Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 is a Federal Court packaging dispute about the limits of shape-mark enforcement. The applicants were associated with Moccona instant coffee and relied on a registered trade mark for the shape of a coffee container. Cantarella, the company behind Vittoria, launched a 400-gram instant coffee product in a cylindrical glass jar with a glass stopper lid. The applicants said that jar infringed their registered shape mark and also misled consumers.

On the published judgment material, the applicants failed on infringement, ACL and passing off. The court held that the Vittoria 400-gram jar was not used as a trade mark and was not deceptively similar to the registered shape mark. The court also held there was no real risk that Cantarella's get-up would mislead or deceive consumers familiar with the applicants' product into believing there was a commercial association. At the same time, Cantarella did not succeed in removing the shape mark from the Register. It did, however, succeed on unjustified threats, with damages to be determined separately.

The dispute sat in a familiar commercial setting: supermarket coffee sold in distinctive jars. The first applicant, Koninklijke Douwe Egberts BV, owned Australian Trade Mark Registration No 1599824. The court described it as a mark constituted by the shape of a container. The second applicant, Jacobs Douwe Egberts AU Pty Ltd, sold Moccona-branded coffee products in Australia and said it was an authorised user of the mark, although the judgment records that this was contested.

The court made an important point at the outset about what the registration did and did not cover. The registered mark was the three-dimensional shape of the container shown on the Register. The dimensions of the mark formed no part of the registration. Nor did colour or material. That matters because packaging disputes are often argued in commercial language about the whole look of a product, but trade mark rights can be narrower than the overall impression a business thinks it owns.

Cantarella is the long-established Australian business behind the Vittoria brand. It launched a 100-gram freeze-dried instant coffee product in May 2021 in a cylindrical glass jar with a gold-coloured plastic lid. Then, in August 2022, it launched a 400-gram freeze-dried instant coffee product in a cylindrical glass jar with a glass stopper lid. The 400-gram product came in four flavour variants. That larger product became the centre of the dispute.

The applicants alleged three main wrongs. First, they said Cantarella had infringed the registered shape mark under s 120 of the Trade Marks Act. Secondly, they alleged contraventions of ss 18, 29 and 33 of the Australian Consumer Law. Thirdly, they alleged passing off. Cantarella denied those claims and cross-claimed for cancellation or removal of the shape mark on multiple grounds. It also alleged unjustified threats under s 129 of the Trade Marks Act.

The published reasons also show that the court spent time on the factual history of Moccona packaging in Australia. That was relevant to the shape mark and the cross-claim. The court referred to historical advertisements and photographs from 1960, 1966, 1972 and 1977. On the material discussed in the public reasons, the court found that by October 1977 Moccona-branded instant coffee was sold in Australia in a jar with a shape substantially similar to the registered mark.

The legal questions were more technical than a simple complaint that one jar looked too much like another. For trade mark infringement, the court had to decide whether Cantarella's use of the Vittoria 400-gram jar amounted to use of a sign as a trade mark and, if so, whether that sign was deceptively similar to the registered KDE shape mark. Those are distinct questions. A product can use a shape in commerce without using that shape as a badge of origin in the trade mark sense.

The court also had to decide whether Cantarella's conduct breached the ACL or amounted to passing off. The published catchwords frame that issue as whether there was a real risk that Cantarella's use of its get-up would mislead or deceive persons familiar with the applicants' product into believing there was a commercial association between the Vittoria 400-gram product and the applicants or their products.

On the cross-claim, Cantarella sought removal of the shape mark from the Register under s 88(1)(a) or s 92 on grounds including ss 41, 59, 62(b), 62A and 88(2)(e). In practical terms, Cantarella argued that the mark should not have remained registered because of issues such as distinctiveness, alleged false representations or misrepresentation, bad faith, intention to use and non-use.

There was also a separate threats issue. Cantarella sought relief under s 129 of the Trade Marks Act, alleging that the applicants had made unjustified threats of trade mark infringement proceedings. That issue matters commercially because businesses often focus on whether they can send a demand letter, without paying enough attention to whether the threatened claim is actually sustainable.

On the published outcome, the applicants lost their main case. The catchwords state that the jar of the Vittoria 400-gram product was not used as a trade mark within the meaning of s 120(1) of the Trade Marks Act. They also state that the jar was not deceptively similar to the KDE shape mark. The result was that Cantarella had not infringed the registered shape mark.

