In this episode of Elise Explains IP, we explore how packaging shapes and colours can function as trade marks under Australian law. We break down the legal test for non-traditional marks, why distinctiveness matters, how functionality can undermine protection, and what evidence you need if you’re building these kinds of brand assets. We also unpack a major recent dispute over the Moccona coffee jar and what it tells business owners about enforcing shape trade marks in practice.

A “sign” under Australian trade mark law can include words, shapes, colours and packaging, so long as it can function as a badge of origin — meaning consumers recognise it as identifying one trader’s goods or services over others.

A shape or container can be registered as a trade mark if it’s distinctive and non-functional.

Functional features (e.g. those that improve handling, storage or manufacture) generally cannot be monopolised under trade mark law.

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277

Moccona’s glass instant coffee jar shape was registered as a trade mark (Class 30 for coffee and instant coffee).

The Federal Court dismissed Moccona’s claim that Cantarella’s (Vittoria) similar jar infringed the shape mark, finding that use of that jar shape in advertisements did not amount to use as a trade mark and that key factors pointed away from consumer confusion.

The court also rejected Cantarella’s cross-claim to cancel the mark, holding that Moccona’s extensive use of the shape before the priority date had given it acquired distinctiveness under the Trade Marks Act.

Why this matters for business owners:

Colour can be registered if it functions as a trade mark and distinguishes your goods/services.

A classic international example is Tiffany & Co’s Tiffany Blue (registered in the U.S. for jewellery and packaging), showing how colour can serve as a badge of origin when strongly associated with a brand.

The disputes over Cadbury’s attempt to register a specific shade of purple illustrate key principles for colour marks:

Colour must be precisely defined and shown to function as brand identifier, not mere decoration.

A mark — whether shape or colour — must be recognised by consumers as identifying the source of goods or services.

If a shape is dictated by technical or functional necessity, registration is unlikely. Trade marks protect brand signals, not engineering features.

Registration gains force only when the mark is actually used in the marketplace in ways that signal origin.

Here are links and references to the legal decisions and authoritative sources we discussed:

Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 – Moccona coffee jar shape trade mark dispute (Federal Court of Australia) AustLii Case Decision

Australian Trade Marks Act 1995 (Cth) – Defines eligible trade marks, including non-traditional marks (shapes, colours, packaging). (See also IP Australia guidance on colour trade marks) Trade Marks Act

Shape and colour can be trade marks, but they must do real work in the marketplace as badges of origin.

Evidence matters: Consistent use over time builds distinctiveness.

Registration ≠ enforcement: Winning in court often hinges on how consumers actually perceive and use the brand elements in everyday purchasing decisions.

IP Australia manuals and guidelines on trade mark registrability

Case summaries from IP practice firms

Trade mark search and monitoring tools