Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23 (2 February 2010)

Last Updated: 8 February 2010

FEDERAL COURT OF AUSTRALIA

Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23

Citation:		Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23
Parties:		PLAYCORP GROUP OF COMPANIES PTY LTD (ACN 115 163 025) and PLAYCORP PTY LTD (ACN 006 277 363) v PETER BODUM A/S, BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) and PI-DESIGN AG PETER BODUM A/S, BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) and PE-DESIGN AG v DKSH AUSTRALIA PTY LTD (ACN 005 059 307)
File number:		VID 423 of 2008 NSD 472 of 2008
Judge:		MIDDLETON J
Date of judgment:		2 February 2010
Catchwords:		TRADE PRACTICES – Misleading and deceptive conduct — s 52 of the Trade Practices Act – relevant date for the assessment of conduct - conduct not held to be misleading. TORT – Passing off — establishing a reputation or secondary meaning in the product - whether the promotion and supply of similar articles is likely to deceive potential purchasers to believe the rival trader’s product was put out by or associated with the applicant or that the rival trader is itself associated with the applicant. INTERPRETATION OF SETTLEMENT DEEDS AND RELEASES – Matters in contemplation of parties at the time release given.
Legislation:		Trade Practices Act 1974 (Cth) Corporations Act 2001 (Cth)
Cases cited:		Apand v Kettle Chip Co Pty Ltd [1994] FCA 1370; (1994) 30 IPR 337 Australian Woollen Mills Limited v FS Walton & Co Limited [1937] HCA 51; (1937) 58 CLR 641 Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60; (2004) 218 CLR 592 Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; (2007) 159 FCR 397 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 69 IPR 23 ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281 Erven Warnink BV v J Townsend & Sons Hull Ltd [1980] RPC 31 Grant v John Grant & Sons Proprietary Limited [1954] HCA 23; (1954) 91 CLR 112 Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; (2008) 251 ALR 1 Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (No 1) [1988] FCA 40; (1988) 39 FCR 546 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 48 IPR 257 Interlego AG v Croner Trading Pty Ltd [1992] FCA 624; (1992) 39 FCR 348 London and South Western Railway Co v Blackmore (1870) LR 4 HL 610 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 Payton & Co Ltd v Snelling, Lampard & Co Ltd (1990) 17 RPC 57 Kettle Chip Co Pty Ltd v Apand Pty Limited [1993] FCA 546; (1993) 46 FCR 152 Lindsay Petroleum Co v Hurd (1874) LP5 PC 221 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 at [32] and [2009] FCAFC 174 McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 Natural Waters of Viti Ltd v Dayals (Fiji) Artesian Waters Ltd [2007] FCA 200; (2007) 71 IPR 571 Nylex Corp Ltd v Sabco Ltd (1987) ATPR 40-752 Reckitt & Colman Products Ltd v Borden Inc (1987) 10 IPR 21 Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited [2001] FCA 1228; (2001) 53 IPR 481 Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354 Thai World Imports Express Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 WD & HO Wills (Australia) Ltd v Philip Morris Ltd (1997) 39 IPR 356 World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 10 IPR 289
Date of hearing:	8, 9, 14, 15, 16 April 2009, 14 and 15 May 2009
Place:	Melbourne
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	267
Counsel for the Applicants in VID 423 of 2008:	Mr B Caine SC with Dr W Rothnie
Solicitor for the Applicants in VID 423 of 2008 :	Corrs Chambers Westgarth
Counsel for the Respondents in VID 423 of 2008:	Mr D Catterns QC with Ms S Goddard SC and Mr G Hall
Solicitor for the Respondents in VID 423 of 2008:	Mallesons Stephen Jaques
Counsel for the Applicants in NSD 472 of 2008:	Mr D Catterns QC with Ms S Goddard SC and Mr G Hall
Solicitor for the Applicants in NSD 472 of 2008 :	Mallesons Stephen Jaques
Counsel for the Respondent in NSD 472 of 2008:	Mr G Dalton
Solicitor for the Respondent in NSD 472 of 2008:	Arnold Bloch Leibler

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 423 of 2008

BETWEEN:

PLAYCORP GROUP OF COMPANIES PTY LTD (ACN 115 163 025) First Applicant PLAYCORP PTY LTD (ACN 006 277 363) Second Applicant

AND:	PETER BODUM A/S First Respondent BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) Second Respondent PI-DESIGN AG Third Respondent

JUDGE:	MIDDLETON J
DATE OF ORDER:	2 FEBRUARY 2010
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The parties confer for the purpose of agreeing upon minutes of orders.
2. The parties file any agreed minutes of orders before 4:00pm on 10 February 2010.
3. The parties file and serve any written submissions as to orders sought and not agreed (including orders as to costs) before 4:00pm on 10 February 2010.
4. The parties file and serve any reply submissions before 4:00pm on 19 February 2010.
5. The parties advise the Court before 4:00pm on 19 February 2010 whether they agree to the further orders being made upon the written submissions without the need for any further appearance.
   

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	NSD 472 of 2008

BETWEEN:	PETER BODUM A/S First Applicant BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) Second Applicant PI-DESIGN AG Third Applicant
AND:	DKSH AUSTRALIA PTY LTD (ACN 005 059 307) Respondent

JUDGE:	MIDDLETON J
DATE OF ORDER:	2 FEBRUARY 2010
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The parties confer for the purpose of agreeing upon minutes of orders.
2. The parties file any agreed minutes of orders before 4:00pm on 10 February 2010.
3. The parties file and serve any written submissions as to orders sought and not agreed (including orders as to costs) before 4:00pm on 10 February 2010.
4. The parties file and serve any reply submissions before 4:00pm on 19 February 2010.
5. The parties advise the Court before 4:00pm on 19 February 2010 whether they agree to the further orders being made upon the written submissions without the need for any further appearance.
   

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 423 of 2008

BETWEEN:	PLAYCORP GROUP OF COMPANIES PTY LTD (ACN 115 163 025) First Applicant PLAYCORP PTY LTD (ACN 006 277 363) Second Applicant
AND:	PETER BODUM A/S First Respondent BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) Second Respondent PI-DESIGN AG Third Respondent
GENERAL DIVISION		VID 472 of 2008
BETWEEN:	PETER BODUM A/S First Applicant BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) Second Applicant PI-DESIGN AG Third Applicant
AND:	DKSH AUSTRALIA PTY LTD (ACN 005 059 307) Respondent

JUDGE:	MIDDLETON J
DATE:	2 FEBRUARY 2010
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

INTRODUCTION

1. These two separate proceedings were heard together and each relate to actions of passing off and misleading and deceptive conduct under s 52 of the Trade Practices Act 1974 (Cth) (‘TPA’). They involve questions of liability arising from the distribution and sale in Australia of coffee plungers, tea makers and accessories.
2. The parties filed an agreed statement of facts. Further evidence was introduced by the parties. In the main, objections to evidence went to the weight to be given by the Court to certain evidence. No issue of the credit of any witness arose for my consideration in the sense that it was put to any witness that they were not telling the truth; although, the Court was asked to make findings contrary to certain statements and denials made by certain witnesses based upon other evidence, including documentary evidence. Evidence in each proceeding was ordered to be evidence in the other. Submissions relating to one proceeding related in many aspects to the other proceeding, and so will these reasons for judgment in specifically addressing issues in one proceeding relate to the other proceeding.

BACKGROUND

3. It is useful to set out a brief overview of the parties, the proceedings, and the nature of each dispute.

The Parties

Bodum Entities

4. Peter Bodum A/S is a Danish company, founded in 1944. It designs, manufactures and sells in Australia, and throughout the world, a range of household products, including coffee plungers and teapots.
5. Bodum (Australia) Pty Limited is a wholly-owned Australian subsidiary of Peter Bodum A/S. Since 2003 it has sold or licensed the sale of certain Bodum products in Australia.
6. Pi-Design AG is a Swiss company, and a wholly owned subsidiary of Bodum Holding AG, which is a related corporation of Peter Bodum A/S. Pi-Design owns the Australian registered designs which it licenses to the Bodum Group of Companies.
7. Mr Jorgen Bodum and Mr Thomas Perez each gave evidence for Bodum. Mr Bodum is a director of each of the Bodum companies, and Mr Perez is the President of Bodum USA and a former managing director of Bodum (Australia) Pty Limited.
8. I will refer collectively to the Bodum entities throughout these reasons for judgment as ‘Bodum’.

Playcorp

9. Playcorp Group of Companies Pty Ltd and Playcorp Pty Ltd (collectively called ‘Playcorp’) are both Australian companies. They are related bodies corporate as that term is defined in the Corporations Act 2001 (Cth). Playcorp Pty Ltd imports and sells in Australia homewares products including, coffee plungers and teapots, under the brands Baccarat and Arcosteel.
10. Playcorp acquired the Baccarat and Arcosteel brands by assignment from Housewares International Limited (‘HWI’) and Thebe International Pty Limited as part of an asset sale agreement dated 16 March 2007.
11. Mr Ben Caruana gave evidence for Playcorp. Mr Caruana was employed by Playcorp as General Manager. Prior to joining Playcorp he was employed by HWI.

DKSH

12. DKSH Australia Pty Ltd (‘DKSH’) is an Australian company. It commenced trading under its current name on or about 18 February 2004. It is a subsidiary of a Swiss company, DKSH Holdings Ltd.
13. DKSH Consumer Goods Business Unit is a division of DKSH without separate corporate identity. It imports into Australia, and sells by wholesale, homewares and kitchen products, which include the coffee plunger in suit in the DKSH proceedings, the Euroline Coffee Plunger.
14. Mr Anthony Michaels gave evidence for DKSH. Mr Michaels is a director of DKSH and is employed as Managing Director of the DKSH Consumer Goods Business Unit.

The Playcorp Proceeding

15. The main issue in this proceeding relates to whether Playcorp has engaged in misleading or deceptive conduct contrary to s 52 of the TPA or passed off their Baccarrat Venice Coffee Plunger and the Baccarrat Devon Filter Teapot and saucer as and for the allegedly equivalent Bodum products, the Bodum Chambord Coffee Plunger and the Assam Teapot, respectively.
16. The parties entered into a confidential Settlement Agreement, which also gives rise to a question for determination, namely to what extent did that Settlement Agreement prevent the current action brought by Playcorp.
17. Bodum says that by reason of the Settlement Agreement, Playcorp is not entitled to assert that Bodum does not have an exclusive goodwill and reputation in one of the coffee plungers, namely the Bodum Chambord Coffee Plunger, or that there is not a secondary meaning in the features of that product.
18. Finally, Bodum raises a claim under s 52 of the TPA, contending that during the course of settlement negotiations leading up to the Settlement Agreement, Playcorp represented that it:
    • would not manufacture, import or sell any product which had features or a combination of features which had been presented to Bodum for inclusion in the Settlement Agreement, and to which Bodum had objected; and
    • would not manufacture, import or sell any product made in accordance with or closely resembling ‘Meeting Design 4’, ‘New Design 3’ or ‘New Design 6’.
19. These representations were said by Bodum to be a basis for restraining Playcorp from so distributing and selling the Venice Coffee Plunger, a product submitted to be the subject of the representations.

The DKSH Proceeding

20. In the DKSH proceeding, Bodum seeks to restrain DKSH’s production, importation, or selling of the production of a coffee plunger known as the Euroline Coffee Plunger. The grounds relied on by Bodum are passing off and misleading and deceptive conduct under s 52 of the TPA.
21. Bodum seeks to maintain the same position under these two causes of action as it contends for in the Playcorp proceeding, but in respect of the Euroline Coffee Plunger.

PRODUCTS IN DISPUTE, THEIR PACKAGING, AND COMPARISON

22. The agreed statement of facts provided by the parties included agreement as to the various features of the products. These are set out directly below.

The Bodum Chambord Coffee Plunger and the Playcorp Baccarat Venice Coffee Plunger

23. In relation to the Bodum Chambord Coffee Plunger and the Baccarat Venice Coffee Plunger, the comparative features being:

Features	Bodum Chambord Coffee Plunger	Playcorp Baccarat Venice Coffee Plunger
Frame	a frame, designed to hold a glass beaker, consisting of: (i) one upper horizontal band of flat silver-coloured metal; and (ii) four vertical bands of flat silver-coloured metal which: (A) taper slightly at the point at which they are attached to the upper horizontal band; and (B) extend and curve underneath the glass beaker to form four feet.	a frame, designed to hold a glass beaker, consisting of: (i) five vertical bands of flat silver-coloured metal: (A) which extend and curve underneath the glass beaker to form five feet; and (B) two of which arc to become a horizontal band extending around approximately half the circumference of the glass beaker;
Beaker	a clear glass beaker with a pouring spout	a clear glass beaker with a pouring spout
Handle	a black curved handle attached to the frame by means of a stainless steel screw	a black curved handle attached to the frame by means of a stainless steel screw
Lid	a domed or rounded stainless steel lid	a domed or rounded lid
Knob	a spherical black knob above the lid	a hemi-spherical black knob above the lid
Plunger	a plunger device	a plunger device
Markings	The name ‘bodum®’: (a) is etched into a white label on the side of the glass beaker of the Bodum Chambord Coffee Plunger; (b) is engraved on one of the vertical bands forming part of the metal frame; (c) is embossed into the black plastic lining of the lid; and (d) is printed on a translucent, removable sticker affixed to the glass beaker which is printed in red and white and also contains the words ‘THE Original’ and ‘FRENCH PRESS’ and ‘bodum®’.	The name ‘Baccarat’ is etched in white on the side of the glass beaker of the Baccarat Venice Coffee Plunger
Instructions	Instructions in both English and French are etched in white lettering beneath the white label on the side of the glass beaker. When offered for sale in Australia, the Bodum Chambord Coffee Plunger includes within the glass beaker a ‘bodum®’ branded instruction leaflet.	When offered for sale in Australia, the Baccarat Venice Coffee Plunger includes, within the plunger, an instruction leaflet

24. The Bodum Chambord Coffee Plunger is shown in Appendix A to these reasons for judgment.
25. The Playcorp Baccarat Venice Coffee Plunger is shown in Appendix B to these reasons for judgment.
26. The following table summarises the parties’ respective packaging:

Bodum Chambord Coffee Plunger
Years	Packaging Style
November 1997 to May 1999	White box with Garamond font, Bodum logo comprising red box with white characters, and square instructional images on the side
Approx May 1999 to 2005	White box with Franklin font, Bodum logo comprising red box with white characters, and round instructional images on the side
Approx 2005 to approximately March 2008	Black box with Garamond font, Bodum logo comprising red box with white characters, and numbered instructional images on the side
Approx March 2008 to present	Predominantly black box featuring photo of product set against a graphite background, Bodum logo comprising red box with white characters, and numbered instructional images on the side.