The applicants also failed on consumer law and passing off. The court held that there was no real risk that Cantarella's use of its get-up would mislead or deceive persons familiar with the applicants' product into believing there was a commercial association between the Vittoria 400-gram product and the applicants or their products. That finding defeated the ACL and passing off case on the public record.

Cantarella did not, however, succeed in knocking the shape mark off the Register. The catchwords say that no ground of removal was established. The orders dismissed the cross-claimant's claims for relief specified in paragraphs 1 to 7 of its amended notice of cross-claim, while separately reserving the hearing and determination of Cantarella's claims for damages and additional damages under s 129.

On unjustified threats, Cantarella did succeed. The catchwords state that the applicants made unjustified threats within the meaning of s 129. However, declaration and injunction relief were refused, and the question of damages, including additional damages, was left for a separate hearing. The orders also reserved costs until after the hearing and determination of those damages issues.

One important qualification is that part of the reasons was placed in a confidential annexure. The orders restricted access to Confidential Annexure A, comprising paragraphs [564] to [603]. That means some reasoning and evidence are not publicly available, so the public account of the court's detailed path of reasoning is necessarily incomplete.

The public reasons show that the case was evidence-heavy. The court dealt with the parties' corporate structures, the claimed authorised use arrangements, the history of Moccona products in Australia, the launch timing of Cantarella's 100-gram and 400-gram Vittoria products, and witness evidence from both sides. There was also expert evidence in marketing and industrial design.

The court's early factual discussion is useful for businesses because it shows the kinds of material that matter in packaging disputes. Historical advertisements, product photographs, supermarket images, launch dates, packaging variants and internal business evidence all played a role. The court referred to a 1960 advertisement showing Moccona in tins or jars, a 1966 advertisement appearing to show a screw-top jar, a 1972 factory photograph, and 1977 supermarket and magazine material. On that material, the court found that by October 1977 Moccona-branded instant coffee was sold in Australia in a jar with a shape substantially similar to the registered mark.

The witness discussion also gives a practical signal. The court commented on the evidence of factual witnesses and on the limits of some opinion evidence. It noted that key questions such as use as a mark of origin, deceptive similarity and misleading conduct are ultimately questions of fact for the court to determine by reference to legal standards. For businesses, that is a reminder that expert evidence can help, but it does not replace the need for strong primary evidence about how the product is presented and perceived in the market.

The public reasons also show that the court distinguished between the shape mark itself and broader packaging features. That distinction is commercially important. A business may feel that a competitor has copied the whole look of a product, but if the registered right is only shape, the court will focus closely on that shape and on whether it is functioning as a trade mark.

The first practical lesson is to define your right accurately. If your registration covers only shape, do not assume it gives you control over colour, material, dimensions, labels or the broader shelf impression. The court expressly said those features were not part of this registered mark. That can be decisive where the commercial complaint is really about overall get-up rather than shape alone.

The second lesson is that shape must function as a badge of origin. The published outcome says Cantarella's jar was not used as a trade mark. For product businesses, that means courts may ask what consumers are actually relying on to identify source. In many retail settings, the answer may be the brand name, logo, label design and other packaging elements, not the container shape by itself.

The third lesson is to keep trade mark, ACL and passing off analysis separate. A business can lose on infringement and also lose on misleading conduct if the court is not persuaded that consumers would think there is a commercial association. Similarity in packaging does not automatically establish either cause of action.

The fourth lesson is that validity and enforceability are different things. The applicants kept the shape mark on the Register, but they still failed to enforce it against the Vittoria 400-gram jar. So a surviving registration is valuable, but it is not a guarantee of success in litigation.

The fifth lesson is to be careful with threats. Cantarella succeeded on unjustified threats, even though it failed on its broader removal attack. If you are considering a cease and desist letter, check the registration, the alleged use, the market context and the strength of the evidence before making strong allegations or threatening proceedings.

This page is based on the publicly available Federal Court material for Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277, including the catchwords, orders and opening sections of the reasons delivered by Wheelahan J on 7 November 2024. The orders show that Confidential Annexure A, comprising paragraphs [564] to [603], was subject to restricted access. The proceeding was also listed for further case management in relation to damages under s 129 and any further non-publication issues.

Because part of the reasons is confidential and the public material is incomplete, this page should be read as a careful public explainer of the published dispute, issues and outcome. It does not attempt to reconstruct confidential reasoning or provide a complete account of every evidentiary finding. If later public orders deal with damages, additional damages or costs, those would need to be checked separately.