The Popstar and the Coffee Makers – Two Recent Trade Mark Cases

1. Killer Queen, LLC v Taylor [2024] FCAFC 149 (Yates, Burley and Rofe JJ, 22 November 2024)

This recent decision of the Full Court of the Federal Court of Australia considered an appeal by the pop star Katy Perry in relation to the use of her name as it applied to clothing merchandise she and her corporate associates offered for sale. Trade mark infringement proceedings were commenced by an Australia clothing designer who was the registered owner of the word mark “Katie Perry”(one of her previous names), in respect of clothing in Class 25.

Background

Katy Perry, whose actual name is Katheryn Elizabeth Hudson, is an American singer-songwriter.  Katie Taylor, whose actual name was Katie Jane Perry, was the owner of Australian trade mark 1264761 (the ‘761 mark) in respect of the words “Katie Perry”, registered in Class 25 for “clothes” as from the priority date 29 September 2008.

In broad terms, Taylor was successful before the primary judge. On appeal Hudson was largely successful. Hudson did have a trade mark but removed clothing from the specifications when her applicant entity met resistance from the examiner of the Registrar of Trade Marks. The Hudson application was modified to proceed with the deletion of the clothing items from the specification. The sharp end of Hudson’s attack was a challenge to the registration of the ‘761 mark based on the Trade Marks Act1995 (Cth) (TM Act) s 60. This ground, available in opposition proceedings before the Registrar and on application for removal to Court, is available to trade marks (registered or unregistered), who satisfy two limbs:

• First, another trade mark had (Hudson’s mark relative to clothing) , before the priority date for the registration of the first – mentioned trade mark (the ‘761 mark) in respect of those goods or services, acquired a reputation in Australia; and
• Second, because of the reputation of that other trade mark (Hudson’s mark), the use of the first – mentioned trade mark (‘761 mark) would be likely to deceive or cause confusion.

On the cross-claim, the Full Court allowed the appeal ground, resulting in an order removing the ‘761 mark from the trade mark register, subject to a stay for a successful Special Leave application and if granted, a successful appeal. The success of this appeal on the s 60 ground and the removal of the ‘761 mark, meant Taylor’s infringement claim collapsed.

The infringement claim

Hudson had initially sought registration for her word mark, KATY PERRY (trade mark application no. 1306481) (the ‘481 mark) in 2009 in several classes including Class 25. As stated above, the application for the ‘481 mark was modified to reduce the scope of the specification by removing the Class 25 clothing items applied for, presumably because of an adverse examiner’s report in 2009.  The ‘481 mark proceeded thereafter to registration in Class 9, which included pre-recorded music CDs and downloadable videos of musical performances and recordings, and Class 41, which included live and pre-recorded musical performances.

Taylor brought an action against Hudson and her associated companies (conveniently the appellants) for infringement of the ‘761 mark. The appellants, in the primary proceeding, cross-claimed seeking cancellation of the ‘761 mark. The primary judge determined that Hudson and one of her associated companies, infringed the ‘761 mark and dismissed the cross-claim to cancel the ‘761 mark: Taylor v Killer Queen, LLC (No 5) [2023] FCA 364; 172 IPR 1 (PJ or primary judgment). Taylor commenced the action in 2019 and bearing in mind the limitation period for the tort of trade mark infringement of 6 years, Ms Taylor’s claim for relief related to conduct which occurred after 24 October 2013: PJ [378]. 

The primary judgment and the appeal raised numerous issues, largely because “the parties chose to put every conceivably arguable factual and legal contention into issue”: [4].

Did Taylor’s registration cover hats and/or shoes – The “Clothes” Issue [43] – [61]

The issue highlights the need to be particularly careful when filing trade mark applications. The simplicity of Taylor’s application for the ‘761 mark, “Clothes” in Class 25, ultimately proved inadequate to cover all of the allegedly infringing uses, for example shoes or hats. The primary judge determined that, with one exception, footwear, headgear, caps, hats and headbands did not fall within the scope of the “clothes” registration of the ‘761 mark. The exception was “party costumes”. Taylor argued before the primary judge and on appeal (in her cross-appeal), that headwear and footwear came within the meaning of “clothes”.

