Matthew Theunissen

Matthew Theunissen is a reporter for the Herald on Sunday.

Pepsi wins battle of bottles

Big implications for trademark law in judge's dismissal of Coca-Cola's claim shapes too alike

Justice Wylie says the primary feature the bottles had in common - a waist - is not sufficient to justify a finding that there was any overall similarity.
Justice Wylie says the primary feature the bottles had in common - a waist - is not sufficient to justify a finding that there was any overall similarity.

Coca-Cola's failure to convince the High Court that Pepsi breached its trademark by selling drinks with similar-shaped bottles could have far-reaching implications, a trademark lawyer says.

Justice Edwin Wylie has turned down a claim that Frucor Beverages breached Coke's registered trademarks by selling Pepsi products in a similarly contoured bottle for the past four years.

Justice Wylie said the bottles were not materially similar and he did "not consider that there is any reasonable likelihood of confusion or deception", according to a judgement released yesterday.

Trademark lawyer Sheana Wheeldon said the decision could be an acid test for registered shape trademarks, which included the shape of chocolate bars, lighters and perfume bottles. "Of course it could be appealed and the position might change, but if this remains the outcome then I think that owners of shapemarks would be quite hesitant to try to enforce them because of the risk of losing on this point - that people aren't being confused.

"The implications are significant because ... you can register a shape trademark but you still have to enforce it and it's quite a brave brand owner who does try to enforce it now."

Coke claimed Frucor, which has been bottling Pepsi products in New Zealand since 1999, was in breach of three trademarks by using a similar shaped bottle and was passing it off as a Coke product, breaching fair trading law.

Frucor rejected the claim, saying there were significant differences between the bottles, and that in every case the bottles clearly featured Pepsi's own brands.

Justice Wylie said the primary feature the bottles had in common - a waist - was not sufficient to justify a finding that there was any overall similarity.

"The waists are not the same or even substantially similar," he said.

Given Coke's more than 90 per cent share of the cola market, the judge said it was in a unique position to be able to find out if retailers had been confused by the bottle's shape.

Justice Wylie also questioned why Coke did not complain about the bottle until almost a year after its release, and why it had not taken any steps in other nations where it was sold.

The judge awarded costs to Frucor, and gave the company 15 working days to file a memorandum on costs and disbursements. Coke will get another 15 working days to reply.

A spokesman for Coca-Cola said the company was disappointed by the decision but would not comment further.

- APNZ, with BusinessDesk

- NZ Herald

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