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

FEDERAL COURT OF AUSTRALIA Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 File number:

Judgment of: WHEELAHAN J

Date of judgment: 7 November 2024

TRADE MARKS — shape marks – where the first applicant is the registered owner of a trade mark constituted by the shape of a cylindrical container with a stopper in Class 30 over coffee and instant coffee (the KDE shape mark) – where the respondent (Cantarella) released a 400-gram instant coffee product under its brand name "Vittoria" in a cylindrical jar with a stopper lid – whether the Vittoria 400-gram product infringed the KDE shape mark within the meaning of s 120(1) of the Trade Marks Act 1995 (Cth) – the jar of the Vittoria 400-gram product was not used as a trade mark within the meaning of s 120(1) – the jar of the Vittoria 400-gram product was not deceptively similar to the KDE shape mark – Cantarella has not infringed the KDE shape mark. Catchwords: TRADE MARKS — shape marks – where Cantarella sought, by a cross-claim, the removal of the KDE shape mark from the Register under s 88(1)(a) or 92 on grounds including ss 41, 59, 62(b), 62A and 88(2)(e) – no ground of removal established. TRADE MARKS — unjustified threats under s 129 of the Trade Marks Act – held: the applicants made unjustified threats within the meaning of s 129 – declaration and injunction refused – the question of damages, including additional damages, to be determined in a separate hearing. CONSUMER LAW — whether Cantarella has contravened ss 18, 29 and 33 of the Australian Consumer Law, or committed the tort of passing off – held: there is no real risk that Cantarella's use of its get-up will mislead or deceive persons familiar with the applicants' product to believe that there is a commercial association between the Vittoria 400-gram product and the applicants or their products.