Baccarat Venice Coffee Plunger
Years	Packaging Style
Approx February 2008 to present	White fading to graphite gray box with Baccarat in black lettering on the top left of the box. Large photograph of product on the box. The word ‘VENICE’ in white lettering on the bottom left hand side of the box.

27. An example of some of the packaging style of the Bodum Chambord Coffee Plunger is shown in Appendix C to these reasons for judgment.
28. The packaging style of the Baccarat Venice Coffee Plunger is shown in Appendix D to these reasons for judgment.

The Bodum Assam Teapot and the Playcorp Baccarat Devon Filter Teapot

29. In relation to the Bodum Assam Teapot and the Playcorp Baccarat Devon Filter Teapot, the comparative features being:

Features	Bodum Assam Teapot	Playcorp Baccarat Devon Filter Teapot
Beaker	a transparent, substantially spherical glass pot with a flat round base incorporating a pouring lip into the body of the pot	a transparent, substantially spherical glass pot with a flat round base incorporating a pouring lip into the body of the pot
Handle	a transparent glass handle in a curved shape	a transparent glass handle in a curved shape
Filter	a removable stainless steel or plastic filter, incorporating a wide cylindrical centre column with perforated sections divided by solid strips	a removable stainless steel filter, incorporating a wide cylindrical centre column with perforated sections divided by solid strips
Lid & knob	a slightly convex rounded lid, fitting within the rim of the filter, with a rounded knob	a slightly convex rounded lid, fitting within the rim of the filter, with a hemispherical black knob above the lid
Plunger	a plunger mechanism which, in use, confines tea leaves in an unperforated zone of the filter to prevent further infusion	A look-alike (non-functional) plunger mechanism
Markings	The name ‘bodum®’: (a) is etched in a white background on the base of the Bodum Assam Teapot, together with a safety warning in both English and French in white lettering; (b) is engraved or etched on opposite sides of the cylindrical filter; and (c) is printed on a translucent, removable sticker affixed to the spherical pot which also contains a picture of a glass blower and the words ‘MOUTH BLOWN - SOUFFLÉ BOUCHE - MUNDGEBLASEN’.	The Baccarat Devon Filter Teapot does not feature any branding or labelling on the product itself
Instructions		the Baccarat Devon Filter Teapot includes within the pot an instruction leaflet

30. The Bodum Assam Teapot is shown in Appendix E to these reasons for judgment.
31. The Baccarat Devon Filter Teapot is shown in Appendix F to these reasons for judgment.
32. The following table summarises the parties’ respective packaging:

BODUM ASSAM TEAPOT

Years	Packaging style
Approx 1992 to approximately mid/late 2008	White box with the words ASSAM TEAPOT in black lettering on the top of the box. Large photograph of product on the box. Bodum logo comprising red box with white characters on front of box, left hand side below middle.
Approximately June/July 2008	Predominantly black box with the words ‘ASSAM TEAPOT’ (or ‘ASSAM THEIERE’) in white lettering on the top of the box. Large photograph of product on the box set against a graphite background. Bodum logo comprising red box with white characters on front of box, left hand side above middle

BACCARAT DEVON FILTER TEAPOT

Years	Packaging style
Approx July 2008 to present	White fading to graphite gray box with Baccarat in black lettering on the top left of the box. Large photograph of product on the box. The words DEVON in white lettering on the bottom left hand side of the box.

33. Some of the packaging styles of the Assam Teapot are shown in Appendix G to these reasons for judgment.
34. The packaging style of the Devon Filter Teapot is shown in Appendix H to these reasons for judgment.

The Bodum Chambord Coffee Plunger and the DKSH Euroline Coffee Plunger

35. In relation to the Bodum Chambord Coffee Plunger and the DKSH Euroline Coffee Plunger, the comparative features being:

Features	Bodum Chambord Coffee Plunger	DKSH Euroline Coffee Plunger
Frame	a frame, designed to hold a glass beaker, consisting of: (i) one upper horizontal band of flat silver-coloured metal; and (ii) four vertical bands of flat silver-coloured metal which: (A) taper slightly at the point at which they are attached to the upper horizontal band; and (B) extend and curve underneath the glass beaker to form four feet.	a frame, designed to hold a glass beaker, consisting of: (i) a chrome plated upper horizontal band with cut out sections; and (ii) four vertical bands of flat silver-coloured metal which: (A) taper slightly at the point at which they are attached to the upper horizontal band; and (B) extend and curve underneath the glass beaker to form four feet.
Beaker	a clear glass beaker with a pouring spout	a clear glass beaker with a pouring spout
Handle	a black curved handle attached to the frame by means of a stainless steel screw	a black curved handle attached to the frame by means of a stainless steel or chrome screw
Lid	a domed or rounded stainless steel lid	a domed or rounded chrome lid
Knob	a spherical black knob above the lid	a chrome spherical knob above the lid
Plunger	a plunger device	a plunger device
Markings	The name ‘bodum®’: (a) is etched into a white label on the side of the glass beaker of the Bodum Chambord Coffee Plunger; (b) is engraved on one of the vertical bands forming part of the metal frame; (c) is embossed into the black plastic lining of the lid; and (d) is printed on a translucent, removable sticker affixed to the glass beaker which is printed in red and white and also contains the words ‘THE Original’ and ‘FRENCH PRESS’ and ‘bodum®’.	The glass beaker has the word ‘pyrex’ permanently etched on it in white
Instructions	Instructions in both English and French are etched in white lettering beneath the white label on the side of the glass beaker. When offered for sale in Australia, the Bodum Chambord Coffee Plunger includes within the glass beaker a ‘bodum®’ branded instruction leaflet.	An instruction sheet is placed in the glass beaker at the time of manufacture

36. The DKSH Euroline Coffee Plunger is shown in Appendix I to these reasons for judgment.
37. The following table summarises DKSH’s packaging:

DKSH Euroline Coffee Plunger
Years	Packaging Style
Approx July 2004 to present.	Black and white box featuring prominent photo of the product with the words ‘Coffee’ in red and ‘Plunger’ in white at the top of the box. The brand ‘Euroline’ appears at the bottom left hand corner of the box, with ‘EURO’ in black and ‘LINE’ in white with black outlining.

38. The packaging style of the DKSH Euroline Coffee Plunger is shown in Appendix J to these reasons for judgment.

Expert Evidence of Comparison

39. Bodum led evidence from Associate Professor Douglas Tomkin, an expert in industrial design and the Head of the School of Design at the University of Technology, Sydney. Associate Professor Tomkin identified the following similarities between the Baccarat Venice Coffee Plunger and Bodum Chambord Coffee Plunger:
    • both products function in analogous ways and consist of similar components;
    • the two products have almost identical jugs (with small dimensional difference);
    • both products have metal frames constructed of flat sheet metal;
    • both products incorporate feet in the forming of the frame; and
    • the inner safety lid on both products is very similar as is the method by which it is attached to the metal lid.

Associate Professor Tomkin also noted the following visual differences:

• the frames differ significantly in shape;
• the handle fixing the Chambord Coffee Plunger frame is such that the screw is visually dominant whereas the screws on the Venice Coffee Plunger are not easily visible;
• the filter assemblies operate in a similar manner, however, they differ significantly in construction, materials and form; and
• the plunger handles are shaped differently, however, this difference has an insignificant overall visual impact.

40. Associate Professor Tomkin readily accepted further differences between the Chambord Coffee Plunger and Venice Coffee Plunger during cross-examination. These included that:
    • The Chambord Coffee Plunger’s frame tapers at the top of the vertical strap, a feature the Associate Professor considered a ‘strong brand signature’ which is absent from the Venice Coffee Plunger.
    • The Chambord Coffee Plunger has a strap at the top of the frame that travels around the entire circumference of the beaker, and its top and bottom edges are parallel. Again, this feature is absent from the Venice Coffee Plunger, which has a distinct curvature that means the frame does not travel the circumference of the beaker.
    • A distinctive feature of the Chambord Coffee Plunger is that the top of the handle is connected to the frame via a visually dominant screw fixing and a horizontal strap which provides the contact point at the bottom of the handle, features which are both absent from the Venice Coffee Plunger.
    • The lid of the Chambord Coffee Plunger also provides a visually distinct dome with edge detail, where there is a pronounced curvature above the edge or rim detail. The Venice Coffee Plunger lid, on the other hand, has no edge or rim detail and a low curvature, making them visually different.
    • The Chambord’s Coffee Plunger assembly is visible through the glass, with a distinct spring and metal plate comprising the filter device. This is to be contrasted with Venice Coffee Plunger which does not have a spring around the circumference and instead has a fine mesh filter.
41. Moreover, Associate Professor Tomkin agreed that when you look at the frame of the two products, that as a matter of overall impression, the Chambord Coffee Plunger and Venice Coffee Plunger differ significantly.
42. Associate Professor Tomkin also provided expert evidence in relation to the comparison of the Bodum Chambord Coffee Plunger and the Euroline plunger, finding that they were so similar in their choice of materials, manufacturing techniques and appearance that ‘[i]t is unlikely that one could be conceived without reference to the other’. Bodum submitted that such an impression is analogous to the one that a consumer, acting reasonably, would form.
43. It is to be observed that the Euroline plunger has no branding on the product. The word Pyrex is etched on the glass beaker. It only describes the kind of glass, and is no distinguishing feature. Pyrex sells replacement beakers, which can be used in most types of plungers including Bodum plungers and Euroline plungers.
44. While Associate Professor Tomkin noted the three main differences in the Euroline plunger (namely, cavities in the top support ring of the frame, the plunger knob being metallic, and the absence of the safety skirt), he regarded the overall visual difference between the two products as ‘small’. The three differences in his opinion had marginal effect on the overall appearance.
45. Associate Professor Tomkin also described the similarities and differences between the Bodum Assam Teapot and the Baccarat Devon Teapot. Significantly, he concluded in his report that the design similarities between these two products also made it ‘unlikely that one could be conceived without reference to the other’.
46. Associate Professor Tomkin concluded that whilst there are several visual differences between the two teapots, these differences can ‘ultimately be considered minor with respect to the impact they have on overall appearance’. Associate Professor Tomkin also found ‘significant visual design similarities’ between the Bodum Assam and the Barracat Devon Filter Teapots, on account of their appearance and use of similar materials and manufacturing techniques.
47. No objection was made to the admission of the evidence of Associate Professor Tomkin. None of his evidence, in chief or under cross-examination, was controversial. This evidence focussed attention on what the Court itself could observe about the similarities and differences in the products themselves. However, it is for the Court, in a case such as this, to determine for itself by way of overall impression, the significance of these similarities and differences once they have been identified.

LAW RELATING TO PASSING OFF AND SECTION 52 OF THE TPA

Overview

48. Passing off and s 52 misleading and deceptive conduct are separate causes of action, requiring separate analysis. The law of passing off prevents a person from using names, marks or other features that would induce a purchaser to believe that the goods they are buying are the goods of or associated with another person. Passing off protects the goodwill of the party seeking redress, while s 52 is an action to protect consumers from being misled or deceived: see Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; (2007) 159 FCR 397 at [97]- [98].
49. Necessarily the evidence relevant to establishing either cause of action will overlap. I will make findings relevant to both causes of action. In the following analysis, I will only consider the causes of action separately where it is strictly necessary to do so.
50. Bodum submits that the evidence shows clearly that it had established, a reputation and a secondary meaning, in the Bodum Chambord Coffee Plunger and the Bodum Assam Teapot, among a sufficient number of people in Australia to entitle Bodum to the relief it seeks. The impugned conduct is said to arise because people are misled by Playcorp’s or DKSH’s sale of copy products when the features of those products will signify to a sufficient number of people that they are made or licensed by Bodum, part of a Bodum range, or otherwise associated with Bodum.

