Trademark Decision Brews Up French-Press Coffee Competition

Connoisseurs of French-press coffee based in the United States will still be able to choose between two competing distributors for their favourite brewing device following a recent US court decision over trademark rights on the distinctive coffeemakers.

The US District Court for the Northern District of Illinois on 24 March granted La Cafetière, Inc., an international housewares company, the right to sell its products in the United States.

La Cafetière, Inc. and another company, Bodum, Inc. of the United States, both manufacture and distribute French-press coffeemakers, which are non-electric devices consisting of a carafe and a mesh plunger attached to a lid, that brews coffee using hot water. In December 2007, Bodum sued La Cafetière for infringement of its trade dress. Bodum alleged that its competitor was selling products that were imitations of Bodum’s distinctive “Chambord” trade dress, according to the summary judgment opinion.

Meanwhile, La Cafetière, Inc. contended that a 1991 stock purchase agreement authorised its activities. Trade dress refers to a product’s physical appearance but may also refer to the packaging, label or presentation.

In the early 1950s, French company Société des Anciens Etablissements Martin (Martin) developed and distributed a device that was to become very popular in Europe: a French-press coffeemaker called the “Chambord.” Martin owned the design patent for the device, as well as a trademark on the Chambord name. Louis-James De Viel Castel was the majority shareholder of Martin.

In 1983, Jorgen Bodum, owner of the Bodum company, and Louis-James De Viel Castel, formed Bodum, Inc., a predecessor to Bodum USA, Inc., to distribute coffeemakers in the US, according to law firm DLA Piper. Bodum company later bought out De Viel Castel’s shares of that US distributorship.

In 1991, Bodum company purchased all of the shares of Martin pursuant to a stock purchase agreement. In this agreement, De Viel Castel insisted that the agreement place no restriction on the activities of Household Articles Limited, a company based in the UK and belonging to De Viel Castel, selling products similar to Bodum Inc’s “Chambord” outside of England. The 1991 agreement left Bodum believing that Household Articles Limited would be limited to the UK and Australian markets. The court decided this was not the case.

In 2006, La Cafetière incorporated in the US, according to DLA Piper, and in January 2008 Household Articles Limited acquired all La Cafetière, Inc. shares in the United States.

Bodum, Inc. argued that La Cafetière did not market or sell French-press coffeemakers in the US prior to its incorporation. La Cafetière, Inc. disputed this and said that it had been selling its French-press coffeemakers in the US prior to its incorporation, through Household Articles Limited since 1990, selling a model called the“Classic.” Bodum, Inc. said it was unaware of such sales, according to the summary judgment.

La Cafetière argued that it was entitled to sell the products accused of infringement by Bodum in the US by virtue of the 1991 stock purchase agreement between Martin stockholders and Bodum. According to this agreement, La Cafetière said, the agreement granted Household Articles Limited the right to sell products similar to Bodum’s Chambord line outside of France. This was contested by Bodum which argued that if the agreement allowed Household to sell similar products in the US, it did not grant Household the right to sell products identical to the Chambord line.

The court found that “because the stock purchase agreement, when read in conjunction with the prior drafts and correspondence between the parties, reflects an intent to permit Household to distribute products very similar to Martin’s products, the provision constitutes an agreement allowing Household’s utilisation of the Chambord trade dress in those products so long as Household does not use the name Chambord, and remains out of the French market.”
The court decided that Bodum’s claims failed as a matter of law.

“This is a significant victory for La Cafetière, Inc in the US and allows it to compete with Bodum in the sale of Chambord French-press coffee makers,” Tom Pasternak, lead counsel and partner in DLA Piper’s intellectual property and technology practice in the Chicago office, told Intellectual Property Watch. He added that Bodum, Inc. filed a notice of appeal on 6 March.