Moccona v Vittoria: Instant coffee makers face off in court over glass jar dispute

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The $22.4 billion American-Dutch coffee giant behind Moccona has picked a fight with Australia's largest independent coffee company, Vittoria, over the latter's sale of instant coffee in a glass jar that the multinational claims rips off Moccona's "iconic" trademarked shape.

Jacobs Douwe Egberts (JDE), which also manufactures L’Or Espresso, Pickwicks tea, Piazza D’Oro and more, launched Federal Court proceedings against Vittoria in February claiming it is engaging in misleading and deceptive conduct by selling coffee in a glass jar and that customers who see the Vittoria glass jar might mistake it for a Moccona product.

"Consumers use the glass jar as a ‘shortcut’ visual cue to identify the premium product contained within it, so they can be confident that the product they are buying is a premium, high-quality Moccona product," JDE head of category development and shopper insights Ross Tillman stated in court documents obtained by this masthead.

The Moccona glass jar is of "utmost commercial importance" to the American-Dutch coffee and tea giant, and is referred to internally as one of the business’ "crown jewels", Tillman added.

"By advertising, promoting, offering for sale and selling infringing products in a shape resembling [Moccona's glass jar], [Vittoria] is likely to mislead a number of ordinary and reasonable consumers of coffee in Australia into the erroneous belief that the infringing products emanate from [JDE] or are otherwise connected, associated or affiliated with [JDE] and their premium coffee products," court documents state.

JDE has been selling Moccona in the flat-top glass jars in Australia since 1960. The company has made the jar a distinguishing feature of the Moccona brand, and over the decades has featured it prominently in a range of marketing and promotional material, such as film advertisements and limited edition designs without any Moccona branding.

Vittoria Coffee was founded in Sydney in 1947 and is one of Australia's oldest independent coffee companies. It began selling instant coffee in supermarkets during the pandemic about May 2021. The company will vigorously defend itself in the proceedings and has filed a cross-claim. Vittoria chief executive Les Schirato said JDE was concerned about losing market share and had commercial motivations for launching proceedings.

"We don't need, nor would we attempt, to trade off Moccona's reputation because, in effect, our reputation is so strong," Schirato said.

Vittoria is being sued by Moccona's parent company over its 400g instant coffee product sold in a glass jar that the American-Dutch giant says is misleading and deceptive conduct.

He added that the Vittoria logo, which is featured prominently on the glass jar's label, removes any confusion in the consumer's mind that the product is associated with Moccona.

"The actual jars, if you look at them, are covered by the brand – what features prominently is our brand," he said. "Jars are jars.

"You don't get Moccona being served in cafes and restaurants and five-star hotels. So for me, the issue of passing off or trying to attempt to pass off on their reputation is not something we would ever want."

The Australian coffee company, which turns over about $290 million a year, will argue in its cross-claim that JDE's trademark for the Moccona jar is invalid, ought to be cancelled, and that Moccona's jar was not different to any other. Vittoria is also alleging that JDE has not actually used the trademarked design and has no intention to.

"The KDE Shape Mark is a functional design [being a container] and is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons," Vittoria's statement of claim outlines.

"Any use of a container or a jar was not use[d] as a trademark, but rather use[d] as a functional container, and thereby does not distinguish the designated goods or services as being those of KDE."

The affidavit written by and signed off by JDE's Tillman refers to a confidential court document that outlines notable commercial losses JDE suffered as a result of Vittoria's entry into the supermarket category.

At the heart of the dispute is Vittoria's 400-gram product, the only item directly comparable to Moccona's glass jar product. Vittoria's 100-gram and 200-gram jars did not have the same impact on JDE that its 400-gram product did, said Tillman.

"I have also observed a disproportionately higher number of consumers ‘switching’ to the Vittoria 400-gram product from the equivalent Moccona 400-gram glass jar product than any other 400-gram instant coffee products [including, for example, the equivalent Nescafe branded product]," he stated in the affidavit.

"In my opinion, this difference is likely to be attributable to the Vittoria 400-gram product being sold in the form of a glass jar with a flat-topped stopper lid ... which consumers understand to be a trade indicia for Moccona's premium, high-quality product.

"The fact that Cantarella launched its Vittoria 100-gram and 400-gram products in different jars suggests to me that Cantarella may be testing the market for different jar shapes to see which jar shape sells better."

The Moccona manufacturer is concerned that Vittoria will continue to expand its distribution and sale of the coffee, which would see JDE's reputation, goodwill, market share, and supermarket shelf space suffer and could force JDE to change its marketing strategy which heavily features the jar.

"Even if JDE is ultimately successful at trial and the court were to grant an order preventing Cantarella from selling its Vittoria 400 gram, in my view, any damages awarded for Cantarella's past sales would not adequately compensate JDE for its loss of reputation and exclusivity in its glass jar," Tillman stated in the affidavit.

Both parties have been ordered by Justice Michael Francis Wheelahan to provide further evidence and documents for discovery, to assist in the preparation of joint expert reports, and to advise on witnesses required to attend trial for cross-examination.

The matter is listed to be heard on February 20, 2024, for an estimated nine days.

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