The Relevant Date for Assessment of Conduct

51. Playcorp originally submitted that the authorities establish that whether conduct is, or is likely to be, misleading or deceptive or a passing off, is to be determined at the date the conduct complained of commenced.
52. Bodum originally submitted that the relevant dates for assessing the impugned conduct are:

(a) for Playcorp, February 2008 when the Baccarat Kitchenware catalogue was published at a trade fair (or April 2008 when the first sale of the Venice Coffee Plunger was made); and

(b) for DKSH, July 2004 when DKSH first sold the Euroline Coffee Plunger.

53. Playcorp agreed with Bodum that in the present case, the relevant conduct commenced in February 2008.
54. However, during the course of argument Bodum submitted that in relation to the s 52 cause of action, the date may be different.
55. While the relevant date for passing off purposes (namely the date of commencement of the conduct complained of) has been applied in s 52 cases, this is not an absolute rule and, given the different purposes and context of s 52, the rule does not always apply.
56. In Thai World Imports Express Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302, Gummow J said that the rule that the relevant time for the assessment of the conduct is when the conduct complained of commenced was ‘true both of passing off and of proceedings for contraventions of s 52 of the Trade Practices Act’. His Honour explained the rationale of the rule as:

being that the complainant’s goodwill is not to be taken as eroded by the wrongful trading of the other party in the period before the institution of and the resolution of proceedings between them.

57. Justice Gummow then expressed and proceeded to apply an exception, where the complainant ‘allows its own trade to fall away’. His Honour held that the applicant had sufficient reputation at the time the respondent commenced its conduct but this had faded by the time the applicant re-entered the market with the old packaging. It then commenced the proceeding. His Honour analysed the question of being one of the cause of any likely deception, and who was responsible for it.
58. In a case involving the application of s 52, the facts and circumstances in existence of the time of hearing must be considered, even if only for determining the nature of the relief to grant. Further, the cause of any misleading and deceptive conduct needs to be analysed. In these proceedings, there is no suggestion that the cause of people being likely to be misled is Bodum’s continuing to sell and promote its products. If people are (as Bodum submits) misled, it will be because of Playcorp’s or DKSH’s sale of copy products when the features of those products will signify to a sufficient number of people that they are made by Bodum, are licensed by it, are part of its range, or are otherwise associated with it. The ultimate question is whether a particular respondent has engaged in misleading and deceptive conduct. If the sale of a particular product is misleading and deceptive, the date at which the sale of the product commenced may influence the question as to whether it is the respondent that is the cause of the deception.
59. I do not consider I need to analyse this matter any further, as no matter which of the competing dates is chosen, it will not affect the result on the basis of the evidence. Bodum clearly had a strong reputation even prior to 2004. It may have been reinforced by subsequent events. This was contended to be so by reason of the fact that certain copy products had been discontinued and had left the market, and Bodum continued to sell the same products for many years and increased the sale and promotion of its own products. These facts I accept and are supported by the evidence.
60. For DKSH, there was a different dispute between the parties as to when the conduct complained of began. DKSH argued that because it had inherited the Euroline Coffee Plunger by way of assignment, the relevant corporate history had to be taken into account, which stretched back to the late 1980’s.
61. Bodum does not complain of the conduct of the earlier corporate entities, but only complains of the conduct of DKSH. On this basis, I am of the view that the relevant date for the purpose of passing off (as distinct from the s 52 claim) would be the date at which DKSH entered the market, namely July 2004.
62. As to the s 52 claim, DKSH accepted that if the Court finds that the sale of the Euroline Coffee Plunger since 2004 has been misleading or deceptive, the fact that that conduct originally commenced in 1988, will not affect that finding, although it may affect the grant of relief.

Other Relevant Principles

63. The following legal propositions are important for both the Playcorp proceeding and the DKSH proceeding.
64. Generally, an applicant’s reputation need not be exclusive, for either claims of passing off (see Erven Warnink BV v J Townsend & Sons Hull Ltd [1980] RPC 31) or s 52 (see Cadbury Schweppes [2007] FCAFC 70; (2007) 159 FCR 397 at 417-419).
65. In Cadbury Schweppes, the Full Court said at [99]:

Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Part V of the Trade Practices Act. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant's product.

66. Secondly, it does not matter that there may be a class of potential purchasers who are or were inured to earlier versions of the copy plungers at some time in the past. The question is whether there exists a class of consumers to whom the features of the Bodum Chambord Coffee Plunger and Assam Teapot have a secondary meaning of the type alleged here.
67. On this basis, Bodum suggested two questions I accept are to be asked of the class of consumers to which this secondary meaning would be conveyed:
    • Whether there is a significant number of that class who will, in certain realistic circumstances of sale, be misled by the features of the accused products here.
    • If so, whether this misconception arises because of the conduct of Playcorp or DKSH in selling copy products.
68. Of course, in the context of s 52 of the TPA, the ultimate test is whether a ‘not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled’ by the alleged conduct: see Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; (2008) 251 ALR 1 at [46] per Tamberlin J; at [66] per Siopis J.
69. Thirdly, the principles established in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 are still applicable.
70. In Puxu, Gibbs CJ said at 199-200:

Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s.52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the article serves. In some cases, indeed, no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one produce from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article, its close resemblance to another article will not mislead an ordinary reasonable member of the public.

See also, per Mason J at CLR 210-11; and per Brennan J at CLR 224-6.

71. To the extent that reliance is placed upon similarity of products, and where there is a different label upon each product, it is not to be assumed one way or the other that the products are associated. In the end it is a question of evidence and a matter of evaluation by the Court.
72. In Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 48 IPR 257 at [45], Burchett J said:

Nor is there any more reality to the suggestion that the mere similarity of the goods, combined with the similar "masculine" tone pervading the advertising of each, might lead some to assume the Remington shaver is produced under licence, or is a sub-brand of Philips. The Remington brand is well-known in its own right, and, in Australia, sells more personal care products, but fewer electric shavers, than Philps. The public is thoroughly accustomed to competing brands of almost identical products, which may or may not have some link - or may not today, but may tomorrow, share an over-all owner by virtue of a take-over or purchase. A similar suggestion made in Doctor Martens case was there described (at FCR 148) as “fanciful” and “bizarre”.

73. In Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281, the Full Court said at [38]:

In our view the suggestion that the appellants would agree to Dr Martens footwear being labelled “ah! Soul”, “Rivers” or “'JJ Lester & Co Ltd”, or that a potential purchaser would think they would, is fanciful. We do not think that in the relevant market any person would conclude that there was a licence or association of the type suggested The suggestion is even more bizarre in relation to the ''Rivers'' and ''JJ Lester & Co Ltd" labels. It is to be recalled that the words on the sock of the Bata shoe are “'JJ Lester & Co Ltd by Bata”. “Rivers” and “Bata” are well known Australian brands of footwear. Why would a potential purchaser of footwear labelled "Rivers” or "Bata” conclude that the footwear was in fact that of a rival trader? The submission is unsupported by any cogent evidence, and is at odds with the trial judge’s finding that purchasers of Doc Martens footwear expect to see the name or mark DR MARTENS on the footwear

74. Therefore, when the potential consumer is identified, it is necessary to determine the effect of the alleged misrepresentation and relevant conduct on the potential consumer, rejecting reactions which are extreme, fanciful or bizarre. The representative person does not have to be particularly intelligent or well informed, but at the same time the test is not to be applied by reference to persons who are stupid, careless or indifferent to the issue: (see Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45, 87 at [102], [105]–[106] and Dr Martens 44 IPR 281 at [325]).
75. All parties agreed that the questions arising in respect of passing off and contraventions of s 52 of the TPA fall to be determined by reference to the ordinary reasonable purchaser of homewares/housewares products or coffee and tea makers. However, as explained later, Bodum insisted that the impact of its branding on its products and packaging was largely to be ignored as the relevant class of consumers would not consider the absence of Bodum branding from Playcorp’s or DKSH’s products as disassociating those products from the secondary meaning inherent in the features of the Bodum Chambord Coffee Plunger and the Bodum Assam Teapot.
76. The question is whether the circumstances in which the accused products are presented to consumers are likely to mislead or deceive the ordinary reasonable shopper for housewares products, or coffee and tea makers, having regard to the reputation which Bodum has established in the particular presentation of the products which Bodum markets.
77. This depends upon a combination of visual impression and judicial estimation of the effect likely to be produced in the ordinary conduct of affairs, having regard to the reputation actually proved, in all the circumstances. It is not a side by side comparison. It is a comparison between the impression of Bodum’s products (including the packaging) retained in the ordinary reasonable customer’s mind and the impression made by the sort of consideration that the ordinary reasonable customer is likely to give to the accused product (including the packaging) before purchasing it: (see, eg 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 10 IPR 289 at 306 per Gummow J).
78. In considering this question, one looks to all the information the potential customer may have prior to sale, which would include any advertising the potential customer may be exposed to even prior to gaining a foot in the trader’s door. However, the place and time of sale will in most cases be the important place and time to analyse the question of whether there was a misleading impression.
79. Finally, evidence that consumers have actually been misled or deceived by the conduct complained of is not an essential element to an action in passing off or under the TPA. However, in appropriate cases, such evidence can be ‘very material’ and of ‘some importance’: see Interlego AG v Croner Trading Pty Ltd [1992] FCA 624; (1992) 39 FCR 348 at 389. The absence of such evidence may also be significant. As Heerey J said in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 69 IPR 23 at [81]:

So, for almost five years, Cadbury was aware of the need for obtaining evidence to support its case, which is all about confusion in the market place. It seems unlikely that Cadbury would have been unaware of the importance of evidence of actual misleading, or that it would not have made some effort to obtain it.

BODUM’S REPUTATION

80. Bodum alleges that by reason of the sales, promotion and advertising of its products in issue, it has acquired a reputation in Australia in each of the features identified, alone or in combination, and in the distinctive shape of each product.
81. For the purposes of these proceedings, the question of any reputation that Bodum has (for instance) in the Bodum Chambord Coffee Plunger cannot be determined by looking at the Bodum Chambord Coffee Plunger features in isolation. The question must be considered by reference to all of the relevant circumstances, including all of the distinctive visual features of the Bodum Chambord Coffee Plunger, its branding, markings, labelling and packaging and the manner by which it has been advertised and exposed to potential purchasers of coffee plungers in Australia: see Dr Martens (1999) 44 IPR 281 at 357 per Goldberg J.
82. I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger or in the Bodum Assam Teapot features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features or in the naked Teapot features (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products in any of the proceedings in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum. In the case of the Venice Coffee Plunger I do not even consider the product alone (even if not associated with its packaging) is sufficiently similar to give rise to the misrepresentation alleged by Bodum.
83. As discussed in Natural Waters of Viti Ltd v Dayals (Fiji) Artesian Waters Ltd [2007] FCA 200; (2007) 71 IPR 571, a number of factors may be relevant to establishing sufficient reputation evidence. There Bennett J noted that (at [59]):

The reputation which must be proved in a case such as this is that the get-up, packaging, shape, or trade dress relied upon is associated by consumers with the applicant’s product. It takes a strong case to establish a reputation of this nature (Interlego at 386) as consumers will not necessarily associate a get-up with the applicant’s product (Collins Debden Pty Ltd v Cumberland Stationery Co Pty Ltd (No 2) [2005] FCA 1398 at [33] to [34] per Lindgren J). The requisite reputation will more readily be found where the get-up is unique or striking rather than descriptive, mundane, merely functional, or in common use.

