The battle of the jars – trademark litigation – Trademark

Legal action has been initiated in the Federal Court of
Australia between Koninklijke Douwe Egberts BV (“KDE”)
and Jacobs Douwe Egberts AU Pty Ltd (“JDE”), as the
applicants, with respect to the coffee brand, Moccona, against
Cantarella Bros Pty Ltd (“Vittoria”), as the respondent,
in relation to promoting and selling freeze-dried coffee under the
Vittoria brand in a glass jar.

KDE is the registered owner of a three-dimensional shape trade
mark in the form of a glass jar and lid,¹ and JDE is
alleged to be the authorised user in Australia of the trade
mark.² The applicants claim that they have advertised
and sold coffee products in a clear glass jar since at least 1960,
including under the Moccona brand and have alleged that Vittoria
has engaged in infringement by marketing and selling freeze-dried
coffee under the Vittoria brand in a glass jar that is
“deceptively similar” to KDE’s trade
mark.³ Vittoria has been further accused of engaging in
the tort of passing off as well as in misleading or deceptive
conduct and the making of certain false representations under the
Australian Consumer Law.⁴ Vittoria has
cross-claimed, arguing that KDE’s shape trade mark registration
should be cancelled on the basis that: the mark does not
distinguish the applicant’s goods from those of other persons,
that the application for registration was accepted on the basis of
false evidence or representations, and that as at the priority
date, KDE did not intend to use, authorise the use of or assign the
mark for use in relation to the registered goods.⁵
Vittoria has made further claims that the shape trade mark
registration should be removed on the ground of non-use as a trade
mark. That is, that “the applicant’s glass jar is a
utilitarian shape which does not involve the use of a trade mark
for reasons including that it is not inherently
distinctive”.⁶ Vittoria has also claimed that
the applicant has made unjustified threats to it which have caused
loss and is seeking injunctions and damages.⁷

Justice Wheelahan from the Federal Court of Australia (in the
interlocutory application hearing), has foreshadowed that it is
evident from the pleadings and submissions of the parties that this
is going to be a “hard fought
litigation“.⁸ For now, we watch this space and
await the outcome of these proceedings.

Footnotes

¹ Australian trade mark registration no.
1599824.

² Koninklijke Douwe Egberts B.V. v
Cantarella Bros Pty Ltd (2023] FCA 341 [2].

³ Ibid [2]-[3].

⁴ Sections 18, 29 and 33 of Australian
Consumer Law (Competition and Consumer Act 2010 (Cth)- Schedule
2).

⁵ Koninklijke Douwe Egberts B.V. v
Cantarella Bros Pty Ltd (2023) FCA 341 [4].

⁶ Ibid.

⁷ Ibid.

⁸ Ibid [20].

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