Mallesons Stephen Jaques has won a six-year legal battle for a Danish homewares company, Bodum Group, to have its coffee plunger design protected.
The outcome is believed to be the first in Australia to succeed on the basis of the shape of a product and elevates Bodum's Chambord Coffee Plunger to the iconic status of the Coca Cola bottle.
"The judge in the first instance said the brand is on the box, the product is in the box, and therefore you don't have a reputation apart from the box. But this time the court focused a lot on the 'out of the box placement'," lead partner Katrina Rathie told Lawyers Weekly.
Mallesons successfully acted for Bodum in the Full Federal Court of Australia against DKSH Australia which sold a Euroline copy plunger, and engaged in passing off and breached the Trade Practices Act, now the Australian Consumer Law.
"People buy a product, not boxes, in the homewares industry, and products are often out of their boxes in homewares stores," said Rathie.
Rathie said the court examined Bodum's extensive advertising and promotional activities in Australia over the past 30 years and determined that there was "a very significant independent secondary reputation in the aesthetic features and shape of the Bodum coffee plunger itself", distinct from the brand.
Jørgen Bodum, who owns the company, said he hoped this decision would mean fewer copies of the Chambord Coffee Plunger but he also praised the outcome for designers in general.
"Mainly, because of the Chinese connections to everybody, we are sometimes getting copies with new products even before we get on the market," said Bodum.
"It's not only important for us but it's important for all companies who try to protect and keep what they have created, maybe a long time ago, and which is still an icon in that industry."
Rathie said the decision was a significant one for designers in light of recent cases for Red Bull, Maltesers and Kettle Chips, where courts had failed to protect companies' brands.
"A lot of those cases focused on products that are in the box or a packaging. The pack is the product; you open it up, you throw it away. There haven't really been cases about the product itself where the product was the hero and that's why it's such an interesting one for designers," said Rathie, adding that copying iconic shapes and features without adequate branding would now be considered as misleading and deceptive conduct
Jörgen Bodum, whose iconic family coffee plunger has featured in the Museum of Contemporary art in New York and won numerous design awards around the world, said the fight to protect his designs had been tiring.
"For the size of our company we invest a lot of money on the product development and the design rights and it's a little bit tiring sometimes," he said.
DKSH has been ordered to pay Bodum's costs of the original trial and the appeal, and the case now waits to go back to the trial judge to make various orders, which Rathie said will likely include injunctions.
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