84. As Kenny J stated in McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 at [88], reputation may be inferred ‘from a high volume of sales, together with substantial advertising expenditures and other promotions’.
85. There are also other ways to prove the identification of a trade reputation and the discernment of the features of a product in which that reputation exists: see eg Reckitt & Colman Products Ltd v Borden Inc (1987) 10 IPR 21.
86. Bodum led evidence as to the Chambord’s reputation around the world, which was conveniently set out in a schedule. Bodum’s evidence as to Australian promotional material, included:
    • Promotional retail display items in Australia commencing in the early 1990’s through to 2004;
    • Promotional brochures and catalogues in Australia advertising the Melior Chambord in about 1981, coming under the Bodum Collection in 1985, with various catalogue features throughout the 1990’s up to 2007/2008;
    • Promotional material from newspapers and magazines in Australia;
    • Promotional television material in Australia;
    • Promotional internet websites in Australia;
    • Press releases in Australia;
    • Media references to the Bodum Chambord Coffee Plunger in print publications in Australia;
    • Media references to the Bodum Chambord Coffee Plunger in film and television in Australia;
    • The Bodum packaging;
    • Trade fairs in Australia;
    • Specialty stores and retail outlets in Australia;
    • Bodum Chambord Coffee Plunger sales in Starbucks and Gloria Jeans in Australia;
87. As to sales in Australia, whilst the actual figures remain confidential, the Bodum Chambord Coffee Plunger sales from 1986 to 2009 are extensive, dwarfing the respective sales of Playcorp and DKSH.
88. By way of comparison there had been no retail advertising by Playcorp of the Baccarat Venice Coffee Plunger or the Baccarat Devon Filter Teapot during 2008 of 2009. In fact, only a few thousand Baccarat Venice Coffee Plungers have been sold. A similar picture exists in relation to the DKSH Euroline Coffee Plunger.
89. Similar evidence was put before the Court in relation to the Bodum Assam Teapot, although the volume of sales for the period 1992 to 2008 was far less than the Bodum Chambord Coffee Plunger.
90. It is clear that there has been vast amount of advertising of the Bodum brand and I find that Bodum had and has a significant reputation in Australia in that brand. However, it is necessary to consider how this translates to a reputation in the Bodum Chambord Coffee Plunger and Bodum Assam Teapot, with or without its branding.
91. It was submitted by Bodum that the consistency, extent and duration of the sale and promotion of the Bodum products increased the likelihood that there will be a significant number of people to whom the features do have a signification for which Bodum contends.
92. I agree that there may be some such people, but very few. In any event, in the way that Bodum has marketed (by specific and consistent reference to its name and logo), the absence of such reference would readily lead to the view being held by consumers that the accused products are not part of the Bodum range.
93. Of course, there will be a variety of consumers. Some will not have been exposed to Bodum products at all. They will have no pre-conception or knowledge of the Bodum features relied upon by reference to the Bodum range. Other potential consumers will have a knowledge of the Bodum range and the Bodum features even if not by name. They may or may not have been exposed to copy products. I do not consider that they would conclude that the accused products or any copy products would be part of the Bodum range, rather than just ‘copies’ or cheaper versions. The fact that the accused products in these proceedings are ‘just under’ the price range of the Bodum products, does not confuse the consumer that they are part of the same range, but a cheaper version. The consumer would readily appreciate that these differently packaged products are just that, cheaper, and would not necessarily assume any association with Bodum. No persuasive evidence was led by Bodum to demonstrate otherwise.
94. The accused products were clearly packaged to distinguish them from Bodum, with no reference to the distinctive name or logo of Bodum. No evidence was led by Bodum of actual confusion of a consumer. If a consumer was familiar with Bodum or the Bodum product range itself, then in my view the comments made in Koninklijke Philips Electronics NV [2000] FCA 876; (2000) 48 IPR 257 at [45] and Dr Martens (1999) 44 IPR 281 at [38] referred to above apply here even though the brands of the accused products are not well known. The knowledgeable consumer would expect to see the name and logo of Bodum on its products. This is how Bodum has in fact marketed its products for very many years. I am of the clear view that consumers are now sophisticated enough (at least in the relevant market here) to understand the concept of competing brands with no trade connection, even though there may be an element of copying. In fact, the similarity may put the consumer on guard to ensure that he or she takes care to purchase ‘the original’. The evidence indicates that Bodum understood the need to (and did) educate the relevant market to beware of copyists, and to look for the ‘original’ Bodum.

Get up and Packaging

95. It is convenient to mention some aspects of the evidence relating to the promotion of the Bodum Chamboard Coffee Plunger. The Bodum Chambord Coffee Plunger has been sold in Australia since 1986 primarily under and by reference to the following features:
    • the name ‘bodum®’ presented in a stylised form in white on a bright red ‘flag’;
    • the name Chambord;
    • packaging which has been either predominantly white or black in colour;
    • the words ‘The Original French Press’;
    • a large red and white sticker affixed to the glass beaker bearing the words ‘the original French press’ and the name ‘bodum®’;
    • an instruction leaflet bearing the name ‘bodum®’ and the words ‘French Press’;
    • the permanent branding and instructions which appear on the Chambord Coffee Plunger product itself including:

- the name ‘bodum®’ engraved into the frame;

- the name ‘bodum®’ etched into the glass;

- the name ‘bodum®’ embossed on the black plastic skirt; and

- (since 1998) safety/usage instructions in both English and French which are etched into the glass beaker in white lettering beneath the white label on the side of the glass beaker.

96. Mr Bodum gave evidence (which I accept) that Bodum had placed its trade mark on the packaging of all of its products and where any Bodum products were sold without boxes, they were sold by reference to the name ‘Bodum’ either appearing on the product itself or by some other means.
97. Since at least as early as the year 2000, Bodum has placed a bright red and white sticker on the glass beaker of each Bodum Chambord Coffee Plunger, as well as its other coffee plunger products sold in Australia proclaiming that the product is ‘the original French Press bodum®’. Similarly, the packaging in which each Bodum coffee plunger is sold bears prominently in bright red and white the words ‘the original French Press’.
98. Mr Perez acknowledged in cross-examination that the purpose of this emphasis on the Bodum Chambord Coffee Plunger as the ‘original’ was to draw attention to its French heritage, to educate consumers to watch out for look-alikes and to distinguish its products from competitors’ look-alikes.
99. Bodum submitted that the only distinction of any significance (apart from differences in the products) is Playcorp’s and DKSH’s use of their trade marks. It was further submitted that there is nothing inherent in any particular use of colour, depiction of product or any other aspect of packaging that makes Playcorp’s or DKSH’s packaging distinctive of their product as opposed to Bodum’s. It was submitted that marks used on the boxes are of much less significance than marks on the products themselves.
100. I do not consider that the evidence shows that the packaging of the products in suit plays a subsidiary and insignificant role in the advertising, promotion and sale of the products. The packaging of the accused products is distinctive of the brand displayed, and is different from the Bodum packaging. Bodum’s packaging may have changed over the years, but the essential Bodum name and logo have been constant. The boxes of products in suit have been used in many stores and they have been close enough physically to be connected to the product when out of the box, to be instructional and informative of the brand. Mr Perez acknowledged himself that a lot of attention was placed on Bodum’s gift boxes, as these helped promote and strengthen brand awareness.
101. Bodum pointed to a Sweeney Research report commissioned by Playcorp to support Bodum’s view on how consumers interact with packaging. The Sweeney Research report followed research conducted with focus groups of consumers in Sydney and Melbourne in relation to the Baccarat brand.
102. Bodum submitted that the Sweeney Research showed that:
     • consumers of Baccarat products did not regard packaging as ‘an important criteria for product selection when shopping for themselves’;
     • ‘the majority of consumers claim that most products are displayed out of boxes and that as a result, little attention is paid to the actual packaging when making a purchase’; and
     • ‘packaging is not important at all because when you look at them they are out of the box anyway’.
103. I do not place any significance on the observations included within the Sweeney Research report. It was not tested in evidence, as to methodology, sampling or conclusions. It seems to be inconsistent with the advertising and promotional strategy of Bodum itself. Mr Perez accepted that Bodum devotes considerable skill and experience in designing its product packaging so that it will be attractive to consumers. Packaging obviously had an important part to play in the presentation of the Bodum product, as it did with the accused products.
104. Bodum further submitted that the evidence of retail displays of coffee plungers and teapots also showed that displaying the products themselves is of primary importance in selling the products. Bodum also referred in this regard to the photographic representation of the product itself on the outside of the box. I observe that this was common to all products, not just the Bodum product. I consider the photographic representation has little significance other than identifying the type of product, namely coffee plunger or teapot.
105. I accept on the evidence that in most shops, the packaging as well as the products are on display in varying ways. However, the packaging is most commonly displayed behind the plungers (or teapots) and there will in almost all cases be some products displayed out of the packaging but corresponding packaging will be present.
106. In most cases (particularly in the larger stores) different brands are sold together, with different packaging on display indicating the different brands. Where the Bodum product is sold alone, it is sold by reference (in one form or another) to the Bodum name or logo. Where an accused product is sold alone, this seemed to occur in the context of the packaging alongside.
107. However, in the hierarchy of sensory cues, Bodum emphasised that it was the product that was of most importance to consumers. Bodum submitted that a consumer will pick-up the product, and the features of prominence will be those that convey the secondary meaning—that is, the horizontal band, the tapered legs, the Bodum style feet, and the handle. Bodum submitted that a not insubstantial number of people will have this secondary meaning by examining the product.
108. Thus, it was submitted, when the consumer would look to purchase the plunger with those features, and if only confronted by the Baccarat Venice Coffee Plunger or the DKSH Euroline plunger, he or she would be misled into thinking there was an association between those products and Bodum. The relevant deception would occur before the packaging would be able to influence the consumer otherwise. For Bodum the packaging could not teach away from the secondary meaning.
109. I do not agree. If the consumer was not aware of Bodum, or had not been exposed to the Bodum advertisements or promotional material, there is not the expectation of the kind relied upon by Bodum. A consumer aware of Bodum or exposed to the Bodum advertisements or promotional material may be specifically looking for the Bodum product (even if not by name), but would be aware of copies, and would be educated upon viewing the products for sale of the different brands by the packaging and presentation of the product. In the case of the Venice Coffee Plunger, the different features of the plunger itself would further distinguish the products.
110. Obviously, the product will be available for the consumer to actually examine. The practice of displaying products out of the packaging is done because consumers will want to see and touch the product they are buying. Mr Perez identified three main reasons why retailers display such products outside their packaging:
     • Retailers have aimed to simulate the home environment in which those products are designed to be used.
     • Many of the relatively new homewares concept stores in Australia have sought to reduce the level of individual product branding so as to enhance the feeling of the store being unique to the customer.
     • So the retailer can reduce the customer’s focus on price and increase consumer differentiation of the products and association of products with the individual shop in which they are displayed.
111. I have no reason to doubt the evidence of Mr Perez. However, as I have indicated above, the packaging is there for a purpose – to promote the brand. Further, the packaging of the various products is different and is associated with the respective physical product depicted on the packaging. On the evidence before me, the packaging (whilst prominently featuring the product itself) has a significant role to play in informing the consumer of the different brand by reference to each product. All the packaging is clearly labelled and sufficiently distinctive to distinguish the various products.
112. Bodum’s own practice would support this conclusion. The explicit branding and presence of the logo are features that are repeated on the packaging and stand behind the actual Bodum product when on display. They serve to reinforce the Bodum advertising message.
113. The packaging is emblazoned with the bright, distinctive Bodum logo of white writing on red background, with the distinctive name ‘Chambord Coffee Plunger’ given prominence through large type face. A purchaser is left in no doubt about the provenance of the Bodum Chambord Coffee Plunger, or for that matter, the Bodum Assam Teapot.
114. To me, these aspects encapsulate the Bodum get-up that has been advertised and marketed as the promotional material shows. Even though promotional material other than in a store (eg as in magazines) may not include the packaging, the promotion occurs by reference to the name Bodum, and when sold on display, the Bodum Chambord Coffee Plunger and Bodum Assam Teapot retain the stickers, named etchings and instructions which promote the Bodum brand.
115. In support of the proposition that consumers do not have regard to the packaging even when it is on display with the product, Bodum pointed to a ‘Kath & Kim’ DVD, which is said to show a Bodum plunger in front of a Baccarat box.
116. I am of the view that little weight should be given to this evidence. The television show provides no assistance to Bodum’s claim as to the response of consumers, and the importance of store displays.
117. There are a number of exhibits of still photographs of true in-store product displays. As an example, Appendix K to this judgment, shows a display in which the clear distinction between Bodum and other products is demonstrated by the mere perusal of the photograph. This is so, even taking into account the fact that the photograph is not three-dimensional. On the shelf itself, all the differences in packaging and product could and would be more accurately observed.
118. In my view the observed difference in the products (particularly the Venice Coffee Plunger) and the packaging will readily and realistically occur with products of this type, which may be distinguished from other type products of lesser price and which may be the subject of an impulse purchase. A consumer would be expected to look at the products in suit carefully, and make a considered purchase after viewing the product and the packaging. This is a decision that would be made at the point of sale, even if promotional material gave rise to the impulse to seek out a coffee plunger or a teapot in the first place.

Copyist Products in the Market and Dilution

119. The evidence does indicate that copyist plungers have been sold in the market for many years, but that in recent years, the ranks of copyist products have thinned.
120. While Playcorp and DKSH contended that the presence of copyists was said to dilute Bodum’s reputation, I am of the view that it would have had the inverse effect. It appears clear that there was little or no advertising of the copy products, and before me, only limited evidence of sales. To the extent that these copyist products were promoted for sale, these products were always prominently displayed with a mark such as Avanti or Arcosteel. With the continued removal of the copyists from the market a starker market has emerged, against which Bodum and the limited number of remaining coffee plunger manufacturers can be more distinctly seen. However, look-alikes have been in the market for some period of time (since the late 1980’s), and consumers were and are aware of look-alikes. As I have indicated, Bodum itself taught consumers to beware of imitations and look for the ‘original’.
121. When viewed in light of Bodum’s consistent and extensive promotion and sale over a significant duration, I have already indicated that the Bodum products must be considered to be well known and appreciated. Bodum’s presence and dominance has created a situation where it is a well known brand of some level of sophistication with a separate and distinct identity from look-alike products. This separate identity—its get-up—is never isolated from the Bodum Chambord Coffee Plunger or the Bodum Assam teapot. In this sense, Bodum could be said to be ‘a victim of its own success’ (see Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 at [32] and (2009) FCAFC 174 at [13]).
122. In all of the Bodum advertising shown, it is clear that the Bodum logo is prominent as is the relevant brand name. Therefore, even prior to entering the trader’s door, the potential consumer may be aware of the product, and that the product is a Bodum. Upon entering the trader’s door, by the way the products are displayed, the potential customer is directed to the Bodum product, as distinct from the other brands. If a brand other than Bodum is sold alone, the consumer has identified for him or her the brand name and identification, and would not assume any Bodum connection (whether by name or otherwise). A consumer would expect to see the Bodum mark or name, before making any association to Bodum.

