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.
Use 'as a trade 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.
Unacceptable alterations
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.
Adding to your 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.
Removing parts of registered 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.
Which mark is the trade mark?
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] [1999] FCA 1602
[1][1] RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 [135]
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