23 December 2013Trademarks

Coca-Cola loses bid to block Pepsi bottle in New Zealand

The High Court of New Zealand has decided that trademarks covering Coca-Cola's "contour” glass bottle were not infringed by a rival drinks maker.

On December 10 Judge Wylie said Coca-Cola may not stop Frucor Soft Drinks, a Pepsi distributor, from using the “Carolina” glass bottle to sell a range of Pepsi drinks in New Zealand.

Frucor bottles and distributes Pepsi products in New Zealand, including Pepsi, Pepsi Max and 7UP. These products have been sold in the “Carolina” bottle since 2009 in the country.

In court, Coca-Cola said it has sold its glass “contour” bottle for many decades, and that the bottle’s silhouette is its most distinctive and memorable feature.

Speaking about Coca-Cola, the judgment said: “It referred to the shape of the Carolina bottle and asserted that the defendants’ use of the Carolina bottle and the silhouette of that bottle’s shape, is use of a sign in the course of trade, where such sign is likely to be taken as being use as a trade mark. It said that the defendants’ use of this sign is likely to deceive or confuse.”

Coca-Cola alleged that the “Carolina” product infringes three registered trademarks that protect its "contour” bottle.

But Wylie rejected Coca-Cola's claims, saying that the bottles were not "materially similar" and that he did not think was any likelihood of confusion.

Leighton Cassidy, partner at Field Fisher Waterhouse LLP in London, who has practised in New Zealand, said Coca-Cola has a reputation for asserting its trademarks against other drinks companies, so the case “isn’t a surprise”.

“In New Zealand, Coca-Cola has a significant share of the soft drinks market," he added, "though Frucor is a major bottler in New Zealand”.

Cassidy said he had expected Coca-Cola to prevail in the case: “In many jurisdictions Coca-Cola’s bottle shape is a registered trademark.”

But he added that there are other distinctive components in its product packaging: “If you put yourself in the consumers’ shoes, you’re using other cues – I don't think anyone would be confused.”

Cassidy said the ruling will not have a big impact on Coca-Cola, though he added that “it doesn’t set a good precedent for Coca-Cola”.

It is likely the company will appeal against the ruling, Cassidy claimed, though it won’t be a “David and Goliath” fight.

“Frucor will probably have the resources,” he said.

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