Brand Extension

123. Bodum has previously undertaken brand extension or licensing type activities in conjunction with third party retailers of coffee products and coffee related accessories – specifically, Bodum’s global arrangements with Starbucks International and with Gloria Jeans outlets throughout Australia.
124. Mr Jorgen Bodum gave evidence that he first approached the Chairman of Starbucks in the late 1980’s with regard to the sale of Bodum coffee plungers in Starbucks stores worldwide. Since that time, wherever a Starbucks store is opened, Bodum coffee plungers have been offered for sale, with some several million Bodum coffee plungers having been supplied around the world, including Australia. Sale commenced in Australian Starbucks at least from 30 July 2004, and up until 2008, there were 85 Starbucks cafes in Australia. The plungers produced for Starbucks were the original Bodum Chambord Coffee Plunger and a special Bodum design for Starbucks.
125. The Bodum coffee plungers sold in Starbucks featured both Bodum and Starbucks branding and trade marks.
126. Bodum also developed such a relationship with Gloria Jeans cafes, whereby Bodum coffee plungers were sold in Gloria Jeans outlets throughout Australia. The evidence of Mr Perez was that the plungers produced for Gloria Jeans were the standard Bodum Chambord Coffee Plunger, with a sticker that read to the effect ‘produced for Gloria Jeans’ or ‘Gloria Jeans by Bodum’.
127. In terms of sales figures, Mr Perez deposed that some 5,526 Bodum Chambord Coffee Plungers were sold to Gloria Jeans in Australia from 17 July 2003 to 26 September 2005.
128. From this evidence led by Bodum it is fair to say that when Bodum sold coffee plungers under licence or in connection with another brand, the product and packaging was co-branded. This is an important element to bear in mind when considering the absence of co-branding from the accused products or packaging.
129. Bodum also led evidence from Mr Perez regarding its own brand extension practises and he was cross-examined about Bodum’s range. Mr Caruana also gave evidence about consumer’s awareness of this practice.
130. Mr Bodum gave evidence that over the years Bodum’s designers had created various products which extended the features in the Chambord Coffee Plunger range to other products such as coffee mugs, sugar bowls and creamers. These products have been sold in Australia since approximately 1988 in reasonable quantities. In addition, Bodum had a number of products which have similar features to the Chambord such as the Melior, Java, Jesper and Bean, examples of which appear in Bodum catalogues and advertising.
131. Bodum has used, and continues to use, the Chambord name on not just the Bodum Chambord Coffee Plunger but on an extensive range of products, including teapots, woks, milk frothers, frying pans, coffee and tea glasses, kettles and kitchen scales. Indeed, Mr Perez gave evidence that Bodum uses the name ‘Chambord’ to distinguish the Bodum Chambord Coffee Plunger not only from other coffee plungers in its own range, but also to distinguish the Bodum Chambord Coffee Plunger from the products of its competitors.
132. The central thrust of this evidence was to support the view of Bodum’s secondary meaning submission, such that, it was conceivable that consumers would draw a link between Baccarat and Euroline as sub-brands, or products made under licence, of Bodum.
133. Bodum’s secondary meaning claim is best illustrated from its written closing submissions.

102 The Bodum advertising material places greater stress on the Bodum mark. The principal effect of this is to strengthen the secondary meaning: the products shown are connected with Bodum. Bodum does accept that, the awareness of the Bodum mark and the significance that consumers might give to its absence will also fall in a spectrum of responses. This will depend on consumers’ familiarity with the mark, the extent to which they look for or notice marks, and so on.

103 There will be a range of circumstances of sale. A common one is when a Bodum Chambord (or Assam Teapot) is displayed in front of its box while beside it or on the next shelf, there is a Baccarat Venice plunger or Devon tea pot. There are numerous examples of this ... .

104 In such a case, the question is whether the consumer will (to the extent they place significance on the brand) think that the absence of Bodum and presence of Baccarat means, different source, no association. The answer, Bodum submits, is that some consumers will think this, but some will think that Baccarat is a sub-brand, somehow related to Bodum, and that the Venice or Devon product is a new product that is part of the Bodum range, or is licensed by Bodum.

134. Bodum suggested the following critical facts supported this submission:

(a) Baccarat in fact began life as a sub-brand.

(b) Baccarat was acquired by Playcorp in June 2007, so by February 2008 there was very little association between Baccarat and Playcorp.

(c) Baccarat is not a mark which is sufficiently distinctive of Playcorp so as to indicate anything other than a vaguely European or classy connotation – a connotation that will not dispel connection with Bodum. The advertising extolled a French sounding pronunciation, ‘ooh ah Baccarat’.

(d) There is in fact an upmarket crystal glass brand called Baccarat.

(e) Some consumers think that the Baccarat brand produces inferior copies of more premium brands.

(f) Notably, at ‘House’ stores (which have been owned by the Playcorp group of companies since approximately 2007 or franchised by them) coffee plungers have been mostly displayed outside of their boxes. Sometimes the boxes for the products have been on display on the shelves. However, there are many examples of various coffee plungers and the boxes of different brands of coffee plungers being displayed next to one another and other examples of coffee plungers displayed in front of the wrong box.

(g) Examples of different brands of coffee plungers being mixed up on shelves were shown in an exhibit demonstrating that on the one shelf from left to right an HWI Baccarat Plunger, two Baccarat Venice Coffee Plungers, a Baccarat Roma Plunger, a Euroline Coffee Plunger, a Baccarat Venice Coffee Plunger, a Baccarat Roma Coffee Plunger and Euroline Coffee Plunger.

135. I do not consider these matters support Bodum’s submissions. The fact stated in (a) that Baccarat began its life as a sub-brand is not information that a consumer would be armed with in purchasing the competing product. If a consumer held such detailed knowledge, then I would expect that consumer to be well informed about all brands, sub-brands and strategic licensing arrangements as to never be misled.
136. Again, fact (b) provides no support for the submission. Consumers would probably be unfamiliar with Playcorp and the Baccarat brand, due to Playcorp’s limited advertising. Otherwise, the fact is irrelevant to the association sought to be contended for by Bodum.
137. Similarly, fact (c) is of little assistance to Bodum. It is clear that Baccarat is a mark in its own right. Just as it is not ‘distinctive’ of Playcorp, I find no suggestion from the product or its packaging that it is somehow distinctive of Bodum and its coffee plunger line. While the name Baccarat may seem ‘vaguely European’ or possess a ‘classy connotation‘, it is not something I would consider as being linked with the brand of Bodum.
138. In fact, I find support for this observation from fact (d) that there is already a well established upmarket crystal glass brand called Baccarat. If that is so, then I would expect a consumer would more quickly tie an association with that brand before Bodum. Fact (e) supports the view that consumers are aware of look-alikes, and that consumers are aware of copying more premium brands, and that the source of this copying is not the lead or premium brand itself.
139. Facts (f) and (g) do not support the submission even if true. My own impression on the evidence is that the coffee plungers, even if displayed outside their packaging, were in most cases displayed in front of the relevant packaging or easily and readily associated with the relevant packaging.
140. I do not accept that consumers will take the view that the Baccarat brand is a sub-brand somehow connected to Bodum.
141. As already shown, when Bodum undertakes a licensing or line extension, it does so by appropriately branding its goods. On each occasion of brand extension or licensing, Bodum has been diligent in branding its products with its insignia, its logo, and similar cues, like the use of the word Chambord in relation to other kitchenware.
142. Bodum carefully and universally employs the Bodum name and logo – and it is this the consumer looks for and expects when seeking to purchase a Bodum product.
143. I should indicate that whilst in the course of submissions and in these reasons, reference has been made to ‘Bodum’, it is clear that the consumer does not necessarily need to be misled by reference to this name. If the consumer is misled as to the particular origin of the accused products, even though not aware of ‘Bodum’ by name, this will be sufficient for establishing passing off or misleading and deceptive conduct. In other words, a person can for example pass off his goods as the goods of another if that person passes them off to consumers who will accept them as the manufacture of another, even though the consumer will not know that other by name or description.
144. However, it is convenient to make reference to ‘Bodum’ in this context, as long as it is to be recalled that the wrongful conduct will arise if the mistaken belief of the consumer is that they are looking at products of a particular origin, not necessarily knowing of Bodum by name or description.

USE OF BRANDING BY PLAYCORP AND DKSH

145. Bodum submits that after appreciating all the objective circumstances, when put into context with the overall impression of the products, the product can be misleading despite the use of branding. Bodum relies on WD & HO Wills (Australia) Ltd v Philip Morris Ltd (1997) 39 IPR 356; Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited [2001] FCA 1228; (2001) 53 IPR 481 and Kettle Chip Co Pty Ltd v Apand Pty Limited [1993] FCA 546; (1993) 46 FCR 152, in support of this proposition. In each of these cases it is true to say that the product in question was one in which the branding adopted a different name. For the sale of cigarettes the competing brand names were ‘Horizon’ vs ‘Summit’, for the energy drink case, ‘Red Bull’ vs ‘Live Wire’, and for the potato chip case it was ‘The Kettle Chip’ vs ‘Smith’s Country Kettle’.
146. Certainly these cases (and others) support the general proposition that the use of a different brand name itself will not rescue a product from either misrepresenting its origin or misleading consumers. However, in the context of coffee plungers and teapots, I find little assistance from these cases. Each case must be examined according to all the circumstances. One link between all these cases is that these cases were about impulse purchasing, where the consumer is instantly drawn to the look and feel of the get-up, and is not in the market for a considered purchase. Each of these items was in a sale range of less than ten dollars, where you would expect a consumer, not undertaking a great deal of care for an impulse purchase, would mistakenly pick-up the respondent’s product in the belief they were buying the applicant’s product. I have already indicated that the purchase of the accused products is not in the category of an impulse purchase.

FRAUDULENT INTENTION OF PLAYCORP

147. Bodum submitted that Playcorp had the intention to pass off their products as the Bodum Chambord Coffee Plunger and Bodum Assam Teapot.
148. It was submitted that Playcorp’s fraudulent intention is of assistance in demonstrating the likelihood to mislead.
149. I approach the question of intention in the way expressed by Dixon and McTiernan JJ in Australian Woollen Mills Limited v FS Walton & Co Limited [1937] HCA 51; (1937) 58 CLR 641, at 657:

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

150. Kitchin D, Llewellyn D, Mellor J, Meade R, Moody-Stuart T, and Kealing D, Kerly’s Law of Trade Marks and Trade Names (2005), 14th ed at [15-200], refer to various matters, including:

the gradual approximation of the defendant’s names, get-up or description to those of the claimant, are all obvious badges of fraudulent intention frequently recurring in the cases which come before the Court.

151. Bodum submits that this is a case of ‘gradual approximation’. An Australian example is the design process engaged in by the respondent in Red Bull [2001] FCA 1228; (2001) 53 IPR 481. Justice Conti described this at [38]-[46], commencing with the above passage from Australian Woollen Mills [1937] HCA 51; (1937) 58 CLR 641. At [47], his Honour concluded that the respondent:

... intentionally adopted a get-up for the packaging of its Livewire product for the purpose of appropriating part of the trade or reputation of the Red Bull applicants, essentially by means of the design and colour scheme of the packaging which is progressively and ultimately adopted.

152. This decision, including the reliance on Australian Woollen Mills, was upheld by the Full Court in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 55 IPR 354.
153. In order to rely upon the principle, Bodum must establish that the adoption was done with the intention to deceive consumers into the erroneous belief that when they purchase (say) the copy coffee plunger they are in fact purchasing the Bodum Chambord Coffee Plunger or a plunger made or offered for sale by or with the approval of Bodum: Dr Martens (1999) 44 IPR 281 at 334. It is not enough for Bodum to establish an intention to copy. The relevant intention is an intention to deceive consumers so as to misappropriate a part of Bodum's goodwill. As Lockhart J said in ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 345:

Evidence of fraud is still tendered in passing off cases because evidence that the defendant had a fraudulent intent may assist in establishing the requisite misrepresentation, as the court "will not be astute to find that the defendant has failed in its nefarious design": see Midland Counties Dairy Ltd v Midland Dairies Ltd (1948) 65 RPC 429 at 435 (remaining citations omitted) ... But deliberate copying of the plaintiff’s goods does not always evidence an intention to deceive; it may indicate nothing more than realisation that the plaintiff has a useful idea which the defendant can turn to his own advantage, though not intending to pass off his goods as those of the plaintiff.

154. Further, in Apand v Kettle Chip Co Pty Ltd [1994] FCA 1370; (1994) 30 IPR 337 Lockhart, Gummow and Lee JJ said:

... merely to imitate the trade mark or get-up of another trader does not establish a case of fraudulent intent to attract custom by misleading purchasers of the goods of the defendant into the belief that they are acquiring those of the plaintiff, or goods with which the plaintiff is connected in the course of trade. The plaintiff must always show the necessary reputation in its name or get-up and if it fails to do so, then the existence of fraudulent intent itself cannot supply the deficiency.

155. I am prepared to assume in Bodum’s favour that there was a progressive and ultimate copying of many of the features of the Bodum products by Playcorp. However, the evidence does not go anywhere near enough to demonstrating that the copying was to appropriate another’s good will. The packaging design adopted by Playcorp itself, with the emphasis on the Baccarat brand, indicates the contrary.
156. However, even if I did accept that the ‘fraudulent’ intent was there, I do not consider that to the extent it provides ‘reliable and expert opinion’, it sufficiently impacts upon my own assessment made in these proceedings so as to reach a different view as to the main issues to be decided. That is, I take the expert opinion into account, but the other factors indicated in my earlier reasoning, lead me to reject Bodum’s primary claims against Playcorp.

