Not Finished Yet: Finish Obtains Interim Relief Against Detergent Competitor

Reckitt Benckiser Finish B.V. (RBF) is the owner of various Australian trade mark registrations relating to its “Finish” brand of dishwashing detergents.

The “Finish” brand is associated with its iconic dishwasher tablets, comprising a white and blue base with a red “powerball” centre.

 

“Finish” dishwasher tablets hold a significant market share in Australia and are well known to consumers and retailers.

Recently, Henkel Australia Pty Ltd (Henkel) attempted to enter the Australian market with its own brand of dishwasher tablets. These tablets use a similar design to RBF’s, featuring a white base and a red centre framed by two blue droplet shapes. This design is depicted prominently on Henkel’s packaging and marketing materials in a stylised form (Logo). However, the Logo is used in tandem with the overarching brand “Somat”, which is also displayed prominently on the packaging.

RBF took issue with Henkel’s use of the Logo, claiming that it infringed on its two registered trade marks depicting:

  • a “Finish” tablet; and
  • a red circle on a blue background with a white “sunburst effect” radiating from the centre,

together, (the Trade Marks).

RBF (and its Australian distributor) commenced proceedings against Henkel and made an urgent application for injunctive relief. The application was heard by the Honourable Halley J of the Federal Court of Australia.

The decision

The hearing of the application was not one to determine whether Henkel had infringed on the Trade Marks.

Rather, the purpose of the hearing was to determine whether Henkel was temporarily restrained from using the Logo in Australia, pending the outcome of a final hearing on the question of infringement.

To determine whether the injunction should be granted, Halley J considered:

  • whether RBF had made out a prima facie case with respect to trade mark infringement; and
  • whether the prejudice which RBF would be likely to suffer if an injunction were refused was outweighed by the prejudice which Henkel would suffer if an injunction were granted.

As to whether RBF has established a prima facie case, it demonstrated that:

  • Henkel’s use of the Logo was likely to be use as a trade mark, given its prominence on Henkel’s marketing materials and packaging; and
  • Henkel’s Logo may be deceptively similar to the Trade Marks.

Henkel made various submissions in relation to trade mark use, including that the term “Somat” was used as a trade mark and that the Logo was merely a depiction of the product, so as to inform the consumer as to what product they were purchasing. Evidence was tendered in order to demonstrate that it was common for competitors to include an image of its product on the packaging, below the brand name. This submission was not accepted by Halley J, as it was found that a sign may have multiple purposes, be it to provide the customer with a depiction of the product and to act as a trade mark.

With respect to whether the Logo is deceptively similar to the Trade Marks, Halley J made clear that RBF had failed to establish a strong prima facie case, and that but for the balance of convenience greatly favouring RBF, the Court would have likely refused to grant the injunction.

Ultimately, RBF obtained interim injunctive relief, preventing Henkel from rolling out its new product in Australia until the matter is determined at a final hearing. It remains to be seen whether RBF will ultimately succeed, given Justice Halley’s comments that the prima facie case was not strong, and in light of Henkel’s cross-claim relating to non-use of the Trade Marks. At the very least, RBF has succeeded in disrupting (even temporarily) its competitor’s entry into the Australian market.

Lavan comment

There are many risks in launching a new brand or product in a market. A competitor may seek to protect its market share and take all available steps in order to disrupt a product launch. There are various ways for businesses to check for potential infringement issues prior to launch, including by carefully reviewing the Australian trade mark register. Although this matter is still to be determined, Henkel has suffered great inconvenience and loss in having its launch delayed.

This case also demonstrates the power granted by trade mark registrations. Even if a competitor’s brand is not identical to your own, you may rely on your registered rights to attack any brand deemed deceptively similar.

Further, whether a sign is a “trade mark” is a question that is open to interpretation. Even though Henkel used its brand “Somat” as a trade mark, this did not prevent the Court from determining (on an interim basis) that the visual depiction of the product was also a trade mark.

If you require advice in relation to your brand and marketing materials, please do not hesitate to contact Iain Freeman or Andrew Sutton.