COCA-COLA VS.

PEPSI (INTELLECTUAL PROPERTY)

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UNI VERSI TY OF PETROLEUM AND ENERGY STUDI ES

COLLEGE OF LEGAL STUDI ES

I NTELLECTUAL PROPERTY LAW
PROJECT ON
COCA-COLA VS. PEPSI (INTELLECTUAL PROPERTY)



Submitted to: Submitted by:
Ms. ANURADHA NAYAK HARSHIT GUPTA (ROLL NO. 56)
Asst. Prof.(COLS) JAIDEEP NEHRA (ROLL NO. 57)
U.P.E.S . KARAN CHOUDHARY (59)
SECTION A
SEMESTER VIII


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TABLE OF CONTENTS


Acknowledgment
Introduction
Copyright & Patents
Trade Marks
Confidential Information
Coca Cola Bottles: A History
Coca Cola In Japan
Coca Cola In New Zealand
Facts
The Claim
Issue 1: Use As A Trade Mark
Issue 2: Substantially Identical With Or Deceptively Similar
Other Similar Issues
Passing Off/Fair Trading Act
The Relevance Of UK And EU Case Law
Coca Cola At Australia
Conclusion















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ACKNOWLEDGEMENT



No entity in this world is the solo creation neither is this project therefore; I owe my sincere
gratitude to the people who helped and supported me during the completion of this project.

I would like to thanks our Private international law professor Ms. Anuradha Nayak who provided
me the opportunity to work on this outstanding project. It helped me to the Great Extend and as
well as to get familiar with Intellectual Property law in relation to the trademarks which is one of
the burning issues currently . On the other hand I would like to thanks our seniors, our friends
and various people who guided me during this work.

I would also like to thanks University of Petroleum and Energy studies, Dehradun who provided
me many of the recourses which helped in completion of this project. I would also like to thank
Universitys library that provide many of the books and Internet facility which help to the large
extent in finishing of this project.














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INTRODUCTION
Intellectual Property is a large, complex, and increasingly important area of law. Unlike real
estate, or other tangible property, the intangible nature of Intellectual Property means that people
often have difficulty grasping the concept. India has been a member of the World Trade
Organization (WTO) since 1995. This requires member nations to establish intellectual property
(IP) laws whose effect is in line with minimum standards. As a result, there should be few major
differences between Indias laws and those of other developed countries.
COPYRIGHT & PATENTS
India is a signatory to the Berne Convention on copyright. Indias Patents Act of 1970 and 2003
Patent Rules set out the law concerning patents. The regulatory authority for patents is the Patent
Registrar within the department of the Controller General of Patents, Designs and Trade Marks,
which is part of Indias Ministry of Commerce and Industry. Patents are valid for 20 years from
the date of filing an application, subject to an annual renewal fee. Indias patent law operates
under the first to file principle - that is, if two people apply for a patent on an identical
invention, the first one to file the application will be awarded the patent.
Adding to the conceptual difficultly is the fact that one physical item may embody several
layers of intellectual property. For example, the music embodied in a commercial CD may
have several layers of copyright associated with it copyright of the lyrics, copyright of the
music, copyright of the album artwork, copyright of the text of the album booklet, and several
patents relating to the physical structure, encoding and decoding of the data on the CD.
TRADE MARKS
In addition to copyright and patents, another extremely important area of Intellectual Property to
business is Trade Marks that is, how to protect the identity and branding of a business.
Indias trade mark laws consist of the 1999 Trade Marks Act and the Trade Marks Rules of 2002,
which became effective in 2003.The regulatory authority for patents, is the Controller General of
Patents, Designs and Trade Marks under the Department of Industrial Policy and Promotion. The
police now have more robust powers in enforcing trade mark law, including the ability to search
premises and seize goods suspected of being counterfeit without a warrant.
But these powers are tempered by the requirement for the police to seek the Trade Mark
Registrars opinion on the registration of the mark before taking action. This adds to the delay
and may result in counterfeit goods being removed or sold. Trade names also constitute a form of
trade mark in India, with protection, irrespective of existing trade names, for those wishing to
trade under their own surname. A trade mark in India is valid for ten years and can be renewed
thereafter indefinitely for further ten-year periods
At the most basic level, there are two forms of Trade Mark a registered Mark and an
unregistered Mark. Registration of a Mark affords additional protections to a particular Mark as
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opposed to an unregistered Mark, and makes it easier to prosecute possible infringements of
someones Mark.
1

