A legal storm in a double-walled glass: Federal Court rules on product design copying

The applicants in the proceedings were Bodum AG (First Applicant), Bodum (Australia) Pty Ltd (Second Applicant) and Pi-Design AG (Third Applicant) (collectively, Bodum). Bodum had designed, manufactured and sold double walled glasses (DWGs) in Australia since 2004, under its ‘Pavina’ and ‘Canteen’ ranges. Bodum registered these two designs under the Designs Act 2003  (Cth) with IP Australia in 2004 and enjoyed exclusive rights over visual features associated with these products until the design registrations expired in 2014. 

H.A.G Import Corpn (HAG), the Respondent, sold homeware items in association with its ‘Maxwell & Williams’ trade mark. During proceedings, HAG made admissions that, following the expiration of Bodum’s design registrations, it had copied aspects of the Pavina and Canteen DWG designs and sold these products in the Australian market between 2019-2023 (HAG DWGs).

Bodum commenced proceedings against HAG in the Federal Court of Australia alleging misleading and deceptive conduct under sections 18 and 29(1)(a), (g) and (h) of the ACL and the tort of passing off. 

Sections 18 and 29(1)(a), (g) and (h) of the ACL: Bodum alleged that HAG misrepresented that the HAG DWGs were Bodum’s Pavina and Canteen DWGs or otherwise represented an affiliation, licence, sponsorship or approval by Bodum.

Passing off: Bodum claimed to have acquired a ‘secondary reputation’ in the design features of the Pavina and Canteen shapes and that the HAG DWGs misrepresented a trade connection with Bodum and, as a consequence, damaged Bodum’s goodwill.

The Federal Court was required to resolve the following issues:

1. whether Bodum had acquired a 'secondary reputation' in the shapes and design features of the Pavina and Canteen DWG ranges.
2. whether HAG’s intentional copying of the design and shapes in Bodum’s DWGs was done with an intention to mislead or deceive consumers.
3. whether HAG was likely to mislead consumers to believe that HAG’s DWGs were the same as, or affiliated or associated with Bodum’s DWGs.
4. whether HAG injured the goodwill and reputation of Bodum.

The Federal Court dismissed Bodum’s application with costs.

Secondary reputation

The Court accepted that Bodum had a well-established reputation in the tea and coffee glassware market, and that the Pavina and Canteen DWGs achieved strong sales and design awards. However, the Court drew a clear distinction between brand reputation and the alleged reputation in the shapes themselves:

• the Pavina and Canteen DWGs were only two designs of a very extensive range of glassware lines promoted and sold under the Bodum branding;
• there was limited and patchy evidence of Bodum advertising that focused specifically on the shapes of the Pavina and Canteen DWGs; and
• following the expiration of the exclusive rights, many other competitors entered the glassware market (including Harris Scarfe, De’Longhi, Baccarat, Avanti and Pyrex) and shared similar design features.

The Court determined that ordinary Australian adult tea and coffee drinkers, when distinguishing between different DWG brands, would remember the Bodum trade mark and not the design features of the Pavina and Canteen DWGs. 

Intentional copying – Australian Woollen Mills presumption

Although HAG admitted to intentionally copying the aspects of the shape and design of the Pavina and Canteen DWGs in an attempt to capture market share, the Court found that HAG did not intend to mislead or deceive consumers. 

The Court considered the principle in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 (Australian Woollen Mills) that the intention to appropriate a mark or goods of a rival should lead to the presumption that this appropriation is likely to mislead or deceive. This is the first consideration of the Australian Woollen Mills principle since the High Court of Australia’s decision in Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50 clarified that this presumption constitutes an evidentiary approach rather than a strict rule. 

In the present case, the Court held that the Australian Woollen Mills evidentiary presumption requires flexible application, and found that in the circumstances, the presumption was outweighed by factors in the immediate and broader context, including HAG’s distinct and well-known trade marks and the absence of any secondary reputation in Bodum’s shapes.

Role of branding, labelling and packaging

In assessing whether HAG’s conduct was likely to mislead or deceive, the Court placed significant weight on the differences in the parties’ branding and packaging. This analysis drew on the High Court’s reasoning in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, that close similarity in product appearance may not be actionable if goods are properly labelled. The Court observed that:

• Bodum’s DWGs displayed the Bodum word mark and logo on the base, patent and design information, a silicone-sealed pressure vent on the base, a removable Bodum sticker, and packaging that prominently displayed the Bodum logo; and
• HAG’s DWGs bore an ‘M&W’ etching on the base (referring to the widely recognised homewares brand Maxwell & Williams) and were sold in Maxwell & Williams branded packaging.

The Court held that, despite the near-identical shapes, the overall get-up of the respective products was sufficiently distinct that consumers in the relevant class were unlikely to be misled as to the origin of the products.

This outcome can be distinguished with the earlier Full Federal Court decision in Peter Bodum A/S & Ors v DKSH Australia Pty Ltd [2011] FCAFC 98, where Bodum successfully established a secondary reputation in the shape of its Chambord coffee plunger. In that case, the competing Euroline plunger bore no distinctive or contrasting branding on the product itself and the Chambord occupied a more prominent position as Bodum's flagship product.

Limitations of protecting visual features of products under the ACL

• ACL and passing off protections cannot be used to extend or as a substitute for exclusive rights once a registered design expires.
• Shape-based ACL or passing off claims require, at the least, evidence that the shape has acquired a ‘secondary reputation’. High volume sales and design awards are insufficient without clear evidence that consumers link the shape alone as referring to that brand. 

Branding as a form of risk control

• This decision illustrates how clear and consistent branding on products and packaging mitigate against risks of ACL and passing off claims.
• Brand owners should consider using distinctive brand names, logos and packaging and ensure that branding is visible across all consumer interactions (ie in-store signage, online listings, catalogue descriptors).

Strategic IP planning

• Businesses should not assume that longevity in the market or commercial success will translate into legally protectable rights in a product's shape.
• If design rights have expired and businesses want to protect their product shape, they should maintain contemporaneous evidence of how consumers associate the particular shape with their brand.
• Before design rights expire, businesses should consider alternative protections, such as trade mark registration, robust branding, and documented secondary reputation.

If you would like to enquire about the protection of your intellectual property rights, please contact us. 

This article was prepared with the assistance of Eva Cotsell, Law Graduate.