RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd - [2022] FCA 1042

FEDERAL COURT OF AUSTRALIA
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042

File number(s): NSD 823 of 2021

Judgment of: ROFE J

Date of judgment: 6 September 2022

Catchwords:
TRADE MARKS – whether the respondent infringed the second applicant’s registered trade marks under s 120 of the Trade Marks Act 1995 (Cth) – whether the respondent used the depiction of its SOMAT dishwashing capsule as a trade mark – whether the respondent’s device was deceptively similar to the second applicant’s trade marks – whether the respondent’s device was used in good faith to indicate the kind, quality, or some other characteristic of the goods

TRADE MARKS – cross-claim for removal for non-use under s 92 of the Trade Marks Act 1995 (Cth) – whether the second applicant used its registered trade marks during the relevant period – whether the second applicant used devices substantially identical to its registered marks – whether use by the first applicant constituted authorised use

CONSUMER LAW – whether the respondent’s use of its device constituted passing off or misleading and deceptive conduct under ss 18 and 29 of the Australian Consumer Law

Legislation:
Competition and Consumer Act 2010 (Cth)

Trade Marks Act 1995 (Cth)

Trade Marks Act 1955 (Cth)

Trade Practices Act 1974 (Cth)

Trade Marks Act 1938 (UK)

Cases cited:
Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 286 FCR 259
Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182
Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490
Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 278 FCR 450
Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 137 IPR 385
Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
Baume & Co Ltd v Moore (AH) Ltd [1958] RPC 226
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482
BP plc v Woolworths Limited (2004) 212 ALR 79
CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375
Ceramiche Caesar SPA v Caesarstone Ltd (2020) 154 IPR 237
Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107
Colorado Group v Strandbags Group No 2 (2006) 69 IPR 281
Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
Domain Names Australia Pty Ltd v .au Domain Administration Ltd (2004) 139 FCR 215
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934
Frucor Beverages Ltd v The Coca-Cola Company (2018) 132 IPR 318
Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 66 IPR 19
Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc (2020) 15 IPR 186
Hermes Trade Mark [1982] RPC 425
Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Kowa Co Ltd v Organon [2005] FCA 1282
Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557
Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102
Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 87 IPR 464
New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26
Optical 88 Limited v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457
Optical 88 Ltd v Optical 88 Pty Ltd (2011) 93 IPR 202
PDP CapitalPty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174
Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161
Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279
Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 291
Pinnacle Runway Pty Ltd v Triangl Ltd (2019) 148 IPR 211
Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670
Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd (1980) 31 ALR 73
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2021] FCA 1094
Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519
Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd (2018) 129 IPR 238
Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Taxiprop Pty Ltd v Neutron Holdings Inc (2020) 156 IPR 1
Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 107 IPR 333
TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43
Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 143 IPR 1
Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd (2020) 150 IPR 11

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: Trade Marks

Number of paragraphs: 404

Date of hearing: 16–18 November 2021

Counsel for the Applicants: Michael Hall SC with Gilbert Tsang

Solicitor for the Applicants: Thomson Geer

Counsel for the Respondent: Ed Heerey QC with Peter Creighton-Selvay

Solicitor for the Respondent: Ashurst Australia

ORDERS

NSD 823 of 2021

BETWEEN:
RB (HYGIENE HOME) AUSTRALIA PTY LTD

First Applicant

RECKITT BENCKISER FINISH BV

Second Applicant

AND:
HENKEL AUSTRALIA PTY LTD

Respondent

AND BETWEEN:
HENKEL AUSTRALIA PTY LTD

Cross-Claimant

AND:
RECKITT BENCKISER FINISH BV

Cross-Respondent

ORDER MADE BY:

ROFE J

DATE OF ORDER:

6 SEPTEMBER 2022

THE COURT ORDERS THAT:
1.The parties confer and, within 14 days of these orders, submit to the Associate to Justice Rofe an agreed minute of orders giving effect to these reasons.
2.Failing agreement, each party provide their proposed minute of orders within the same period specified in order 1.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT
ROFE J:
INTRODUCTION