Many people associate a Trade Mark with a logo or slogan, however a Mark does not necessarily
have to be so limited. It is possible to register a colour Cadbury, for example, have registered a
particular shade of purple. a shape such as Coca-Cola Amatils contour bottle or even a
sound, such as Intels Intel Inside sound. The Coca-Cola trademark incorporates a number of
elements which have become synonymous with the brand. These include:
The Coca-Cola red and white graphics
The Coca-Cola brand name written in the universally known Spencarian Script
The famous contour shape of the Coca-Cola bottle.
Together, these elements are instrumental in differentiating Coca-Cola from all other competing
brands.
CONFIDENTIAL INFORMATION
Another, often overlooked, form of Intellectual Property is confidential information. Most, if not
all, businesses have a wealth of valuable information for example, customer & supplier lists,
information on business system & processes, future product or service roadmaps and information
on financial performance.
It is often important that this valuable information remain confidential to the business. Certain
actions or inactions may allow information to lose its confidential characteristic, and therefore
not allow you to prevent a third party from disseminating or using that information for their own
purpose. You should always ensure that relevant non-disclosure and confidentiality agreements
are in place where and when appropriate.

COCA COLA BOTTLES: A HISTORY
Coca-Colas history has got a lot of bottle - more than 115 years worth, in fact. The worlds
favourite soft drink started life as a soda fountain beverage, selling for five cents a glass, but it
was only when a strong bottling system developed that Coca-Cola became the world-famous
brand it is today.
2

1894 - A Modest Start For A Bold Idea
Mississippi shop owner Joseph A. Biedenharn began bottling Coca-Cola after he was impressed
by its sales. He sold the drink to his customers in a common glass bottle called a Hutchinson.

1
Warren J. keegan & Mark C Green, Global Marketing (Fourth Edition), Pearson Education.
2
A Short History of Coca Cola Company through http://assets.coca
colacompany.com/7b/46/e5be4e7d43488c2ef43ca1120a15/TCCC_125Years_Booklet_Spreads_Hi.pdf visited on
26/03/2014 at 3:00 P.M
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At the time Biedenharn sent a case to Asa Griggs Candler, who owned the Company. Candler
thanked him but took no action. One of his nephews already had urged that Coca-Cola be
bottled, but Candler focused on fountain sales.
1916 - Birth Of The Contour Bottle
Bottlers worried that a straight-sided bottle wasnt distinctive enough and that Coca-Cola was
becoming easily confused with copycat brands. Glass manufacturers were approached to come
up with a unique bottle design for Coca-Cola. The Root Glass Company of Terre Haute, Indiana,
designed with the famous contour shape, which won enthusiastic approval from Coca-Cola in
1915 and was introduced in 1916.
1923 Six Packs
Six pack carriers of Coca-Cola bottles were introduced to encourage people to take their drinks
home and were a huge hit.
1928 Bottle Overtakes Fountain
For the first time, the volume of Coca-Cola sold in bottles exceeded the amount sold through
soda fountains.
1950 Media Moments
The Coca-Cola Contour Bottle was the first commercial product to appear on the cover of TIME
magazine, establishing Coca-Cola as a truly international brand. Also this year, the first
television advert featuring Coca-Cola's Contour Bottle appeared during CBS' The Edgar Bergen-
Charlie McCarthy Show.
1955 Packaging Innovations
For the first time, people could buy different sized bottles of Coca-Cola. As well as the
traditional 6.5 ounce contour bottle, shops also started selling larger 10, 12 and 26 ounce
versions.
1960 Trademark No.1
The Contour Bottle with the word Coca-Cola written on it received its first trademark from the
US Patent and Trademark Office.
1977 Trademark No.2
The Coca-Cola Contour Bottle was granted a second trademark for the contour shape itself, with
no words written on it.
1978 Recyclable Bottles
Coca-Cola introduced the world to the two liter PET plastic bottle. It became popular for a lot of
reasons: it doesnt break; its re-sealable, lightweight and recyclable.
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2000 Reducing Waste
Coca-Cola introduced the ultra-glass Contour Bottle designed for improved impact resistance,
reduced weight and cost. These bottles are 40 per cent stronger and 20 per cent lighter than the
original Coca-Cola Contour Bottle saving approximately 52,000 metric tons of glass in 2006.
2005 Aluminum Bottles
Coca-Cola joined forces with design firms from five continents to launch a new aluminum
Contour Bottle called the M5 (Magnificent 5).
2009 Green Bottles
Coca-Cola launched the innovative Plant Bottle in the US, a completely recyclable PET
container made with 30 per cent plant materials, including sugar cane extracts.
2011 Going Green Globally
Plant Bottle packaging is available in nine countries with launches planned for many additional
markets in 2011 and beyond.
2013 Your Name On Our Bottles
Coca-Cola swaps its iconic logo with Great Britains most popular names for the summer-long
Share a Coke campaign.
COCA COLA IN JAPAN
Coca-Cola filed its trademark application before the Japan Patent Office (JPO) in 2003. The JPO
rejected the application, finding that the contour bottle had not acquired secondary meaning as
required for registration for configuration trademarks. The Appeal Board of the JPO sustained
the examiners rejection. Through the law firm of Yuasa and Hara, Coca-Cola appealed the JPO
rejection to the IP High Court, which held four hearings into the case in September and October
2007 and January and March 2008.
3
Coca-Cola submitted over 130 exhibits demonstrating:
Vast source-identifying use of the contour bottle over many years in Japan.
The resulting strong immediate consumer associations between the contour bottle and
Coca-Cola.
Among the exhibits submitted were:
Many publications, including:
Study on Coca-Cola (Kodansha Publishing).
50 Years of Upheaval: Visual History of Showa Era (Coca-Cola Bottlers).
Creation of Business: Japanization of Soft Drinks
True Histories of Hit Brands(Tokyo Agency).
Information and samples of materials on websites.