Before the primary judge, Taylor submitted that the word “clothes”, particularly when used in the context of a trade mark specification, was a catch-all word which referred to items which covered or protected the body from the elements. The primary judge considered definitions of the word “clothes” in the Oxford English Dictionary as “[c]overing for the person; wearing apparel; dress, raiment, vesture” and in the Macquarie Dictionary as “garments for the body; articles of dress; wearing apparel”: [45]. Ultimately the primary judge determined that the ordinary meaning of “clothes” was a reference to garments which covered the body but not the feet (or the head). In support of that finding, the primary judge reasoned that shoes and hats served different purposes, were made of different materials and tended to be sold in different stores or different areas or departments of larger stores, such as department stores: [47] referring to PJ [340].

Taylor’s cross-appeal failed. The Full Court was not satisfied that Taylor had demonstrated error on the part of the primary judge: [58]. The Full Court considered that if there were an ambiguity as to whether “clothes” included any covering of the feet or head, it would not be resolved in favour of the trade mark owner, principally because the trade mark owner bore the obligation “to specify the goods in respect of which the mark is to be registered and thereby define the scope of the monopoly they claim”: [59]. Taylor could have included shoes and headwear in the specification on application for the ‘761 mark but chose not to.

The impugned conduct [62] – [131]

The infringement case was based on impugned conduct through eight distinct sales channels (Trade Channels). The Trade Channels involved the different means that the impugned merchandise bearing the ‘481 mark was promoted and sold. Taylor alleged these were at the following locations and tours:

• during the Prismatic Tour conducted by Hudson in 2014 and the Witness Tour in 2018 (Hudson’s Australian tours).
• at pop up stores during the Prismatic Tour in Sydney and Melbourne.
• at various retail stores, and
• online at various websites.

The primary judge found that Hudson infringed Taylor’s ‘761 mark in five separate instances in various tweets, a Facebook post and a Facebook page event (PJ at [583(1)]). Further, that one of the corporate appellants, Kitty Purry (the third appellant), was liable as a joint tortfeasor in respect of certain acts of primary infringement by a marketing consultant (Bravado) for promoting and selling clothes, or goods of the same description to clothes (PJ [583(2)]). The primary judge rejected Ms Taylor’s claim that Killer Queen (the first appellant) and Hudson were liable for trade mark infringement as joint tortfeasors (PJ [390]).

Taylor’s cross-appeal on this joint tortfeasor issue focussed on three relationships relative to the Trade Channels: The Bravado Agreements, the Blackout Merch Agreement and the Epic Rights Agreement (together the agreements). The grounds of Taylor’s cross-appeal relating to the contended errors of the primary judge were set out at [68]. The Full Court considered each of the Trade Channels relevant to the agreements to which they related: [62]-[129].

The findings may be summarised as follows:

• in relation to Bravado, the Full Court respectfully concluded that the primary judge ought also to have concluded that Hudson was a joint tortfeasor with Kitty Purry. Certain acts set out in [109(1)]-[109(5)] were acts that could only come about by the agency of Ms Hudson, who as sole director, shareholder, CEO and CFO of Kitty Purry, the undisputed alter ego of Hudson (PJ at [404]). In addition, Hudson, as the sole shareholder, could be expected to derive financial benefit from the sale of the Katy Perry merchandise: [108]-[121].
• in relation to Blackout, the Full Court distinguished Bravado and found no error in the primary judge rejecting contentions that more detailed terms in Bravado could be inferred into Blackout: [128].
• In relation to Epic, their Honours considered that this followed the same path and fate as Blackout and the cross-appeal ground failed: [131].

The parties respectively challenged various findings of the primary judge in relation to the two “good faith” defences: TM Act s 122(1)(a) (the own name defence) and s 122(1)(fa) (the mark would be registered). These were on the basis of s 44(3), an honest concurrent use. Hudson firstly challenged the primary judge’s finding that the own name defence was not available to a licensee or joint tortfeasor: (PJ at [626], [630], [631]). Hudson also challenged the primary judge’s conclusion that the use of the ‘481 mark or Katy Perry Mark in Australia, did not constitute honest and concurrent use for the purpose of s 44(3) of the TM Act: [135].