DKSH DISPUTE

157. Much of what I have already written applies to the DKSH dispute.
158. Bodum’s case against DKSH is that Bodum has acquired a reputation in Australia in particular features of the Bodum Chambord Coffee Plunger that by promoting and selling the Euroline Coffee Plunger with features of the Bodum Chambord Coffee Plunger without labelling or distinguishing it adequately, or at all, DKSH has since 2004 represented to consumers that the Euroline plunger is the Bodum Chambord Coffee Plunger or is made, promoted or sold with the sponsorship or approval of Bodum.
159. Bodum relies on the visual similarity of the products to support an inference that consumers would be likely to be misled. There is no evidence that any person has ever actually been misled to believe that the Euroline Coffee Plunger is made, promoted or sold by or with the license sponsorship or approval of Bodum.
160. The issues for determination therefore are whether the sale and promotion of the DKSH Euroline Coffee Plunger is a breach of the TPA or amounts to passing off. Again, Bodum argues that it has established a reputation in the Bodum Chambord Coffee Plunger, or a secondary meaning whereby a coffee plunger possessing the ‘Bodum Chambord Coffee Plunger features’ or a significant number of them signifies the Bodum product or (in short) Bodum provenance.
161. DKSH’s principal defence is that the promotion and sale of the DKSH Euroline Coffee Plunger does not carry the representation that the DKSH Euroline Coffee Plunger is the Bodum Chambord Coffee Plunger or is otherwise associated with Bodum. DKSH submits that the question of Bodum’s reputation and the question as to whether DKSH has made the alleged misrepresentation can only be considered by having regard to the following circumstances:

(a) Since at least the early 1990’s, a large number of companies have made extensive sales of look-alike plungers in Australia with the result that potential consumers of coffee plungers have at all times been aware of the existence of the look-alike plungers.

(b) Consumers of housewares products, including coffee plungers, are brand conscious and their purchasing decisions are considered.

(c) Bodum has consistently branded, packaged and advertised the Bodum Chambord Coffee Plunger by reference to a number of other unique and distinctive indicators of trade source, including the ‘Chambord’ and ‘French Press’ trade marks, and a consistent appeal to its French heritage. The ordinary, reasonable potential consumer with knowledge of the Bodum Chambord Coffee Plunger will be aware of and will look for these additional indicators of trade source.

(d) Bodum has branded, packaged and advertised the Bodum Chambord Coffee Plunger by reference to a number of other unique and distinctive indicators of trade source, including the ‘Chambord Coffee Plunger’ and ‘French Press’ trade marks and a consistent appeal to its French heritage. The ordinary, reasonable potential consumer with knowledge of the Bodum Chambord Coffee Plunger will be aware of and will look for these additional indicators of trade source.

(e) DKSH sells the Euroline Coffee Plunger under and by reference to the trade mark, Euroline. An ordinary, reasonable consumer when considering the Euroline plunger is faced with the name Euroline. He or she could not reasonably believe that the Euroline plunger is the Bodum Chambord Coffee Plunger or is in any way associated with Bodum.

(f) The only similarities between the Euroline plunger and the Bodum Chambord Coffee Plunger are visual features that have been common to many plungers on the Australian market for more than 15 years. The Euroline plunger has none of the unique features of the Bodum Chambord Coffee Plunger such as the black safety skirt and lid lining or the French and English safety instructions.

162. Bodum again relied on the same reputation schedule of evidence relevant to the Bodum Chambord Coffee Plunger.
163. DKSH pointed to the following visual features of the Euroline plunger absent from the Bodum Chambord Coffee Plunger:

(a) the upper horizontal band of the frame of the Euroline Coffee Plunger has cutaway segments which give the visual impression of there being two upper horizontal bands whereas the Bodum Chambord Coffee Plunger has a solid horizontal band;

(b) the DKSH Euroline Coffee Plunger has a chrome-plated, spherical knob whereas the Bodum Chambord Coffee Plunger has a black Bakelite knob with a raised rim around its equator;

(c) the inside lining of the lid of the DKSH Euroline Coffee Plunger is white whereas in the Bodum Chambord Coffee Plunger the lid lining is black;

(d) the DKSH Euroline plunger has the name ‘Pyrex’ fired onto the glass beaker at the front of the beaker and the Bodum Chambord Coffee Plunger does not; and

(e) at all times the Euroline plunger has had a gold ‘Made in Taiwan’ sticker on its base.

164. In October 2008, after Bodum commenced proceedings, DKSH added a swing tag and sticker to its Euroline Coffee Plunger.
165. Bodum submitted that a removable swing tag and removable black and white sticker are easily capable of being lost, discarded or ignored. Bodum submitted that this feature is in the same category as the disposable leaflet inside some of the DKSH Euroline Coffee Plungers, and is of marginal prominence and provides no information about the source of the plunger. For my part, I place no significance on the removable swing tag or sticker in reaching my conclusion.
166. Bodum made similar assertions in relation to packaging as it did for Playcorp.
167. Bodum stressed that the principal feature of the DKSH packaging was the photograph of the plunger, which looks like a Bodum Chambord Coffee Plunger. Bodum also submitted that the colours of DKSH’s Euroline box are predominantly black and white, with some words and numbers written in red, such as the word ‘Coffee’ and ‘8’ for the number of cups. The colours black, white and red are also used on Bodum’s packaging, although Bodum accepts the packaging is in other respects different. In my view, as I have already indicated, the packaging is sufficiently distinctive to distinguish the brands to consumers.
168. Since 1997, the Euroline plunger has been sold in Australia in gift-box packaging under the Euroline name. Euroline is a registered trade mark of DKSH. It is an in-house brand which was developed by Zyliss in conjunction with an external design consultant. The Euroline brand was launched in 1997 and has since been applied to a range of imported manufactured housewares, including the DKSH Euroline Coffee Plunger.
169. As part of the development of the Euroline brand, Zyliss designed packaging in which each of the products in the Euroline range could be sold. The packaging was specially designed for the entire Euroline range of products not just the DKSH Euroline Coffee Plunger. The packaging was designed to be the packaging in which consumers purchased the products in the retail shops. At all times the DKSH Euroline Coffee Plunger is sold by DKSH to retailers with its packaging.
170. The original Euroline packaging featured the prominent use of the Euroline name in a fancy blue and red script against a predominantly light-coloured background that included a prominent photograph of the product. In about 2000, Zyliss changed the Euroline branding and packaging style. The principal features of the new Euroline brand design involved:

(a) the use of black and white packaging;

(b) Euroline logos which feature the letters ‘EURO’ set above the letters ‘LINE’, with each being in bold, block lettering with ‘EURO’ in black and ‘LINE’ in white when the background of the packaging is white and the colours reversed when the background is black;

(c) the prominent use of Euroline logos on all sides of the packaging;

(d) the prominent use of a photograph and descriptive name of the product on the packaging.

This design is still used by DKSH for the Euroline range.

171. The Euroline packaging features the prominent use of DKSH's trade mark, EUROLINETM. EUROLINETM is printed on all six panels of the packaging. It is printed in large, stylised type on the bottom left-hand side of the front, back, top and two side panels. It is printed in smaller capital letters on the bottom panel in the statement, EUROLINETM is a registered trade mark of DKSH.
172. The EUROLINETM trade mark on DKSH's packaging is at least as large as the BODUM trade mark on Bodum's packaging. The photographs of in-store displays demonstrate that the EUROLINE trade mark is not concealed when the glass plunger is displayed in front of the packaging. Even if it was concealed, anyone interested in purchasing the plunger would reveal the packaging when they picked up the plunger.
173. A prominent photograph of the Euroline Coffee Plunger appears on the front and back panels of the packaging. A smaller photograph of the plunger appears on the side panels. As I have already indicated, it is common practice in the housewares industry for products to be displayed and sold in packaging that features a photograph of the product that is inside the packaging. When the plunger is displayed outside its packaging, the photograph and the name Euroline enables consumers to match the product and its packaging.
174. In context, I do not accept that the branding with the name ‘Euroline’ as it appears on the box does little to distinguish the DKSH product.
175. Bodum argued that there were two problems intrinsic to the Euroline mark:
     • the name ‘Euroline’ is inherently descriptive and is not apt to distinguish the product. It describes a product line of European type or origin whereas in fact the Euroline Coffee Plunger is made in Taiwan. The word ‘line’ in particular communicates something within a product range, rather than a separate product; and
     • the brand ‘Euroline’ had in fact failed to achieve any recognition amongst consumers.
176. I do accept that the Euroline brand is not well known. However, that is not to say that a potential customer will assume that this ‘unknown brand’ is connected in someway to Bodum, particularly whether Bodum goes out of its way to use its own name and logo, and the features of the product are different. In any event, I consider the use of ‘Euroline’ on the packaging does indicate clearly a different brand. My earlier comments in relation to the Playcorp proceeding concerning consumer awareness of look-alikes are equally relevant here.

Evidence of Actual Confusion

177. No party led direct evidence from any consumer being actually misled nor was any survey evidence led in relation to the products in suit. The closest such evidence came was in the context of a store assistant dealing with one of the employees of the lawyers for Bodum. Affidavit evidence was read in which a DKSH Euroline Coffee Plunger was mistaken for a Bodum Chambord Coffee Plunger.
178. In this affidavit, Ms Bathurst deposes to a conversation that she had with a shop assistant at House Bondi Junction on 13 October 2008. Ms Bathurst said ‘Do you have the Euroline 12 cup coffee plunger in stock?’. The shop assistant picked up a Bodum Chambord Coffee Plunger 12 cup from the adjacent display and said ‘Yes, we have it’. Ms Bathurst then said: ‘That is the Bodum Chambord Coffee Plunger 12 cup and not the Euroline 12 cup. I need the Euroline one’. After making some inquiries the shop assistant said ‘We don’t have that in stock’.
179. Ms Bathurst was not required for cross-examination.
180. Bodum submitted that while evidence of actual confusion is not necessary to establish passing off or misleading conduct, it will usually be highly persuasive. Bodum argued that this evidence is all the more powerful, given that it came from a shop assistant, who could be expected to be better able to distinguish the products of one source from another. The House stores sell both Bodum and Euroline products.
181. However, this is but one instance of actual confusion by a store assistant, and it is not from a consumer. There is no evidence as to the background or experience of the store assistant, so it is difficult to assess how reasonable her confusion may or may not have been. I should and do not infer from this one account that a not insubstantial number of potential consumers would be similarly confused as the shop assistant appears to have been.

Fraudulent Intention of DKSH

182. As in the Playcorp proceeding I am prepared to make the same assumptions relating to the adoption of a Bodum Chambord look-alike product by DKSH. However, I do not consider that DKSH failed to exhibit care to distinguish its product, so as to enable a court to more readily find a breach of s 52: see Payton & Co Ltd v Snelling, Lampard & Co Ltd (1990) 17 RPC 57 and Nylex Corp Ltd v Sabco Ltd (1987) ATPR 40-752.
183. Nevertheless, as in the Playcorp proceedings, even if an intention existed to pass off or mislead, the products are sufficiently different, and the packaging bares no resemblance at all with the get up and logo of Bodum, to sustain the main claims brought by Bodum.

Conclusion on Misleading and Deceptive Conduct and Passing Off

184. In my view, the promotion and sale of the Euroline Coffee Plunger does not convey the representation that it is the Bodum Chambord Coffee Plunger or is otherwise associated with Bodum. The name Euroline is placed fairly and squarely before the consumer, even if not widely known. When regard is also had to the some visual differences between the products; the fact that Bodum has always promoted, advertised and sold its products by reference to the name Bodum and other indicia of trade source; the fact that potential consumers have been warned to be aware of the availability of look-alike plungers; the manner in which the products are displayed for sale in retail stores; and the fact that there is no evidence that any consumer has ever been misled by the sale of the Euroline plunger, I readily conclude that DKSH has not engaged in misleading or deceptive conduct or passing off.
185. Therefore, as with Playcorp, I find that DKSH’s conduct is neither misleading nor deceptive, nor does it amount to passing off.

Delay by Bodum

186. DKSH argued that, on the basis of Bodum’s delay in bringing an action against copyist plungers, including the product produced by Zyliss during the late 1980’s, it was estopped from now bringing its action.
187. Given my finding that the sale and distribution of the Euroline Coffee Plunger is neither misleading nor deceptive, and does not amount to passing off of the Bodum Chambord Coffee Plunger, it is strictly unnecessary for me to make a finding on the estoppel argument. However, I indicate that no estoppel defence could be maintained. Nothing done by Bodum could have led Zyliss or DKSH to believe that Bodum would not rely upon its rights in relation to the Chambord Coffee Plunger. There is no basis on the evidence to suggest that DKSH’s decision to sell the Euroline Coffee Plunger in July 2004 or since was based on such a belief. The correspondence relied upon by DKSH related to copies of the Bodum Bistro (a different shaped plunger), in no way gave rise to an expectation on DKSH’s part that Bodum would not bring its proceedings now before the Court.
188. No other aspect of the ‘delay’ in bringing the proceeding against DKSH arises, such as prejudice or the nature of the claim, to otherwise refuse relief if Bodum were otherwise successful: see eg Lindsay Petroleum Co v Hurd (1874) LP5 PC 221 at 239-40 and World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 at 189-90.

