The international owner of freeze-dried coffee brand Moccona has launched legal action against the local coffee manufacturer Vittoria, alleging its 400-gram glass jar is “deceptively similar” to the Moccona brand.
International coffee and tea business Koninklijke Douwe Egberts BV (KDE) and its Australian subsidiary Jacobs Douwe Egberts AU (JDE) allege that by packaging its freeze-dried Vittoria branded coffee in glass jars, Australian coffee company Cantarella Bros is engaging in misleading and deceptive conduct whereby customers might mistake the Vittoria jar for a Moccona one.
KDE said Cantarella Bros was making false representations in contravention to Australian Consumer Law sections 18,29, and 33.
KDE claimed it has advertised and sold coffee in the clear glass jar in Australia since at least 1960. It and KDE are part of a large multi-national known as JDE Peet’s, which is part of a portfolio of brands across a range of industries owned by JAB Holding Company Sàrl.
JDE Peet’s has a portfolio of more than 50 brands including coffee labels Moccona, L’Or, Campos, Harris, Sacred Grounds, and Piazza Doro Espresso, and tea brand Pickwicks.
Justice Wheelahan said JDE Peet’s NV annual report for 2022 recorded adjusted earnings before interest and tax (EBIT) in the Asia Pacific region as €123 million (~AU$203 million). Corporate records showed that companies within the corporate group of which the respondent is a member earned consolidated revenue of AU$213 million and consolidated net profit before tax of AU$13 million in the financial year ending 30 June 2022.
Meanwhile, Cantarella Bros’ Vittoria Coffee brand is an Australian, family-owned business that began in 1947. Since 1958 it has been roasting and supplying 100 per cent Arabica coffee beans under the Vittoria brand.
While its history has been supplying cafes, restaurants, hotels, airlines, retailers, clubs, and pubs, Covid prompted the company to develop a freeze-dried instant coffee product.
In 2021, Vittoria launched a 100-gram instant freeze-dried coffee product in four blends, which as of 5 February was number two and fastest growing brand in the 51-150 gram freeze dried instant coffee segment in dollar value, according to IRI Scan Data Total Aust Supermarkets MAT.
In September 2022, the company launched the 400-gram instant coffee jar, which is currently available in Coles.
In his affidavit to the court, JDE head of category development and shopper insights Ross Tillman said the Moccona glass jar was of “utmost commercial importance” and within the business was referred to as one of its “crown jewels”.
Cantarella Bros filed a cross-claim, arguing KDE’s trademark for the jar is invalid and should be removed.
Vittoria said it was “surprised and disappointed” by the legal action and would “vigorously defend” the claims made against it.
“Vittoria is a strong, distinctive, and successful brand with strong brand credentials in its own right and a longstanding heritage in the hospitality industry, and our consumers come to us for the quality and flavour of our products. We have no desire nor need to seek to trade off any other brand,” it said.
Vittoria argued the KDE Mark should be cancelled on the grounds it is not “inherently adapted to distinguish and/or did not in fact distinguish their container from other containers”.
KDE and JDE’s use of the container was as a functional container, not as a trademark and so its claim was based on false evidence or representations.
Vittoria said its entry and performance in the instant coffee market reflected its “strong brand and café credentials” in the pure coffee category.
“Our success in this category brings a welcome new player to the tightly controlled instant coffee segment.
“You don’t get Moccona being served in cafes, restaurants or five-star hotels like Vittoria. So, the issue of trying to pass off on Moccona’s instant coffee reputation is not something Vittoria would ever want.
“Australian consumers are smart and can tell the difference between the Vittoria brand and the Moccona brand and the difference in the jars,” Vittoria said.
