RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (No 2) [2024] FCAFC 92

RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (No 2) [2024] FCAFC 92

Henkel's application to reduce its liability for the appeal costs from 80% to 50% was dismissed because RB was successful in establishing appealable error in the primary judge's conclusion that the 914 mark and the 311 mark should each be removed from the Trade Marks Register, which was substantially the contest on appeal, and RB also succeeded on the ACL Biodegradability claim. Although RB did not succeed on all arguments, including infringement, the Court maintained the view that Henkel should pay 80% of the costs of the appeal.

Jurisdiction
Australia
Judgment Date
11 July 2024
Procedural Posture
Appeal; Application for Variation to Costs Orders / Full Court Determination on the Papers of the Respondent's Application to Vary Order 4 of the Orders Dated 16 February 2024 and Making Further Orders
Outcome
The respondent's application to vary order 4 of the orders dated 16 February 2024 was dismissed with costs; further agreed orders were made.
Legal Topics
['variation of Costs Orders' 'apportionment of Appeal Costs' 'trade Mark Infringement' 'trade Mark Validity Challenge' 'removal From the Trade Marks Register' 'certificate Under S 105 of the Trade Marks Act 1995 (cth)' 'acl Biodegradability Claim']
['intellectual Property' 'trade Marks' 'costs' 'australian Consumer Law'] ['variation of Costs Orders' 'apportionment of Appeal Costs' 'trade Mark Infringement' 'trade Mark Validity Challenge' 'removal From the Trade Marks Register' 'certificate Under S 105 of the Trade Marks Act 1995 (cth)' 'acl Biodegradability Claim']

Case Brief

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Procedural Posture

Appeal; Application for Variation to Costs Orders / Full Court Determination on the Papers of the Respondent's Application to Vary Order 4 of the Orders Dated 16 February 2024 and Making Further Orders

Legal Issues

  1. 1 ["Whether the respondent's costs liability for the appeal should be reduced from 80% to 50%." "Whether the appellants' failure to establish trade mark infringement at trial and on appeal justified varying the appeal costs order." "Whether the appellants' success in establishing appealable error on removal of the 914 mark and the 311 mark from the Trade Marks Register, and success on the ACL Biodegradability claim, supported the existing costs apportionment."]

Ratio Decidendi

Henkel's application to reduce its liability for the appeal costs from 80% to 50% was dismissed because RB was successful in establishing appealable error in the primary judge's conclusion that the 914 mark and the 311 mark should each be removed from the Trade Marks Register, which was substantially the contest on appeal, and RB also succeeded on the ACL Biodegradability claim. Although RB did not succeed on all arguments, including infringement, the Court maintained the view that Henkel should pay 80% of the costs of the appeal.

Court Disposition

The respondent's application to vary order 4 of the orders dated 16 February 2024 was dismissed with costs; further agreed orders were made.

Orders

  • ['Orders 1 and 2 of the primary judge made on 3 October 2022 be set aside.' 'The Amended Cross-Claim be dismissed.' 'Pursuant to s 105 of the Trade Marks Act 1995 (Cth), the Court certifies that Australian Trade Mark No 1008914 was used in good faith in Australia by the Second Appellant during the three year period...