Case: Remy Martin v Carlton Wines &amp; Spirits (Aust) Pty Ltd (unreported, O'Loughlin J, 19 February 1992)
Outcome: considered
Natural Waters placed reliance on two cases: Remy Martin v Carlton Wines &amp; Spirits (Aust) Pty Ltd (unreported, O'Loughlin J, 19 February 1992) and Sydneywide . 36 In Remy Martin , the comparison was between "Liquore Galliano" and "Valentino". Justice O'Loughlin found that "Liquore Galliano" was a product that ' virtually "owns" its niche within the liqueur market...it is thereby unique and ... its unchanged labelling and get-up have become distinctive and synonymous (sic) with its uniqueness ' (at [106]). The accused bottles were very different in shape and it was said to be "impossible" for any person to confuse them. The names were also different: "Galliano" and "Valentino", with the latter name prominently displayed. There were less important differences on the rear labels and in the writing on the front label. The respondents denied copying but said that the goal was to obtain "a similar feel" to the Galliano label. For example, a fort appeared on the Galliano label; a castle motif was adopted by Valentino. The defence was that the castle was chosen not to suggest an association with Galliano but because of its Italian or European association. 37 Justice O'Loughlin concluded that the respondents, former franchisees of Galliano products, set about to "filch" as much of the Galliano label and get-up as they thought would be safe to withstand legal challenge (at [114]). His Honour found that the choice of a castle was an attempt to attract the eye of the intending purchaser in the hope that he or she would mistake the product for the Galliano range (at [115]). It ' destroyed the bona fides of the respondents' case ' (at [116]). A reference to a cocktail associated with Galliano also achieved a ' marked degree of importance ' (at [117]). Justice O'Loughlin concluded that, standing back and avoiding minutiae, there was ' an overwhelming sense of association as if the proprietors of "Liquore Galliano" might have decided to market their product in a different bottle with a different name '. 38 In Sydneywide , two competing energy drink products, "Red Bull" and "LiveWire", were packaged in cans of similar size and colour. The cans each had a "strong diagonal thrust" in their design. There were significant differences, including the brand names and the forms of writing on the cans. There was emphasis, by an expert witness at trial, on what was described as the "gestalt" of the brand, in the sense of '[a] n integrated perceptual structure or unity conceived, as functionally more than the sum of its parts ', which was said to be ' almost identical ' (at [41] and [91]). 81 Mr Dayal readily conceded that he wished to take advantage of a growing world market demand for bottled water. Mr Dayal is Fijian and the family businesses are based in Fiji. He appreciated that Fiji was a good source from which to meet such a demand and he had the opportunity and business experience to develop that market. Unlike O'Loughlin J in Remy Martin , I am not satisfied that Mr Dayal had the intention to market a bottled water product that would be associated with Fiji Water. He was aware of the need to "distance" his product from Fiji Water, not least for legal reasons. I accept Mr Dayal's evidence of his intentions and of the process of design of Island Chill, for which he was responsible at the decision-making level. 82 I am firmly of the view that the ordinary or reasonable consumer of bottled water would not confuse Fiji Water and Island Chill or be misled, or be likely to be misled, into believing that they were in any way associated, other than both being a product of Fiji. This is so whether the consumer paused to consider the bottles or made the choice with only a "transitory" glance. Natural Waters emphasises the distinctive aspects of the Fiji Water get-up. Two of the most distinctive are the square shaped bottle and the name "FIJI" in capital letters, in white, outlined by gold. Island Chill is in a bottle with an elongated shape, totally different although square faced, from the distinctive shape of the Fiji Water bottle. The name Island Chill is prominent and appears totally different in script, colour, name and style to the "FIJI" of Fiji Water. Those aspects alone are, in my opinion, sufficient clearly to differentiate the two products. 83 The blue cap, transparent label, three-dimensional background, tropical flower motif and colour and nature of the three-dimensional background are not displayed only on bottles of Fiji Water. They have been utilised in Australia by other manufacturers of bottled water. They do, however, form part of the overall impression or effect of Fiji Water, although there are differences between the 2003 get-up and the 2005 get-up. In each case, the use made of these devices by Island Chill is different. The blue cap is of a different colour; the single hibiscus is different to the 2003 get-up and of a different colour and position to the 2005 get-up; the three-dimensional scene is different and of a different predominant colour to each of the 2003 and 2005 get-ups. Importantly, the overall effect of the combination of each aspect of the design is different and sufficiently so to differentiate Island Chill from the 2003 get-up and the 2005 get-up. Unlike Sydneywide , there is no "gestalt" common to Island Chill and Fiji Water. The products simply look different. The ordinary consumer would not be misled or deceived into believing that they were from the same manufacturer or in some way commercially associated. The ordinary consumer would not believe that Island Chill was the product of Natural Waters or associated with Natural Waters or Fiji Water or was a bottle of Fiji Water.