Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited

• Jurisdiction: Australia Federal only
• Judgment Date: 27 February 2007
• Neutral Citation: [2007] FCA 200
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited

[2007] FCA 200

TRADE PRACTICES – packaging of respondents’ bottled water alleged to resemble applicants’ “get-up” so as to be misleading and deceptive – reputation – individual features of the applicants’ get-up not unique – no evidence of consumer association – differences between get-up in 2003 and 2005 – reputation found in the 2003 get-up as a result of sales and marketing – reputation extends to common elements in 2005 get-up – relevance of respondents’ intention – respondents adopted different devices in use in the marketplace without intending to mislead or deceive – packaging and get-up materially different – no likelihood of deception – application dismissed

TORTS – passing off – no intention to pass off – packaging and get-up materially different – application dismissed

Trade Practices Act 1974 (Cth) ss 52 and 53

Fair Trading Act 1987 (NSW) ss 42 and 44

Anheuser-Busch v Budějovický Budvar (2002) 56 IPR 182 cited

Apand Pty Ltd v Kettle Chip Company Pty Ltd (1994) 52 FCR 474 cited

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2006) 228 ALR 719 cited

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136 cited

Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 cited

Campomar Sociedad, Limitada v Nike International Limited (2000) 202 CLR 45 applied

Collins Debden Pty Ltd v Cumberland Stationery Co Pty Ltd (No 2) [2005] FCA 1398 cited

Interlego AG v Croner Trading Pty Limited (1992)39 FCR 348 cited

Jones v Dunkel (1959) 101 CLR 298 cited

Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152 cited

McCormick & Co Inc v McCormick (2000) 51 IPR 102 cited

Pacific Publications Pty Ltd v Next Publishing Pty Ltd (2005) 222 ALR 127 cited

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 cited

Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IPR 1 cited

Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) 53 IPR 481 cited

Remy Martin v Carlton Wines & Spirits (Aust) Pty Ltd (unreported, O’Loughlin J, 19 February 1992) considered

Sterling Winthrop Pty Limited v R & C Products Pty Ltd (1994) ATPR 41,308 cited

Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 considered

TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43 cited

The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 cited

NATURAL WATERS OF VITI LIMITED AND FIJI WATER (AUSTRALIA) PTY LIMITED (ACN 103 806 668) v DAYALS (FIJI) ARTESIAN WATERS LIMITED, PRANESH DAYAL AND JAY PRAKASH DAYAL

NSD 658 OF 2006

BENNETT J

27 february 2007

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 658 OF 2006

BETWEEN:	NATURAL WATERS OF VITI LIMITED First Applicant FIJI WATER (AUSTRALIA) PTY LIMITED; (ACN 103 806 668) Second Applicant
AND:	DAYALS (FIJI) ARTESIAN WATERS LIMITED First Respondent PRANESH DAYAL Second Respondent JAY PRAKASH DAYAL Third Respondent

JUDGE:	BENNETT J
DATE OF ORDER:	27 FEBRUARY 2007
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The application is dismissed.

2. The parties file and serve written submissions on costs or consent orders as to costs within fourteen (14) days.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 658 OF 2006

BETWEEN:	NATURAL WATERS OF VITI LIMITED First Applicant FIJI WATER (AUSTRALIA) PTY LIMITED; (ACN 103 806 668) Second Applicant
AND:	DAYALS (FIJI) ARTESIAN WATERS LIMITED First Respondent PRANESH DAYAL Second Respondent JAY PRAKASH DAYAL Third Respondent

JUDGE:	BENNETT J
DATE:	27 february 2007
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1 The applicants (‘Natural Waters’) distribute bottled water in Australia under the brand name “FIJI” (‘Fiji Water’). The respondents (together ‘Dayals’) distribute in Australia water bottled in Fiji under the brand name “Island Chill”. Mr Jay Dayal (‘Mr Dayal’) is a director of the first respondent (‘Artesian Waters’) and is actively engaged in its day to day management and control. Mr Dayal’s father and mother are also directors of Artesian Waters. The family operates a hardwood export business and it was Mr Dayal’s idea in 2001 that they enter the bottled water market. He was responsible for the marketing “get-up” of the Island Chill product, including bottle shape and label design. Mr Pranesh Dayal is Mr Dayal’s younger brother and trading partner in Australia. He reports to Mr Dayal daily in relation to Dayals’ business activities in Australia.

