When Product Copying is Legal: Lessons from Bodum's Failed Bid to allege 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 dismissed Bodum's claims that HAG (the owner of famous homeware brand Maxwell & Williams) had engaged in misleading and deceptive conduct by copying the exact shape and design of Bodum's famous double-walled glasses. The decision offers critical 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 had enjoyed a registered design monopoly. When that protection expired, HAG openly copied the shapes - even admitting it intended to replicate Bodum's designs. HAG then sold its "Blend" range at lower prices under the Maxwell & Williams brand.

Without registered design rights to rely on, 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 alleged 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 turned on two key findings:

(a) No secondary reputation in the shape

The court found that consumers identified Bodum products by the Bodum name and logo - not by the distinctive shape of the glass. Bodum could not establish that the shape alone had acquired a "secondary reputation" that consumers would associate with Bodum regardless 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 foul 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" of misleading consumers¹ - 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. Here, 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 found 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.

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 key factor: consumers would recognise the Maxwell & Williams name and would not assume the product was Bodum’s or associated with Bodum.

3. Key Takeaways for Businesses

• IP monopolies are limited – register your rights while you can: Upon lapsing 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 fill the gap. 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: It is tempting to rely on the ACL or passing off when you don’t have registered IP rights. But these claims create far greater evidentiary hurdles—you must prove reputation, consumer perception, and likelihood of being misled.

• 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. If you ever need to rely on the secondary reputation argument, your brand could work against you.

4. How We Can Help

Whether you are facing an IP-related ACL claim, or you want to ensure your intellectual property is properly protected to avoid future disputes, our specialist team can assist. We advise on:

• Trade mark, design and patent registration strategies

• Enforcement of IP rights and infringement claims

• Defending against Australia Consumer Law and passing off allegations

• Brand protection and portfolio management

Thomas Howell
Associate
T +61 3 5226 8526
Ethowell@sladen.com.au

Michelle Dowdle
Principal Lawyer
T +61 3 9611 0114 | M +61 408 674 256
Emdowdle@sladen.com.au

¹ at [319] – [320]