3
By Daiske Yoshida and Richard C. Kim, Latham & Watkins LLP (IP Law 360)
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Coca-Colas annual sales reports;
Advertising materials.
Titles and reproductions of television commercials.
Consumer surveys conducted in 2003 and 2007.
The IP High Court decision highlighted two important points at variance with past arguments
used by the JPO in its rejection of Coca-Colas 2003 application. First, the IP High Court
judgment stated that because bottles are used to display many different marks and logos, it is not
fair to deny that a configuration has acquired secondary meaning just because a word mark is
used in association with the shape. The JPO had argued that when consumers see the contour
bottle, they primarily focus on the famous word mark COCA-COLA and not on the 3D shape of
the contour bottle itself.
Second, the court found that because minor changes are frequently made to the size and
configuration of goods, it is wrong to reject the registrability of a 3D shape just because the
configuration used is slightly different from that applied for registration. The JPO had argued
that some of Coca-Colas evidentiary submissions did not support registration as the actual
commercial use of the contour bottle differed from the shape of the contour bottle in the
application.
In particular the JPO highlighted that Coca Cola specimen for the contour bottle application had
grooves at the top for a screw cap, while the contour bottle appearing in the market did not have
a screw cap. Also, the JPO highlighted that the contour bottle depicted in the specimen was a
different color from the bottle in use.
The IP High Court found that the differences between the specimen and the actual use did not
nullify the fact that the contour bottle as depicted in the specimens was, for purposes of
consumer perceptions, the same configuration. Also, the court identified the following main
reasons for recognizing the distinctiveness and registrability of the contour bottle:
The contour bottle had been used extensively in Japan over many years.
The contour bottle was used as a brand symbol in advertising in Japan.
Coca-Colas surveys demonstrated that consumers recognized the contour bottle as an
indicator of Coca-Cola as the source of the contour bottle without any logo or word
trademark.
Expert witnesses effectively testified that the contour bottle acted as a 3D trademark.
The decision of the IP High Court is final as the JPO did not go into appeal to the Japanese
Supreme Court.
Thus, because of the contour bottle decision, the JPO will likely modify its practice and many
other companies with valuable 3D configurations will seek registrations for such configurations
in Japan as well. Given the importance and extent of Japans commercial activity, the decision
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will be highlighted by Coca-Cola and other companies when seeking to register 3D bottle
configurations, as well as other configurations, in Japan and in other countries in the Asia-Pacific
region such as Hong Kong and Singapore, where 3D bottle configurations have not yet been
recognized as trademarks by the relevant trademark offices.
Where Coca-Cola has been able to get 3D registrations for the contour bottle, as in the recent
Japanese case, those registrations greatly assist Coca-Cola in stopping third-party infringements
and act as a deterrent against potential infringers.
The victory before Tokyos IP High Court follows Coca-Colas many successes in the Asia-
Pacific region in establishing groundbreaking precedent by getting the contour bottle registered.
The recent decisions to allow the registration of the contour bottle in China and Thailand were
also the first-ever bottle configuration registrations in these countries.
Coca-Cola and Pepsi, long-time soft-drink rivals, have taken their competition to a new level: the
federal court. Coca-Cola has filed a $1 billion action against Pepsi for using a glass bottle,
which is allegedly confusing because it is so similar to Coca-Colas iconic glass bottle. The Coca
Cola Company (Coca Cola) has recently brought proceedings against Pepsico Inc, its
Australian holding company Pepscio Australia Holdings Pty Ltd and Schweppes Australia Pty
Ltd as the manufacturer and distributor of Pepsi and Pepsi Max (the Respondents). In the
Statement of Claim dated 14 October 2010, Coca Cola alleges the Respondents have been selling
Pepsi and Pepsi Max products in glass bottles that have the same characteristic shape and
silhouette as the Coca Cola Contour Bottle, infringing their intellectual property rights. The
case raises a number of interesting issues concerning the often fraught area of shape marks, some
of which will be raised here.
COCA COLA IN NEW ZEALAND
In the case of The Coca Cola Company Limited v Frucor Soft Drinks Limited & Anor
4

