Misleading & Deceptive Conduct Update – Inspiration vs Deliberate Copying. Elements common to the trade – Natural Raw C Pty Ltd v Maicap Pty Ltd [2023] FCA 51

Trade Practices
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Trade Practices – misleading and deceptive conduct – get-up and reputation

Coconut Water

The applicant, Natural Raw C, claimed that the respondent, Maicap, had engaged in misleading or deceptive conduct under s 18 of the Australian Consumer Law (ACL), or conduct likely to mislead or deceive, by falsely representing that Maicap’s coconut water sold under the “Nature's Delight” brand was made or sold by Natural Raw C or with its permission. Natural Raw C’s case was based on two different types of packaging adopted by Maicap, referred to as the 2021 packaging and the 2022 packaging.

Justice Nicholas held that there was no contravention of the ACL.

The applicant

Natural Raw C manufactures and sells various coconut beverages and related products under the trade mark RAW C (the “Raw C device mark”). Since 2014, Natural Raw C has manufactured and sold Raw C Coconut Water using the same, or substantially the same, get-up, in one litre Tetra PaksÒ under and by reference to the Raw C device mark. By the relevant date (being the date in 2021 when Maicap launched product with new packaging) the Raw C Coconut Water was one of the three top selling coconut waters in Australia, selling nationally in large quantities through Woolworths, Coles and other retail outlets.

Reputation in packaging

Justice Nicholas found that by 2021, Natural Raw C had a substantial reputation in the get-up of its one litre coconut water product. That get-up consisted of a number of elements used by the applicant in combination with the Raw C device mark. His Honour found that the Raw C device mark was highly distinctive, and it had been prominently displayed on the front of each of the Raw C Coconut Water products sold since 2014. The Raw C device mark was found to be the most significant element in the get-up of the product and was the visual feature on which consumers were likely to focus when purchasing the product, due to the prominent position it occupied on the front near the top of the pack. His Honour found that another significant element in the get-up was the black on white capitalised block font in which the words “Pure Natural Coconut Water” appeared. His Honour also found that the aqua colour of the Raw C device mark was distinctive, but only in combination with the phrase “Raw C”, the oval shaped device, and its appendages (which the authors understand to mean the black on white printed matter in capitalised block font that were found to be present in all versions of the packaging albeit in a slightly different arrangement).

The respondent and intention

Maicap has manufactured and sold its own coconut water product in one litre Tetra Paks® since early 2015. Until 2021, Maicap’s coconut water product was sold under the brand name “Nature’s Delight” in a get-up that was predominantly two-tone green and white in colour and labelled “Nature’s Delight 100% Pure Coconut Water”.

In 2021, Maicap re-designed the packaging for its coconut water product. The re-design was done by Ms D’Arcy, Maicap's Head of Marketing Communications and Brand. Ms D’Arcy’s evidence was that she was at Coles doing some shopping and she decided to visit the section where the coconut water products were on sale. According to Ms D’Arcy, she visited the section to ascertain where products stood on the shelf, price points, and how much space they took up.

Justice Nicholas did not accept that this provided a complete account of Ms D’Arcy’s reasons for visiting the section. He thought it was more likely than not that Ms D’Arcy was also seeking ideas which she might use in her re-design of the Nature’s Delight packaging. His Honour concluded that in visiting Coles, Ms D’Arcy intended to and did seek to acquaint herself, at least in a general way, with the packaging design utilised by other producers of coconut water.

However, his Honour was not persuaded that Ms D’Arcy deliberately copied any features of the Raw C packaging for the purpose of misleading any consumer in order to take advantage of the Natural Raw C’s reputation in the Raw C product or the get-up of that product.

Evidence of confusion

Justice Nicholas noted that there was no evidence of any consumer having been deceived or confused when purchasing or looking to purchase either Natural Raw C’s or Maicap’s products.

One of the directors of the Natural Raw C, Mr Mendelson, gave an account of walking past an IGA in September 2022, seeing what turned out to be Maicap’s product, and thinking it was his own company’s product. The incident occurred some months after the proceedings had commenced, when Mr Mendelson was well aware of the existence of Maicap’s product with the 2021 packaging. His Honour noted Mr Mendelson had made a fleeting observation and his evidence did not explain why, given that he knew of the existence of Maicap’s product, he assumed that the product he saw was his own product. In any event, it was clear when he had done a double take and looked at the product a second time, he recognised his error.

Similarly, the evidence of Natural Raw C’s financial assistant, Ms Ilievska, did not take the case any further. She had seen the Nature’s Delight product with the 2021 packaging at the Natural Raw C's office and assumed it her company’s product. Justice Nicholson found it difficult to accept that Ms Ilievska could have been confused into thinking that this was a product made by Natural Raw C given the presence of the Nature’s Delight brand on the front of the pack, the absence of the Raw C device mark, or any other mention of Natural Raw C on the packaging. The mental processes that led Ms Ilievska to think that the Nature’s Delight product was the applicant’s product were not explored and her evidence did not explain what significance, if any, she attributed to the absence of the Raw C device mark.

His Honour found that Ms Ilievska’s response was not consistent with the mental processes in which a reasonable consumer who has some basic understanding of the function of a trade mark or brand name would engage when purchasing or looking to purchase the coconut water products. A similar conclusion was reached about the evidence of a third witness, asked by Natural Raw C to look at the Nature’s Delight product.

Similarities in products common to the trade

While Nicholas J concluded that there were some important similarities in the relevant products, those similarities were attributable to the nature of the product and the shape and style in which products like them were commonly packaged. This included the size and shape of the pack (1 litre Tetra Paks®), the type and colour of the cap (white), and the use of different background colours for the front, sides and top of the pack. Further, it was clear that different shades of blue, white and green were frequently used by various players in the market. In this regard, his Honour noted the comments by Bennett J in Natural Waters of Viti Ltd v Dayals (Fiji) Artesian Waters Ltd (2007) 71 IPR 571 at [46], namely:

The fact that Natural Waters may establish reputation in the Fiji Water get-up does not mean that it has a monopoly over each aspect of that get-up. The goods are ordinary articles of consumption. By their nature, goods of different manufacturers will bear some resemblance to each other. Water is sold in bottles, frequently in transparent bottles and commonly with blue caps. The marks, brands and labels play an important part in distinguishing the goods of one manufacturer from those of another …

His Honour distinguished Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd (2017) 349 ALR 598 at [125]-[126] where the applicant established a reputation in not only its brand name but also (and separately) in the get-up of the product. Similarly, Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 234 FCR 549 involved highly distinctive get-up and was distinguishable from the present case.

His Honour concluded that it was unlikely that the ordinary reasonable consumer reaching for the product would not notice the brand name displayed on the front of the pack (as shown below). Rather, an ordinary reasonable consumer would understand the products to be different branded products, most likely produced by different manufacturers. The 2022 packaging was even more different. The authors note that, given how busy the packaging of coconut water appears to be and the common use of white, blue and green on that packaging, it is not surprising that his Honour concluded that brand names were the dominant feature of each product.

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