Bodum v DKSH Australia Pty Limited [2011] FCAFC 98

FEDERAL COURT OF AUSTRALIA

Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 Citation: Bodum v DKSH Australia Pty Limited [2011] FCAFC 98

Appeal from: Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23

Parties: PETER BODUM A/S, BODUM (AUSTRALIA) PTY LIMITED ACN 104 809 672 and PI-DESIGN AG v DKSH AUSTRALIA PTY LIMITED ACN 005 059 307

File number: VID 325 of 2010

Judges: GREENWOOD, TRACEY AND BUCHANAN JJ

Date of judgment: 5 August 2011

Catchwords: TRADE PRACTICES – consideration of whether the appellants enjoyed a substantial reputation in the pleaded features of their product described as the Bodum Chambord Coffee Plunger – consideration of whether the shape of the appellants' product is distinctive of the appellants in the mind of consumers – consideration of the notion of secondary meaning or independent reputation in the features of a product or get-up – consideration of whether a rival product adopts the features of the appellants' product – consideration of whether steps taken by the respondents had the effect of differentiating their rival product from that of the appellants' product – consideration of the principles governing a determination of whether conduct by a rival of selling or offering for sale a product embodying features of a rival found to be distinctive gives rise to a contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth) (as that Act applied at the relevant date) – consideration of whether the conduct of the respondents involved passing off their product as that of the appellants' product INTELLECTUAL PROPERTY – consideration of the principles relating to the subsistence of an independent or secondary reputation in the features of a product or the shape of a product – consideration of the principles governing a determination of whether the conduct of selling or offering for sale a rival product embodying features of shape found to be distinctive of the appellants involves a contravention of s 52 or s 53 of the Trade Practices Act 1974 (Cth) or passing off – consideration of the principles to be applied in determining whether conduct involves a contravention of s 52 or s 53 – consideration of the principles to be applied in determining whether conduct involves passing off by a representation to the public by reason of the selling or offering for sale of a product embodying the distinctive features of the appellants' product CONSUMER LAW – consideration of the principles to be applied in determining whether conduct involves a contravention of s 52 or s 53 of the Trade Practices Act 1974 (Cth)