In a recent case, Bodum AG v H.A.G Import Corpn (Australia) Pty Ltd [2026] FCA 238, the Federal Court considered whether the deliberate copying of a successful product design amounted to misleading or deceptive conduct and passing off.
The dispute concerned two ranges of double-walled drinking glasses sold by Bodum and competing products sold under the Maxwell & Williams brand. The competing glasses were virtually identical in shape, and the respondent accepted that it had intentionally adopted Bodum’s design features.
Despite this, the Court dismissed Bodum’s claims.
The decision confirms that copying a product’s appearance does not, by itself, establish that consumers have been misled about the product’s commercial origin. The Court must still consider whether consumers recognize the copied features as identifying a particular trader and whether the overall presentation of the competing product is likely to create a false impression of connection or association.
Background of the dispute
Bodum has sold double-walled drinking glasses in Australia since 2004. The two products at the centre of the case were its Pavina and Canteen ranges.
The Pavina glasses have curved sides and a rounded internal chamber that appears suspended within the outer layer of glass. The Canteen glasses have straighter sides that taper outwards towards the opening. Both designs were originally protected by registered designs in Australia.
The registrations expired in 2014.
H.A.G Import Corpn (Australia) Pty Ltd, referred to in the judgment as HAG, sells homewares under the Maxwell & Williams brand. In August 2019, HAG began selling its Blend range of double-walled glasses. It later introduced the Blend Conical range in July 2023.
The parties agreed that the Blend and Blend Conical glasses were either precisely or virtually identical in shape to Bodum’s Pavina and Canteen products. The main differences related to branding and certain functional details.
Bodum’s glasses carried Bodum branding on the base, a removable Bodum sticker and information relating to the design and patent. They also included a silicone vent between the layers of glass. HAG’s products carried an “M&W” mark on the base and were sold in Maxwell & Williams packaging.
Bodum alleged that the sale of the competing products represented that they were Bodum products, formed part of a Bodum product range, or had been licensed, sponsored or approved by Bodum.
It relied on section 18 of the Australian Consumer Law, which prohibits misleading or deceptive conduct, and sections 29(1)(a), (g) and (h), which prohibit certain false or misleading representations about goods, sponsorship, approval and affiliation. Bodum also brought a claim in passing off.
Main issues
The case was not about whether HAG had copied Bodum’s designs. That point was eventually admitted.
The more difficult question was whether the copying was likely to cause consumers to believe that the HAG products came from Bodum or were commercially connected with Bodum.
This required the Court to examine the way consumers encountered the products in practice. The glasses were sold online, through catalogues and in physical stores. Sometimes they appeared in their packaging. At other times, individual glasses were displayed on shelves without their boxes.
The parties agreed that the relevant consumers were adult Australian tea and coffee drinkers.
The Court therefore had to assess how an ordinary and reasonable member of that group would respond to the products, taking into account their shape, packaging, branding, price, retail environment and the reputation of both businesses.
Bodum’s Reputation in Australia
The Court accepted that Bodum had a strong reputation in Australia.
Bodum had sold tea and coffee products in Australia for many years, and its name and red logo were well known. The Pavina and Canteen ranges had also achieved significant sales.
The evidence showed that substantial numbers of the Pavina and Canteen glasses had been sold before HAG entered the market. Bodum also relied on design awards, retail partnerships, advertising, promotional campaigns and collaborations with organisations such as Qantas, Breville and the Sydney Opera House.
The difficulty for Bodum was that a reputation in the Bodum brand was not the same as a reputation in the shape of the glasses.
To succeed in passing off, Bodum needed to establish that the appearance of the Pavina and Canteen glasses had become distinctive of Bodum in the minds of consumers. In practical terms, consumers needed to recognise the shape itself as indicating that the product came from Bodum, even when the Bodum name or logo was not visible.
The Court was not satisfied that Bodum had established this secondary reputation.
Evidence related to the reputation of the shape
Bodum’s sales figures demonstrated that the Pavina and Canteen ranges were commercially successful. However, strong sales did not necessarily show that consumers associated the shape of the glasses exclusively with Bodum.
The products were usually promoted as part of a broader range of Bodum goods. Bodum sold many different drinking glasses and several styles of double-walled glassware. Its advertisements commonly featured the Bodum name or logo.
There was limited evidence showing that Bodum had promoted the Pavina or Canteen shapes independently of its branding.
The Court also identified gaps in Bodum’s marketing evidence. Some catalogues were in evidence, but there was little information about how widely they had been distributed in Australia. Certain website and social media materials did not clearly show the level of Australian consumer exposure at the relevant dates.
Bodum’s total marketing expenditure was significant, but the evidence did not identify how much had been spent specifically on the Pavina and Canteen ranges.
The market had also changed after Bodum’s design registrations expired. Other double-walled glasses had entered the Australian market. Some included design features similar to those relied on by Bodum.
This weakened the argument that an ordinary consumer would view the general appearance of a double-walled glass as uniquely connected with Bodum.
The Court accepted that the Pavina and Canteen products had been original and successful designs. It did not accept that their shapes had become badges of commercial origin.
Deliberate Copying of Bodum’s glasses
HAG admitted during the hearing that it intended to adopt the shape and design features of Bodum’s glasses.
Bodum relied heavily on this admission.
It argued that the Court should apply the evidentiary reasoning from Australian Woollen Mills Ltd v FS Walton & Co Ltd. That case recognised that when a trader adopts a rival’s mark or get-up to capture part of the rival’s trade or reputation, the trader’s own conduct may provide evidence that the chosen features are likely to influence consumers.
The issue had recently been considered by the High Court in Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2025] HCA 50.
