a)    glass lids can, practicably, never be completely flat;

(b)    there are more ways to place lids on top of jars than Mr Francis acknowledged; and that

(c)    when jars are packed for shipping, cardboard or similar material is usually placed between each layer of jars, which reduces the need for flat-topped lids to avoid breakage, and also accommodates curved punts on glass jars, which do not readily allow for stacking.

209    Mr Simpson also disagreed that it is functionally, commercially or practically necessary to use a cylinder-shaped jar. In this respect, he referred to non-cylindrical jars that are currently used to contain instant coffee in Australia. Mr Simpson also stated that other shapes of jar, such as a hexagonal shape, would be just as practicable and cheap to produce as cylindrical jars in light of current production techniques, though he acknowledged that it could cost slightly more to apply a label to a non-cylindrical jar. Mr Simpson also disagreed that it is necessary for a coffee jar to allow a hand to be inserted, provided that the coffee could be spooned or scooped out of the jar.

Cantarella’s industrial design expert — Mr David Francis

210    Mr Francis is a Director at D3 Design, a specialist packaging and product design consultancy. He holds a Bachelor of Science (Industrial Design) from the University of Canberra. He has worked in the field of industrial design since graduating from university in 1981. Mr Francis produced two reports that were relied upon in the proceeding.

Mr Francis’s first report

211    Mr Francis’s first report was dated 28 July 2023. In this report, he stated that, in around 2007, he was involved in a re-design of the jar used to contain Nescafé Gold instant coffee. Mr Francis has also been involved in designing packaging for the Piazza D’Oro brand of ground coffee, as well as Robert Timms instant coffee. Mr Francis stated that he often visits manufacturing facilities used by his clients, to improve his understanding of the process of manufacturing packaging, and labelling and assembling the final product.

212    Mr Francis summarised the industrial design process as including the following stages: discussing the brief; examining the “competitive set” in the relevant category; starting the process of designing the packaging and creating sketches, drawings and three-dimensional renders; seeking approval of the concept; and confirming manufacturing methods, undertaking detail design and making physical mock-ups.

213    Mr Francis conducted his own analysis of the similarities and differences between the KDE shape mark and the Vittoria 400-gram product. He also compared the KDE shape mark against images of the Andronicus and Park Avenue jars. For reasons that will become clear later, it is not necessary for me to summarise Mr Francis’s conclusions.

214    Part of Mr Francis’s analysis was to summarise aspects of the shape of the Vittoria 400-gram product’s packaging, or cylindrical jars in general, that were influenced by practical considerations. For example, Mr Francis stated that the thin lid of the Vittoria 400-gram product would use less glass than the lid of the KDE shape mark, which brought the commercial advantage of being cheaper to manufacture. Of course, this assumed that the KDE shape mark would be realised in glass, which is no part of the mark as registered. Mr Francis also opined on the different ways that jars in the form of the Vittoria 400-gram product and the KDE shape mark might be opened.

215    With respect to the lids of the two containers, Mr Francis stated that the KDE shape mark’s more “intricate and complex” design could also reflect an aesthetic choice. Mr Francis outlined what he saw as the benefits of using flat-topped lids, including that they are easier to transport on their own, they are easier to combine with container bodies, and they are easier to transport when so combined.

216    Mr Francis stated that, because of the way that glass containers are manufactured, cylindrical jars are more practicable to manufacture. With respect to container openings, Mr Francis opined that it would be necessary for a consumer to insert a hand into the jar while using a spoon to get to the contents at the bottom of the jar, and that this influenced the range of sizes that the openings in the containers could practically take.

217    As for the bottom of the jars, Mr Francis said that the Vittoria 400-gram product, unlike the KDE shape mark, had a “plinth” adjoining the base of the jar’s body, which did not serve any functional purpose and was largely aesthetic.

218    Mr Francis also referred to Kilner storage jars in his first report, and I will explain the relevance of this reference later in these reasons.

Mr Francis’s second report

219    Mr Francis’s second report was dated 28 September 2023. This report largely comprised Mr Francis’s responses to aspects of Mr Simpson’s report. Mr Francis agreed with a number of aspects of Mr Simpson’s report.

