FH Faulding Co Limited v Laboratoire Garnier & Cie

FH Faulding Co Limited (Faulding) sought an interlocutory injunction against Laboratoire Garnier & Cie (Garnier) to restrain the importation and sale of certain cosmetic products. Faulding alleged that Garnier's proposed marketing and sale of these products in Australia would infringe Faulding's registered trade mark "Garnier" for which Faulding held Australian registration. Garnier, a French company, had been using the "Garnier" mark internationally for many years prior to Faulding's registration, and argued that its use in Australia was not an infringement.

The primary legal issue before the court was whether Garnier's proposed use of the "Garnier" mark in Australia constituted an infringement of Faulding's registered trade mark, notwithstanding Garnier's prior international use of the mark. This involved a consideration of the scope of protection afforded by Australian trade mark registration and the circumstances under which prior foreign use might defeat a claim for infringement of an Australian registered mark. The court was required to determine if Garnier's use was likely to deceive or cause confusion among Australian consumers, and whether Faulding had established a strong enough prima facie case to warrant interlocutory relief.

The court, applying principles of trade mark law, found that Faulding had established a strong prima facie case of infringement. It was held that the registration of a trade mark in Australia confers exclusive rights within Australia, and that prior use of the same mark in a foreign country, without use or registration in Australia, does not automatically grant rights in Australia that would prevent a registered proprietor from enforcing their Australian rights. The court considered that the potential for deception and confusion among Australian consumers was significant, particularly given the nature of the goods and the reputation of the mark.

Consequently, the court granted the interlocutory injunction sought by Faulding, restraining Garnier from importing, selling, or advertising the cosmetic products under the "Garnier" name in Australia until the final determination of the proceedings.