R & C Products Pty Ltd trading as Samuel Taylor v Sterling Winthrop Pty Ltd

[1993] FCA 506

S 0 6 ,1943

JUDGMENT No. .,., ........ ...... .,,, emmm,m,,

IN THE FEDERAL COURT OF AUSTRALIA	)
1
NEW SOUTH WALES DISTRICT REGISTRY	) No. G344 of 1993
1
GENERAL DIVISION	1

BETWEEN :	R & C PRODUCTS PTY LIMITED tradina as SAMUEL TAYLOR
Applicant

AND	STERLING WINTHROP PTY LIMITED
First respondent
L & F PRODUCTS (AUSTRALIA1 PTY LIMITED
Second respondent

CORAM:	Beaumont J.
PLACE :	Sydney
m:	30 July 1993

MINUTES OF ORDER

THE COURT ORDERS:

1.  That the respondents be restrained from using the words "Pine Action" in the course of trade in household liquid disinfectant products without clearly distinguishing their products from the products of the applicant.

Order 36 of the Federal Court Rules.

2.    That the respondents pay the applicant's costs of the proceedings.

Note: Settlement and entry of orders is dealt with in

IN THE FEDERAL COURT OF AUSTRALIA ) )

NEW SOU TH WALES DISTRICT REGISTRY ) No. G344 of 1993

)

GENERAL DIVISION )

BETWEEN :	R & C PRODUCTS PTY LIMITED tradina as SAMUEL TAYLOR
Applicant

AND	STERLING WINTHROP PTY LIMITED
First respondent
L & F PRODUCTS (AUSTRALIA1 PTY LIMITED
Second respondent

C O W :	Beaumont J.
DATE :	30 July 1993

REASONS FOR JUDGMENT

INTRODUCTION

By its application made under the Trade Marks Act
1955 and under Part V of the Trade Practices Act 1974, the

applicant ("R & C " ) claims orders, inter alia, that the respondents ("Sterling Winthrop" and "L & F") be restrained

disinfectant products and (b) using a particular label, bottle	from (a) using the mark "Pine Action" in trade in household
and get-up for the respondents' product. (R & C also
initially claimed relief under the Desians Act 1906, but this
is no longer pressed.)
THE APPLICANT'S CASE

By its statement of claim, R & C alleges, in

essence, the following:

(1) R & C distributes household disinfectant, of several

varieties (described as "pine", "eucalyptus", "lemon", "lavender" and "alpine fresh") under the name "PINE-0-CLEEN" ("the "PINE-0-CLEEN" range). (2) R & C is the registered proprietor of the trade mark "PINE-0-CLEEN" in class 3 and class 5 in respect of, inter alia, disinfectants. (3) For many years, R & C has widely advertised and promoted its product under the name "PINE-0-CLEEN' and has acquired a valuable reputation in that name in respect of disinfectants. (4) Further, since November 1992, R & C has advertised and promoted its "PINE-0-CLEEN" product in a bottle of a particular shape and with a particular front label; in this way, R & C has acquired a valuable reputation in the get-up of its product. (5) Sterling Winthrop, or alternatively L & F, proposes to distribute in trade several varieties of household disinfectants and cleansers (described as "Pine", "Eucalyptus" and "Tea Tree") under the name "Pine Action" ("the respondents' trade mark") in a bottle of a particular shape

with a particular front label ("the Pine Action" range).

R & C pleads the following causes of action:

(a) Trade mark infrinaement

R & C claims that: (i) the goods in the Pine Action

range are goods in respect of which R & C's trade marks are
registered; and (ii) the respondents' trade mark is
substantially identical with or deceptively similar to R & C's
trade marks.

(b) Misleadina or dece~tive conduct under Part V of the Trade

Practices Act

R & C further claims that the activities proposed by the respondents would constitute a misleading or deceptive representation that (i) the respondents' Pine Action range is sold with the approval of R & C; and (ii) that the respondents are associated with R & C.

(c) Passina off

R & C further claims that the conduct proposed by the respondents would amount to a passing off.

THE MAIN ISSUES

Although the respondents acknowledge that the name "PINE-0-CLEEN" is exclusively connected with R & C's product, they say that their proposal to distribute a range of domestic liquid disinfectants/cleansers under the name "Glen 20 Pine

Action" will not create any likelihood of confusion with R &	C's product.
THE BACKGROUND FACTS

There is no real dispute about the background facts

as follows.

(a) The a~~licant's Droduct

It is common ground that the name "PINE-0-CLEEN" is

R & C became concerned towards the end of 1990 that, despite the high awareness of the brand among consumers, a considerable percentage of users had stopped using the product. One of the reasons for this appeared to be that "PINE-0-CLEEN" and many of its competing products were packaged in similar bottles with similar graphic designs. It was decided to get the product up differently. The background to and rationale for this decision were explained in a management report dated February 1991 seeking approval for the adoption of a new design for the product as follows:

exclusively associated with R & C's household disinfectant. the market leader (with more than 50% of the market) the management of

" 2. BACKGROUND

Pine-o-Cleen volume h a s been i n gradual d e c l i n e i n

recent y e a r s , which i s l a r g e l y d u e t o the l a u n c h o f

s p e c i a l i s t c l e a n i n g / d i s i n f e c t a n t p r o d u c t s (e. g .