The Second Applicant, Reckitt Benckiser Finish BV (RBF) is the owner of registered trade mark 1008914 (the 914 Mark) and registered trade mark 1211311 (the 311 Mark) (together, the Registered Marks). The First Applicant, RB (Hygiene Home) Australia Pty Ltd (RB) is an authorised user of the Registered Marks.
The Registered Marks are used by RB (and were used by its corporate predecessors) in relation to the distribution and sale in Australia of FINISH branded dishwashing capsules. The FINISH range of dishwashing capsules has been available for sale in Australia since 1999, and occupies a significant portion of the market.
The Respondent, Henkel Australia Pty Ltd (Henkel), owns the SOMAT brand of dishwashing products. SOMAT products have been available in various overseas markets for some years, and were first made available for purchase in Australian supermarkets in August 2021.
The Applicants allege that Henkel’s actual and proposed use of the following logo promoting the SOMAT Excellence Gel Caps (SE Gelcaps) constitutes trade mark infringement under s 120(1) of the Trade Marks Act 1995 (Cth) (the TMA), misleading and deceptive conduct in contravention of ss 18 and 29 of the Australian Consumer Law (the ACL) (being Schedule 2 to the Competition and Consumer Act 2010 (Cth)), and passing off:
(the SE Logo).
By way of cross-claim, Henkel applies for removal of the Registered Marks for non-use during the period from 16 July 2018 to 16 July 2021 (the relevant period).
On 3 September 2021, Halley J made orders restraining Henkel from offering for sale or selling dishwashing products by reference to the SE Logo, or the Registered Marks.
For the reasons below, I find that the SE Logo does not infringe either the 914 Mark or the 311 Mark. RB has also failed on its passing off and misleading and deceptive conduct cases.
Further, I find that RB has not used the 914 Mark or the 311 Mark during the relevant period.
EVIDENCE
RB relies on the following evidence:
(a)Three affidavits of Mr Sachit Barooah dated 12 August 2021 (affirmed 16 August 2021), 16 August 2021, and 24 September 2021. Mr Barooah is the Category Marketing Manager of FINISH products for RB. He has held this position since April 2021 and has been employed in other roles at RB since January 2017.
(b)Two affidavits of Mr Duncan Watson dated 12 August 2021 (affirmed 16 August 2021) and 24 September 2021. Mr Watson is the Head of Research and Development Operations Hygiene Home, Australia and New Zealand for the Reckitt Group of companies in Australia and New Zealand. Mr Watson has held various roles within the Reckitt Group for the last 21 years. In his current role, Mr Watson is responsible for research and development activities for all Home and Hygiene brands in the Australia and New Zealand market, including Finish.
(c)One affidavit of Mr Trent Kennedy dated 12 August 2021 (affirmed 13 August 2021). Mr Kennedy is the National Field Operation Manager for RB, a position he has held since May 2018. Mr Kennedy has been employed by RB in various roles since February 2005.
(d)One affidavit of Mr Peter Le Guay dated 26 August 2021. Mr Le Guay is a partner at Thomson Geer, and is the lawyer with carriage of this matter for the Applicants. Mr Le Guay gave evidence as to use of the Registered Marks during the relevant period, including television commercials, supermarket catalogues, and Amazon webpages.
(e)One affidavit of Professor Don O’Sullivan dated 24 September 2021, annexing Professor O’Sullivan’s expert report. Professor O’Sullivan is a professor of marketing at the Melbourne Business School, University of Melbourne, and has held various academic roles since 1992. Professor O’Sullivan’s evidence went to consumer behaviour. He was not instructed to consider either of the Registered Marks.
Henkel relies on:
(a)One affidavit of Ms Melissa Jayne Sherry dated 24 August 2021. Ms Sherry is the Marketing Lead, Australia New Zealand for the Laundry and Home Care products at Henkel. Ms Sherry has held her current position since May 2020. This is Ms Sherry’s first role at Henkel, having worked in advertising and marketing for other organisations for over 25 years. Ms Sherry was cross-examined.
(b)One affidavit of Mr Scott Hull dated 24 August 2021. Since January 2019, Mr Hull has been the General Manager, Laundry and Home Care Australia and New Zealand for Henkel. Mr Hull has over 20 years’ experience working for suppliers of fast moving consumer goods, and has worked for Henkel since September 2015. Mr Hull was cross-examined.
(c)One affidavit of Dr Karen Scheunemann dated 24 August 2021. Dr Scheunemann is the Corporate Senior Legal Counsel for Henkel AG & Co KGaA (Henkel AG) and is based in Düsseldorf, Germany. Dr Scheunemann was cross-examined via video link.
(d)One affidavit of Ms Anita May Cade dated 13 October 2021. Ms Cade is a partner at Ashurst Australia and the lawyer responsible for the carriage of the matter on behalf of Henkel. Ms Cade gave evidence of her visit to the Amazon website and navigating around the section of that site offering FINISH products for sale.
