PepsiCo has emerged victorious in an ongoing legal dispute with Coca-Cola over the shape of its bottles.
Justice Anthony Besanko of the Federal Court will publish a judgment tomorrow dismissing Coca-Cola’s claim Pepsi’s bottle shape infringed its trademark.
Besanko handed down his decision on Friday but it is understood confidentiality concerns have delayed publication until tomorrow.
Coca-Cola sued Pepsi in October 2010 over the shape of Pepsi’s new “Carolina” bottle claiming it infringed the trademark in its well-known “contour” glass bottle.
The Pepsi bottle in question
But Pepsi denied its bottle’s shape and silhouette were substantially identical or deceptively similar.
In a similar case in New Zealand, the High Court of New Zealand in December last year dismissed Coca-Cola’s claim on the basis that although both Coca-Cola and Pepsi bottles have a “waist”, they were not sufficiently similar to make out a claim.
Special counsel at law firm King & Wood Mallesons, Bill Ladas, told SmartCompany Australian courts are taking the view “that is a bit old fashioned” that you make a fulsome review of the packaging.
In comparison, in New Zealand, Ladas says the High Court found Pepsi actually used the shape itself as a trademark and the use of the word Pepsi was a separate trademark.
“It recognised that you buy a bottle of Yakult or a packet of Toblerone that the name on the packaging and the shape is a trademark,” he says.
“It’s possible here that the judge has taken a view that Pepsi did not use the shape alone as a trademark.”
Alternatively, Ladas says Besanko may find that the shape is different enough.
More guidance on the court’s position will be available when the judgment is published but Ladas says there are some clear lessons for businesses looking to protect a product.
“You have to be in it to win it,” he says. “You have to file [a trademark application] to be protected.”
Ladas says businesses are in the best position to register a shape if they advertise heavily on the shape itself.
Coke consistently uses the shape of its bottle in 2D form in its advertising, a concept known as “look for” advertising.
“Making something look different from what else is out there is important as well,” Ladas says.
“The further you get away from what normal packaging and colours look like, the better a chance you have of registering it.”
A spokesperson for Coca-Cola South Pacific told SmartCompany the judgment is “disappointing”.
“For more than a century, The Coca-Cola Company has carefully developed and protected our intellectual property including our trademarks, patents, and copyrights.
“These are among our most valuable assets and we have taken appropriate steps and actions to protect them where necessary. We are yet to review the judgment before considering our next steps.”
SmartCompany contacted Pepsi for comment but did not receive a response prior to publication.
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Cara Waters is a former SmartCompany editor. Previously, Cara was a senior reporter for the Financial Times’ website and worked for The Sunday Times in London.
