The Federal Court has recently published its decision following the first instance trial on the merits in the ongoing stoush between Reckitt Benckiser (RB) (manufacturer of FINISH dishwasher products) and Henkel (manufacturer of SOMAT dishwasher products).

In September 2021, RB was successful in obtaining an urgent interim injunction against Henkel, restraining the launch of Henkel's 'Somat Excellence 4 in 1' dishwasher gel capsules, based on a prima facie case of trade mark infringement. We previously reported on this decision of Justice Halley here.

Despite this initial victory, following detailed consideration of the issues and evidence (including additional expert evidence) in a full trial on the merits, Justice Rofe has found in Henkel's favour. Significantly, RB not only failed to persuade Justice Rofe that Henkel had infringed two trade marks relating to the appearance of Finish 'Powerball' capsules or engaged in misleading and deceptive conduct or passing off, but her Honour also held that RB had failed to use its own marks as trade marks in the relevant non-use period, and determined that RB's marks should be removed from the register.

This decision has important lessons for brand owners seeking to protect and enforce 'secondary' or subsidiary branding elements, namely:

  1. the need to ensure that subsidiary branding elements are used consistently and prominently across the life of the trade mark registration;
  2. the need to use subsidiary branding elements to designate trade origin independently of the main brand; and
  3. the difficulties that brand owners can face in enforcing trade marks that could be said to perform a functional role, such as depicting product appearance, particularly in the context of 'low involvement' consumer products where the brand name can be considered the primary differentiator for the consumer. In this context, additional and deliberate effort may be required to ensure the use of a subsidiary mark follows principles (1) and (2) above.

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