220    One area of disagreement identified in Mr Francis’s second report concerned the functional requirements for the packaging of instant coffee. Mr Francis stated that, while Mr Simpson had identified two important functional requirements, there were additional requirements including –

(a)    the cost of manufacture and transport;

(b)    efficiency of manufacture and production;

(c)    retailer requirements;

(d)    labelling design requirements; and

(e)    any specific client requirements.

The joint report of the industrial design experts

221    Mr Simpson and Mr Francis collaborated on a report that addressed the following four topics –

(a)    the requirements in relation to the design of instant coffee packaging;

(b)    the overall visual impression created by the shapes of the KDE shape mark and the Vittoria 400-gram product;

(c)    the extent to which the shapes of the KDE shape mark and the Vittoria 400-gram product reflect functional or aesthetic considerations, including the identification of any relevant similarities or differences, if appropriate; and

(d)    the proportionality of Moccona jars.

222    With respect to the first topic, Mr Simpson and Mr Francis said that they were in agreement, and set out typical requirements as including functional packaging requirements, functional user requirements, brand requirements, manufacturing parameters, transport requirements and retailer requirements.

223    As for the second topic, Mr Simpson and Mr Francis agreed that the KDE shape mark and the Vittoria 400-gram product share the overall visual impression of being cylindrical jars, with smaller diameter stopper lids that fit inside the opening of the container. Mr Simpson and Mr Francis identified differences in detail, especially relating to the shapes and proportions of the containers’ respective lids, shoulder profiles, and base details. Mr Simpson and Mr Francis agreed that the Vittoria 400-gram product represents “an improvement” of the KDE shape mark. The experts agreed that both containers “lean on the historical reference” to traditional storage jars, while also including modern improvements. Overall, Mr Simpson and Mr Francis agreed that the visual impressions created by the KDE shape mark and the Vittoria 400-gram product were different, stating that there were design elements such as the lid, the foot and the shoulder details where the Vittoria jar design seemed to have purposely gone out of its way to be different.

224    Mr Simpson and Mr Francis’s evidence on the third topic largely corresponded to the evidence in their individual reports. They did agree, additionally, that a lid with a press seal is not the best way to produce an air-tight seal, and that such a lid required a pliable gasket which can make opening the lid more difficult. Mr Simpson and Mr Francis identified the base detailing and the shoulder profiles of the two containers as two features that serve aesthetic, rather than functional, purposes.

225    As for the fourth topic, Mr Simpson and Mr Francis agreed that Moccona-branded jars come in a range of proportions, but ultimately share “a constant family look across the range”.

Analysis of the evidence of the industrial design experts

226    The industrial design experts also gave evidence in concurrent session before the Court. Most of the cross-examination that occurred traversed issues already addressed in the reports I have summarised. At a high level, Mr Simpson and Mr Francis opined that the KDE shape mark evokes a traditional style of jar manufacturing, albeit in an updated fashion. Mr Francis suggested that the indentation in the lid of the KDE shape mark could be a legacy of an older style of jar that included a wire closure mechanism. For his part, Mr Simpson suggested that traditional designs can still have aesthetic qualities, and that there is a range of design decisions to be made within the broad category of “traditional jar”.

227    One point that emerged during oral evidence concerned the manner in which Mr Francis analysed the similarities and differences between the KDE shape mark and the Vittoria 400-gram product. Mr Francis explained that he, along with two other people, spent a couple of hours analysing the line drawings of the KDE shape mark, producing new technical drawings for the Vittoria 400-gram product, checking the accuracy of those drawings using callipers, analysing the line drawings of the KDE shape mark in relation to a Moccona jar, and comparing the two. In other words, Mr Francis conducted a detailed, side-by-side analysis of the two containers. As I will explain, this sort of analysis — while potentially helpful in its own terms — does not reflect the assessment that the Court is required to make, in relation to either the trade mark infringement claim, or the misleading or deceptive conduct and passing off claims. Without criticising Mr Francis or his methods in any way, which were entirely appropriate to yield the results he set out to achieve, I do not consider Mr Francis’s analysis to carry weight on the question of deceptive similarity or equivalent questions arising under the applicants’ other claims.