2 Natural Waters alleges, in broad terms, contraventions of ss 52 and 53 of the Trade Practices Act 1974 (Cth) (‘the Act’), ss 42 and 44 of the Fair Trading Act 1987 (NSW) and passing off by Dayals because of the packaging of Island Chill. These causes of action are each founded on the assertion that Island Chill’s packaging shares a sufficient number of the features of Fiji Water’s packaging so as to give rise to a representation that there is at least an association between the products and between Natural Waters and Dayals, where there is none. Natural Waters and Artesian Waters both own registered trade marks in Australia but no allegation of trade mark infringement is pleaded.

3 The issues that arise are:

· The nature of the goods and their get-up.

· The reputation of Fiji Water.

· The intention of Dayals in designing the bottle and label for Island Chill.

· Whether the consumer would be misled or deceived into thinking that Island Chill was Fiji Water or associated with Fiji Water or Natural Waters.

The nature of the goods and their get-up

4 Natural Waters describes bottled water in its written submissions as a “fast moving consumer good”. This expression encompasses ‘an inexpensive, every day product sold in almost every food and beverage retail outlet throughout Australia’.

5 There are approximately 100 brands of bottled water products available for sale in Australia but apart from Fiji Water, Island Chill and, for a short period of time, one other product, no other bottled water is sourced from Fiji or otherwise uses the Fiji Islands as part of its title, marketing strategy or brand. The retail price of Fiji Water varies. While it is generally more expensive than the Dayals product, there are locations where Fiji Water is sold within the price range of Island Chill.

Fiji Water

6 Fiji Water is the first bottled water product to originate from Fiji. From about mid 2003 to mid 2006, Fiji Water was bottled and distributed in Australia by Natural Waters in a get-up (‘the 2003 get-up’)which included the name “Fiji Natural Spring Water”.

The 2003 get-up

7 Since October 2005, Natural Waters has bottled and distributed Fiji Water in Australia in a get-up (‘the 2005 get-up’) which includes the name “Fiji Natural Artesian Water”.

The 2005 get-up

8 For a period from October 2005 Fiji Water was available in both get-ups. From April 2006 only the 2005 get-up has been used.

Similarities and differences in the 2003 get-up and the 2005 get-up

9 The parties agree that the 2003 get-up contains the following features:

(a) use of a clear bottle with a recessed central body portion defined by protruding shoulders and base portions, with the label positioned in the recessed body portion;

(b) use of a blue cap;

(c) use of a colourful, tropical motif featuring tropical plants and other vegetation;

(d) the depiction of a body of water in a tropical setting on the lower portion of the inner side of the back label;

(e) a three-dimensional effect created by having a partially transparent label on the front panel of the bottle revealing the inner side of the back label;

(f) prominent use of the word “Fiji”; and

(g) use of the words “Taste of Paradise”.

10 The parties agree that the 2005 get-up contains the following features:

(a) use of a clear bottle with a recessed central body portion defined by protruding shoulders and base portions, with the label positioned in the recessed body portion;

(b) use of a blue cap;

(c) use of a colourful, tropical motif featuring tropical plants and other vegetation;

(d) the depiction of a blue background and fern leaves on the inner side of the back label;

(e) a three-dimensional effect created by having a partially transparent label on the front panel of the bottle revealing the inner side of the back label; and

(f) prominent use of the word “Fiji”.

11 Natural Waters emphasises what it says are the common features of the two get-ups:

(a) use of a clear bottle with a recessed central body portion defined by protruding shoulders and base portions, with the label positioned in the recessed body portion;

(b) use of a blue cap;

(c) use of a colourful, tropical motif featuring tropical plants and other vegetation;

(d) a three-dimensional effect created by having a partially transparent label on the front panel of the bottle revealing the inner side of the back label; and

(e) prominent use of the word “Fiji”.

12 The differences between the 2003 get-up and the 2005 get-up that are immediately apparent to the eye are:

(a) The use of a different motif of tropical flowers. The 2003 get-up contains a range of flowers, including a white orchid, almost centrally placed at the bottom of the transparent label and a red hibiscus, above and to the left of the orchid, facing towards the centre. The 2005 get-up has, as a single tropical flower, a pink hibiscus...