Coca-Cola’s trade mark for its classic bottle shape has long been ‘the’ talisman example of how a shape can be registered if it is sufficiently distinctive. So, why would Pepsi decide to use a similar bottle? Like all things IP, the answer is not as simple as it looks.
Created in 1915 by bottle designer Earl R. Dean, the Contour Bottle has been used by Coke, albeit with various minor alterations, ever since. Of course, Coke now sells Coca-Cola in cans, and jumbo bottles which lack the contours of the original design, but it’s classic bottle has long been regarded as a vital brand pillar.
Bottles as pictured in the Statement of Claim
From the pictures in the Statement of Claim, there is little doubt that the Pepsi bottle is similar to the Contour Bottle, although there are differences (such as the extent of the ‘pinch’, the fact that Pepsi’s bottle is more top-heavy and the location of the grooves on the bottle) which will no doubt occupy much of the Court’s time.
The elephant in the room, of course, is the prominent use by Pepsi of its own branding on the bottle (either Pepsi or Pepsi MAX), and its own huge reputation in the sale of cola beverage products. Its competitive relationship with Coca-Cola is well known, and consumers are often said to fall into a ‘Coke’ or ‘Pepsi’ camp. Accordingly, the extent to which the Court will permit consideration of the full context of the bottle (including other branding elements) in assessing the risk of customer confusion will be highly relevant.
In its support, Coke will point to a previous win in Coca-Cola Co v All-Fect Distributors Ltd (1999) 47 IPR 481, 497 (Black CJ, Sundberg and Finkelstein JJ). In that case, the unsuccessful respondent distributed a jelly like cola flavoured confectionery product which bore ‘some resemblance’ to the Coca-Cola contour bottle. The first instance judge decided that the confectionery, sold in tubs and labelled ‘Efruti’, did not suggest any association with Coca-Cola. On appeal, however, the Full Court overturned this decision, finding that the “idea suggested by the mark is more likely to be recalled than its precise details”, and that consumers might be caused to wonder about the source of the infringing item as a result.
Can one apply the same analysis, with similar success, against an arch-rival with a famous brand name of its own? Only time will tell, although it’s plain Coke has already put some thought into this. The Statement of Claim features depictions of the Pepsi bottle from the rear, where the Pepsi brand name cannot be seen… How this operates in practice will be a matter for evidence.
The functional nature of a bottle will also be important to the case. In Australia, the Courts have been more reluctant to grant extensive trade mark protection to functional products. Questions likely to be explored include the ease with which consumers can hold the Pepsi / Coke bottle (assuming they’re relevantly similar) and whether Coke can be permitted to have a monopoly over this aspect.
Another interesting question concerns the now cluttered market for flavoured drinks. True it is, the Contour Bottle must once have stood out clearly from alternative offers. However, if one considers the growth of the industry in hot-fill (eg Gatorade) and energy drinks, each with different styles and shapes, could it be the case that there is now so much variety consumers are less likely to be as impacted by the shape of a particular bottle, particularly if it is clearly labelled with alternative branding?
Coke is also chancing its arm with a section 52 Trade Practices Claim 1974 (Cth) (conduct likely to mislead or deceive). This enables a broader inquiry into nebulous topics such as ‘gestalt’ and the extent to which Pepsi might benefit from the appropriation of Coke’s brand identity by using a similar bottle. (See Red Bull: Sydneywide Distributors Pty Ltd & Anor v Red Bull Australia Pty Ltd & Anor  FCAFC 157 for a detailed discussion of these issues.)
Pepsi looks like it’s betting this case on the strength of its own brand as a means of overcoming any prospect of consumer confusion. Coke, meanwhile, knows that with IP it’s ‘use it or lose it’ and so needs to enforce its rights (and be seen to do so). This is a fascinating battle to watch.