The Issues

228    The parties accepted that most of the liability issues raised by Cantarella’s cross-claim were logically anterior to the issues raised by the applicants’ claim of infringement of the registered trade mark. I will therefore consider those issues before addressing the claims of infringement, misleading and deceptive conduct in contravention of s 18 of the ACL, and the common law claim of passing off.

229    The parties prepared an agreed list of 14 issues. In relation to the cross-claim, the following issues arise, which largely correspond to the agreed list of issues –

(1)    Should the KDE shape mark be cancelled on the ground that it lacks distinctiveness?

(2)    Should the KDE shape mark be cancelled on the ground that, as at the priority date, KDE did not intend to use or authorise the use of the KDE shape mark in Australia as a trade mark in relation to instant coffee?

(3)    Should the KDE shape mark be removed from the Register on the ground that at no time in the period of three years prior to the filing of the cross-claim did KDE use the KDE shape mark in Australia as a trade mark in relation to instant coffee?

(4)    Should the KDE shape mark be cancelled on the ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars, or on the ground that it was entered on the Register as a result of false suggestion or misrepresentation?

(5)    Should the KDE shape mark be cancelled on the ground that the application for registration was made in bad faith?

(6)    Should the Court exercise statutory discretions in favour of KDE to refuse to cancel or remove the KDE shape mark?

230    In relation to the applicants’ claims, the following issues arise. For convenience, I continue the numbering sequence –

(7)    Is JDE AU, and has JDE AU been at all material times, an authorised user in Australia of the KDE shape mark?

(8)    Has Cantarella’s marketing and sale of its Vittoria 400-gram product in a glass jar involved the use of the shape of that jar as a trade mark?

(9)    Is the jar of the Vittoria 400-gram product deceptively similar to the KDE shape mark?

(10)    Has the applicants’ promotion and sale in Australia of coffee products in a clear glass jar resulted in the acquisition of substantial distinctive goodwill and reputation?

(11)    By its marketing and sale of coffee in the Vittoria 400-gram product, is Cantarella likely to mislead a number of ordinary and reasonable consumers of coffee in Australia into the erroneous belief that the Vittoria 400-gram product emanates from the applicants or is otherwise connected, associated or affiliated with the applicants and their coffee products?

(12)    Has Cantarella thereby injured the goodwill and reputation of the applicants?

231    I will address each issue in turn. Some issues will require greater consideration than others, and the resolution of some issues will inform the resolution of others. Upon addressing all the above issues, I will then turn to issue (13), being the last issue arising under the cross-claim, which is whether the applicants have made unjustified threats to bring an action against Cantarella on the ground that Cantarella has infringed the KDE shape mark.

Issue (1): Should the KDE shape mark be cancelled on the ground that it lacks distinctiveness?

232    Under s 88 of the Trade Marks Act, the Court may order that the Register be rectified by cancelling the registration of a trade mark on grounds including any of the grounds on which registration of the trade mark could have been opposed. It was not in dispute that Cantarella bore the onus of establishing that the registration of the KDE shape mark could have been opposed.

233    Section 57 of the Trade Marks Act provides that the registration of a trade mark may be opposed on any of the grounds on which an application for registration may be rejected under the Act, except the ground that the trade mark cannot be represented graphically. Section 41(1) provides for a ground of rejection –

An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered … from the goods or services of other persons.

234    By its cross-claim, Cantarella claims that the Register should be rectified by cancelling the registration of the KDE shape mark on the ground that, as at the priority date, the KDE shape mark was not capable of distinguishing the relevant KDE goods from the goods of other persons.

235    Section 41(2) of the Trade Marks Act clarifies that a trade mark is taken not to be capable of distinguishing goods “only if” s 41(3) or s 41(4) applies to the trade mark.

236    Section 41(3) applies to trade marks that are “not to any extent inherently adapted to distinguish” the relevant goods, so long as –

(b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

237    Section 41(4) applies to trade marks that are “to some extent, but not sufficiently, inherently adapted to distinguish” the relevant goods, so long as –

(b)    the trademark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances.

