Valuing the Right of One’s Original Design

In a recent case, Full Court of the Federal Court shed light on the concept of misleading or deceptive conduct or passing off by overruling the prior decision passed by Justice Middleton.

In Bodum v DKSH Australia Pty Limited, the question was whether DKSH Australia Pty Ltd had committed an offence under Trade Practices Act and common law by conducting manufacture and sale of Euroline coffee plunger. The Euroline coffee plunger was found to have substantial similar comparison to Bodum’s Chambord coffee plunger.

Facts:

The Plaintiff Bodum is a well-established family owned company who are known to produce unique affordable products.

While the Defendant is a rival company, who, in this case was accused of infringement of Copyright or Design.

In the first instance, the Court found that the said infringed design had no legal registration under the Designs Act.

On the claims being refused, an appeal against this decision was put forth by the Plaintiff before Full Court of the Federal Court on the following grounds:

1. The said product could be easily identified and related to Bodum by the customers as it was always pictured in their packaging;

2. Unique shape of the product;
3. The above reasons would cause a customer to recognize a coffee plunger with similar features to be a Bodum product;
4. Bodum trademark was applicable to all of its products.

5. DKSH’s product had a lot of evident similarities that could be associated with the Bodum’s product;
6. DKSH’s product did not have even a differentiating brand excluding the word “pyrex” which could not help differentiate the product.

Decision:

Justice Greenwood overturned the decision passed by Justice Middleton. While doing so Hon’ Justice looked into the following matters:

1. Advertising and promotional material put before the court,

2. The evident connection of Chambord to the Bodum name or trademark that could be seen in the advertisements and promotion.

Thus, looking at the above factors, Justice Greenwood acknowledged the fact that a large number of consumers recognize a reputation arising from the Bodum name while purchasing Chambord Coffee Plunger.

And DKSH’s act of copying the features of Chambord Coffee Plunger would mislead the consumers.

This act could further be recognized as an offense under Trade Practices Act and common law.

The Court also pointed out that the mark “Euroline” under which DKSH products were sold was not distinctive enough as:

1. Consumers identify the product not the box;
2. “Euroline” suggests a European descent that could again be associated with Bodum’s European background.

Lesson:

This case has proved to operate as a loophole for potential manufacturers who don’t have their design registered and an alert to rival manufacturers.

Rival manufacturers are allowed to use other manufacturer’s products as a base idea but they must take steps to avoid infringement and ensure that the public is not mislead or deceived to believe that their product is from another well-established company’s production.

That said, had the Plaintiff not been successful in proving the secondary reputation that associates Chambord Coffee Plunger with Bodum, Defendant could not have been held liable for infringement.