Facts
Coca-Cola is the registered owner of a number of Australian trademarks that depict its famous
Contour Bottle, which were included in the Statement of Claim and shown in Figure 1. The
Contour Bottle is a hallmark of Coca Colas branding with its pinched in waist shape and
silhouette distinguishing Coca Colas products from other sodas on the market. Coca Cola has
built a strong reputation in the Contour Bottle through significant promotion and marketing and
claims that it has sold its Coke and Coca Cola products in the Contour Bottle since 1916 in the
United States and since at least 1938 in Australia.

4
[2013] NZHC 3282
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Figure 1: Coca Cola Contour Bottle Trade Marks
In May 2010, Coca Cola became aware that the Respondents were selling Pepsi and Pepsi Max
in glass bottles similar to their Contour Bottle. Images of those glass bottles, as featured in the
Statement of Claim are depicted in Figure 2. Coca Cola demanded that the Respondents refrain
from what it said was unlawful conduct. The Respondents refused. In response, Coca Cola
initiated these Federal Court proceedings.

Figure 2: Alleged Infringing Pepsi and Pepsi Max Glass Bottles
Its not the first time Coca Cola have sought to enforce their rights with respect to the shape of
its Contour Bottle. Many will recall the 1999 case Coca-Cola Co v All-Fect Distributors Ltd,
where Coca Cola successfully brought trade mark infringement proceedings against the
manufacturer of a cola flavored confectionary product which took the form of the shape of its
Contour Bottle. Although a total impression of similarity did not emerge from a comparison of
the two marks Black CJ, Sundberg and Finkelstein JJ found that the idea suggested by the mark
is more likely to be recalled than its precise details such that consumers might be caused to
wonder about the source of the confectionary products as a result. Coca Cola will no doubt seek
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to rely on this decision, although, as the following summary of the present claim demonstrates,
there are some critical points of difference between the two disputes.

