Henkel Australia Pty Ltd Clears Dishwashing Tablet Trademarks | Tech Reddy

All washed up: Henkel Australia Pty Ltd (Henkel) successfully removed two dishwashing tablet trademarks owned by Reckitt Benckiser Finish BV (Reckitt) from the registry.

In a recent Federal Court decision RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042, Rofe J simultaneously set aside an interim injunction against Henkel and declared that two trade marks for dishwashing tablets owned by Reckitt should be struck off the register for non-use.

Key recommendations for brand owners

1. Carefully review the packaging design to determine which aspects are being used as trademarks before registering, especially if you are operating in a crowded market space. Additional branding elements may not work as trademarks, especially if used close to the main brand name. A trademark identifies products and distinguishes them from those of other merchants. If you are unsure whether an item is trademarkable, please seek professional advice.

2. Use trademarks consistently over time and across product lines. If the branding has been updated or modernized, register new trademarks for the updated branding. A trademark protects a mark as registered, not as used, and significant changes can make your trademark vulnerable to non-applications.

3. Consider registering a shape or other type of trademark to protect brand elements beyond a simple logo.

4. If the trademarks are owned by an entity separate from the user in a corporate structure, ensure that appropriate licensing agreements are in place and that the level of “control” over branding is maintained by the owner with a specified “unity of purpose”. between entities.

Key decisions at the legal level

1. The degree of consumer “involvement” in product selection is an important factor in determining the likelihood of confusion. Consumers were considered to have a “low” level of preference for dishwashing tablets, compared to a “high” level of preference for items such as appliances or clothing.

2. Litigation can be beneficial, but the factors considered at the interim stage are not the same as at trial. This story reminds us that temporary success does not guarantee ultimate success.

Background

Reckitt RB (Hygiene Home) Australia Pty Ltd is the owner of the trademarks relating to the FINISH brand of dishwashing products.RB) for use in Australia. The FINISH range is well established in Australia, first sold in Australia in 1964 and claiming around 63% of the market.

Henkel plans to enter the Australian dishwasher market in August 2021 with SOMAT Excellence Gel Caps.SE Gelcaps). Below is a comparison of Reckitt’s trademarks and the proposed logo to promote SE Gelcaps:

Trademark of Reckitt
TM Number: 1008914 (Tablet Mark)

Trademark of Reckitt
TM Number: 1211311 (Explosion Mark)

SE Gelcaps Recommended logo (SE Logo)

Reckitt and RB filed suit against Henkel, alleging that its actual and proposed use of SE Gelcaps constituted trademark infringement, misleading and deceptive conduct, and passing off. Henkel filed a cross-claim to deregister the Reckitt marks, which were not used as trademarks.

In the end, the court found for Henkel on nearly all points in dispute.

Were the RB marks used “as trademarks”?

Tablet icon
Henkel argued that the Tablet Mark should be removed because the product descriptions used by RB were not substantially similar to the Tablet Mark or, if the images were substantially similar, then each was not used as a trademark.

Reckitt relied on the following contemporaneous illustrations as evidence of use of the tablet mark:

Qantum device

Quantum Ultimate Device

TV picture

Image by Amazon

Images of the Quantum Device and Quantum Ultimate Device were used on the front of the FINISH product packaging. TV Image is featured in television commercials and where Amazon Image Quantum Ultimate is sold on Amazon’s online store. The court found that only the TV image and the Amazon image were nearly identical to the Tablet mark, but neither were used as trademarks. The TV image was only shown “time” during the TV commercials, while the Amazon image was only shown to the consumer after they searched for the “FINISH” products. The court held that the marks merely describe the product and not as a badge of origin.

Interestingly, Reckitt did not provide evidence that the tablet products themselves constituted use of the Tablet mark, despite describing a type of consumer who sought to supplement existing FINISH tablets at home but could not recall the name as “forgetful shoppers”. END UP… [but who can] Remember what the product looks like when putting it in the dishwasher, as they hold the product itself. Expert evidence differed on whether the Reckitt Marks functioned effectively as a defining feature of the brand and whether this would lead a “forgetful” consumer to find the FINISH capsule product among others on display in a supermarket.

exploding sign
RB relied on the use of the explosion symbol as a component of the FINISH brand logo, pictured below:

The court held that the combination of the FINISH brand logo does not give the impression of several distinct trademarks. The trademark in use was the entire FINISH brand logo, so use of the logo does not constitute trademark use of the explosion mark.

claim of infringement

Determining a violation involves two steps:

(a) whether Henkel’s use of the SE logo constitutes “trademark use”; the and
(b) To consider whether the Reckitt Marks and the SE logo are deceptively similar.

The court affirmed that “context is critical” in determining whether an infringing mark is used as a trademark. This includes considering the use of the mark in relation to other components of the package and the environment in which consumers will encounter it. The court found that dishwashing capsules are a “low-attraction” product, where the consumer seeks to make a quick decision based on as few visual cues as possible among “dizzying” products. The Court held that in this context the product’s brand name is the most prominent feature, so consumers cannot assume that the SE Gelcap and FINISH products share a common source.

The court also found that even if the SE logo was being used as a trademark, it was not deceptively similar to the Reckitt Marks. The relevant comparison was between the SE logo and Reckitt’s registered marks, not the packaging used. Reckitt’s proposals focused on the circular red shape in the center of the stylized product image as a point of commonality between the SE logo and the Tablet mark, and largely ignored the rest of the logo. The court found the white, red and blue sections with a circular red shape in the center to be features common to both, but overall the Reckitt Marks and SE logo created quite different impressions.

Claim of authorized use

Henkel contends that if it were to believe that RB’s marks were used, the evidence did not establish that Reckitt controlled RB’s use of the mark, and therefore RB was not an “authorized user.” However, the Court held that a permissible use could be inferred given the commonality of directors proving “unity of purpose.”

Where from here?

The Court also found that the Applicants were subject to passing, misleading and deceptive conduct cases, and Reckitt declined to exercise its discretion to allow the Marks to remain on the Register.
An appeal has been filed and we may comment on the full court decision next year.
Meanwhile, Reckitt has applied to register the following trademarks in Australia, claiming Class 3 “automatic dishwasher tablets”:

Trademark number 2238310

Trademark number 2238311

(New characters)

Both new Marks are accepted by IP Australia and Henkel AG & Co. was opposed by the KGaA. This trademark dispute may now be waged on several fronts, but it certainly looks like Reckitt isn’t done yet.