Almost a year ago to the day after interim injunctive relief was granted,
a long-running trade mark dispute has come to judgment, with a number of interesting issues
including the intersection between product depiction and trade marks, an issue that
frequently arises but is rarely dealt with by courts (RB (Hygiene Home) Australia Pty Ltd v
Henkel Australia Pty Ltd  FCA 1042).
Finish brand owner RB challenged Henkel’s use of marks on its Somat brand of
dishwashing tablets in Australia. Justice Rofe found:
- RB had not used either of the trade marks in issue as trade marks during the relevant
- the discretion to allow those trade marks on the register should not be
Somat's SE Logo, used on its Somat Excellence Gel Caps products did not infringe either
of RB's Trade Marks;
RB had failed to establish its passing off or Australian Consumer Law cases.
This means that rather than the success which may have been foreshadowed by the outcome of
the interim injunction, RB has not only failed to stop Henkel from using the SE Logo in
Australia, but will lose two of its key trade marks off the register.
RB's trade marks
RB alleged that Henkel's use of a stylised dishwashing tablet (on the left below) infringed two
of its registered trade marks (in the middle and on the right below), amounted to passing off
and contravened sections 18 and 29 of the Australian Consumer Law:
Firstly, with respect to the 914 Mark, it was noted that many of the stylised product depictions
on RB's products differed from the specific shape and colour of the trade mark. Only one of the
various FINISH products was ultimately considered to contain images substantially similar to the
shape and colour mark actually registered. However, the instances of use that RB relied on were
ultimately found not to amount to trade mark use. In part this was due to the fleeting nature of
the appearance of the image in television commercials, while the example used from an Amazon
site was found to be buried and not immediately presented in association with the FINISH
products. Neither was considered to constitute trade marks use.
With respect to the 311 Mark, Justice Rofe found that this formed a small part of the larger
FINISH powerball logo and considered that that logo did not give the overall impression of
comprising several distinct trade marks. This, together with the dearth of evidence establishing
use of the 311 Mark on its own, led Justice Rofe to the conclusion that there had not been trade
mark use of the 311 Mark.
Similar issues arose in the context of the infringement case. Firstly, Justice Rofe noted that
it is common in the trade for dishwasher capsule packaging to include a stylised depiction of
the dishwashing tablet inside the package and that the main feature consumers would use to
differentiate products in this category of goods would be the prominent and distinctive brand
name on the packaging, rather than the stylised depictions. Further, Justice Rofe did not
consider the use of the stylised depiction of the Henkel product on the packaging was use of
that image as a trade mark.
When considering whether the SE Logo was deceptively similar to either of RB's Trade Marks,
Justice Rofe emphasised that the 914 Mark was a colour and shape mark, the impression of which
an ordinary consumer would take away being of a rectangular prism with sharp edges and rounded
corners made up of two distinct coloured parts with a red circle in the centre of, and flush
with the top of, the prism. The SE Logo on the other hand was not rectangular shaped, or a
rectangular prism, it was not a capsule with two distinct parts, it did not have flat faces of a
prism in speckled white, or blue, it did not have a red circle in the centre and flush with the
top surface of the capsule, and it did not have a blue wave portion on the top surface of the
capsule which wraps around the red circle flush with the top face.
On turning to the 311 Mark, Justice Rofe noted that RB's case invited a consideration of just
the red oval portion of the SE Logo, completely devoid of the remainder of the logo before
noting a number of differences between the SE Logo and the 311 Mark.
Element of trade mark / logo
General position of the ball
Placement of the white start element
Composition of the white star element
Asymmetrical composition with varying lengths of rays
Symmetrical composition with uniform long and short rays
Exploding star against a solid background
Red oval attached to speckled capsule surrounded by anti-clockwise swirling droplets of
different blue hues
Even accounting for imperfect recollections of RB's Trade Marks, she did not find the SE Logo
deceptively similar to either trade mark.
Trade mark or product depiction?
As part of its defence against RB's infringement claims, Henkel had argued firstly that it did
not use the SE Logo as a trade mark and secondly, that the SE Logo was good faith use of a
product depiction within the meaning of section 122(1)(b) of the Trade Marks Act 1995 (Cth). As
part of this argument, Henkel also pointed to the consistent practice within the dishwashing
capsule market of brands including stylised product depictions on their packaging. FAIRY, FINISH
and EARTH CHOICE all included similar product depictions on their packaging.
Justice Rofe found there was no lack of good faith in Henkel's use of the SE logo or the SE
Gelcap and that Henkel had not sought to benefit from RB's reputation in FINISH or either of
RB's Trade Marks. Despite the findings about infringement – which meant she did not have
to decide whether section 122(1)(b) applied here – Justice Rofe considered that the
defence would have been made out.
When it came to the passing off and ACL elements of the case, RB again relied heavily on the
stylised product depictions for this purpose. However, Justice Rofe noted that even as at the
date of SOMAT's attempted launch, RB offered a variety of FINISH capsules which were not a
gelcap product and which involved colours other than the red, white and blue which it had
attempted to establish it had a reputation in. Ultimately, she found that RB had not established
that it had a reputation in either the red Powerball in combination with the colours white and
blue, nor the narrower claim of a predominantly white tablet with a blue waveform and a red
circular element, which reflected the description of the 914 Mark. In part this was due to
another competitor, FAIRY, also using similar colours for its product depictions.
Another curious aspect of this case was the way in which RB sought to confine the relevant class
of consumers for the purposes of the passing off and Australian Consumer Law case. RB's case
centred around considering various different sub-classes of consumers and whether each of those
sub-classes would be likely to be misled or deceived. However, Justice Rofe held that this was
contrary to authorities which have indicated that the relevant class of consumers must include
all astute and gullible consumers.
Finally, it should be noted that evidence from focus groups which RB had attempted to rely on to
prove that consumers would be confused was instead held to show that consumers are
not confused, as they recognised that the SOMAT products were not FINISH