The Claim
Typical of most trade mark disputes, Coca Cola has brought a three pronged claim against the
Respondents, namely:
1. Trade mark infringement under section 120(1) of the Trade Marks Act 1995 (TMA).
2. Breach of sections 52 and 53 of the Trade Practices Act 1974 (TPA).
3. Passing off.
As to the trade mark infringement claim, Coca Cola allege the Respondents have been using the
particular bottle shape for its Pepsi and Pepsi Max products within the meaning of use in section
17 of the TMA and that the bottle shape is substantially identical with or deceptively similar to
Coca Colas trademarks so as to constitute trade mark infringement under section 120(1) of the
TMA.
Coca Cola also claims the Respondents have engaged in conduct which is misleading or
deceptive or is likely to mislead or deceive in breach of section 52 of the TPA. It further claims
the Respondents have falsely represented that they are authorized or have approval or are
associated with Coca Cola in breach of section 53 of the TPA.
Finally Coca Cola claims the Respondents have passed off its products as Coca Cola products, or
licensed Coca Cola products. As a result of this conduct, Coca Cola claims it has suffered
unspecified loss and damage and seeks to have the Court restrain the Respondents from
continuing to sell its products in the said glass bottles.
With respect to the trade mark infringement claim, there are two issues that will likely dominate
proceedings.
1. The first is the issue of use as a trade mark, which is likely to be raised in the Respondents
defence, which is yet to be filed.
2. The other issue which will obviously present itself is the question of deceptive similarity.
Issue 1: Use as a Trade Mark
It is a requirement of registration that the sign, defined under section 6 of the TMA, must be used
or intended to be used to distinguish goods or services, consistent with the definition of a trade
mark under section 17 TMA. This implies that, with respect to shape marks, merely adopting a
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particular shape will not amount to trade mark use. And, in the same way that descriptive terms
will not normally be registrable as a trade mark because they will fall foul of the use
requirement, functional or utilitarian shapes will not be registrable as trademarks if they do not
also serve the secondary purpose of distinguishing those goods from the goods provided by
others. Of course, the corollary of the requirement of use for registration is that in context of
trade mark infringement; there is a requirement that the alleged infringer has used a sign that is
substantially identical or deceptively similar sign to distinguish its goods from other goods.
The use requirement can be particularly problematic in relation to shape marks in both the
registration and infringement contexts, since all physical things take the form of some
shape. Would a consumer, on seeing a product for the first time, think that the shape of the
product is a trade mark, that is, an indicator of origin?
In the Statement of Claim, Coca Cola allege that the bottle shape used by the Respondents
would be perceived by consumers in Australia as possessing the character of a brand for
distinguishing the Infringing Products from other beverage products. and have used the bottle
shape of the Infringing Products and the silhouette of that bottle shape as a trade mark within the
meaning of sec 17 and 120(1) TMA.
The Respondents will have to address this point in their defence. They will likely argue that
their Pepsi and Pepsi Max glass bottles are not being used as a trade mark within the meaning of
the TMA and thus their conduct does not constitute trade mark infringement.
Potential Defence
In doing so, the Respondents may argue that the glass bottle it has used does not function as a
trade mark because the shape it has adopted is functional.
Furthermore, the shape adopted is but one of a number of features on its Pepsi and Pepsi Max
products preventing it from functioning as a trade mark. That is, the Respondents would argue
that the addition of the ingrained wave pattern on the glass bottle and the use of its other
distinctive Pepsi and Pepsi Max marks all have the combined effect of diluting the significance
that might have otherwise attached to the shape of its glass bottle and that any distinctiveness
that the shape has acquired was likely attributable to its use alongside the other distinguishing
trademarks and indicia. As a consequence, it is possible that consumers, on seeing Pepsi and
Pepsi Max products for the first time, would not think that the shape of its glass bottle was a
trade mark, distinguishing its products from other manufactures, as Coca Cola alleges.
There are a couple of important shape mark cases that are on point and may be relevant here for
the purposes of determining whether the shape of the Respondents glass bottle constitutes use as
a trade mark. The first is the well known Philips v Remington case, where Philips failed to
establish trade mark infringement of its triple head shaver shape mark because there had been no
use of the trade mark by Remington. The issue of use was also raised more recently in the 2009
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case Guylian v Registrar of Trade Marks although in the context of an application to register the
shape of a seahorse for use with respect to chocolates. Although it is not possible to go into the
details of these cases here, suffice to say the Respondents may be able to draw on these cases and
in particular the Guylian case favourably.
Issue 2: Substantially Identical With or Deceptively Similar
The question of whether the Pepsi and Pepsi Max glass bottle is substantially identical with or
deceptively similar to Coca Colas trademarks will also be hotly disputed. It is unlikely that a
Court would determine that the marks were substantially identical comparing the two marks side
by side and noting their similarity. The question of deceptive similarity is more contentious.
It is at this point that the present dispute differs from Coca-Cola Co v All-Fect Distributors Ltd.
Here the alleged infringer is Coca Colas main rival, which has established its own distinct
reputation in the cola market, the same market in which Coca Cola operates. The question as to
whether consumers would be caused to wonder about the source of the Respondents products is
therefore more tenuous here than it was in Coca-Cola Co v All-Fect Distributors Ltd, given the
level of consumer saviness and the strongly held preference most consumers hold for either Coca
Cola or Pepsi products.
Other Similar Issues
Are The Respective Signs Similar

Having met the initial thresholds, the issue then turned to assessing the similarity between the
marks. This is where Coca-Colas case fell over. Considering the respective marks, Wylie J held
that they were not materially similar.

He first noted that the primary similarity between the respective marks was that each had a waist
(a feature that he had already indicated was common to the trade). Even so, the waists were not
the same.