238    As will be apparent, s 41 is somewhat elaborate. It was helpfully explained by Burley J in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [210], in terms that I gratefully adopt –

Under s 41(1) the ultimate question remains whether the trade mark is capable of distinguishing the applicant’s goods or services from those of others. Section 41(2) is a deeming provision, whereby only if a trade mark falls within s 41(3) or s 41(4) will it fail to be capable of distinguishing within s 41(1). The first enquiry arising will be: is the mark … inherently adapted to distinguish the designated goods or services from those of others? Then:

(a)    if it is not to any extent so adapted (s 41(3)(a)), and the applicant has not used the mark before the filing date to such an extent that it does in fact distinguish (s 41(3)(b)), then the application will fail;

(b)    if it is to some extent but not sufficiently inherently adapted to distinguish (s 41(4)(a)), then if, having regard to the combined effect of: (i) the extent to which the mark is inherently adapted to distinguish; (ii) the use or intended use of the mark by the applicant; and (iii) any other circumstances; the trade mark does not and will not distinguish the designated goods (s 41(4)(b)), then the application will fail;

(c)    if neither of the alternatives in s 41(3) and (4) applies, then the mark will be considered to be capable of distinguishing.

239    Therefore, deciding whether the Register should be rectified by cancelling the KDE shape mark on the basis of s 41 of the Act involves a two-stage inquiry. The first stage involves ascertaining the degree to which the KDE shape mark is inherently adapted to distinguish. The second stage is reached if the KDE shape mark is “not to any extent” or “to some extent, but not sufficiently” inherently adapted to distinguish. The second stage then involves an assessment of the questions posed by either s 41(3)(b) or s 41(4)(b), depending on the gateway by which the second stage was reached in the way explained by Burley J.

Issue (1) — To what extent is the KDE shape mark inherently adapted to distinguish?

Issue (1) — Cantarella’s submissions on inherent adaptation to distinguish

240    Cantarella submitted that the KDE shape mark is not at all inherently adapted to distinguish the applicants’ coffee goods from those of other traders.

241    In support of this submission, Cantarella referred to the evidence of Mr Tillman, Professor O’Sullivan, and Mr Simpson to the effect that the KDE shape mark takes the form of an “ordinary” or “traditional” jar, and to the evidence of Mr Francis that the KDE shape mark is “reminiscent of a Kilner storage jar”.

242    Cantarella also referred to the use by other traders of containers that, in Cantarella’s submission, were “similar or identical” to the KDE shape mark. These included the Kilner storage jars I will discuss below, as well as the Andronicus, Park Avenue, and Bomcafé products, which I have already discussed. For the reasons I have given, the Bomcafé products — if any actually exist — can be put to one side. Cantarella also referred to the following Maxwell House coffee products, advertised in 1971 –

243    Cantarella submitted that this evidence establishes that other persons, trading in instant coffee and being actuated only by proper motives, will think of a jar of similar or identical appearance to the KDE shape mark and want to use it in connection with similar goods. Accordingly, Cantarella submitted, the KDE shape mark is not inherently adapted to distinguish the applicants’ goods.

244    Cantarella also drew attention to features of the KDE shape mark that it described as being “dictated by functional considerations”, including the shape’s round footprint, cylindrical body, lid with press seal, opening with a diameter smaller than the diameter of the shape’s body, lid indentations, and flat-topped lid. On the basis that these features were dictated by functional considerations, Cantarella submitted that these features did not contribute to the KDE shape mark’s capacity to distinguish the relevant goods.

Issue (1) — The applicants’ submissions on inherent adaptation to distinguish

245    In response, the applicants submitted that the KDE shape mark is a distinctive shape such that it is inherently adapted to distinguish the applicants’ coffee.

246    The applicants first relied on evidence of Professor O’Sullivan and Mr Blanket that packaging can and frequently does serve to distinguish the goods of one trader from those of another. From there, the applicants submitted that there are relatively few functional design requirements for packaging instant coffee, which leaves considerable design freedom. The applicants referred to the wide range of packaging used by traders in instant coffee to substantiate this point.

247    The applicants submitted that the industrial design experts agreed that a goal of industrial design is to create a design that is unique and memorable, and which stands out from other products in a given category. In that context, the applicants pointed to the evidence of Mr Simpson and Mr Francis that KDE’s shape mark possesses elements that are not functional, such as the shape of the lid and seal.

