RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 03 September 2021
• Neutral Citation: [2021] FCA 1094
• Court: Federal Court
• Date: 03 September 2021

Federal Court of Australia

RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2021] FCA 1094

File number:	NSD 823 of 2021
Judgment of:	HALLEY J
Date of judgment:	3 September 2021
Date of publication of reasons:	10 September 2021
Catchwords:	TRADE MARKS – application for interim injunction restraining alleged trade mark infringement – whether applicants have established a prima facie case – use as a trade mark – deceptive similarity – cross-claim alleging non-use – balance of convenience – whether interlocutory relief decisive in resolution of dispute – justification for preservation of the status quo – reputation and goodwill of established incumbent compared to new entrant – assessment and recovery of damages – relevance of impact on competition – interim injunction granted
Legislation:	Trade Marks Act 1995 (Cth) ss 7, 10, 17, 20, 120
Cases cited:	Anheuser-Busch, Inc v Budĕjovický Budvar, Národní Podnik (2002) 56 IPR 182; [2002] FCA 390 Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57; [2006] HCA 46 Australian Woollen Mills Limited v F. S. Walton and Company Limited (1937) 58 CLR 641; [1937] HCA 51 Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618; [1968] HCA 1 Beecham Group PLC v Colgate-Palmolive Pty Ltd (2004) 64 IPR 45; [2004] FCA 1335 Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254; [2005] FCA 838 Bullock v The Federated Furnishing Trades Society of Australasia (No 1) (1985) 5 FCR 464; [1985] FCA 48 Christodoulou v Disney Enterprises Inc (2005) 156 FCR 344; [2005] FCA 1401 GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited (2013) 305 ALR 363; [2013] FCAFC 102 Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326; [1991] FCA 402 Levi Strauss & Co v Kimbyr Investments Ltd (1993) 28 IPR 249; [1994] NZLR 332 Martin & Pleasance Pty Ltd v A Nelson & Co Ltd [2021] FCAFC 80 Midas Australia Pty Ltd v Ravecroft Pty Ltd [2004] FCA 771 Mishawaka Rubber & Woollen Manufacturing Co v S S Kresge Co (1942) 316 US 203 Optical 88 Limited v Optical 88 Pty Limited (No 2) (2010) 275 ALR 526; [2010] FCA 1380 Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293; [2006] FCA 1431 Parfums Christian Dior (Australia) Pty Ltd v Dimmey’s Stores Pty Ltd (1997) 39 IPR 349; [1997] FCA 1232 PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 Plimpton v Spiller [1876] 4 Ch D 286 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 Samsung Electronics Company Ltd v Apple Inc (2011) 217 FCR 238; [2011] FCAFC 156 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407; [1963] HCA 66 Warner-Lambert Company LLC v Apotex Pty Ltd (2014) 311 ALR 632; [2014] FCAFC 59
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	114
Date of hearing:	2-3 September 2021
Counsel for the Applicants / Cross-Respondent:	Mr M Hall SC with Mr G Tsang
Solicitor for the Applicants / Cross-Respondent:	Thomson Geer
Counsel for the Respondent / Cross-Claimant:	Mr E Heerey QC with Ms F St John
Solicitor for the Respondent / Cross-Claimant:	Ashurst Australia

ORDERS

		NSD 823 of 2021
BETWEEN:	RB (HYGIENE HOME) AUSTRALIA PTY LTD ACN 629 549 506 First Applicant ; RECKITT BENCKISER FINISH B.V. Second Applicant
AND:	HENKEL AUSTRALIA PTY LTD ACN 0001 302 996 Respondent
AND BETWEEN:	HENKEL AUSTRALIA PTY LTD ACN 0001 302 996 Cross-Claimant
AND:	RECKITT BENCKISER FINISH B.V. Cross-Respondent

order made by:	HALLEY J
DATE OF ORDER:	3 september 2021

THE COURT NOTES THAT:

1. The applicants by their counsel give to the court the following undertaking jointly and severally:

   1. to submit to such order (if any) as the court may consider to be just for the payment of compensation, to be assessed by the court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order set out below (with or without variation) thereof;

   2. to pay the compensation referred to in (a) above to the person there referred to; and

   3. to take the earliest possible date for the final hearing of these proceedings.

THE COURT ORDERS THAT:

2. Until the determination of these proceeding between the applicants and the respondent or further order of a judge of the court, the respondent, whether by itself, its directors, employees or agents, is restrained from offering for sale (except to the extent that having taken all reasonable steps, the respondent is not able to cancel advertisements that had been placed with third parties prior to the making of these orders) or selling dishwashing products under or by reference to:

   1. the trade mark, a visual image of which is annexed to these orders and marked “A” or any other trade mark substantially similar to that mark; and

   2. registered Australian trade marks 1008914 and/or 1211311 or under or by reference to any trade mark substantially identical or deceptively similar to either of those marks.

3. The costs of and incidental to the interlocutory hearing on 2 September 2021 be the applicants’ costs in the proceeding.

4. Order 3 hereof be suspended for a period of 21 days.

5. Any party wishing to apply for a costs order different to order 3 above may file and serve a written submission (limited to 3 pages in length) within 7 days.

6. Any party wishing to reply to any such written submission is to file and serve a written submission in reply (limited to 2 pages in length) within 14 days.

7. The balance of the proceeding be referred to the National Operations Registrar for allocation to a docket judge and be listed for further case management on a date to be fixed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ANNEXURE A

REASONS FOR JUDGMENT

HALLEY J:

1. By an originating application dated 12 August 2021 the applicants, RB (Hygiene Home) Australia Pty Ltd (RB) and Reckitt Benckiser Finish...