In respect of TM 47221, Wylie J considered that the distinctive and dominant features of Coca-
Colas mark were the pronounced pinch towards the bottom of the bottle, the horizontal belt
band, the vertical fluting below and above the belt band, the slight bulging above and below the
belt band and the concave curved neck of the bottle leading from the top of the belt bund up to
the mouth of the bottle.

Turning to the comparison, it was noted that the Carolina bottle had no vertical fluting, that there
was no broad horizontal band around the middle of the Carolina bottle, that the Carolina bottle
had a straight tapered neck and not a concave curved neck, and that there was no bulging on the
sides of the Carolina bottle (the bulging above and below the waist can be seen more clearly in
NZ TMs 244906 and 295168). Wylie J also pointed out that the Carolina bottle had an embossed
horizontal wave pattern on the lower curved waist section. Wylie J noted that there were
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additional differences, but that these were features that an average consumer with an imperfect
recollection would be unlikely to recollect.

The differences as regards NZ TMs 244906 and 295168 were largely the same.
In relation to the combination sign, incorporating PepsiCos word and device marks, it was held
that these would clearly not infringe Coca-Colas registrations, including because PEPSI, PEPSI
MAX and 7UP are well known in New Zealand.


Was There A Likelihood Of Confusion?

Notwithstanding the finding that the marks were not similar, Wylie J considered the issue of
deception and confusion for completeness.

Given the findings that the respective marks were not materially similar, the conclusion that
there was no likelihood of confusion was an easy one to draw. However, Wylie J went on to
make the following comments in support of this finding:

There was no evidence of confusion.
There was nothing to suggest that were any undetected instances of confusion.
Coca-Cola took no steps to complain about PepsiCos use until a year after it had first
become aware of the Carolina bottle.
Coca-Cola has not taken steps against the Carolina bottle in most countries where
PepsiCos product is sold.
Coca-Cola did not put on survey evidence or evidence of any other research undertaken.


Passing Off/Fair Trading Act

While Wylie J accepted that Coca-Colas contour bottle has a strong reputation in New Zealand,
he did not consider that there was a likelihood of deception or confusion (taking the comparison
between the actual products of Coca-Cola and PepsiCo, and the circumstances of actual use).
Coca-Colas claim that damage would flow through diverted sales (based on
dilution/inundation), Wylie J held that these were unsupported assertions.

On the Fair Trading Act claim, it was held that PepsiCos conduct was not misleading (or
capable of being misleading), and that there were no false or misleading misrepresentations. This
included consideration of the use of the Pepsi, Pepsi Max and 7UP marks on the Carolina bottle.




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The Relevance Of UK And EU Case Law


It is quite common to see case law authorities from the UK cited in decisions from the trade mark
registries and courts in New Zealand (and Australia for that matter). Wylie J acknowledged that
New Zealand legislation has consistently drawn in this area of the law from legislation in the
United Kingdom, and the decision freely and relevantly refers to various cases from the
Australia, the UK and Europe.

However, in the context of the assessment of the signs that Pepsi Co. was using, Wylie J was not
convinced that the UK/EU authorities were directly on point. This was taking into account the
differences between the New Zealand Act and the UK Act (and particularly the lack of a
counterpart to s89(2) of the New Zealand Act in the UK Act).

On the other hand, Wylie J adopted a Euro-style global assessment when assessing the
similarity between the marks and the likelihood of confusion. On the similarity point, he referred
to the decision of the Court of Appeal of England and Wales in Spec savers International
Healthcare Ltd & Ors v Asda Stores Ltd
5
, which cites the standard test adopted by the UKIPO
for assessing the likelihood of confusion during the prosecution phase, at paragraph [52] (and
particularly [52](c), which reiterating Sabel states that the average consumer normally
perceives a mark as a whole and does not proceed to analyze its various details).