248    The applicants also relied on the evidence of Professor O’Sullivan suggesting that consumers rely on the shapes of instant coffee containers to distinguish between brands.

249    As for the evidence as to the Andronicus and Park Avenue jars, the applicants submitted that each of those products had been absent from the market for decades before the priority date. The applicants added that there was no evidence of any other trader using the combination of a cylindrical jar and a stopper lid in respect of coffee since 1995.

Issue (1) — Consideration: inherent adaptation to distinguish

250    In Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60 (Guylian) Sundberg J observed at [59] that: (1) the question whether a trade mark is inherently adapted to distinguish is directed at the nature of the trade mark itself and is not concerned with the mark’s capability to distinguish arising from its actual or intended use; and (2) that a trade mark that is inherently adapted to distinguish goods is one that can “do the job of distinguishing without first educating the public that it is a trade mark”, citing British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (British Sugar) at 306 (Jacob J), also cited in Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; 209 ALR 93 at [48] (Finn J).

251    The question whether a mark is adapted to distinguish was considered in the context of a word mark by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Clark Equipment), who stated at 514 that the question whether a mark is adapted to distinguish must –

be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess—will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

252    In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 (Modena Trading) the majority at [31]–[59] traced the legislative history and the history of judicial interpretation of the requirement that a mark be adapted to distinguish, and explained and applied the “other traders” test referred to by Kitto J in Clark Equipment (see [63], [70]).

253    As noted by Sundberg J in Guylian at [61], the reference by Kitto J to the “likelihood” of use by another trader in connexion with similar goods was treated by Gibbs J in Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 at 425 as equating to whether a trader “might” want to use the words in relation to his or her goods.

254    In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 122 FCR 494 (Kenman Kandy) at [18], French J recorded that the parties to that appeal accepted that the statement of principle of Kitto J in Clark Equipment applied to shape marks. At [47]–[49], his Honour applied that statement, and other statements of principle to like effect, to the question whether the shape in question in Kenman Kandy was inherently adapted to distinguish the appellant’s confectionery from that of others. Stone J at [146] stated that there could be no doubt that Kitto J’s test would equally apply to shapes or other signs forming part of the common heritage.

255    Just as words, such as epithets or words of description or quality, may have functional purposes which render them incapable of being regarded as adapted to distinguish, so also may shapes. The cases show that, as with a word, there must be something “special” or “extra” added by a shape to the goods for the shape to function as a badge of origin: see Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA; 100 FCR 90 (Remington) at [16] (Burchett J, Hill J and Branson J agreeing). In Kenman Kandy, a question that was considered was the extent to which a shape having functional features, being in that case the appellant’s confectionery, might be inherently adapted to distinguish the goods of one trader from another. At [137], Stone J stated –

The concerns expressed in both Philips v Remington (Aust), FC and Philips v Remington (Eng) about the prospect of trade marks creating monopolies related only to the registration of trade marks that would restrict access to functional features or innovations, and for this reason were well founded. It is this concern that finds expression in the requirement that a trade mark be something added to the inherent form of goods. The “inherent form” of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features it would indeed have made a radical change to trade mark law. There is nothing in the 1995 Act or in the discussions that preceded it to suggest that this was intended.

256    French J at [45] agreed with Stone J’s analysis, and the above passage was cited with approval by the Full Court (Nicholas, Burley and Hespe JJ) in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10; 302 FCR 285 (RB (Hygiene Home)) at [61].

257    For the following reasons, I consider that the KDE shape mark is not to any extent inherently adapted to distinguish KDE’s goods.

258    First, it is important to acknowledge that the KDE shape mark does not constitute the shape of the goods in respect of which it is registered. The applicants have not obtained registration of the shape of an instant coffee granule. This can be contrasted with Kenman Kandy, where the shape mark in question essentially captured the product itself — confectionery. The KDE shape mark, however, is the shape of a container. This has some significance when the principles that have been developed in the context of word marks are translated to shape marks. In British Sugar at 302, Jacob J used the word “Soap” as an example of a word that, when used in connection with soap, could never be distinctive. To adapt this to the context of a shape mark, Jacob J could equally have said that the shape of an unadorned bar of soap could never be distinctive of any brand of soap. The direct analogy with purely descriptive words is therefore the (purely functional) shape of the goods themselves.

