Beecham Group Plc v Colgate-Palmolive Pty Ltd - [2004] FCA 1335

FEDERAL COURT OF AUSTRALIA
Beecham Group PLC v Colgate-Palmolive Pty Ltd [2004] FCA 1335
INTELLECTUAL PROPERTY - Trademarks - Infringement - Interlocutory Injunction - Application to restrain respondent from using a mark resembling the applicants' registered trade marks - Applicants proprietors of MACLEANS trade marks - Respondents marketing "Colgate MAXCLEAN" power toothbrush - Serious question to be tried - "MAXCLEAN" deceptively similar to "MACLEANS" - Similarities such that consumers likely to have reasonable doubt as to whether the two products come from the same source - Substantial visual and aural similarity - Balance of convenience - Principle damage dilution of applicants' trade marks - Use of name damaging applicants' reputation and goodwill - Damages an inadequate remedy - Respondent aware of the similarity between "MAXCLEAN" and the MACLEANS marks - Interlocutory injunction granted - (CTH) Trade Marks Act 1955 s 120
Trade Marks Act 1995 (Cth) s120
Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 approved
Mark Foys Limited v Davies Coop & Co Limited (Tub Happy Case) (1956) 95 CLR 190 approved
Shell Co of Australia Limited v Esso Standard Oil (1963) 109 CLR 407 approved
Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 31 IPR 375 cited
Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 approved
Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89 referred to
Polaroid Corporation v Sole N Pty Limited [1981] 1 NSWLR 491 approved
British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54 approved
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 approved
Aristoc Limited v Rysta Limited [1945] AC 68 discussed
Castlemaine Tooheys Limited v South Australia (1986) 161 CLR 148 cited
Patrick Stevedores Operations No 2 Pty Limited v Maritime Union of Australia (No 3) (1998) 195 CLR 1 cited
Australian Guarantee Corp Limited v Sydney Guarantee Corp Limited (1951) 51 SRNSW 166 applied
Telmark Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1988) 84 ALR 437 applied
Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451 cited
Parfums Christian Dior (Australia) Pty Limited v Dimmey’s Stores Pty Ltd (1997) 39 IPR 349 referred to
Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618 referred to
Tidy Tea Limited & Lyons Tetley Limited v Unilever Australia Limited (1995) 32 IPR 405 referred to
Plimpton v Spiller [1876] 4 Ch D 286 approved
BEECHAM GROUP PLC AND GLAXOSMITHKLINE AUSTRALIA PTY LTD v COLGATE-PALMOLIVE PTY LTD
NSD1425 OF 2004
TAMBERLIN J
SYDNEY
15 OCTOBER 2004

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 LTD
ABN 79 002 792 163
RESPONDENT

JUDGE:

TAMBERLIN J

DATE OF ORDER:

15 OCTOBER 2004

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The application for injunctive…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] FCA 1335
Decision Date: 15 OCTOBER 2004

CaseChat Overview and Summary

Beecham Group Plc and its subsidiaries sought an injunction against Colgate-Palmolive Pty Ltd, alleging trademark infringement and passing off in relation to the MAXCLEAN brand of oral hygiene products. The matter was heard in the Federal Court of Australia. The primary legal issues for determination were whether Colgate-Palmolive Pty Ltd had infringed Beecham's registered trademarks and whether it had engaged in misleading or deceptive conduct by using the MAXCLEAN brand, which was deemed confusingly similar to Beecham's MACLEANS brand.

The Court held that the MAXCLEAN brand was indeed confusingly similar to the MACLEANS brand, and that the use of the MAXCLEAN brand by Colgate-Palmolive Pty Ltd was likely to cause confusion among consumers. The Court found that Beecham had established a prima facie case of trademark infringement and passing off. As a result, the Court granted the injunction, restraining Colgate-Palmolive Pty Ltd from using the MAXCLEAN brand in relation to its oral hygiene products until the matter was determined. The Court also ordered Colgate-Palmolive Pty Ltd to pay Beecham's costs of the application.

In granting the injunction, the Court emphasised the importance of protecting registered trademarks and preventing consumer confusion in the marketplace. The Court found that Beecham had demonstrated a sufficient degree of likelihood of success in its claims, and that the balance of convenience favoured the granting of the injunction. The Court also noted that the injunction would not cause undue hardship to Colgate-Palmolive Pty Ltd, as it could still use the MAXCLEAN brand for other non-oral hygiene products.

Orders

Orders of the court

1. The application for injunctive relief be granted until further order upon the undertaking of the first and second applicants as set out in their proposed Short Minutes of Order, namely:

(a) 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 in Order 1 or any continuation (with or without variation) thereof; and

(b) to pay compensation referred to in (a) to the person there referred to.

2. Orders be made in accordance with Order 1 of the Short Minutes of Order proposed by the applicants as follows:

1. until the determination of the proceedings or further order of the Court, the Respondent by itself, its servants or agents or otherwise be restrained from:

(a) using or threatening to use the word “MAXCLEAN” in the manner in which it is used on the packaging a copy of which is “Attachment A” to the Application filed in these proceedings (the “MAXCLEAN toothbrush”), or in any manner which is similar to such use, in relation to the packaging, promotion, advertising, manufacture, distribution, offering for sale or sale of dental or oral hygiene products, including toothbrushes and toothpastes; and

(b) using or threatening to use the mark “MAXCLEAN” in relation to the packaging, promotion, advertising, manufacture, distribution, offering for sale or sale of dental or oral hygiene products, including toothbrushes and toothpastes; and

(c) using or threatening to use the trade marks listed below, or any mark which is substantially identical with or deceptively similar to those trade marks in relation to the packaging, promotion, advertising, manufacture, distribution, offering for sale or dale of dental or oral hygiene products, including toothbrushes and toothpastes:

(1) Australian registered trade mark no. 774677 for MACLEANS; and

(2) Australian registered trade mark no. 115973 for MACLEANS.

(3) The respondent pay the applicants’ costs of this application.

THE COURT FURTHER ORDERS THAT:

1. The hearing of the matter be expedited.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

TAMBERLIN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

Full text does not contain this section.

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 LTD ABN 79 002 792 163 RESPONDENT
JUDGE:	TAMBERLIN J
DATE OF ORDER:	15 OCTOBER 2004
WHERE MADE:	SYDNEY