RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042

RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042

Applicants failed to show use of 914 or 311 Mark as trade marks during the relevant period; no trade mark infringement by Henkel as the SE Logo is not used as a trade mark and is not deceptively similar to the registered marks. Alternatively, even if the SE Logo constituted trade mark use and was deceptively similar, its use falls within the good faith/product description defence in s 122(1)(b) TMA. No passing off or misleading/deceptive conduct established due to lack of relevant reputation in the indicia, and low likelihood of confusion among ordinary reasonable consumers. The registered marks are to be removed for non-use.

Jurisdiction
Australia
Judgment Date
06 September 2022
Procedural Posture
Federal Court Intellectual Property Proceeding (trade Marks and Consumer Law) With Cross Claim for Removal of Marks for Non Use / Trial Judgment
Outcome
Applicants' claims dismissed; Cross-claim for removal of 914 and 311 Marks succeeds; Court will hear parties on final orders.
Legal Topics
['trade Mark Infringement' 'non Use Removal of Trade Marks' 'passing Off' 'misleading and Deceptive Conduct']
['intellectual Property' 'consumer Law'] ['trade Mark Infringement' 'non Use Removal of Trade Marks' 'passing Off' 'misleading and Deceptive Conduct']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Federal Court Intellectual Property Proceeding (trade Marks and Consumer Law) With Cross Claim for Removal of Marks for Non Use / Trial Judgment

Legal Issues

  1. 1 ['Whether respondent infringed registered trade marks under s 120 of the Trade Marks Act 1995 (Cth)' 'Whether respondent used stylised depiction of its SOMAT product as a trade mark' "Whether the respondent's device was deceptively similar to applicants' marks" "Whether respondent's use was in good faith to indicate quality or characteristic of goods (s 122 Trade Marks Act)" "Whether the applicants' marks should be removed for non-use under s 92 TMA" 'Whether there was passing off or misleading and deceptive conduct under ACL']

Ratio Decidendi

Applicants failed to show use of 914 or 311 Mark as trade marks during the relevant period; no trade mark infringement by Henkel as the SE Logo is not used as a trade mark and is not deceptively similar to the registered marks. Alternatively, even if the SE Logo constituted trade mark use and was deceptively similar, its use falls within the good faith/product description defence in s 122(1)(b) TMA. No passing off or misleading/deceptive conduct established due to lack of relevant reputation in the indicia, and low likelihood of confusion among ordinary reasonable consumers. The registered marks are to be removed for non-use.

Court Disposition

Applicants' claims dismissed; Cross-claim for removal of 914 and 311 Marks succeeds; Court will hear parties on final orders.

Orders

  • ['The parties confer and, within 14 days, submit to the court an agreed minute of orders to give effect to these reasons.' 'Failing agreement, each party provide their proposed minute of orders in the same period.']