259    Containers sit in a somewhat different category. But as Besanko J said in PepsiCo at [200], where a container contains “otherwise formless goods”, “one of the functions it performs is as a container”. Similar, but not identical, considerations thus apply to cases involving purely functional containers as in cases involving a shape that in fact constitutes the shape of the goods sold. Accordingly, as the authorities to which I have referred above would suggest, there must be something “extra” about the shape of the container to render it inherently adapted to distinguish.

260    As I have mentioned, it is only the shape that is registered as the KDE shape mark, and not the materials, or the colour, or any other attribute of the presentation of the container that might constitute a “sign” as defined by s 6(1) of the Act. The functional features of the shape of the container include that it is cylindrical, that it has an opening through which a spoon may be used to retrieve the coffee, and that it has a stopper-type lid.

261    The KDE shape mark does not, however, take a form that is entirely determined by functional considerations. In that respect, it is in a different position from a plain box, pouch, sachet, tube, tin, or carton. The KDE shape mark is also marked by some aesthetic features with no functional purpose. These features include the KDE shape mark’s relatively squat proportions, double-tiered lid, and the particular slope of the shoulder between the body of the container and the lid. These features — and in particular the upper profile of the KDE shape mark, including its lid — are superadded. A container whose form is dictated by functional considerations need not include any of these features.

262    I accept the joint evidence of the industrial design experts that, for glass jars, a round footprint is the commonest and most efficient to make. Their evidence also stated that having a “large cylindrical label area” is a common functional solution, because applying a label to a round jar is the simplest and most cost-effective method of labelling. Combining these observations, the experts opined that this left the possibility of using either a cylindrical or conical shape, but that using a conical shape would make it “very difficult” to provide sufficient volume while staying within other dimensional parameters, at least for a 400-gram product. The experts also stated that the diameter of the lid and opening of the jar were smaller than the diameter of the jar, and that this reflected a common functional requirement. Likewise, there was evidence that a flat-topped lid may have the functional benefit of being easier than other lids to stack and transport. In my view, it is clear that the KDE shape mark takes the form of a cylindrical jar with a flat-topped lid and an appropriately sized opening for functional reasons. Other features, such as the double-tiered lid, the shoulder, and what the experts called the “simple radius on the bottom edge” may serve more aesthetic purposes. In my view, these features are significant to the visual impression of the KDE shape mark as a whole.

263    Secondly, I accept that the KDE shape mark is reminiscent of other generic containers, and in particular the Kilner-branded storage jars which were referred to in the evidence of Mr Francis –

264    To a lesser extent, the shape of the opening and the lid of the KDE shape mark are reminiscent of food preserving jars, which are well known –

265    I find that there are some similarities between the grooves around the lid and below the opening of the preserving jar, and the corresponding grooves of the KDE shape mark, although the KDE shape mark does not have a wire closing mechanism, and has an internal seal instead of an externally visible rubber seal. In the words of the expert industrial designers, Mr Francis and Mr Simpson, I consider that the KDE shape mark retains some “visual language” from the food preserving jars. But it is important to note that there is no evidence of these Kilner jars being used by traders in relation to coffee or instant coffee.

266    Thirdly, there was the evidence of other similarly shaped containers in which Andronicus coffee and Park Avenue coffee were marketed and sold. Picking up Kitto J’s test in Clark Equipment at 514, in the case of Andronicus and Park Avenue coffee the evidence does not support a finding that the traders involved in their sale in the early 1980s and early 1990s, respectively, were actuated by improper motives in using jars that were similar to the KDE shape mark. In my view, this evidence establishes that the KDE shape mark is not inherently adapted to distinguish the applicants’ goods. Without taking account of any acquired distinctiveness, I consider that traders in coffee might for perfectly legitimate reasons seek to evoke the aesthetic of an old-fashioned jar in relation to their coffee by adopting a shape like that of the KDE shape mark.