Taylor in her cross-appeal challenged the primary judge’s finding that Hudson could rely on her stage name for the purposes of the own name defence, arguing that defence was limited to a person’s “legal” name. Taylor also challenged the primary judge’s finding for the purposes of s 122(1)(a) that Hudson’s use of her stage name was use in good faith.

The Full Court rejected Hudson’s case that the own name defence could extend to a licensee or joint tortfeasor under s 122(1)(a). Essentially, there was no basis to extend the defence beyond the terms which parliament had chosen to express it: [233].

The Full Court, having considered Hudson’s appeal point in relation to the own name defence, considered it convenient to deal with Taylor’s cross-appeal point in relation to that defence. Their Honours rejected Taylor’s case that the own name defence was not available to Hudson because her use of the name Katy Perry was not a use of her “legal” name. The Full Court determined that in trade, Ms Hudson was usually known by the name “Katy Perry” and there was no reason why, in principle, the “own name” defence could not apply to her use in good faith of that name. The Full Court referred to Parker-Knoll Ltd v Knoll International Ltd (No 2) [1962] RPC 265, at 275 where Lord Denning reasoned that the protection extended to the defendant’s use of their own name, “Knoll International Limited”, and also to the natural abbreviation of it to “Knoll International” omitting the word “Limited”.  However, it would not extend to the further abbreviation “Knoll”: [242].

Hudson’s second good faith challenge in relation to the rejection by the primary judge, that there was honest and concurrent use for the purpose of s 44(3), which would have permitted registration for the purpose of s 122(1)(fa). The elements for this defence were set out by reference to five non-exhaustive factors identified by Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102.

The primary judge had considered a number of factual matters and determined that Hudson could not take advantage of the honest concurrent user defence. These matters were reproduced at [149] and included the fact that in May 2009 Hudson became aware of Taylor’s application for registration in Class 25 for clothes and through her lawyers commenced corresponding with Taylor threatening proceedings if she did not stop using the mark. During those communications Hudson had applied for the ‘481 mark including for use on clothes in class 25. Further, following the filing of the ’781 mark, Hudson unsuccessfully sought to negotiate a coexistence agreement with Taylor.

The primary judge found that the lack of demonstrated confusion which would arise and the question of relative inconvenience favoured registration under s 44(3) however those factors were outweighed by the circumstances in which Hudson first used her mark in Australia: [153] referring to PJ [698]. The primary judge also considered that the s 44(3) basis would not assist Hudson because there was no evidence of extensive use in Australia in relation to clothes as at June 2009: [202].

The Full Court agreed that no error accompanied the primary judge’s rejection of that defence because the defence was not available on the basis that there was no concurrent use of the ‘481 mark at the relevant time that would support an application for registration under s 44(3). It followed that there could therefore be no honest concurrent use. However, the Full Court, assuming if there were use, considered the primary judge’s finding that the appellants could not demonstrate, in any event, honest use, was in error: [204].

Their Honours’ reasons provide a very helpful comment regarding confusion at [297]:

“Whilst evidence of actual confusion can be a strong indicator of a likelihood of confusion, its absence is not an equivalently strong indicator that there is no likelihood of confusion arising. In Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch); 7 WLUK 991, Hildyard J noted at [84] that courts recognise that the finding and producing of actual evidence of confusion is difficult. As observed by Diplock LJ in General Electric Co Ltd (USA) v General Electric Co Ltd “GE Trade Mark” [1972] 1 WLR 729, HL(E) at 737, the absence of confusion may be explicable, for example, by the small extent to which the mark has been used. That is the case here.”

The Full Court considered that the absence of evidence of actual confusion was explicable in the present case by the small scale of Taylor’s business as at the priority date and thereafter: [298]. Consequently, their Honours considered that the primary judge had fallen into error in relation to the likelihood of confusion limb of s 60:

“Once the common practice is taken into account, together with the primary judge’s finding that the Katy Perry Mark had a reputation in music and entertainment, and Ms Hudson’s own reputation in the name “Katy Perry”, and the correct comparison is made, we consider that because of the reputation in the Katy Perry Mark, the use by Ms Taylor of her mark on clothes would be likely to deceive or cause confusion.” [302].

