The Great Bottle Battle – Coke vs Pepsi

Coke Loses its Action Against Pepsi Based on its Iconic Contour Bottle

The Coca-Cola Company v Pepsico Inc & Ors (No 2) [2014] FCA 1287

On 28 November 2014, the Federal Court of Australia dismissed claims of trade mark infringement, misleading and deceptive conduct and passing off made by The Coca-Cola Company (Coke) against Pepsico Inc, Pepsico Australia Holdings Pty Ltd, and Schweppes Australia Pty Ltd, the manufacturer and distributor of Pepsico Inc products in Australia (collectively referred to as Pepsi).

Coke had alleged that the Carolina Bottle sold by Pepsi in Australia since 2007, infringed Coke’s various registered trade marks for its iconic Contour Bottle as well as alleging that Pepsi had engaged in misleading and deceptive conduct, had falsely represented that it was authorised or associated with Coke, and that Pepsi had passed off its products as Coke’s. Both bottles are depicted below:

The decision of Justice Besanko follows the dismissal of similar applications in both New Zealand (The Coca-Cola Company v Frucor Soft Drinks Limited [2013] NZHC 3282) and Germany (LG Hamburg 315 O 310/11). However, the German decision is currently subject to an appeal.

Significantly, in contrast to the cases in New Zealand and Germany, in addition to relying on its registered trade marks for, and its reputation in, the shape of the Contour Bottle, Coke also relied on the registered device marks for the Contour Bottle (depicted below) which lacked the additional features included in the shape marks (namely, the separate label panel and the contour lines).

However, ultimately, the Court held that Pepsi’s Carolina bottle was distinctive, not deceptively similar to Coke’s trade marks, and consumers would associate it with the Pepsi brand. Importantly, the horizontal wave pattern on the Carolina Bottle was found to be an important aspect of Pepsi’s bottle and this feature, amongst others, was not featured in any of Coke’s registered trade marks.

We will have a longer Alert on this case after further consideration of his Honour’s decision.