Using or losing a trade mark 4 min read
The recent Federal Court case of RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd canvasses a number of trade mark-related issues. In this Insight, we focus on a particularly interesting aspect of the decision – whether the applicant could establish that it had used registered marks 'as trade marks' to defend an application for removal of those marks from the register for non-use.
Key takeaways
- RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042 demonstrates how difficult it can be to protect and enforce trade mark rights (especially in respect of shape marks) where they are used together with other trade marks or trade indicia.
- In particular, it can be hard to demonstrate that a trade mark has been 'used as a trade mark' where the mark is typically surrounded by other marks that provide strong brand cues.
- Businesses should consider the design of packaging and advertising in light of this decision and seek expert advice as needed.
Who in your organisation needs to know about this?
Trade mark attorneys; in-house counsel; marketing teams.
So, what happened in the case?
This case concerned a trade mark dispute between RB (Hygiene Home) Australia Pty Ltd (RB) and Henkel Australia Pty Ltd (Henkel).
RB sells FINISH dishwashing tablets and FINISH Gelcaps in Australia, and is the authorised user of the following registered trade marks.
| 1 | |
 |
(the 914 Mark, a colour and shape mark registered for goods in class 1 and 3) |
| 2 | |
 |
(the 311 Mark, a figurative mark registered in relation to goods in class 3) |
Henkel was proposing to launch its SOMAT Excellence Gelcap in Australia under the following logo.
RB argued that Henkel's use of this logo constituted trade mark infringement. Henkel brought a cross-claim, seeking removal of RB's marks from the Trade Mark Register on the grounds they had not been used 'as trade marks'. This led to a fascinating discussion of how RB had used the relevant marks.
Did RB use its registered marks as trade marks?
The 914 Mark
In relation to the 914 Mark, RB provided a series of examples it claimed demonstrated use of its colour and shape mark.
Interestingly, RB did not argue that the FINISH Gelcap product itself (as shown below) constituted use of the mark.
Rather, it relied on various depictions of the product in advertising and on product packaging, which it claimed constituted use of the 914 Mark without substantial alteration affecting its identity.
While the court held that certain of these depictions were not sufficiently similar to the 914 Mark to constitute use of that mark, it was prepared to accept that depictions of its 'Quantum Ultimate Product' (examples of which are below) were capable of supporting use as a trade mark.
 |
 |
|
The question therefore became whether these depictions constituted use of the 914 Mark as a trade mark. Crucially, the court found that these depictions did not. Rather, the function of designating trade origin was performed by the other trade marks present, such as the 'FINISH' branding and 'FINISH POWERBALL' logo. In each example, the image of the Quantum Ultimate product was merely used for the purpose of depicting the product, and so it was not actually functioning as a trade mark.
The 311 Mark
Separately, in relation to the 311 Mark, RB sought to rely on the 'FINISH POWERBALL' logo, shown below, to demonstrate that it had used the 311 Mark as a trade mark. In particular, it cited the use of the Powerball atop the 'i' within the logo.
However, the court was not prepared to accept that this constituted use of the 311 Mark, and observed that there was no evidence of any other use of the mark.
Ultimately, this meant that, because RB had not used the 914 Mark or the 311 Marks as trade marks, the cross-claim was successful and they were removed from the Register.
This finding demonstrates the difficulties that can arise in seeking to protect, and enforce rights in respect of, trade marks (and, in particular, shape marks) in Australia, where the marks are used in conjunction with other trade marks or branding. However, it is worth noting that trade mark owners attempting to enforce shape marks have had greater luck overseas (see eg our Insight on the recent decision of the Federal Supreme Court of Switzerland regarding the Lindt 'bunny').
Actions you can take now
- Carefully consider how your business uses its trade marks, including on packaging and in advertising, particularly where multiple trade marks are used at once.
- Seek expert advice to ensure you adequately use and protect your trade marks.