Manufacturers wanting to protect their intellectual property rights in the shape of their products were given a big boost last week by the Australian Federal Court.
Coffee-plunger manufacturer Bodum won its appeal to successfully protect the distinctive shape of its "Chambord" coffee plunger.
In Australia, as in New Zealand, it has been possible for some time to register the shape of a product as a trademark rather than necessarily the word or logo commonly used to tell its customers the origin of the goods.
Typically, it has been difficult for product owners to protect the shape of their products, as opposed to the words or logos which they use to market them.
In New Zealand, shape marks for well-known product shapes such as the Coca-Cola bottle, the Toilet Duck bottle and the Toblerone chocolate bar have been successfully registered.
The reason for these trademarks being successfully registered is due to the significant goodwill which has been built up through a long period of marketing by the trademark proprietor.
The consumer begins to associate the shape of the product as being that of the trademark proprietor, rather than just being determined by the function of the product itself.
What is notable about the Bodum case is that Bodum had not registered the shape of the plunger as a registered trademark on the Australian register but relied on the infringing company, DKSH Australia Pty Limited, as engaging in misleading or deceptive conduct and passing off by marketing and selling its "Euroline" coffee plunger which is similar to Bodum's Chambord coffee plunger.
The threshold for establishing misleading and deceptive conduct and passing off is much higher than the protection the product owner gets from registration.
In Bodum's case, there was a vast amount of advertising and promotional material put before the court, including catalogues, brochures, newspapers, television material, internet websites, depicting close-up photos for the Chambord coffee plunger.
One of the significant features of the case was that the plunger is often displayed outside its packaging in shops, which added to the argument that the shape of the plunger itself had a reputation in the eyes of the consumer. It was also important that it did not necessarily need the "Bodum" trademark attached to it in order to have that reputation.
This case is a victory for business owners wanting to protect the reputation they build up over several years in the shape of their products.
However, given this case was at least two years in litigation, first in the Lower Court and then in the Federal Court, trade- mark proprietors would be well advised to proactively register their trademarks and potentially avoid costly litigation of this nature.
• Sally Peart is a partner in Mitchell Mackersy Lawyers and specialises in trademark and intellectual property law.