267    In my view, all this evidence as to similarly shaped containers is also relevant in another way. It is relevant because it shows that even those features of the KDE shape mark that do play an aesthetic role still do not serve any inherently distinctive role. Rather, features such as the double-tiered lid and the shoulder of the jar serve to evoke a particular tradition, forming part of the common heritage. In other words: the KDE shape mark is both primarily functional and, to the extent that it is not functional, it draws on features of the common heritage that are not apt to distinguish the goods of any one trader.

Issue (1) — Use of the KDE shape mark as a trade mark

Issue (1) — Cantarella’s submissions on use of the KDE shape mark as a trade mark

268    Cantarella submitted that the applicants had not, by the priority date, used the KDE shape mark as a trade mark to such an extent that the trade mark did in fact distinguish the applicants’ coffee from that of other traders.

269    Cantarella emphasised that the task of establishing distinctiveness in fact for the purposes of s 41(3)(b) is “extremely difficult, and rarely achieved”. In support of this proposition, Cantarella referred to Jacob J’s statement in British Sugar at 306 that it is necessary for the mark to have “become accepted by a substantial majority of persons as a trade mark” such as to be “almost a household word”.

270    Cantarella submitted that evidence of the amount spent on marketing and promotion does not, in itself, provide a basis for establishing distinctiveness: see British Sugar at 302 (Jacob J). Cantarella submitted that this proposition was only strengthened when the mark has been used in conjunction with another, clear trade mark. In Cantarella’s submission, the name “Moccona” is such a mark, and this affects the degree to which use of the KDE shape mark would be understood to function to distinguish the applicants’ coffee.

271    Cantarella also submitted that it is necessary to show distinctiveness in fact in relation to the “specific shape” of the KDE shape mark, and that it would not be enough that this shape, recollected imperfectly, had acquired distinctiveness. On this topic, Cantarella referred to Professor O’Sullivan’s acceptance that consumers would only have such an imperfect recollection of the KDE shape mark.

272    As for the evidence of the Andronicus advertisement from 1981, Cantarella submitted that the issue for Lockhart J’s determination was an issue akin to identification in defamation, rather than one of factual distinctiveness. Cantarella submitted that, for this reason, Lockhart J’s statement in Stuart Alexander at 310 that “people who look at the television commercial would associate the first jar with Moccona instant coffee” did not advance the analysis.

273    Cantarella further emphasised that no use of the KDE shape mark is relevant to this question unless it amounts to use as a trade mark. For reasons including the alleged plainness of the jar, Cantarella submitted that the KDE shape mark had not been used as a trade mark. Cantarella submitted that Moccona advertisements did not present the jar as anything more than a container, and that no advertisement included an audio reference to the jar, which was in contrast to the audio references to “Moccona”.

Issue (1) — The applicants’ submissions on use of the KDE shape mark as a trade mark

274    The applicants submitted that to the extent that the KDE shape mark lacked any inherent adaptation to distinguish, the use of the shape, including extensive and sustained advertising, had the result that KDE had used the shape mark as a trade mark before 7 January 2014 to such an extent that by then it did distinguish the applicants’ coffee from that of other traders.

275    As for whether the KDE shape mark had been used as a trade mark at all, the applicants submitted that the striking features of the shape had to be taken into account. The applicants also submitted that it was not necessary for the shape of the jar to be the primary diagnostic tool used for the purpose of distinguishing the applicants’ coffee, which reduced the relevance of the fact that the KDE shape mark was used alongside established trade marks such as the word “Moccona”.

276    The applicants submitted that there had been sufficient use of the KDE shape mark as a trade mark to satisfy s 41(3)(b) on the basis of factors including –

(a)    the length of time for which the shape had been used before the priority date, which the applicants submitted was extensive;

(b)    the distinctiveness of the KDE shape mark, which the applicants submitted was recognised by Lockhart J in Stuart Alexander in 1981;

(c)    the volume of sales of products in jars substantially the same as the KDE shape mark;

(d)    how consistently the KDE shape mark had been used across a range of Moccona-branded instant coffee products; and

(e)    the extensive advertising and promotion before the priority date that focused on the shape of the KDE shape mark.

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 –