Since the famous decision of the High Court of Australia in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 in 1982, it has been commonly accepted that a rival trader can copy someone else’s product with impunity (unless the product is protected by statutory intellectual property rights, such as a registered design), provided that the look-alike product is marked with the rival trader’s brand. The recent decision of the Full Federal Court in Peter Bodum A/S & Ors v DKSH Australia Pty Ltd  FCAFC 98 casts some doubt on whether that is a correct reading of the High Court’s decision.
What was the case about?
The well-known Bodum Chambord coffee plunger was first developed in 1958. Since 1986, the Bodum Chambord coffee plunger has been promoted and advertised widely in Australia and generated substantial sales.
In 2004, DKSH Australia Pty Ltd began distributing and selling a rival product, the Euroline coffee plunger, which closely resembled all of the design features of the Bodum Chambord coffee plunger.
Bodum contended that by advertising and selling the Euroline coffee plunger with the features of the Bodum Chambord coffee plunger, without labelling or distinguishing it adequately or at all, DKSH had falsely represented to consumers that the Euroline coffee plunger is the Bodum Chambord coffee plunger or is otherwise associated with Bodum. Bodum sued DKSH, alleging passing off and misleading or deceptive conduct and false or misleading representations in contravention of sections 52 and 53 of the Trade Practices Act (now sections 18 and 29 of Schedule 2 of the Competition and Consumer Act).
There was no claim for infringement of any registered designs. Instead, Bodum’s claims relied on it establishing that it had developed a reputation in the shape of the Bodum Chambord coffee plunger which was protectable through the actions in passing off and under the Trade Practices Act. These actions provide a means for protection of reputation in a brand or product get-up which has been developed through use (rather than being secured by registration).
What did the trial judge find?
At first instance, Justice Middleton found that:
the Bodum brand has a significant reputation;
however, Bodum does not have a reputation in the features of the Bodum Chambord coffee plunger because Bodum’s reputation is tied to its products being properly labelled and sold in conjunction with the reinforcing packaging, and by reference to the Bodum name;
if (contrary to the above) Bodum did have a reputation in the features of the Bodum Chambord coffee plunger, then DKSH’s products are not packaged in such a way to give rise to the misrepresentation alleged by Bodum because the public is accustomed to competing brands of almost identical products. The knowledgeable consumer would expect to see the name and logo of Bodum on its products and the consumer was sophisticated enough to understand the concept of competing brands with no trade connection and so would not be misled, even if an element of copying existed.
As a result, Justice Middleton dismissed Bodum’s claims against DKSH.
What did the Full Court find?
The key issue for the Full Federal Court was whether Bodum had a reputation in the features of the Bodum Chambord coffee plunger.
The Full Court reconsidered the vast amount of promotional and marketing material featuring the Bodum Chambord coffee plunger and was satisfied that the evidence established a "very significant secondary reputation in the features of the Bodum Chambord coffee plunger associated in the mind of consumers with Bodum as the manufacturer of that product". This secondary reputation subsists even though Bodum’s products are labelled or packaged or displayed with a brand name, as the features could develop a reputation "independently of trade names used in connection with the product".
Having determined that Bodum had developed a protectable reputation in the shape of the Bodum Chambord coffee plunger, the next question was whether DKSH had done enough to distinguish its rival product from the Bodum product. The Court considered:
each plunger's packaging, including instructions included with the products – both were packaged in white boxes, with a large image of a coffee plunger and their own trade marks;
the presence (or lack) of markings on the coffee plungers themselves – there was no reference to "Euroline" or "DKSH" on the Euroline coffee plunger itself;
the way the products were offered for sale, including the fact that both coffee plungers were often displayed outside their packaging at retail outlets; and
the adequacy of DKSH’s trade marks.
Ultimately, the Court found that DKSH's packaging was not sufficient to distinguish it from the Bodum Chambord coffee plunger. There appeared to be two critical factors in this decision:
The "Euroline" trade mark was not sufficient to distinguish DKSH’s product. It was not a well-known brand name, unlike for example the Remington brand in the famous rotary shaver case
. On the contrary, the "Euroline" name simply suggested a product from a European range. It did not have the effect of telling consumers that the rival product was not a Bodum product.
There was no branding at all on the product itself (other than "PYREX", which is a brand name for the glass used in the Euroline coffee plunger). When the products were displayed outside their packaging, there was nothing to indicate that the source of the product was someone other than Bodum (although the products were often displayed in proximity to the product packaging).
The decision would appear to give hope to traders trying to prevent rival traders selling look-alike products, but it is likely to be a false hope in many cases. The result in this case would probably have been quite different if DKSH had chosen a more distinctive brand name and, in particular, had placed that brand name prominently on the product itself.
As a result, the first line of protection for any company which develops a distinctively shaped product should always be to apply for a registered design (and, possibly, a shape trade mark). But if that ship has already sailed, asserting a common law reputation in the shape of the product, like Bodum, may well be worth the plunge.
 Koninklijke Philips Electronics v Remington Products Australia Pty Ltd (2000) 100 FCR 257. See also Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136.