The appeal was allowed against the primary judge’s finding that the s 60 challenge to the ‘761 mark failed.

Taylor applied for the Court to exercise the discretion enlivened under s 89 TM Act. Taylor’s grounds are found in [313] and included her honest adoption of her mark in 2007. This argument, however, was rejected.

The Full Court considered at [317] that the discretion was not enlivened:

• Taylor applied for her mark with knowledge of Hudson, her reputation, and her mark in circumstances where she also knew that popular music stars, like Ms Hudson, lend their names (and trade marks) to be used in connection with clothes and sell merchandise at their concerts, and accepted such conduct as a common practice.
• although not “blameworthy”, Taylor’s conduct contributed towards the cancellation result, and for that reason their Honours did not consider the s 89 discretion enlivened.

Had their Honours considered the discretion enlivened, their Honours determined that it would not have been exercised in Taylor’s favour for the reasons set out in [319]-[322] and included:

• Taylor’s rejection of Hudson’s proposal in 2009 for a co-existence agreement.
• The public interest factor of protecting consumers from being confused or deceived by preserving the integrity of the register.

It followed that the success of the s 60 ground meant the cancellation of the trade mark in suit, thereby dissipating the trade mark infringement action.

A link to the decision is here.

2. Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 (Wheelahan J, 7 November 2024)

This recent decision of a single judge of the Federal Court of Australia, involved amongst the claims, an alleged trade mark infringement in respect of the shape of the Moccona coffee jar, the subject of a registered shape trade mark.

His Honour’s reasons for judgment relate to a dispute between the producers of Moccona coffee and the producers of Vittoria coffee in relation to the packaging of their respective freeze dried coffee products. Vittoria released a 400-gram instant coffee product under its brand name “Vittoria” in a cylindrical jar with a stopper lid. The first applicant (the applicants together Moccona unless individually identified), is the registered owner of Australian shape trade mark No 1599824 (the ‘824 mark), being the shape of a cylindrical container with a stopper in Class 30 over coffee and instant coffee. The second applicant (JDE AU) was pleaded to be the authorised user of the’824 mark in Australia, a claim which was challenged. The Trade Marks Act 1995 (Cth) (TM Act) s 8 sets out the definition of an “authorised user”.  

Moccona offered for sale its coffee products in jars, capsules, soft packs, sticks, sachets, and tins. An example of the Moccona jar appears in the reasons at [3] together with the five images which define the shape in the ‘824 mark registration. The ‘824 mark registration was not constrained by dimensions, colour or material. His Honour at [6] emphasised the trade mark infringement claims were limited to the 3D shape as identified in the registered representations:

In May 2021, Cantarella launched a 100-gram freeze-dried instant coffee product under the Vittoria brand. An example of the Vittoria 100gm jar appear in [8]. In August 2022, Cantarella launched a 400-gram freeze-dried instant coffee product, sold in a cylindrical glass jar with a glass stopper lid under the Vittoria brand an example of which is as follows:

Moccona’s three claims were that Vittoria has:

• within the meaning of s 120 of the TM Act, infringed the ‘824 mark.
• contravened ss 18, 29, and 33 of the Australian Consumer Law (ACL), which is found in Schedule 2 to the Competition and Consumer Act 2010 (Cth).
• The tort of passing off whereVittoria’s coffee products are passed off as coffee products that emanated from, or were associated with Moccona and their coffee products.

In summary, Vittoria denied infringement, cross-claimed for the cancellation of the ‘824 mark from the register on grounds set out in the reasons at [11]. These cancellation grounds may be summarised as follows:

• cancellation of the ‘824 mark because it was not inherently adapted to distinguish, or did not in fact distinguish, Moccona’s goods from the goods of other traders: TM Act s 41.
• the Trade Mark Registrar accepted the ‘824 application on the basis of evidence or representations that were false in material particulars: TM Act 62(b);
• the ‘824 mark was entered on the Register because of false suggestion or misrepresentation: TM Act s 88(2)(e).
• the ‘824 application was made in bad faith: TM Act s 62A; and
• in the alternative, Vittoria sought removal of the ‘824 mark under both ss 92(4)(a) and (b) for non-use, specifically under:
  • s 92(4)(a), that the ‘824 mark had not been used as a trade mark since the priority date and that Moccona had no bona fide intention as at the priority date to use the ‘824 mark, to authorise its use, or to assign it for use as a trade mark and because Moccona had not used the ‘824 mark, or used it in good faith.
  • s 92(4)(b), whereby the’824 mark remained registered for a continuous period of three years ending one month before 24 March 2023, and at no time during that period did Moccona use the ‘824 mark, or use it in good faith, as a trade mark, in Australia.

