Coca-Cola Company v Pepsico Inc [2011] FCA 1069

Coca-Cola Company v Pepsico Inc [2011] FCA 1069

Because the relevance of the respondents' state of mind was conceded, a temporal cut-off at commencement of the proceeding for indemnity documents was arbitrary and artificial: later documents could retrospectively refer to earlier conduct and the sale of the Infringing Products was ongoing. However, the phrase "in relation to" was unnecessarily broad because it could capture general indemnities only potentially applicable to the adoption or sale of the Infringing Bottles; the narrower formulation "specifically concerning" was more apt to capture directly relevant documents economically.

Jurisdiction
Australia
Judgment Date
15 September 2011
Procedural Posture
Proceeding for Trade Mark Infringement, Misleading or Deceptive Conduct and Passing Off Involving a Discovery Dispute / Determination of Disputed Category of Discovery and Making of Discovery Orders
Outcome
Discovery orders made; Coca-Cola's wider temporal formulation for category 5 was accepted, but the respondents' narrower "specifically concerning" wording was adopted; costs reserved.
Legal Topics
['discovery' 'trade Mark Infringement' 'misleading or Deceptive Conduct' 'passing Off' 'indemnities' 'state of Mind' 'likelihood of Deception or Confusion']
['practice and Procedure' 'intellectual Property' 'consumer Law' 'passing Off'] ['discovery' 'trade Mark Infringement' 'misleading or Deceptive Conduct' 'passing Off' 'indemnities' 'state of Mind' 'likelihood of Deception or Confusion']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Proceeding for Trade Mark Infringement, Misleading or Deceptive Conduct and Passing Off Involving a Discovery Dispute / Determination of Disputed Category of Discovery and Making of Discovery Orders

Legal Issues

  1. 1 ['Whether documents relating to indemnities requested by or provided to the third respondent should be discovered only if created before commencement of the proceeding.' 'Whether the discovery category should cover indemnities "in relation to" the adoption or sale of the Infringing Bottle and Infringing Products, or only indemnities "specifically concerning" that conduct.']

Ratio Decidendi

Because the relevance of the respondents' state of mind was conceded, a temporal cut-off at commencement of the proceeding for indemnity documents was arbitrary and artificial: later documents could retrospectively refer to earlier conduct and the sale of the Infringing Products was ongoing. However, the phrase "in relation to" was unnecessarily broad because it could capture general indemnities only potentially applicable to the adoption or sale of the Infringing Bottles; the narrower formulation "specifically concerning" was more apt to capture directly relevant documents economically.

Court Disposition

Discovery orders made; Coca-Cola's wider temporal formulation for category 5 was accepted, but the respondents' narrower "specifically concerning" wording was adopted; costs reserved.

Orders

  • ["The applicant give discovery in the agreed categories set out in Annexure 'A' on or before 17 October 2011." "The respondents give discovery in the agreed categories set out in Annexure 'B' on or before 17 October 2011." 'Costs reserved.']