(e)One affidavit of Professor Jill Gabrielle Klein dated 13 October 2021. Since 2009, Professor Klein has been a professor of marketing at the Melbourne Business School, University of Melbourne. Since 2015, she has held dual roles as a Professor in the Melbourne Business School and as a Professorial Fellow at the Melbourne Medical School. Professor Klein was awarded her PhD in Social Psychology from the University of Michigan in 1990. Professor Klein has lectured, published and conducted research in relation to consumer behaviour including consumer perceptions, impression formation and decision-making.
(f)One affidavit of Mr Paul Lindsay Blanket dated 13 October 2021. Mr Blanket holds a Bachelor of Commerce Degree (Marketing) and a Master of Commerce Degree (Marketing) from the University of New South Wales. He has completed additional programs in management and advertising run by the University of Melbourne and the Massachusetts Institute of Technology. Mr Blanket is also a Fellow of the Australian Marketing Institute and has gained Certified Practising Marketer status. He lectures in advertising and marketing at Macquarie Graduate School of Management.
Mr Blanket is the Principal of First Impressions Pty Ltd, a company established in 1987 and engaged in the business of providing marketing, advertising and promotional consulting services to government and industry clients. Prior to founding First Impressions, Mr Blanket worked as a Group Account Director in an advertising agency, and before that he was employed in marketing roles with a number of commercial enterprises. Mr Blanket has over 30 years’ experience in developing brand names, product logos, packaging designs and advertising campaigns, including for fast moving consumer goods such as those sold in supermarkets.
The parties’ experts (Professor O’Sullivan, Professor Klein, and Mr Blanket) prepared a joint expert report, and gave evidence in person by way of a concurrent evidence session.
BACKGROUND
Reckitt Benckiser and the FINISH products
The Applicants are both part of the Reckitt Benckiser group of companies, being a group of companies ultimately owned by Reckitt Benckiser Group PLC. The Second Applicant, RBF, is a company incorporated in the Netherlands and the owner of the Registered Marks. The First Applicant, RB, was incorporated on 22 October 2018, and is authorised to use the Registered Marks.
Prior to RB’s incorporation, Reckitt Benckiser (Australia) Pty Ltd (RBA) was authorised to use the Registered Marks and carried out the same business as RB. Unless the context requires otherwise, I will refer to RB throughout these reasons regardless of the relevant entity at the time.
RB currently imports, markets and sells a range of dishwashing products in Australia under the FINISH brand.
FINISH dishwashing products were first sold in Australia in 1964. Since then, FINISH products have been sold continuously, with the range being updated from time to time with new or improved products.
FINISH products have a significant market share of the dishwashing market in Australia, with over 60% share of the market including both powder and capsule form. In this judgment I will use the term dishwashing capsules to encompass all dishwashing products sold in either tablet, capsule or gelcap form.
FINISH is a well-known and recognisable household brand in Australia. As at July 2021, FINISH has 63% of the dishwasher capsule market in Australia.
RB spends a large amount on media advertising for its FINISH capsule products. The advertising includes television commercials, online platforms, billboards, and supermarket catalogues.
Since approximately 1999, RB has sold a two-tone (white and blue) hard-pressed dishwashing capsule in Australia (FINISH Tablet). The FINISH Tablet has a protruding red “Powerball” and is pictured below. A tablet of this kind is used in the FINISH All in 1, the FINISH All in 1 Max, and FINISH Classic products. A representation of the FINISH Tablet appears below:
The constituents of the FINISH Tablet are naturally colourless, or in some cases white or yellow-ish. The red and blue colours were chosen for aesthetic reasons; they do not serve or provide any functional or performance benefit. Aside from the need to fit within the dishwasher tablet dispenser, there is no functional basis for the FINISH Tablet shape or the positioning of the components within the Tablet.
Since approximately 2007, RB has sold a three-coloured gelcap in Australia (FINISH Gelcap). The FINISH Gelcap consists of the colours white and blue, with a red Powerball. This design is used for the FINISH Quantum and FINISH Quantum Ultimate products. Again, there is no functional basis for the placement of the components or their colouring. The colours and shape serve a purely aesthetic purpose. A representation of the FINISH Gelcap appears below, as well as a photograph of a FINISH Quantum product:
The FINISH range of dishwashing capsules is not limited to the Tablet and Gelcap pictured above, or to the red, white and blue colours.
There were several different examples of FINISH dishwashing capsules and their packaging in evidence. The evidence included both physical exhibits and pictures of the various products annexed to affidavits. Below is a summary of the FINISH dishwashing capsule products.

