Thursday 02 May 2024
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Australian company Vittoria Coffee files cross-claim saying Moccona’s use of jar shape mark should be cancelled

On Monday 6 February 2023, the owners of the Moccona brand, Koninklijke Douwe Egberts BV and Jacobs Douwe Egberts AU Pty Limited commenced Court action against Vittoria alleging (in summary) that Vittoria by use of the glass jar for the 400g Vittoria instant coffee, is infringing their trade mark which is for a container of a particular shape as shown in representations in their trade mark registration (the “KDE Mark”), misleading or deceptive conduct, and passing off. On Friday 24 March 2023, Vittoria filed a cross-claim arguing that the KDE Mark should be cancelled on the basis that the KDE Mark is not inherently adapted to distinguish and/or did not in fact distinguish their container from other containers. Further, Vittoria’s cross-claim argues that KDE and JDE’s use of the container was use as a functional container, not use as a trade mark – and that the Registrar accepted their registration on the basis of evidence or representations that were false

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SYDNEY, Australia – The Vittoria Coffee brand is an Australian retail market leader in pure coffee (beans and ground). Vittoria Coffee is an Australian family-owned business since 1947, and since 1958, have been locally roasting and supplying 100% Arabica coffee beans and related products under the iconic Vittoria brand.

The company supplies to cafes, restaurants, hotels, airlines, supermarkets, independent grocers, clubs, pubs, fruit shops and delicatessens throughout Australia. The brand market penetration is so strong that a consumer is never too far away from obtaining a Vittoria product.

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Reflecting the strength of the company reputation in the Vittoria brand, the business has been granted three defensive trade mark registrations for Vittoria in Australia, covering a wide range of food and beverages.

Defensive registrations are only available to trade marks that are well known or famous in Australia. The defensive registrations also significantly broaden the company protection over the Vittoria brand including the ability to bring infringement actions.

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Vittoria launches innovative instant coffee product during COVID-19

While the company heritage is in pure coffee, over time, the Vittoria range has evolved. During the Covid-19 pandemic, the team noticed that customers who were impacted by lockdown restrictions were looking for alternatives to visiting their favourite café.

vittoria coffee jar
Vittoria Coffee jar (image provided)

In May 2021 (close to 2 years ago) Vittoria successfully launched its 100g instant freeze-dried coffee product in 4 blends and has enjoyed huge success in this category. The company has received many positive comments on the taste and presentation of their range which uses 100% Arabica coffee beans. Vittoria has already established itself as the number 2 and fastest growing brand in the 51-150g freeze dried instant coffee segment in dollar value.

moccona
Moccona’s jar (image provided)

Following the success of the 4 variants in the 100g product, in September 2022 Vittoria launched a 400g instant coffee product. Vittoria’s entry into this category offered consumers more choice. The Vittoria 400g product is currently available in Coles.

Multi-national business Jacobs Douwe Egberts starts legal action against Vittoria

On Monday 6 February 2023, the owners of the Moccona brand, Koninklijke Douwe Egberts BV and Jacobs Douwe Egberts AU Pty Limited commenced Court action against Vittoria alleging (in summary) that Vittoria by use of the glass jar for the 400g Vittoria instant coffee, is infringing their trade mark which is for a container of a particular shape as shown in representations in their trade mark registration (the “KDE Mark”), misleading or deceptive conduct, and passing off.

vittoria coffee jar
Vittoria Coffee’s jar (image provided)

The company is surprised and disappointed by this legal action, and Vittoria will 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 their consumers come to them for the quality and flavour of their products. The company has no desire nor need to seek to trade off any other brand.

Vittoria files cross-claim arguing the KDE Mark should be cancelled

On Friday 24 March 2023, Vittoria filed a cross-claim arguing that the KDE Mark should be cancelled on the basis that the KDE Mark is not inherently adapted to distinguish and/or did not in fact distinguish their container from other containers. Further, Vittoria’s cross-claim argues that KDE and JDE’s use of the container was use as a functional container, not use as a trade mark – and that the Registrar accepted their registration on the basis of evidence or representations that were false.

vittoria coffee
Vittoria Coffee’s jar (image provided)

This is not the first time Vittoria has had to defend itself in intellectual property disputes, and Vittoria will again defend its position in this case. The company is proud to develop quality and innovative products which offer more choice to customers. For a very long period of time, the freeze-dried instant coffee category was dominated by a small number of large multinational organisations.

Vittoria is one of the last Australian family-owned market-leading coffee business in the Australian retail sector

Jacobs Douwe Egberts describes itself as a member of the JDE Peets group of companies, which is a Dutch coffee giant one of the biggest coffee companies in the world, and which owns or has acquired several iconic coffee brands including Moccona, L’Or, Campos, Harris, Sacred Grounds and Piazza Doro Espresso.

vittoria coffee
Vittoria Coffee’s jar (image provided)

JDE Peets is also a part of the JAB Holding Company, a conglomerate of international brands including Krispy Kreme, Keurig Dr Pepper, Espresso House and Pret. There is a notable trend in Australia where multi-nationals, private equity firms and conglomerate businesses are buying out small Australian independent coffee brands.

Vittoria is one of the last Australian family-owned market leading coffee business in the Australian retail sector.

Vittoria’s entry and performance in the instant coffee market, made from 100% Arabica coffee beans, reflects our strong brand and café credentials in the pure coffee category. Their success in this category brings a welcome new player to the tightly controlled instant coffee segment. Interestingly, Moccona’s successive attempts to enter the pure coffee segment (in addition to the instant segment) have failed to achieve similar success.

Vittoria Coffee is proud to offer Australian consumers premium, 100% Arabica, freeze- dried instant coffee. Vittoria Coffee is fortunate to be in a position to stand up to the overseas corporate giants and will continue to fight for its right to compete at home.

The company looks forward to continuing to offer their customers the Vittoria coffee flavour and quality they know and love in both pure and instant coffee products.

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