What is particularly notable here is that Wylie J endorsed the global assessment based on Spec
savers and Sabel, but did not expressly consider enhanced distinctiveness in Coca-Colas marks.
It is a bedrock of European trade mark law that a mark with greater distinctiveness (whether
inherent or acquired) benefits from a greater scope of protection (Sabel). This is not expressly
discussed in the decision, though that is not to say that enhanced distinctiveness was left out of
the analysis. Wylie J referred to Coca-Colas evidence of advertising campaigns which have used
the silhouette mark in one way or another. He noted Coca-Cola has not registered the silhouette
of its contour bottle simpliciter, and that the silhouette is less subtle than the registered
shapes, before concluding that Coca-Cola cannot extend the scope of its registration by going
on to use as a sign the silhouette derived from its registered marks when that sign is not itself
registered. A similar point was recently made in the decision of the Full Federal Court of
Australia in Australian Postal Corporation v Digital Post Australia
6
. Wylie Js comment is
perhaps ominous for PepsiCo in respect of the Australian proceedings, where Coca-Cola can rely
on a mark registered in respect of (ostensibly) the silhouette.







5
[2012] EWCA Civ 24 (31 January 2012)
6
[2013] FCAFC 153 (6 December 2013)
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Registration number Mark Specification Endorsement
1160893

Non-alcoholic
beverages; drinking
waters, flavored
waters, mineral and
aerated waters; soft
drinks, energy drinks
and sports drinks;
fruit drinks and juices;
syrups, concentrates
and powders for
making beverages
including syrups,
concentrates and
powders for making
mineral and aerated
waters, soft drinks,
energy drinks, sports
drinks, fruit drinks
and juices
Provisions of
subsection 41(5)
applied.*
1160894

Non-alcoholic
beverages; drinking
waters, flavored
waters, mineral and
aerated waters; soft
drinks, energy drinks
and sports drinks;
fruit drinks and juices;
syrups, concentrates
and powders for
making beverages
including syrups,
concentrates and
powders for making
mineral and aerated
waters, soft drinks,
energy drinks, sports
drinks, fruit drinks
and juices
Provisions of
subsection 41(5)
applied.*


COCA-COLA VS. PEPSI (INTELLECTUAL PROPERTY)

UNIVERSITY OF PETROLEUM & ENERGY STUDIES Page 17 of 20

Authors Opinion

The Courts thorough analysis of the relevant law regarding infringement and close consideration
of the scope of Coca-Colas registered trademarks provide useful guidance on trade mark
infringement in their respective country. Trade mark owners should note that a New Zealand
court may make a negative inference from a delay in taking steps to enforce intellectual property
rights. he decision also demonstrates that a product in the marketplace may comprise a
combination of signs including, for example, the shape of the product and its packaging. Traders
should be aware that they may be using a larger number of signs than may be immediately
apparent. This decision is under appeal to the Court of Appeal.

COCA COLA AT AUSTRALIA

There is no discussion of the earlier decision of Australias Full Federal Court in Coca-Cola v
All-Fect
7
, in which a registration for Coca-Colas contour bottle mark (in 2D shown below
left) was infringed by a cola flavored confectionary product shaped somewhat like a contour
bottle (shown below right). In doing so the Full Federal Court overturned the decision of
Merkel J at first instance, which had held that the shape of the confectionary was not used as a
trade mark.



(Coca-Colas
AU TM
63697)
(Infringing product)

FACTS
The appellant in this case was the Coca-Cola Company, the manufacturer and distributor of the
Coca-Cola soft drink. It is the proprietor of three registered trademarks: 'Coca-Cola', 'Coke' and,
most relevantly, a contour drawing of the glass bottle in which Coke has been traditionally sold.

7
[1999] FCA 1721
COCA-COLA VS. PEPSI (INTELLECTUAL PROPERTY)

UNIVERSITY OF PETROLEUM & ENERGY STUDIES Page 18 of 20

The respondent (All-Fect Distributors Limited) is a confectionery wholesaler that imports and
distributes, among other products, a gelatinous cola-flavoured confectionery, which is shaped
like the contour bottle when rolled out flat. The word 'cola' is inscribed on it in capital letters.
Coca-Cola claimed that the importation, marketing and sale by the respondent of the cola bottle
confectionery infringed its registered trademarks, principally under Sections 120(2) and (3) of
the Trademarks Act 1995. Coca-Cola also claimed that the conduct constituted (i) misleading or
deceptive conduct in contravention of the Trade Practices Act 1974, and (ii) passing off.

