Frucor drawn into Coca-Cola's trademark bottle case against Pepsi

The Coca-Cola Co has taken Frucor Beverages and PepsiCo to the High Court over the shape of Pepsi soft drink bottles, and the outcome of this civil case is likely to carry weight across the Tasman.

Frucor sells Pepsi products in New Zealand, such as Pepsi Max and 7UP. Coca-Cola claims the products use a contoured bottle that’s too similar to its trade marked bottles.

Coca-Cola has 58 registered trade mark cases in New Zealand, including three for bottle shape.

The beverage giant launched its New Zealand case against the two companies in October 2010, claiming they are in breach of the Trade Marks Act 2002 and Fair Trading Act 1986.

A week later, Coca-Cola issued proceedings in the Federal Court of Australia against PepsiCo and its Australian partner, Schweppes Australia.

Today in Coca-Cola’s opening submission at Auckland High Court, Queen’s counsel Bruce Gray told Justice Ed Wylie the Australian case has been held up by injunctions and other matters.

“Probably, your honour’s judgment will advise the Australian court,” Mr Gray told the court.

Meanwhile, a German court has ruled in PepsiCo’s favour in a similar claim, which Coca-Cola is appealing.

Coca-Cola is arguing the silhouette of its contoured bottle is distinctive by itself and covered by its registered trade marks. The defendants argue the bottle shape alone isn’t enough as consumers also take into consideration the colours, logo and other packaging on a product.

Further, Coca-Cola argues the two soft drink companies are misleading or deceiving consumers, which is a breach of the Fair Trading Act 1986.

Coca-Cola is seeking declarations, injunctions, delivery up or destruction of infringing products, damages, interest, and costs.

If PepsiCo is allowed to use the bottle shape, Mr Gray said, it would become a generic symbol of similar products.

“The question is whether the use by the defendant of its Carolina bottle either by itself … or in association with names and devices is likely to deceive or confuse,” he said.

Carolina is the name of Frucor's bottle.

Coca-Cola says it developed the contoured bottle in the 1910s and it has been in New Zealand for more than 70 years. All Coke products use the contoured bottle in New Zealand, Mr Gray said in his opening submission.

Shapes are relatively new to trade mark law, says Gus Hazel, intellectual property litigator with James & Wells, which isn’t involved with the case.

The Trade Marks Act was updated in 2002 (coming into force in 2003).  It included a host of things that can be trade marked, such as shapes, colours, smells, and sounds.

This is a step on from the more traditional trade marks of logos or words, he says.

“That’s the direction of development that trade mark law is taking and New Zealand is no different,” he says.

Still, there aren’t many shape or colour trademarks on the register, Mr Hazel says.

“They are relatively rare, and disputes over them reaching court is uncommon” he says.

Mr Gray spent most of his opening submission reciting the history of trade mark law.

AJ Park is representing Coca-Cola alongside Mr Gray, while Bell Gully is representing Frucor and PepsiCo alongside Queen’s counsel Andrew Brown.

The case is scheduled for 15 days with witnesses expected to give testimony from as far as California via videoconference.

sflores@nbr.co.nz

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