When is product copying lawful? Insights from Bodum’s unsuccessful attempt to claim infringement of its iconic glass design

‍When is product copying lawful? Insights from Bodum’s unsuccessful attempt to claim infringement of its iconic glass design

In the recent decision of Bodum AG v H.A.G. Import Corpn (Australia) Pty Ltd [2026] FCA 238, the Federal Court rejected Bodum's claims that HAG (the owner of popular homeware brand Maxwell & Williams) had engaged in misleading and deceptive conduct by replicating the exact shape and design of Bodum's well-known double-walled glasses. The decision provides important guidance for businesses navigating the intersection of design protection, trade marks, and consumer law.

1. The Heart of the Dispute

Bodum's Pavina and Canteen double-walled glasses were registered designs. When that protection expired, HAG sold similarly shaped glasses - even acknowledging it intended to replicate Bodum's designs. HAG then marketed its "Blend" range under the Maxwell & Williams brand at a lower price point.

Without registered design rights to rely upon, Bodum turned to the Australian Consumer Law (ACL), arguing that HAG's conduct was misleading and deceptive because consumers would confuse HAG's glasses with Bodum's. Bodum claimed to have developed a reputation in the design, which consumers would associate with Bodum.

The Federal Court rejected this claim.

2. Why Bodum could not protect its Glass Design

The court's decision rested on two key findings:

(a) No secondary reputation in the shape

The court determined that consumers identified Bodum products by the Bodum name and logo - not by the distinctive shape of the glass. Bodum was unable to establish that the shape alone had acquired a "secondary reputation" that consumers would associate with Bodum irrespective of branding.

(b) Despite an admission of copying, the likelihood of misleading/deceptive conduct was displaced by the "broader context" of HAG’s branding

HAG admitted it intended to copy Bodum's designs. This admission fell short of the established principle that where a trader deliberately copies a competitor's product, it is presumed that the copying was "fitted for the purpose"[1] of misleading consumers - and therefore likely to deceive.

But this presumption is not absolute. The court held that HAG's conduct must be "viewed as a whole" in the context of all relevant surrounding facts and circumstances. In this instance, the "broader context" displaced the presumption.

Significantly, HAG etched “M&W” on the base of its glasses and used the Maxwell & Williams logo and word mark on all packaging. These features were distinct from Bodum’s branding. The court concluded that HAG’s products were “properly labelled” meaning that, despite the identical shapes, consumers would not be misled because they could identify the origin of the product based on the branding and packaging.

Crucially, both Bodum and HAG had established well-known, distinctive reputations in their respective brands at the relevant dates. The strength of HAG’s own brand was a crucial factor: consumers would recognise the Maxwell & Williams name and would not mistake the product was Bodum’s or associated with Bodum.

3. Key Takeaways for Businesses

• IP monopolies are limited - register your rights while you can: Following the expiry of Bodum’s glass design registrations, competitors could copy the shape, provided they did so under their own branding and Bodum could not establish a separate reputation in the designs. The lesson? If you have a distinctive product design, trade mark, or innovation, register it as soon as possible. Don't assume consumer law will give you an automatic right of IP enforcement. An alternative is to apply for registration of a shape trade mark, which can provide ongoing protection.

• ACL claims are no substitute for registered rights: The ACL or passing off is only one option for the enforcement of IP rights. However, these claims create far greater evidentiary hurdles - you must demonstrate reputation, consumer perception, and likelihood of being misled, which may require significant and costly evidence.

• A strong brand may undermine get-up claims: Bodum's prominent branding meant consumers associated its products with the Bodum name - not with the shape of the glass. Without evidence of secondary meaning, a strong brand can work against a claim of exclusivity in a product design.

4. How We Can Help

Whether you are facing an IP-related ACL claim, or you are exploring IP protections for you or your business, our specialist team can assist. We advise on:

• Trade mark, design and patent registration strategies

• Enforcement of IP rights and infringement claims

• Defending against Australian Consumer Law and passing off allegations

• Brand protection and portfolio management
  ‍ ‍

Thomas Howell
Associate
T 03 5226 8526
E thowell@ha.legal

Michelle Dowdle
Principal Lawyer
T 03 9611 0114 | M 0408 674 256
E mdowdle@ha.legal

[1] at [319] – [320]. ‍