SETTLEMENT AGREEMENT CLAIM

189. I will now consider the terms of the Settlement Agreement and what impact, if any, this may have on the sale of Playcorp’s coffee plunger.
190. The Settlement Agreement was entered into in the following circumstances:

(a) In August 2004, Playcorp entered the Australian market with the Living with Deborah Hutton plunger. The Living with Deborah Hutton plunger was sold through Kmart.

(b) In February 2005, Playcorp commenced marketing the Evans & Taylor (‘E&T’) range of products which included amongst many others the E&T Venice Coffee Plunger, the E&T Venice Tea Infuser, the E&T Devon Filter Teapot/Saucer, and the E&T Milano Latte Glass, Cappuccino Cup and Espresso Cup (‘the E&T Products’).

(c) In April 2005, Bodum commenced proceedings against Sheldon & Hammond Pty Ltd (‘S&H’) and HWI in respect of Avanti, Arcosteel, Baccarat and Wheel & Barrow coffee plungers, among other things.

(d) In July/August 2005, the E&T Products became available in retail stores for sale to consumers.

(e) On 28 July 2005, Bodum (through Mallesons) sent a letter of demand to Playcorp in relation to the E&T Devon Filter Teapot/Saucer and the E&T Milano latte glasses and cappuccino and espresso cups.

(f) The allegations did not extend to the E&T Venice Coffee Plunger or E&T Venice Tea Infuser.

(g) On 28 September 2005, Bodum (through Mallesons) sent a further letter maintaining its demands in respect of the E&T Devon Filter Teapot/Saucer and the E&T Milano latte glasses, but withdrawing the allegations in respect of the E&T Milano cappuccino and espresso cups.

(h) In the second half of 2005, Playcorp commenced importing and the House chain of retail stores commenced selling to the public the House Plunger.

(i) On 15 November 2005, Bodum (through Mallesons) sent another letter of demand to Playcorp in respect of the House Plunger.

(j) In June 2006, Bodum (through Mallesons) sent a further letter of demand in respect of the House Plunger intended for the franchisor of the House retail stores.

(k) In August 2006, Bodum commenced proceedings against Playcorp and (after later amendment) Eighty-First Tribute in respect of the House Plunger.

(l) Between December 2006 and March 2007, Bodum, Playcorp and Eighty-First Tribute negotiated the Settlement Agreement.

191. In the relevant proceedings, Bodum alleged that:

(a) it had acquired a substantial and valuable goodwill in each of the features of the Bodum Chambord Coffee Plunger, alone or in combination;

(b) the advertising, promotion and sale in Australia of coffee plungers having the features of the Bodum Chambord Coffee Plunger signified to consumers in Australia that the coffee plunger was a Bodum Chambord Coffee Plunger or made by or with the licence, sponsorship or approval of Bodum;

(c) the House Coffee Plunger had many of the features of the Bodum Chambord Coffee Plunger;

(d) by promoting and selling the House Coffee Plunger, without adequately labelling or distinguishing them, Playcorp represented to consumers that the House Coffee Plunger was made by or with the licence, sponsorship or approval of Bodum; and

(e) Playcorp’s conduct would be likely to mislead or deceive consumers and retailers in contravention of ss 52, 53(c) and (d) of the TPA or a passing off.

192. By its defence, Playcorp denied these allegations.
193. In addition, Playcorp cross-claimed alleging that Bodum had engaged in false, misleading or deceptive conduct contrary to ss 52, 53(a) and 53(g) of the TPA by sending (through its solicitors) letters of demand dated 15 November 2005 and 15 June 2006 which misrepresented that:

(a) Bodum had intellectual property rights in the features of the Bodum Chambord Coffee Plunger;

(b) Bodum owned the alleged or any intellectual property rights in the features of the Bodum Chambord Coffee Plunger;

(c) Bodum had an extensive common law goodwill and reputation in Australia in the features of the Bodum Chambord Coffee Plunger; and

(d) the public in Australia associated coffee plungers having the identified features of the Bodum Chambord Coffee Plunger, or any of them, exclusively with Bodum.

194. It seems apparent that Bodum’s claim to have a reputation or ‘intellectual property rights’ in the Coffee Plunger features was made in relation to:

(a) the reputation which it claimed existed at the time which was relevant for the then current proceedings; and

(b) the particular circumstances in which Playcorp and Eighty-First Tribute marketed the House Plunger.

195. I then turn to the terms of the Settlement Agreement.
196. The recitals to the Settlement Agreement provided:
     1. Bodum has instituted the Proceeding against Playcorp and EFT alleging, inter alia, misleading and deceptive conduct in breach of provisions of the Trade Practices Act 1974 (the TPA) and passing off.
        
     2. Playcorp and EFT have filed a cross-claim against Bodum in the Proceeding alleging, inter alia, misleading and deceptive conduct and the making of false representations in breach of provisions of the TPA.
        
     100. Bodum, Playcorp and EFT have agreed to settle the dispute between them on the terms set out below.
197. By cl 2.1 of the Settlement Agreement, Bodum released Playcorp and Eighty-First Tribute from the claims Bodum had brought in the House Proceeding.
198. Clause 2.2 of the Settlement Agreement provided:

So long as the release and discharge given by Bodum under cl 2.1 remains in force, Playcorp and EFT [ie, Eighty First Tribute] each release and forever discharge Bodum in respect of the Playcorp & EFT Claim on and from the Settlement Date.

199. Clause 1.1 defined ‘Playcorp and EFT Claim’ to mean:

the claims which are the subject matter of the Proceedings including the cross-claim.

200. Clause 1.3 defined the extent of the releases as follows:

... where a Party (the “first party”) releases another Party (the “second Party”) from claims in respect of a matter or thing, the first Party will be deemed to have released and forever discharged the second Party from any and all claims, actions, disputes, differences, demands, proceedings, accounts, interest, costs ... expenses and debts or liabilities of any kind (including those which are perspective or contingent and those the amount of which is not ascertained) of whatever nature and however arising which the first Party may now have or any time thereafter might have or, but for the execution of this Agreement, might have had against the second Party arising out of or in any way connected with or incidental to that matter or thing.

201. Clause 3 provided for dismissal of the proceeding with no orders as to costs.
202. By cl 4 and cl 5, Playcorp and Eighty-First Tribute agreed not in future to make or sell:

(a) the House Plunger (subject to a six month trading out period); or

(b) any other coffee plunger identical to the Bodum Chambord Coffee Plunger.

203. By cl 6, Bodum agreed not to object to the manufacture and sale by Playcorp in respect of five specific coffee plunger designs included in Annexure C.
204. Clause 7 made provision for outcomes of the then still pending HWI proceeding between Bodum and HWI. By cl 7(a), if Bodum was unsuccessful, Playcorp and Eighty-First Tribute were to be released from their obligations under cl 4 and cl 5. By cl 7(b), if there was no final determination of the HWI proceeding, or no finding that Bodum did not have an exclusive reputation in the features of the Bodum Chambord Coffee Plunger, the obligations under the Settlement Agreement continued.

Construction of the Settlement Agreement

205. It is necessary to construe the relevant terms of the Settlement Agreement.
206. The leading authority on the construction of deeds of settlement and releases is Grant v John Grant & Sons Proprietary Limited [1954] HCA 23; (1954) 91 CLR 112. In Grant, the majority judgment (Dixon CJ, Fullagar, Kitto and Taylor JJ at 123-4), cited the judgment of Lord Westbury in London and South Western Railway Co v Blackmore (1870) LR 4 HL 610, where his Lordship said (at 623):

The general words in a release are limited always to that thing or those things which were specifically in the contemplation of the parties at the time when the release was given.

207. Their Honours, having rejected any need to distinguish between equitable and common law construction principles, laid down the following principles for construing a release (at 129-30):

... a releasee must not use the general words of a release as a means of escaping the fulfilment of obligations falling outside the true purpose of the transaction as ascertained from the nature of the instrument and the surrounding circumstances including the state of knowledge of the respective parties concerning the existence, character and extent of the liability in question and the actual intention of the releasor.

208. Thus, their Honours said (at 131):

The question is whether upon a proper interpretation of the deed the general release clause should be retrained to matters in dispute within the meaning of these recitals. The question depends primarily on the application of the prima facie canon of construction qualifying the general words of a release by reference to particular matters which recitals show to be the occasion of the instrument.

209. By its terms and having regard to the context in which it was reached, the release of the Playcorp & EFT Claim (as defined in cl 1) given in the Settlement Agreement was limited to a release from liability in respect of (past) conduct constituted by the making of the specific misrepresentations the subject of the proceedings, not any (future) conduct that may be engaged in after the date of the Settlement Agreement.
210. It was certainly not the intention of the parties that Playcorp should, by the release, preclude itself from defending any future litigation brought by Bodum in which Bodum asserted a reputation the nature and extent of which would be assessed at a different time in different circumstances and in the context of a complaint about a different product marketed by Playcorp.
211. It is to be observed that cl 4 and cl 5 imposed a narrow and limited restraint on Playcorp’s conduct after the settlement; Playcorp was only precluded from marketing the House Plunger or a coffee plunger the features of which were identical to the Bodum Chambord Coffee Plunger.
212. Bodum had sought to broaden the terms of the restraint by enlarging the types of products Playcorp would refrain from selling to include products which ‘very closely resemble’ the Bodum Chambord Coffee Plunger, not merely products with features which were ‘identical to’ the Bodum Chambord Coffee Plunger.
213. This attempt was rejected by Playcorp and thereafter abandoned by Bodum.
214. While the Settlement Agreement included a reference to five designs for coffee plungers that Bodum would not object to, Bodum had objected to the inclusion of other designs which had been put forward by Playcorp.
215. The Settlement Agreement imposed no restraint on Playcorp subsequently selling coffee plungers with features which were similar to, but not identical with, the features of the Bodum Chambord Coffee Plunger.
216. Further, Playcorp made clear during the course of the settlement negotiations that it did not intend to vacate the plunger market.
217. Playcorp was already in the market with:

(a) both the E&T Venice Coffee Plunger (which is virtually identical to the Baccarat Venice Coffee Plunger); and

(b) the Living with Deborah Hutton coffee plunger being sold nationally throughout Australia by Kmart.

218. At the time the Settlement Agreement was executed, no dispute had arisen between Playcorp and Bodum about either of those products. Although Bodum had sent letters of demand in relation to other E&T products released into the market at the same time as the E&T Venice Coffee Plunger, Bodum had not made complaint about the E&T Venice Coffee Plunger. There is no suggestion that Playcorp was surrending its rights to defend any allegations which Bodum might in the future have made in proceedings directed against those products.
219. In my view, Playcorp is not estopped from defending Bodum’s claim in this proceeding to ‘rights’ in the Coffee Plunger features as part of Bodum’s case against Playcorp for marketing the Baccarat Venice Coffee Plunger.
220. In any event, if the estoppel did arise as alleged, the consequence is only that Playcorp cannot contest Bodum’s asserted reputation in the Coffee Plunger features. A finding of estoppel does not determine whether, if Bodum’s asserted reputation in the Coffee Plunger features exists, Playcorp’s conduct would constitute in all the circumstances an actionable misrepresentation or misleading and deceptive conduct.

BODUM MISREPRESENTATION CLAIM

The Meeting Representations

221. Bodum raised a s 52 misleading or deceptive conduct defence in answer to both Playcorp’s threats action, and by cross-claim asserting that during the course of settlement negotiations of the relevant proceedings Playcorp represented that:

(a) it would not manufacture, import or sell any product which had features or a combination of features which had been presented to Bodum for inclusion in the settlement deed, and to which Bodum had objected; and
(b) it would not manufacture, import or sell any product made in accordance with or closely resembling ‘Meeting Design 4’, ‘New Design 3’ or ‘New Design 6’.

222. The terms of the Settlement Agreement included an ‘Entire Agreement’ clause:

Without limiting the generality of cl 9.1, each Party represents and warrants to the other that in entering into this Agreement, it has not relied on, or otherwise been caused to act by, any act, omission, representation, statement or other conduct of the other Party or of any associate of, agent of, employee of or adviser to the other Party apart from the matters expressly recorded in this Agreement.

223. An entire agreement clause will not necessarily exclude the operation of s 52 (see Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (No 1) [1988] FCA 40; (1988) 39 FCR 546 and Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60; (2004) 218 CLR 592 at [72]).
224. Playcorp and Bodum engaged in negotiations over a period of months to identify a number of coffee plungers which Bodum would agree to include in the Settlement Agreement as being products in respect of which it would not sue.
225. Bodum says that Playcorp made the above representations expressly or impliedly during those negotiations and that the Baccarat Venice Coffee Plunger is either one of the products which Bodum refused to approve, or one which closely resembles that product (‘Meeting Design 4’, ‘New Design 3’, or ‘New Design 6’).
226. There is little dispute as to what transpired in the course of two settlement conferences and in subsequent correspondence and discussions between solicitors in the relevant proceedings. However, the interpretation and legal effect of Playcorp’s conduct in those negotiations is contested.
227. Bodum submits that on an objective view of those negotiations, Playcorp represented to Bodum that it would not manufacture, import or sell any coffee plunger which had the features, or combination of features, of certain design drawings which had been presented to and rejected by Bodum.
228. The effect of those negotiations is relevant to both the defence and the cross-claim. Defensively, Bodum says that it is disingenuous for Playcorp to complain of the threats made in a letter dated 14 April 2008: Playcorp knew that the effect of using the rejected design would be to attract complaint and possibly new proceedings from Bodum. By way of cross-claim, Bodum says that Playcorp should be restrained from breaching the representations it made during the course of the negotiations.
229. The relevant meetings took place on 22 December 2006 and 23 February 2007. A number of affidavits were filed by the parties from the participants of the meetings. Prior to the hearing the parties reached agreement that none of these witnesses would be cross-examined as to the terms of the discussion at those meetings, and that no inference would be invited to be drawn from that failure to cross-examine.

