The owners of the Finish, and the Powerball brand of dishwashing capsules, recently challenged the proposed branding for Henkel’s range of detergent products ‘SOMAT Excellence Gelcaps’. The owners of SOMAT countered with a claim of non—use in relation to two of of the ‘Finish’ marks.

The court took the opportunity to elaborate on the types of use which can be viewed as constituting ‘use as a trade mark’ with a focus on shape marks, as well as when alterations will impact the ‘substantial identity' of a mark.

The court acknowledged the difficulties presented in determining whether there has been use as a trade mark where shape marks, and other non-standard trade marks, are concerned, noting that ‘there are likely to be complexities in the analysis arising from that fact because the distinction between the product itself and the trade mark may become difficult to discern’.

Altering your trade mark - how much change is too much?

In order for an altered version of a mark to be acceptable use of the original, registered version the two marks must be capable of being seen as ‘substantially identical’.

What emerged from the judgement of the Federal Court is that, upon challenge, any changes to a registered mark must be negligible to avoid altering the substantial identity of the mark. Changes which breach the limits of substantial identity will not constitute valid use of the existing registration.

The graphic representation in Finish’s shape mark registration shows the Powerball snuggly contained within the the rectangular tablet.

In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd the court assessed the alterations made to the ‘WICKED’ brand’s trade mark. The logos below were considered too distinct in order for the latter to constitute use of the registered mark.


In GJ Gallo and Lion Nathan the issue of further embellishment of registered marks was looked at through the lens of acceptable use. In the case the wine brand ‘BAREFOOT’ held the rights to the word ‘BAREFOOT’ and had decorated the brand with the addition of a footprint motif.

Regarding the footprint device as ‘an illustration of the word’ the court determined that the substantial identity of the mark had not been eroded by this additional element.

Whether additions which are not mere illustrations of the word mark would be acceptable remains to be resolved on a case-by-case basis, however it is possible that a highly stylised device mark may be precluded from being considered use of a word trade mark.

In some cases it may be acceptable to remove a descriptive portion of a mark. For example in PB Foods Ltd v Malanda Dairy Foods Ltd , the Federal Court held that leaving out the word ‘CHOC’ from the registered mark ‘CHOC CHILL’ was acceptable use of the mark in relation to flavoured milk, since the word ‘CHOC’ in this context is purely descriptive.



In the current case much was made of the ‘exploded’ Powerball image used on the packaging of the Finish dishwasher tablets. In the packaging evidence provided by Finish the red Powerball is shown detached and floating separately above the blue and white tablet.

The judgement highlighted the discrepancy between the endorsement and the depiction of the shape mark and the actual use on the packaging ’in both the endorsement and the depiction, the red element is wholly connected with the capsule, either flush with the surface in the case of the depiction, or embedded within the capsule’.

Take-away for brand owners:

If you use another version of your trade mark you should ensure that the new version is ‘substantially identical’ to the registered version. If you are unsure you should consult a professional for an opinion and consider registration of the most recent design.

Perhaps most novel was the discussion around the context in which a mark is presented. The presence of other devices and imagery on packaging and marketing materials will, in some instances, undermine the use of the brand’s registered marks, particularly where the other depictions stand out as indicators of the origin more so than the mark that an owner is claiming.

Take-away for brand owners: Ensure that your packaging design does not feature other marks or indica prominently enough that they might be taken as the badge of origin over the trade mark you seek to use to identify your brand by.

What if the product itself is peeping through the packaging? 


In answering Finish’s claim that displaying the actual product, which has been registered as shape mark, through a transparent window in the packaging constitutes use as a trade mark, the answer was a resounding ‘no, of course not’.

Needless to say, Finish have now put the Powerball back where it belongs, safely nestled inside the tablet and within the parameters of acceptable trade mark use.

[1] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 [69]

[1][1] RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 [135]

The Finish Powerball case offers crucial lessons for brand owners on proper trade mark use. Learn about maintaining substantial identity, acceptable alterations, and protecting your brand's trade marks.