Relevant to the infringement case, if Moccona failed in its infringement case, Vittoria also cross-claimed for relief under the unjustified threats provision: TM Act s 129(2)(a): [13].

The issues for determination were set out [229] of the reasons in relation to the cross-claims and [230] in relation to the Moccona claims.

History of the parties uses in Australia

His Honour considered the history of the Moccona brand in Australia and the use of the ‘824 mark in advertising and other forms: [31]-[88]. Moccona launched its Moccona branded instant coffee in Australia in 1960. In evidence were various images and advertisements going to the issue of when Moccona began using the jar shape in the ‘824 mark registration. In evidence was an advertisement published in the “Dutch Australian Weekly” dated 2 December 1966 using a jar that was not “entirely unlike” the shape in the registration of the ‘824 mark: [35]. However, evidence of use by Moccona of earlier dates did not persuade his Honour from concluding that Moccona instant coffee was sold in Australia in a jar with a shape like that of the ‘824 mark before October 1977: [44].

His Honour’s reasons set out Vittoria’s brand history at [89]-[107]. Vittoria for the most had concentrated on coffee beans and ground coffee. It did at some time between the late 1950s and the late 1970s sell a Vittoria-branded instant coffee product, in a jar: [89].                                                

Vittoria-branded instant coffee product had not been sold in Australia between the late 1970s until the launch of the Vittoria 100-gram instant coffee product in 2021 when Woolworths and Coles began to stock it. Evidence about the development of Vittoria’s 400gm product and packaging was largely confidential, heard in closed court and the subject of a confidential annexure to the reasons. His Honour did identify evidence in general terms that “related to precisely how, why, and with what knowledge and motivation Cantarella settled on the packaging it ultimately adopted for the Vittoria 400-gram product”: [96]. The open reasons outlined his Honour’s reasoning on the issue. The main features of that evidence are set out in [101]-[107].

At [104], Wheelahan J concluded that the evidence about the development of the Vittoria 400-gram jar did not bear on the issues in the case. Moccona sought to engage the principle that, where a trader consciously emulated aspects of a competitor’s get-up, it was a reasonable inference that the trader believed there would be a market benefit in doing so, in the form of attracting custom that would otherwise have gone to the competitor: [99]; Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Australian Woollen Mills)at 657 (Dixon and McTiernan JJ). The applicants cited Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; 234 FCR 549 at [117] (Weinberg and Dowsett JJ) in support.

In this regard, Wheelahan J considered that these statements should not be understood as creating a rule of law but rather they constituted appellate guidance in relation to fact-finding, specifically whether in fact there was such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained: [106].

In support of its s 41 cross-claim (inability to distinguish the trader’s products and services), Vittoria identified other brands that had sold, or proposed to sell, instant coffee in a cylindrical glass jar substantially in the form of the ‘824 mark: [127]-[149]. An image of an Andronicus coffee jar without the label was reproduced at [141] of the reasons, which was substantially in the form of the ‘824 mark.

Summary of issues and determinations

Conveniently the challenges to the registration of the ‘824 mark were dealt with ahead of the infringement claim as a successful challenge to the registration of the ‘824 mark would put in a different context, the infringement claim. The parties had an agreed list of issues for determination: [229] and [230]. In relation to the cross-claim, his Honour identified the following issues and then answered them as also follows:

1. Should the ‘824 mark be cancelled on the ground that it lacks distinctiveness?Cancelling the ‘824 mark based on s 41 of the TM Act involved a two-stage inquiry. Firstly, ascertaining the degree to which the ‘824 mark was inherently adapted to distinguish and secondly, if the ‘824 mark was “not to any extent” or “to some extent, but not sufficiently” inherently adapted to distinguish, this then involved an assessment of the questions posed by either s 41(3)(b) or s 41(4)(b).Wheelahan J determined that the ‘824 mark was not to any extent inherently adapted to distinguish Moccona’s goods for the reasons set out in [258]-[267]. His Honour considered that “traders in coffee might, for perfectly legitimate reasons, seek to evoke the aesthetic of an old-fashioned jar in relation to their coffee by adopting a shape like that of the ‘824 mark: [266]. The evidence of other traders’ use of a similar shape also informed another issue: the ‘824 mark was both primarily functional and, to the extent that it was not functional, it drew on features of the common heritage that did not distinguish the goods of any one trader. Wheelahan J rejected however Vittoria’s claim that the ’824 mark did not acquire a distinctiveness in fact in relation to coffee and instant coffee, before the priority date of the ‘824 mark, 7 January 2014, for the reasons set out in [293]-[306]. His Honour found that from the time when the Andronicus advertisement was broadcast in 1981, Moccona had developed a significant association between their coffee products and the jar shape in which those products were sold. Further, in the two decades immediately preceding the priority date, there were no competitors using jars that were apt to detract from the effectiveness of this use as a trade mark or badge of origin: [306].
2. Should the ‘824 mark be cancelled on the ground that, as at the priority date, Moccona did not intend to use or authorise the use of the ‘824 mark in Australia as a trade mark in relation to instant coffee?By reason of his Honour’s finding that as at the priority date, the ‘824 mark was capable of operating, and in fact did operate, as a badge of origin in relation to the applicants’ coffee goods, this question was resolved against Vittoria.
3. Should the ‘824 mark be removed from the Register on the ground that at no time in the period of three years prior to the filing of the cross-claim did Moccona use the ‘824 mark in Australia as a trade mark in relation to instant coffee?Vittoria sought to advance both limbs of TM Act s 92(4) for removal based on non-use that when Moccona applied it had no intention to use the shape mark in good faith as a trade mark and secondly, it did not used the shape mark as a trade mark in the relevant three year non-use period. It will be recalled that Moccona’s case on use in Australia depended on JDE AU’s use as Moccona’s authorised user. The TM Act s 7(3) provides that the use by an authorised user of the mark is taken to be the use of the owner. His Honour accepted that JDE AU was an authorised user within the TM Act s 8(3) and that JDE AU used the ‘824 mark under the control of the trade mark owner: [324]. Both Moccona and JDE AU were part of the same corporate group and his Honour therefore found that there was a unity of purpose. Vittoria’s non-use case on both bases was rejected: [354].
4. Should the ‘824 mark be cancelled on the s 62A ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars, or on the ground that it was entered on the Register as a result of false suggestion or misrepresentation?Here Vittoria’s case was based on responses by Moccona’s attorneys to the examiners in the prosecution stage. These were in response to adverse reports raising objection under s 41. Moccona accepted that it had in a declaration addressing the objections, said inter alia that Moccona coffee had been sold in Australia since 1960 when the evidence showed it was in fact since at least 1977. All of the statements Vittoria impugned were set out in [407]. Moccona identified a statement in an adverse report which expressed the view that there was no documentary evidence to support use prior to 2008: [390]. Vittoria’s cross-claim ground failed for reasons set out at [406] and following. His Honour considered that the Registrar’s examiner placed no weight on the statement of use by Moccona since 1960 as it lacked evidence to support it: [418].In relation to the falsely suggested statement by Moccona’s agents that no other trader had used a jar similar to the shape mark in relation to coffee since 1960, his Honour considered that it was relevant to know that Andronicus and Park Avenue had used similar jars: [419]. His Honour concluded that while the possibility the examiner’s decision would have been different, his Honour was not affirmatively persuaded that the Registrar’s decision would probably have been different.
5. Should the ‘824 mark be cancelled on the ground that the application for registration was made in bad faith?The essence of this ground was that Vittoria claimed that Moccona was recklessly indifferent as to whether, other traders had used the same or very similarly shaped jars: [429]. His Honour considered that there was a lack of evidence to support the factual premises behind the bad faith cross-claim ground: [436].
6. Should the Court exercise statutory discretions in favour of Moccona to refuse to cancel or remove the ‘824 mark?His Honour considered that based on the findings, no order would be considered removing the ‘824 mark from the register: [438]. His Honour’s findings did not invoke the discretion, which is invoked where a trade mark should be removed but for the exercise of the discretion.
7. Is JDE AU, and has JDE AU been at all material times, an authorised user in Australia of the ‘824 mark?His Honour referred to the earlier finding that JDE AU was an authorised user of the ‘824 mark under issue (3) above.