The Relevant Provisions of the Settlement Agreement

230. After reciting that Bodum has brought proceedings against Playcorp and Eighty-First Tribute for misleading or deceptive conduct and passing off, and Playcorp and Eighty-First Tribute had cross-claimed against Bodum, the Settlement Agreement provided that:

(a) Playcorp and Eighty-First Tribute would not recommence the manufacture of the House Plunger (cl 4.1(a));

(b) Playcorp and Eighty-First Tribute would cease all sales of the House Plunger within six months of the execution of the agreement (cl 4.1(b) and cl 4.2);

(c) Playcorp and Eighty-First Tribute would not make or sell any coffee plungers identical to the Bodum Chambord Coffee Plunger other than Bodum products (cl 5); and

(d) Bodum would not object to the manufacture and sale by Playcorp and Eighty-First Tribute of ‘the New Coffee Plungers’ (being defined as plungers made according to the designs set out in Annexure C) (cl 6).

231. Annexure C of the Settlement Agreement resulted from negotiations between the parties to identify a number of designs that Bodum would not in the future object to. During those negotiations, Playcorp provided a number of designs to Bodum for its consideration. Bodum ultimately agreed to the inclusion of five designs in Annexure C. Bodum refused to agree to the inclusion of a number of other designs including ‘Meeting Design 4’, ‘New Design 3’ and ‘New Design 6’.
232. The design of the Baccarat Venice Coffee Plunger is not one of the designs in Annexure C of the Settlement Agreement. Nor is it one which was provided to Bodum and objected to.

How the Misrepresentations are said to Arise

233. Insofar as the alleged settlement negotiations representations are concerned, Ms Rathie, solicitor for Bodum, deposes:

I understood that Annexure C would contain the designs that it was agreed that Playcorp/House could manufacture and sell without objection by Bodum. ....

This is the effect of cl 6 of the Settlement Agreement.

234. Ms Rathie continued:

.... In my mind, it was implicit and understood from the circumstances surrounding the negotiations and the various emails between the legal advisors [sic] that Playcorp/House would not manufacture and sell any of the designs that Bodum had rejected as part of the settlement negotiations.

235. Mr Perez, President of Bodum USA, Inc., deposes:

At the time the [Settlement Agreement] was executed I was of the impression that [Playcorp] and House would not design, manufacture, distribute or sell coffee plungers that had been made in accordance with any of the designs Bodum rejected during the course of the settlement negotiations. I formed this view based on the discussions between the parties at the February Meeting, as well as subsequent correspondence ....

236. This evidence of Mr Perez and Ms Rathie could only support a representation that Playcorp would not sell coffee plungers made in accordance with the particular designs that Bodum had rejected. This evidence does not go so far as to prove the pleaded representations that:

(a) Playcorp would not sell any plungers which had any of the features or any combination of the features that Bodum had objected to; and

(b) Playcorp would not sell any plungers closely resembling Meeting Design 4, New Design 3 or New Design 6.

237. However, I do not consider that Playcorp made these pleaded representations. To consider this question, it is necessary to say something more of the negotiations, meetings and correspondence.

The Negotiations

238. Ms Rathie from Bodum’s solicitors telephoned Mr Stern from Playcorp’s solicitors on 8 December 2006 on a ‘without prejudice’ basis to explore the potential for a commercial resolution of the House Proceeding. She indicated that, from Bodum’s perspective, any settlement would be along the lines that:

(a) Playcorp would agree to sell out the House Plunger by mid 2007; and

(b) Playcorp would agree to change or modify the design of the House Plunger to one satisfactory to Bodum.

The First Meeting on 22 December 2006

239. A first meeting took place on 22 December 2006 at the offices of Corrs Chambers Westgarth, in Melbourne.
240. Mr Perez and Ms Rathie attended on behalf of Bodum. Mr Kenmar and Mr Ramsay attended for Playcorp, Stacey Pettit and at least one other attended for Eighty-First Tribute and Mr Stern and Ms Castro attended as their legal advisers.
241. At the meeting:

(a) Ms Rathie indicated that Bodum would be prepared to settle if Playcorp agreed to stop importing the House Plunger immediately and sales ceased after an agreed phase out period.

(b) Playcorp and Eighty-First Tribute agreed to this in principle although the duration of the phase out period remained to be negotiated.

(c) Mr Stern indicated that Playcorp and Eighty-First Tribute were aware of Bodum’s propensity to litigate, but Playcorp had no intention of vacating the plunger market. He noted that Ms Rathie had said on the telephone that there were other designs that Bodum did not have a problem with. He asked what they were, explaining that Playcorp wanted to get an idea of what plungers Bodum would not object to.

(d) After some discussion, it was decided that Playcorp would prepare some designs for consideration by Bodum. Mr Perez thought he suggested that Playcorp prepare the designs and show them to Bodum:

I understood that, once approved, these designs would be incorporated into a settlement agreement, and Bodum would undertake not to commence litigation against [Playcorp or Eighty-First Tribute] if they commenced the manufacture and distribution of coffee plungers made in accordance with those designs.

(e) Certain of the CAD drawings (Meeting Designs 2 and 9) were accepted by Bodum as representing designs that, if manufactured and sold, would not attract complaint. For others, specific items were identified that Bodum did consider would or might be likely to mislead and deceive and Playcorp, through Mr Ramsay, went off to redesign or replace those specific features.

242. Following the first meeting, Mr Kenmar told Mr Lew that one of the two main issues in the meeting was ‘what can Playcorp/House sell in the future’.

The Second Meeting on 23 February 2007

243. A second and final meeting took place in Melbourne at Corrs’ offices on 23 February 2007. The same people who attended the first meeting were in attendance, except Stacey Pettit was the only representative from Eighty-First Tribute.
244. At this meeting, Playcorp showed 13 designs (the Meeting Designs) to Mr Perez and Ms Rathie for consideration.
245. As to how these designs were introduced:

(a) Mr Perez did not recall what was said by way of introduction.

(b) Ms Rathie deposes that Mr Stern said:

The designs are presented to Bodum so that Playcorp and House can be certain Bodum will not litigate any of the coffee plungers subsequently selected for commercial manufacture and sale by Playcorp/House.

(c) However, Mr Stern recalls that he said:

A number of designs are being presented to Bodum so that it can select three or four designs that it will agree not to litigate over if Playcorp or House sell products to those designs.

(d) Mr Kenmar deposes that his notes at the time refer to ‘safe harbour new product’:

which is consistent with my recollection that the designs which had been prepared were to be discussed so that Playcorp and House could know which ones Bodum would agree not to litigate over.

246. There was then some discussion about the designs and a break while Mr Perez and Ms Rathie considered the designs by themselves. The meeting then reconvened.

(a) Ms Rathie informed the meeting that Bodum would agree ‘not to take legal action if Playcorp and House were to sell’:

1. Meeting Design 2;
2. Meeting Design 5 (provided changes were made so that it had a flat base); or
3. Meeting Design 9 (provided changes indicated to the lid/knob were made).

(b) Ms Rathie also indicated that Bodum objected to Meeting Designs 1 and 3.

(c) The earlier indication was that Bodum would object to Meeting Design 4. However, Ms Rathie deposes that in later discussions Mr Perez indicated that Bodum would agree to Meeting Design 4 with the feet from Meeting Design 5. As Ms Rathie acknowledges, there was some degree of confusion or inconsistency about what was approved and what was not.

(d) Mr Perez recalls being concerned about Meeting Design 4, but does not agree he approved Meeting Design 4 with the feet from Meeting Design 5. He deposes that Ms Rathie’s email on 6 March is more accurate: stating that he needed to see the revised drawings before he could approve it.

(e) After this discussion, it was agreed that Playcorp would provide revised designs for further consideration.

247. The parties agreed that the phase out period after which sales of the House Plunger would cease was to be six months from the signing of the Settlement Agreement.
248. It was then agreed that Corrs Chambers Westgarth would prepare a draft settlement agreement and forward it to Mallesons, as well as any revised proposals for the safe harbour designs, for consideration by Bodum.

Subsequent Steps in the Negotiations

249. Corrs Chambers Westgarth sent a draft of the proposed settlement agreement to Mallesons on 27 February 2007.
250. Putting to one side sales of the House Plunger during the agreed phase out period, cl 4 of that draft provided that Playcorp and Eighty-First Tribute would agree not to sell plungers identical to the Bodum Chambord Coffee Plunger (other than Bodum’s own plungers).
251. As I have previously indicated, Bodum sought to broaden the terms of the restraint by enlarging the types of products Playcorp would refrain from selling to include products which ‘very closely resemble’ the Bodum Chambord Coffee Plunger in addition to products ‘identical to’ the Bodum Chambord Coffee Plunger.
252. This attempt was rejected by Playcorp and thereafter Bodum abandoned it.
253. On 2 March 2007, Corrs emailed seven ‘New Designs’ to Mallesons for consideration by Bodum.
254. After an exchange of several emails, Bodum agreed to New Designs 1, 2, 4, 5 and 7. Bodum refused to agree to the inclusion of New Designs 3 and 6.

Consideration

255. I accept that by looking at the exchange of emails, some impression may have been given that the process was in part to agree plunger designs that Playcorp/House intended to import and sell. However, the onus on this issue is with Bodum to establish the nature of the representations and the making of the representations. Bodum fails to satisfy that onus. It may be that there was some misunderstanding between the parties, but this does not mean there was a misrepresentation as alleged. The reference to ‘agreed designs’ by various parties (including Mr Stern, Mr Kenmar and Mr Ramsay) may have led to this misunderstanding.
256. There is no evidence that anyone expressly made the representations alleged by Bodum:

(a) Mr Kenmar and Mr Stern deny that they said anything to the effect now asserted by Bodum. They also deny that anyone from the Playcorp and House side said anything like that in their presence.

(b) No-one from Bodum told Playcorp that was the basis on which Bodum was operating.

(c) Mr Perez does not point to any specific representation by either party; it was an impression he formed from the circumstances.

(d) Ms Rathie goes no further than to assert that the alleged representation was made implicitly.

257. The suggestion that there was some implicit understanding of the kind alleged is not borne out by the evidence. As I have said, there may well have been some misunderstanding arising from the nature and character of the negotiations.
258. The objective fact is that Playcorp strongly resisted any attempt to expand its obligation not to sell coffee plungers in the future beyond an undertaking about the House Plunger and coffee plungers identical to the Bodum Chambord Coffee Plunger.
259. The obligation now contended for was not expressly mentioned during any part of the settlement negotiations and is not found anywhere in the Settlement Agreement or any draft of that agreement.
260. Bodum suggested that the failure to call Mr Ramsay is of great significance here, and it invited me to draw an adverse inference on the basis that nothing he could have said on this issue would have assisted Playcorp. Mr Ramsay drove the preparation and amendment of the agreed designs. He attended both meetings.
261. Even if I was willing to draw the inference suggested, it does not fill the gap in the evidence, or assist Bodum in proving on the balance of probability that the representations now alleged were in fact made by Playcorp.

ASSIGNMENTS OF GOODWILL

262. An issue arose of to the effect and reliance of the HWI and S&H assignments of goodwill. Bodum relied upon these assignments, but Playcorp seeks to dispute their validity as assignments or their effectiveness.
263. It is unnecessary to enter the debate on these issues.
264. All the evidence relating to the assignments did was provide ‘conclusive proof that certain traders are gone from the market’. There was no dispute in the end upon this factual matter. In effect, because Bodum had removed some significant competitors in the coffee plunger market, particularly of the copyist nature, Bodum had created a situation where there were fewer alternative coffee plungers. This fact I have accepted.

CONCLUSION

265. On the basis of the above reasons, Bodum has been unsuccessful in demonstrating that Playcorp and DKSH have engaged in passing off or conduct in breach of s 52 of the TPA.
266. Whilst Playcorp seeks declaratory and injunctive relief, I do not think that any form of declaration or injunction need or should be made in favour of Playcorp because Playcorp’s rights will be sufficiently protected upon the dismissal of Bodum’s cross-claim.

I propose at this stage to order that:

1. The parties confer for the purpose of agreeing upon minutes of orders.
2. The parties file any agreed minutes of orders before 4:00pm on 10 February 2010.
3. The parties file and serve any written submissions as to orders sought and not agreed (including orders as to costs) before 4:00pm on 10 February 2010.
4. The parties file and serve any reply submissions before 4:00pm on 19 February 2010.
5. The parties advise the Court before 4:00pm on 19 February 2010 whether they agree to the further orders being made upon the written submissions without the need for any further appearance.
   

I certify that the preceding two hundred and sixty-seven (267) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton.

Associate:

Dated: 2 February 2010

Appendix A

Appendix B

Appendix C

Appendix D

Appendix E

Appendix F

Appendix G

Appendix H

Appendix I

Appendix J

Appendix K