Domestos) and a l s o t o brand s w i t c h i n g .

Brand	s w i t c h i n g	i s	m a i n l y	d r i v e n	by	other	b r a n d s
( i n c l u d i n g	Own	L a b e l )	b e i n g	p e r c e i v e d	a s	' j u s t	a s

good' a s Pine-0-Cleen .

Pine-0-Cleen i s p s i t i o n e d a s the premium, t r u s t e d

brand o f d i s i n f e c t a n t , and i n f a c t owns a s t r o n g

h e r i t a g e o f t r u s t and e f f i c a c y .

However, p h y s i c a l l y , Pine-0-Cleen i s poorly

d i f f e r e n t i a t e d from many o f i t s c o m p e t i t o r s d u e t o

the c o m p e t i t i o n a d o p t i n g a l m o s t i d e n t i c a l d e s i g n s t o

the Pine-0-Cleen bott le .

Through r e l a u n c h i n g Pine-0-Cleen i n a new bott le

d e s i g n t h a t w i l l be p a t e n t e d by Samuel T a y l o r , the

brand w i l l be w e l l d i f f e r e n t i a t e d from the p l e t h o r a

o f 'me too's' on the m a r k e t .

3.         RATIONALE

The rationale for the project is therefore to differentiate Pine-0-Cleen from its competitors. A side benefit is the enhancement of size impression

on-she1 f. "

R & C's new packaging was launched in November 1992. Sales of more than four million bottles of 'PINE-0-CLEEN" between November 1992 and May 1993 generated revenue in excess of six million dollars.

In Appendix 1 to these reasons, there is an illustration of the get-up of the "PINE-0-CLEEN" product prior to the introduction of the new version in November 1992. In Appendix 2, there is an illustration of the present get-up.

(b) The res~ondents' ~roduct

For many years, Sterling Winthrop has promoted and
marketed, on a substantial scale, a range of household and

personal care products under the name "Glen 20". In

particular, Sterling Winthrop has successfully marketed the "Glen 20" range of surface spray disinfectants. The product

-

known as "Glen 20" is the market leader in the field of household spray disinfectants. To date, the respondents have not marketed a liquid disinfectant (as "PINE-0-CLEEN" is). However, as has been seen, the respondents now propose to launch a new product, the "Glen 20 Pine Action" range of household liquid disinfectant/cleansers.

The "Glen 20" range was previously sold in aerosol containers with a tapered chequered label design illustrated in Appendix 3. The current get-up of the "Glen 20" range of surface spray disinfectants is illustrated in Appendix 4. In December 1991, the management of Sterling Winthrop considered the possibility of introducing a new range of household liquid disinfectant/cleansers using the "Glen 20" name. During 1992, having retained several consultants to advise on matters requiring specialist assistance, including get-up, the management of Sterling Winthrop proceeded to prepare to introduce the "Glen 20 Pine Action" range into the Australian market. An impression of the respondents' new product is found in Appendix 5.

(c) Other ~roducts in the market

There are other products, with relatively small
shares of the liquid disinfectant market, for instance, "DX"

(Nicholas Kiwi - approximately 7% of the market) and "Nu-

Clenz" (Benckiser - approximately 7 % ) . Appendix 6 is an

impression prepared for the management of the respondents with a recommended positioning of their product in an imagined supermarket situation, showing the get-up of the respective products in the market.

THE RESPECTIVE CONTENTIONS OF THE PARTIES

As has been noted, the main issue in the proceeding involves the proposed use by the respondents of the name "Pine Action" and the get-up of their product.

(a) The a~~licant's araument

Although the applicant relies on several causes of action, it is convenient, in the first instance, to consider the applicant's submission that the respondent's proposed launch of their new product would amount to conduct likely to mislead or deceive, contrary to s.52 of the Trade Practices

U: as has been said, the applicant contends that the

respondents' use of the name "Pine Action" and the get-up to be used in that connection would misrepresent to consumers the existence of an association between the parties and thus generate confusion between their respective products. The applicant says that the likelihood of consumers being led to believe that some connection exists between the applicant and the respondents' product springs from the similarities in the packaging of the two sets of products, and, in particular, from the similarities in the names "PINE-0-CLEEN" and "Pine

Action".

Although not an essential part of the applicant's case (cf Conaara Inc. v. McCain Foods (Aust) Ptv Ltd (1992) 33 FCR 302) it was put on its behalf that there was an intention to copy in the present case; alternatively, it was suggested

that the Court should conclude that the respondents deliberately moved very close to the "PINE-0-CLEEN" range with a view to obtaining advantage from the similarities; or, at

the least, the respondents were not averse to the possibility of confusion developing in the minds of consumers between the applicant's range and that of the respondents.

