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ARTICLE · 09 JANUARY 2025

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Koninklijke v Cantarella: An Instant Coffee Clash

Piper Alderman
Piper Alderman
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Piper Alderman

Piper Alderman

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The case provides a useful insight into what is needed for a shape to be a "badge of origin".

AustraliaIntellectual Property
Tim O’Callaghan
Tim O’Callaghan
Travis Shueard
Travis Shueard
Zara Cox
Zara Cox
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In a recent Federal Court decision, Wheelahan J dismissed claims that Cantarella's Vittoria coffee jar infringed the famous Moccona coffee jar that is the subject of a registered shape trade mark. The case provides a useful insight into what is needed for a shape to be a "badge of origin" and the difficulties with enforcing shape trade marks.

Background & Material Facts

The first applicant, Koninklijke Douwe Egberts BV (KDE), is the owner of Australian Trade Mark Registration Number 1599824 for the following shape trade mark:

1566336a.jpg

(KDE Shape Mark).1

The KDE Shape Mark has a priority date of 7 January 2014 and is registered in Class 30 for coffee and instant coffee.

The second applicant, Jacobs Douwe Egberts AU Pty Ltd (JDE AU), sells instant coffee in Australia under the well-recognised brand name "Moccona". JDE AU sells Moccona-branded instant coffee in a glass jar, as shown below.2

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