Product name

Colours

Capsule type

FINISH Classic

White and blue with red Powerball

Tablet

FINISH All in 1

White and blue with red Powerball

Tablet

FINISH All in 1 (Lemon Sparkle)

White and blue with red Powerball

Tablet

FINISH 0%

White and green with red Powerball

Tablet

FINISH All in 1 Max

White and blue with red Powerball

Tablet

FINISH Quantum

White and blue with red Powerball

Gelcap

FINISH Quantum Ultimate

White and blue with red Powerball

Gelcap

FINISH Quantum Ultimate (Lemon Sparkle)

White and yellow with red Powerball

Gelcap

FINISH Quantum Ultimate Pro

Speckled white and blue with red Powerball

Other capsule

FINISH Quantum Ultimate Pro 0% (free from perfume)

White and green with red Powerball

Other capsule

FINISH Quantum Ultimate Pro (Lemon Sparkle)

Speckled white and yellow with red Powerball

Other capsule

Each of the varieties listed above are contained in foil packaging, bar the FINISH All in 1 and FINISH All in 1 (Lemon Sparkle) products, which are contained in cardboard boxes.
There are several key elements on FINISH packaging that remain relatively constant throughout the range.
Each variety of the Finish capsule packaging has the FINISH POWERBALL Logo featuring prominently at the top. This logo contains the work FINISH in dark blue text with a white border. The dot over the “i” is a red ball. Underneath the word FINISH is the word POWERBALL in upper case white font on a red background:
(the FINISH POWERBALL Logo).
The centre of each package design features a stylised depiction of the particular dishwashing capsule found in the package. Below are examples from the FINISH All in 1 and the FINISH Quantum Ultimate products:
The central stylised product depiction on the FINISH packaging varies across the range: for example, whether the product is a tablet or gelcap; the angle of the tablet; the components of the capsule; the colours of the components; the presence or absence of a swirl; and the extent to which the red ball is embedded in or floating above the capsule.
In addition to the FINISH POWERBALL Logo, the packaging will often have other words prominently displayed (such as QUANTUM or QUANTUM ULTIMATE), which can be described as sub-products. This sub-product text may appear directly below the FINISH POWERBALL Logo (as in the FINISH Quantum Ultimate Pro product), or at the bottom of the package beneath the stylised product image (as in the FINISH All in 1 Max product):
The FINISH packaging is cluttered with other words, phrases and pictures, which vary based on the sub-product. Examples include imagery of lemons for lemon-scented products; and phrases such as “powerful clean & shine”; “#1 recommended”; “tough stains, first time”; “our best clean & shine”; “with ACTIVBLU technology^TM”; and “stop pre-rinsing & save water”.
Finally, each packaging design features an image of a large wine glass on a 45-degree angle in the right half of the packages.
The Registered Marks