DECISION
FI RST I NSTANCE

The trial judge dismissed the application by Coca-Cola, and found that All-Fect had not used any
mark that was substantially identical, or deceptively similar, to the Coke mark. Although the
word 'cola' was inscribed on the confectionery, the inscription and colour of the confectionery
were descriptive of a flavour, rather than the origin of the goods, and would be understood by
consumers in this way.
In relation to the contour drawing mark, the two critical issues for trademark infringement were
(i) whether the importation, distribution and sale of the cola bottle confectionery constituted use
of the confectionery shape as a trademark, and
(ii) whether the cola bottle confectionery was substantially identical, or deceptively similar, to
Coca-Cola's mark.
Justice Merkel decided both points in All-Fect's favour. Merkel found that while the
confectionery was recognizable as having the shape and basic markings of the contour bottle,
consumers would not expect it to have a trade or commercial connection with Coca-Cola by
reason of having that shape. Merkel regarded the confectionery as being dissimilar to the bottle
in significant respects and far from an exact copy. He also concluded that consumers would be
unlikely to wonder whether the confectionery came from the same source as Coca-Cola.
A misrepresentation by All-Fect as to the existence of a connection between its cola bottle
confectionery and Coca-Cola was an essential element of the passing off and trade practices
claims. Having found that no such representation had been established by Coca-Cola in the
trademark context, the trial judge also dismissed these claims.
Coca-Cola appealed the findings of the trial judge.


COCA-COLA VS. PEPSI (INTELLECTUAL PROPERTY)

UNIVERSITY OF PETROLEUM & ENERGY STUDIES Page 19 of 20

ON APPEAL

The full court of the Federal Court allowed the appeal, holding that there were certain features of
the confectionery that were not merely descriptive of the goods and did point to use of the
trademark (eg, the silhouette, the fluting at the top and bottom, and the label band). The court did
not accept the trial judge's reasons behind the conclusion that the confectionery did not indicate
nor imply the origin of the goods.
The court concluded that the features of the confectionery were likely to cause confusion in
consumers (ie, cause them to wonder whether the confectionery came from the same source as
bottled Coca-Cola). The following factors led the court to this conclusion:
The Coca-Cola contour bottle is extremely well-known;
There are similarities between features of the confectionery and the contour bottle mark
(eg. both have curved rather than flat sides, a top portion with longitudinal fluting, a
central portion without fluting and a lower portion with fluting, and both have a flat
base and a banded neck);
To a greater or lesser degree, depending on the feature, the respondent had used all
significant features of the contour bottle mark;
The word "cola" on the confectionery, although not itself a mark, reinforces the link
between the confectionery and Coca-Cola that is conveyed by the shape of the
confectionery; and
The lower half of the confectionery is the same colour as Coca-Cola.
The question of whether the features of the Coca-Cola bottle were likely to cause typical
consumers to wonder whether the confectionery came from the same source as Coca-Cola was
remitted to the trial judge.
In view of the court's conclusion on the trademark issues, the trade practices and passing off
issues could not be disposed of in the way they were at first instance. They were also remitted to
the trial judge for further consideration.
In assessing whether All-Fect had used the confectionery as a trademark, the court briefly
considered the contentious issue of whether goods themselves can be a trademark. However, in
the end it was not necessary for the court to decide whether the bottle that was refused
registration in the UK decision of Coca-Cola Trademarks [1986] RPC 421 could be registered
under the Australian Act.
It was sufficient for the resolution of the case for the full court to adopt the view that a mark can
be a trademark even if, as in the present case, it only covers one of the visible sides of the object
in question.


COCA-COLA VS. PEPSI (INTELLECTUAL PROPERTY)

UNIVERSITY OF PETROLEUM & ENERGY STUDIES Page 20 of 20

CONCLUSION

The packaging of a product serves a number of functions. At the most basic level, it contains and
protects a product. However, packaging is also an important marketing tool.
It is critical in describing a product, attracting consumer attention and differentiating the product
from competitors. The Coca-Cola contour bottle is perhaps one of the most unique forms of
product packaging. While it was originally introduced as a means of protecting the brand from
imitation, it is now the most central part of the Coca-Cola brand identity. The bottle
communicates the uniqueness, originality, superior refreshment and enduring values of the
brand.
A market research survey was carried out to examine consumers attitudes to the contour shape.
In this survey, consumers described the contour bottle as communicating a variety of positive
meanings. It was seen as:
a symbol of the ultimate enjoyment and refreshment from Coca-Cola
possessing a sensual look and feel
a symbol of good times
universally known and universally accepted
a symbol which unites consumers around the world
an aesthetically beautiful symbol
8


8
The Coca-Cola bottle - The shape of the century through http://business2000.ie/pdf/pdf_2/cocacola_2nd_ed.pdf
visited on 28/03/14 at 5:00 P.M.