Protecting Your Brand: Trade Mark Use Tips from the Finish Powerball Judgement 

Tesla, the poster child of innovation, doesn't always play by traditional intellectual property (IP) rules.  While many businesses cling tightly to patents, Tesla famously 

pledged a vast portion of its patent portfolio to "open-source" use in 2014

.  Does this mean patents are irrelevant in the modern tech landscape?  Absolutely not.  Let's unpack Tesla's strategic moves and what they might teach us about leveraging IP.

In its formative years, Tesla relied on patents as most young companies do.   They focused on securing core technologies essential to their electric vehicle (EV) development.  

This defensive approach was likely aimed at preventing well-established automakers from easily replicating their innovations

Tesla's 2014 open-source pledge came with a crucial caveat:  

they would only defend their patents against those acting in bad faith

. This move could be seen as a calculated risk with several potential benefits:

Accelerating the Industry: By sharing technology, 

Tesla aimed to speed up the entire EV ecosystem's growth, ultimately expanding their potential market

Open-source positions Tesla as a forward-thinking innovator, appealing to top engineers

Reducing Litigation: The pledge may have been a way to preemptively lessen patent battles down the line.

It's crucial to note that Tesla hasn't stopped innovating or seeking new patents.  Since the pledge, their focus has shifted to areas like:

AI-Driven Software: A key element in their self-driving technology ambitions.


Process patents can offer control over scaling and supply chains.

Beyond EVs: Patents in energy storage and robotics signal other areas of growth for the company.

While the Cybertruck window incident was a temporary setback, Tesla's recent 

demonstrates their use of IP to regain market confidence. This signals a nuanced approach, balancing open-source with robust protection for key innovations. The potential applications for bulletproof-level automotive glass could disrupt industry standards producing military grade consumer vehicles in the category of the HumVee.

Despite the open-source pledge, Tesla hasn't shied away from lawsuits entirely.  A closer look reveals they've taken action 

against companies they believe were misusing their technology or failing to meet the "good faith" standard of their pledge

. This shows that open-source doesn't negate the need for selective IP enforcement..

Tesla offers a fascinating case study in IP strategy, but they shouldn't be blindly copied. The patent attorneys at Baxter IP can help you craft an intellectual property strategy that gives you the right balance of protection and strategic advantage.

Explore Tesla's innovative patent strategy in this insightful blog. Discover how Tesla's open-source pledge and focus on patents in high-tech sectors like AI and manufacturing are reshaping the electric vehicle industry, attracting top talent, and fostering rapid innovation. Dive into the future of intellectual property with Tesla's game-changing approach.

Tesla's Unconventional Patent Strategy

The “Raising the Bar Bill”, introduced on 22 June 2011, attempts to support innovation in Australia. One aspect, addressed by Schedule 3 of the Bill, seeks to reduce the abuse drawing out patent applications by filing a ‘daisy chain’ of divisional applications.

Specifically, it is currently possible to file a divisional application up until the date of grant of a patent. If the divisional claims matter outside the scope of the accepted claims of the parent, the divisional application must be filed within three months of advertisement of acceptance of the parent application.

Furthermore, it is currently possible to convert any application into a divisional application of an earlier filed application if the application could have been filed as a divisional application at the time of filing.

Conversely, the Bill changes the deadline for filing divisional applications or for converting applications to divisional applications to three months from the date of advertisement of acceptance of the parent application.

As such it is important to remember that under the new provisions it will no longer be possible to file divisional applications during opposition proceedings, for example to overcome the requirement for inventive step by filing a divisional innovation patent application. Furthermore, there will be less scope to convert an application into a divisional in the face of a novelty objection in respect of an earlier filed application by the same Applicant.

The "Raising the Bar Bill" in Australia aims to combat the abuse of patent applications through stricter rules on filing divisional applications and conversion deadlines, impacting innovation and opposition proceedings.

Don’t be clotheslined by the "Raising the Bar" Bill when filing divisional applications

Related Articles

Innovate Boldly. Protect Strategically.