THE RESPONDENTS' CONTENTIONS

On behalf of the respondents, it is acknowledged, as

has been noted, that the applicant has a strong reputation in
its trade mark "PINE-0-CLEEN". However, the respondents say
that there is no evidence that the applicant enjoys goodwill
or reputation in relation to the new packaging style
introduced by the applicant at the end of 1992; thus, it is
said, the applicant has not demonstrated that its new
packaging had become distinctive of the applicant's product at
the relevant date, viz. the date at which the conduct
complained of commenced, that is, May 1993, when the
respondents introduced their product to the trade: although
there was evidence of substantial sales of the applicant's new
product between December 1992 and May 1993, there was no

packaging, by the relevant date.	television advertising of the product, and thus of its	In response to expert opinion evidence called by the applicant from Mr. G.R. Beaton that there was similarity "at a glance" in the labels of the two competing products, the respondents refer to an answer given by Mr. Beaton in the course of cross-examination, that if a consumer saw the name "Glen 20" on the product, the consumer would probably think
that this was its provenance.
The respondents contend that the applicant's case ignores the presence of the well recognised trade mark "Glen 20" on the respondents' packaging.
The respondents say that there is no evidence of any intention to copy. They rely, inter alia, upon the testimony called from their management to the effect that in May 1992 the respondents decided to achieve "a high quality looking bottle similar to the LYSOL PINE ACTION product which [a corporation associated with the respondents] sells in the United States."
In summary, the respondents argue that this is a case in which the brand names of the competing products are both well known and prominently displayed on their respective packaging. They say that any confusion would be momentary
only and that this does not amount to misleading conduct.
CONCLUSIONS
In my opinion, the method adopted by the respondents for the presentation of their new product is likely to lead consumers to believe, contrary to the fact, that a connection exists between that product and the applicant's product.

Several factors point, I think, to this conclusion. First, the name "PINE-0-CLEEN", as is common ground,

carries with it a strong and well established goodwill. Secondly, the respective products are competing in exactly the same field of activity. Thirdly, the word "Pine", as the first word in the applicant's brand name, figures very prominently in that trade mark. It also figures very prominently in the respondents' presentation. It is most significant, in my view, to note the relative degrees of emphasis given by the respondents to the words "Glen 20" when compared with "Pine Action": the latter is given considerably more prominence than the former. Next, it should be borne in mind that, because these are inexpensive products (each sold for under $2) and usually sold in supermarkets, it is reasonable to expect that consumers would not carefully study the labels on these products - it is more likely that the decision to buy this kind of product would be made quickly - so that the first impressions of the consumer are likely to be important.

In my view, in the absence of any sufficient attempt by the respondents to distinguish the get-up of their product from the applicant's product, the use by the respondents of the words "Pine Action" in the present context would be likely to indicate to consumers that their product was in some way connected with the product marketed as "PINE-0-CLEEN". In coming to this conclusion, I have not found it necessary to deal with the applicant's contention that the respondents deliberately set out to copy the applicant's packaging. My conclusion is based on the visual similarities between the brand names "PINE-0-CLEEN" and the words "Pine Action" when used in the context of the present get-up of the respondents' product. As has been said, I take into account in this regard, the emphasis given to the words "Pine Action" on the label when compared with the brand name "Glen 20" as stated on the label. I would add that little, if anything, turns upon the recent adoption by the applicant of its new style of packaging since, in my view, what is significant is the brand name "PINE-0-CLEEN" and this name has continued to be used by the applicant.

In the result, I have concluded that the applicant has made out a case of a likelihood of deception within the meaning of s.52 of the Trade Practices Act if the proposed launch of the respondent's product is to proceed. It is common ground that, unless restrained, the launch will

proceed. Accordingly, I propose to restrain the respondents'	conduct in this regard.
In the circumstances, it is not necessary to consider the other causes of action relied upon by the applicant; it is not suggested by the applicant that, assuming those other causes of action to exist, the relief to be granted would differ from the relief to be granted in the case of a contravention of s.52 of the Trade Practices Act.
RELIEF TO BE GRANTED
It follows, in my view, that the respondents should be enjoined from using the words "Pine Action" in the marketing of their products without clearly distinguishing their products from those of the applicant. I make the following orders:

1.   That the respondents be restrained from using the words "Pine Action" in the course of trade in household liquid disinfectant products without clearly distinguishing their products from the products of the applicant.

2.    That the respondents pay the applicant's costs of the proceedings.

I certify that this and the preceding eleven (11) pages are a true copy of the Reasons of his Honour

Mr. Just

Associate

Dated: 30 Ju

Counsel and Solicitors ~ . ~ . h ~ d o n Q.C. with

for Applicant	S.J. Goddard instructed by Tress Cocks & Maddox
Counsel and Solicitors	J.M. Ireland Q.C. instructed
for Respondents:	by Williams Niblett
Date of hearing:	19 - 22 April 1993
Date Judgment delivered:	30 July 1993

Glen 20 PINE ACTION

RECOMMENDED POSITIONING

Glen 20 PINE ACTION

RECOMMENDED POSITIONING