The Great Bottle Battle – Coke vs Pepsi: alleged trade mark infringement and passing off

Federal Court of Australia Decision in The Coca-Cola Company v PepsiCo Inc & Ors (No 2) [2014] FCA 1287

On 28 November 2014, the Federal Court of Australia (Court) dismissed claims of trade mark infringement, misleading or 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's products in Australia (collectively referred to as Pepsi).

Coke's action arose out of Pepsi's release of the glass 'Carolina Bottle', which Coke alleged infringed the rights and reputation of its iconic glass 'Contour Bottle', or its outline or silhouette.

The Facts Coke's glass bottle known as the Contour Bottle is well-known and Coke has sold its beverages in a variety of styles of the glass Contour Bottle in Australia since 1937.

In August 2007, Pepsi released a glass bottle of its own in Australia, known as the Carolina Bottle which led to Coke initiating this proceeding in October 2010. Coke's Contour Bottle and Pepsi's Carolina Bottle are depicted below.

The Claims Coke alleged that the Carolina Bottle infringed four of Coke's Australian registered trade marks for its iconic Contour Bottle and that Pepsi had engaged in misleading or deceptive conduct and committed the tort of passing off.

The four registered trade marks, which were the basis of Coke's trade mark infringement allegations against Pepsi, are set out below (click to enlarge image):

(Coke Marks)

Significantly, Coke framed its trade mark infringement case both on the basis that Pepsi used the whole bottle shape of the Carolina Bottle as a trade mark or specifically used the outline or silhouette of the Carolina Bottle as a...