Coca Cola Company v PepsiCo Inc (No 2)  FCA 1287 (28 November 2014)
Besanko J dismissed an application by Coca Cola Company (CC) alleging PepsiCo infringed its registered trade marks and engaged in misleading and deceptive conduct and passing off by the use of a similar bottle shape for its cola beverage products.
CC had trade mark registrations for its ‘Contour Bottle’ as 2D drawings and as a 3D shape (without the Coca Cola word mark or any other matter). PepsiCo marketed its cola beverages in a glass bottle which it referred to as its ‘Carolina Bottle’. A picture of the respective bottles is shown below:
It was accepted that a three dimensional object may infringe a trade mark registered as a 2D drawing.
His Honour accepted that PepsiCo was using the whole shape of the Carolina Bottle as a trade mark, but did not agree with CC’s assertion that just part of this shape, namely the outline or silhouette of this bottle, was functioning as a trade mark.
Besanko J considered the context in which the two bottles are sold and noted they are for single serve beverages designed for consumption shortly after purchase. They are relatively inexpensive, fast moving consumer goods which are purchased on impulse with low consumer involvement.
His Honour indicated what he regarded as the distinctive features of CC’s registered Contour Bottle and compared these features with those of the Carolina Bottle shape used by PepsiCo. This analysis, correctly, did not include a consideration of the reputation of the respective products or other trade marks used on labelling. His Honour reached the conclusion that the Carolina Bottle shape was not deceptively similar to any of CC’s registered trade marks and dismissed the infringement claim.
The claims based on passing off and misleading or deceptive conduct (under the Trade Practices Act then in force when the proceeding was commenced in October 2010) also failed.
His Honour noted, at paragraph 263:
… the causes of action for passing off and for contraventions of the Trade Practices Act differ from the cause of action for trade mark infringement in two respects. First, they require proof of actual deception, or the likelihood of actual deception, and a finding of cause to wonder is not sufficient. Secondly, in addition to a consideration of the sign found to be used as a trade mark (i.e., in this case, the whole shape of the Carolina Bottle), these causes of action require a consideration of the effect of the word marks and device marks on the Contour Bottle and the Carolina Bottle. The authorities establish that, depending on circumstances, the causes of action may be made out even though the products have different brand names on them. That will occur where the getup of the products is so similar that the Court finds that deception will, or is likely to, result. Examples of where the Court has so found are WD & HO Wills (Australia) Ltd v Philip Morris Ltd (1997) 39 IPR 356 (a s 52 case); Sydneywide Distributors v Red Bull Australia (a passing off and a s 52 case); Peter Bodum A/S and Others v DKSH Australia Pty Ltd (2011) 92 IPR 222;  FCAFC 98 at 273275  per Greenwood J (with whom Tracey J agreed) (a passing off and a s 52 case).
Indeed, his Honour was prepared to accept that a sufficient number of consumers may make their selection based on the overall bottle shape without necessarily relying on brand names and logos on the labelling.
Besanko accepted that CC had acquired a reputation in its Contour Bottle as a whole, but not in the outline or silhouette alone. However, his Honour did not think that a relevant consumer would be misled or deceived, or would be likely to be misled or deceived, in the case of overall bottle shape because they would detect the differences between the Contour Bottle and the Carolina Bottle.