In relation to Moccona’s claims, the following issues arose:

8. Has Vittoria’s marketing and sale of its Vittoria 400-gram product in a glass jar involved the use of the shape of that jar as a trade mark?Wheelahan J noted that this issue raised the same consideration as to whether Moccona used its jar as a trade mark and was a matter for the Court. Moccona claimed that the infringement came about because of “the attractive eye-catching shape of the glass jar and flat-topped stopper lid, which comprises the container in which the coffee product is held”: [442]. Moccona further said that the shape and the shape alone of the Vittoria coffee jar, functioned as a trade mark. Vittoria claimed that common sense suggested consumers used names and logos on labels to distinguish instant coffee products.His Honour considered that Vittoria did not use its jar shape as a trade mark to distinguish its product from those of other traders in coffee products:[456]. Reasons in support of this finding included that his Honour did not find the Vittoria jar “striking”. Further, just because a product is displayed in its packaging, did not automatically mean, the shape of the packaging was being used as a trade mark.His Honour placed weight on the “aisle fins”. These are perpendicular protrusions from the shelving to draw attention to a particular product. They were in this case information from the supermarket owner themselves. The image of the Vittoria jar and label appeared on the aisle fin and served as a visual cue for the product. That use was not necessarily using the shape as a trade mark as required by s 120.
9. Is the jar of the Vittoria 400-gram product deceptively similar to the ‘824 mark?This claim fell away because the “pin” to infringement was that Vittoria’s jar was used as a trade mark. As his Honour found it was not, then the question of deceptive similarity was rendered moot. Notwithstanding, his Honour addressed deceptive similarity. Wheelahan J did not consider there to be a real, tangible risk that a notional buyer, with a recollection only of the ‘824 mark shape’s rough proportions and general shape, would be perplexed, mixed up, caused to wonder, or left in doubt, about whether instant coffee sold in the Vittoria jar shape had the same commercial source as coffee sold in the ‘824 mark: [505].
10. Has the Moccona promotion and sale in Australia of coffee products in a clear glass jar resulted in the acquisition of substantial distinctive goodwill and reputation?Yes: [516].
11. By its marketing and sale of coffee in the Vittoria 400-gram product, is Vittoria likely to mislead a number of ordinary and reasonable consumers of coffee in Australia into the erroneous belief that the Vittoria 400-gram product emanates from the applicants or is otherwise connected, associated or affiliated with the applicants and their coffee products?Wheelahan J considered that it was not likely that consumers would be caused to wonder (let alone to conclude), whether there was a connection between the Vittoria product and the commercial source of the Moccona shape get-up: [537].
12. Has Vittoria thereby injured the goodwill and reputation of Moccona?Based on the findings, this issue did not arise.
13. In circumstances where the infringement claims failed, whether Moccona had made unjustified threats to bring an action against Vittoria on the ground that Vittoria had infringed the ‘824 mark?It is a condition of any application under the unjustified threats provision, s 129, that the infringement claim fails. Of course, it is not necessary for an infringement action to have been commenced, as a recipient of threats may commence an action based on a claim of unjustified threats. However, the collapse of Moccona’s infringement action meant that Vittoria’s s 129 claim for relief would succeed, which Moccona conceded.His Honour considered it unlikely that Moccona would hereafter threaten Vittoria in relation to the shape of the jar in suit. Accordingly, there was no utility in granting the injunctive relief sought. The orders dismissing the Moccona claims were sufficient to vindicate Vittora’s position, such that a declaration was not necessary. Questions of damages and additional damages were not appropriate to consider at this point as they could be affected by any other relief granted.

A link to the decision is here.