The High Court confirmed that a trader’s state of mind may be relevant even if the trader did not act dishonestly or specifically intend to deceive consumers. An intention to take part of a competitor’s trade can still provide useful evidence when the Court assesses whether consumers are likely to be misled.
That principle assisted Bodum, but it did not decide the case.
The Court still had to examine all the surrounding circumstances. HAG’s intention was relevant evidence, but it did not create an automatic finding of misleading or deceptive conduct.
The Court concluded that HAG wanted to sell products with the commercial appeal of Bodum’s successful designs. However, it was not satisfied that HAG intended consumers to believe that the products were made by Bodum or were associated with Bodum.
There is an important difference between copying a design to compete for sales and presenting a product in a way that misrepresents its source.
Packaging and Branding
The differences in branding played an important role in the outcome.
Bodum’s packaging prominently displayed the Bodum name and its red logo. HAG’s packaging used the Maxwell & Williams name and had a different visual presentation.
The HAG glasses also carried the “M&W” mark on their bases.
Bodum argued that the mark was not always visible when the glasses were displayed on shelves. A consumer viewing the glass from the side might not immediately see the marking underneath.
The Court accepted that the base marking would not be visible in every retail situation. It nevertheless considered the base to be a normal location for identifying the source of glassware. A consumer examining an unpackaged glass could turn it over and see the mark.
More importantly, the Court did not assess the marking by itself. It considered the packaging, online descriptions, catalogue listings, retail signage and the reputation of Maxwell & Williams as part of the same commercial context.
Taken together, these features identified the products as Maxwell & Williams products.
Online and Catalogue Sales
The HAG products were generally described online using the Maxwell & Williams name.
Product pages, retailer descriptions and product titles gave consumers information about the source of the glasses. Similar information appeared in catalogues.
Bodum argued that the shape of the products could initially attract consumers under the mistaken belief that they were viewing Bodum glasses. It relied on the idea that a consumer may be drawn into a trader’s “marketing web”, even if the true position becomes clear before the purchase is completed.
That argument depended on consumers already associating the shape of the glasses with Bodum.
The Court had not found that such a reputation existed. It was therefore not persuaded that the shape alone would cause an ordinary consumer to believe that the product came from Bodum.
The resemblance might attract attention, but attracting attention was not the same as creating a false impression about commercial origin.
In-Store Displays
Bodum also relied on the way the products were displayed in stores.
Evidence showed that Bodum and Maxwell & Williams glasses could be placed close to one another. Individual products were sometimes displayed outside their packaging.
Bodum argued that, in those circumstances, consumers could mistake the HAG glasses for Bodum products.
The Court considered the wider retail environment. Tea and coffee glassware sections often contained products from several manufacturers. Brand signage, boxes and shelf labels were commonly present.
Consumers encountering similar products from different brands would ordinarily look for branding or product information rather than assume that every similar glass came from the same source.
The fact that both Bodum and Maxwell & Williams had established reputations also reduced the likelihood of confusion. Consumers familiar with either brand would expect its products to carry the relevant name or mark.
Australian Consumer Law Claims
Section 18 of the Australian Consumer Law requires an objective assessment of the conduct as a whole.
The question was whether HAG’s conduct had a real and not remote possibility of leading ordinary and reasonable consumers into error.
The Court accepted that the products were direct competitors and that their shapes were extremely similar. It also accepted that HAG had intentionally copied Bodum’s design features.
Those facts were not enough.
The Court found that the products were presented as Maxwell & Williams products through their packaging, descriptions, retail context and markings. Bodum had not shown that consumers treated the shape of the glasses as identifying Bodum independently of its name and logo.
The Court was therefore not satisfied that consumers were likely to believe that the Blend products were made, licensed, sponsored or approved by Bodum.
The claims under sections 18 and 29 of the Australian Consumer Law failed.
Passing Off Claim
The passing off claim faced an additional obstacle.
Passing off requires the claimant to establish a reputation or goodwill in the relevant name, mark, appearance or get-up. It must also establish a misrepresentation and actual or likely damage.
Bodum had a strong reputation in its business and brand. However, it did not establish the necessary reputation in the shapes of the Pavina and Canteen glasses.
Without proof that consumers recognised the shapes as distinctive of Bodum, HAG’s use of the same shapes did not amount to a misrepresentation that its products came from Bodum.
The differences in packaging, branding and product markings also worked against any finding of false association.
The passing off claim was dismissed, and Bodum was ordered to pay HAG’s costs.
Commercial Significance
The decision provides important insights for designers, brand owners and businesses considering products that resemble those of a competitor.
Firstly, it confirms that expired design rights cannot be extended indirectly through the Australian Consumer Law or passing off. Once a registered design expires, competitors may generally reproduce it unless their conduct infringes another right or misleads consumers.
Secondly, a claimant relying on product shape must prove more than commercial success or a strong brand reputation. The evidence must show that consumers recognize the shape itself as identifying a single commercial source. Product-specific advertising, sales data, retail displays and evidence of consumer recognition may therefore be important.
Thirdly, it also shows that strong branding can work both ways. While a well-known brand may support a claim, it may also suggest that consumers rely on the name or logo, rather than the product’s shape, to identify its source.
Fourthly, clear source identification remains essential. HAG’s packaging, product descriptions, retail presentation and M&W marking helped distinguish its products from Bodum’s. However, branding may not prevent liability where the copied feature already has a strong source-identifying reputation.
Finally, deliberate copying and an intention to capture a competitor’s trade remain relevant evidence, but they are not decisive. The ultimate question is whether the conduct, viewed in its full commercial context, was objectively likely to mislead consumers.
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