RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2021] FCA 1094
The ongoing case involving the FINISH Powerball trade mark demonstrates the ramifications of a business not being aware of their competitor’s brands and reputation, prior to launching their own brands and products in Australia.
The owner of the FINISH Powerball trade marks and logo (pictured above) has successfully obtained an interim injunction against Henkel Australia – restraining Henkel from selling dishwashing products using the following representation:
The interim injunction is intended to grant “interim relief” to a trade mark owner (in this case, RB) who has commenced infringement proceedings. The Court aims to preserve the “status quo” (the state of affairs at the time infringement proceedings were commenced) until the infringement proceedings are decided, whilst also considering the balance of convenience to the parties involved. The Court also considers the actual strength of the infringement case in weighing all of this up.
Essentially, the Court has to decide which is greater – the inconvenience to the trade mark owner of not obtaining the injunction, as compared to the inconvenience to the alleged infringer if the injunction is granted.
Reputation in the Finish Brand
Reckitt Benckiser (RB) successfully argued the following:
• Finish’s reputation in Australia is undeniably linked to the Powerball logo marks, and RB has invested millions of dollars in the promotion of this branding for over 20 years;
• Henkel would have anticipated the risk of an injunction, as they had consciously marketed their product to benefit from the reputation of the FINISH trade marks;
• The reputation of FINISH would be devalued if Henkel was allowed to continue to sell their products with the allegedly infringing SOMAT logo.
In response, Henkel minimized the anticipated loss of reputation for the FINISH brand, and argued their inconvenience would be far greater than RB’s, should the injunction be granted.
Decision to grant interim injunction
The Judge was satisfied the balance of convenience strongly favoured the granting of the injunction to restore the status quo, whilst the parties await the outcomes of the infringement proceedings, which may not be determined for months.
As part of the injunction in this case, Henkel is restrained from using the SOMAT logo or any other mark deceptively similar to the Powerball marks in its marketing and packaging – which will lead to immense waste of expenditure such as launch costs, changing packaging, changing marketing materials and more. The injunction will remain in effect until the Federal Court hands down its final decision in the trade mark infringement case.
Key Takeaway
Brand owners and businesses looking to take their products to market in other countries (or in this case, into Australia) need to be mindful of their competitor’s brands and reputation prior to launch. Due diligence searches are paramount to the process of launching a new product or brand in Australia.
To discuss your trade mark protection options, please contact one of our specialist trade marks attorneys mail@mbip.com.au.
