Beecham Group Plc v Colgate-Palmolive Pty Ltd

FEDERAL COURT OF AUSTRALIA

Beecham Group PLC v Colgate-Palmolive Pty Ltd [2004] FCA 1482

INTELLECTUAL PROPERTY – trade marks – infringement – leave to appeal from interlocutory decision to grant an injunction – sufficient doubt – factual errors did not affect the conclusions of the trial judge

Trade Marks Act1995 (Cth)

Décor Corp Pty Ltd v Dart Industries (1991) 33 FCR 397
Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242

BEECHAM GROUP PLC AND GLAXOSMITHKLINE AUSTRALIA PTY LTD (ABN 47 100 162 481) v COLGATE-PALMOLIVE PTY LIMITED (ABN 79 002 792 163)

NSD 1425 OF 2004

BENNETT J
29 OCTOBER 2004
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD1425 OF 2004

BETWEEN:

BEECHAM GROUP PLC
FIRST APPLICANT

GLAXOSMITHKLINE AUSTRALIA PTY LTD
(ABN 47 100 162 481)
SECOND APPLICANT

AND:

COLGATE-PALMOLIVE PTY LIMITED
(ABN 79 002 792 163)
RESPONDENT

JUDGE:

BENNETT J

DATE OF ORDER:

29 OCTOBER 2004

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

The application for leave to appeal be refused.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD1425 OF 2004

BETWEEN:

BEECHAM GROUP PLC
FIRST APPLICANT

GLAXOSMITHKLINE AUSTRALIA PTY LTD
(ABN 47 100 162 481)
SECOND APPLICANT

AND:

COLGATE-PALMOLIVE PTY LIMITED
(ABN 79 002 792 163)
RESPONDENT

JUDGE:	BENNETT J
DATE:	29 OCTOBER 2004
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. This is an application for leave to appeal against a decision of Tamberlin J whereby his Honour made interlocutory orders on the application of the applicants in respect of the alleged infringement by the respondent (‘Colgate’) of the trade mark MACLEANS.  I heard this matter as duty judge.  I gave my decision, that the application for leave to appeal be dismissed, with reasons to be given later.  These are the reasons.

2. The subject matter of the dispute is Colgate’s use of the word MAXCLEAN on the packaging of toothbrushes.  The word appears next to the Colgate trade mark. 

3. There is no dispute as to the principles which guide the Court in determining when to grant or refuse leave to appeal from an interlocutory order as enunciated in Décor Corp Pty Ltd v Dart Industries (1991) 33 FCR 397 at 398 and 400:

   ·     Whether in all the circumstances the decision is attended with sufficient doubt to warrant it being reconsidered by the appellate court; and

   ·     Whether substantial injustice would result if leave were refused, supposing the decision to be wrong.

   The parties agreed that there was no disentitling delay on the part of the applicants.

4. As to whether there was a serious question to be tried, his Honour considered two issues: 

   ·     Whether MAXCLEAN is used as a trade mark

   ·     Whether MAXCLEAN is deceptively similar to MACLEANS

   Whether MAXCLEAN is used as a trade mark

5. Tamberlin J referred to s 120 of the Trade Marks Act1995 (Cth) and noted at [8] that the first…