The 914 Mark is a colour and shape mark, comprising a rectangular tablet with a red ball and blue wave:
The 914 Mark is registered in respect of goods in Classes 1 and 3 including bleaching preparations and other substances for dishwashing, whether or not in solid, fluid or gel form; and dishwasher cleaner, freshener and deodoriser in gelcap form.
The 914 Mark contains an endorsement which states that:
The trade mark consists of the shape and colour of the goods as depicted in the representation attached to the application form, namely, a rectangular shaped capsule with rounded corners; the capsule has a RED cylindrical compartment embedded in the capsule; the RED centre is partly encircled by a BLUE portion of the capsule resembling a wave; the BLUE wave portion of the capsule is made of a gel substance; the remaining portion of the capsule consists of multi coloured granules of powder.
The 914 Mark has a priority date of 6 January 2004.
The 311 Mark is an image featuring a red ball in a white “explosion” against a blue backdrop, as depicted below:
The 311 Mark is registered in respect of goods in Class 3 including bleaching preparations and other substances for dishwashing; dishwashing preparations; dishwasher cleaner, freshener and deodoriser; and rinsing agents. Unlike the 914 Mark, the 311 Mark is not registered in Class 1 and there is no endorsement to the mark.
The 311 Mark has a priority date of 21 November 2007.
Henkel and the SOMAT products
Henkel is part of the global Henkel group of companies (as is Henkel AG). Henkel imports, markets and sells a diverse range of consumer and industrial goods in Australia, including laundry and home care goods.
Henkel has operated a “Laundry and Home Care” business unit in Australia since 2015, when Henkel acquired a number of Australian and New Zealand laundry brands from Colgate-Palmolive, including COLD POWER, DYNAMO, and FAB. Other Henkel business units (namely, the “Adhesive Technologies” and “Beauty Care” units) have operated in Australia for over 35 years.
Henkel AG has offered SOMAT branded dishwashing detergents for sale in Europe for over 50 years. SOMAT products have been available for purchase by consumers in Germany since approximately 1962.
SOMAT is now the market-leading brand of automatic dishwashing cleaning products in Germany, with a market share in 2020 of 34.4%. SOMAT also has large shares of the market for automatic dishwashing cleaning products in Russia, Spain, Austria and Poland.
In about 1999, Henkel AG introduced the SOMAT branded dishwashing products in tablet form in Germany.
The colour red and the SOMAT brand have been prominently used on the packaging of SOMAT dishwashing capsules since their launch in 1999. The colours red and blue have always been a part of the design of SOMAT dishwashing capsules. Dr Scheunemann annexed the table below to her affidavit, showing different examples of SOMAT capsule packaging since 1999.
Henkel AG launched the SE Gelcaps in Germany and Switzerland in approximately April 2021. Subsequently the SE Gelcaps have launched in other European countries including Austria, Poland, Russia, Italy and Spain. Below is a picture of a SE Gelcap.
Henkel sought to launch the SE Gelcap in Australia in August 2021. However, RB obtained an interlocutory injunction stopping Henkel from offering for sale, selling and supplying SE Gelcaps in Australia: see RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2021] FCA 1094.
The SOMAT automatic dishwasher product range also includes SOMAT Gold Gelcaps, which are not the subject of this proceeding, as well as SOMAT Excellence Duo Power Gel, SOMAT Gold Power Gel, SOMAT Rinser and Drying Booster and SOMAT Machine Cleaner. Mr Hull described the SE Gelcaps as the “super premium” offering in the range. The SE Gelcap is at the top of the range both in terms of price and performance. The SE Gelcaps are targeted to the premium capsule shopper, while the SOMAT Gold Gel Caps are aimed at mainstream capsule shoppers. The below image (originally annexed to the Sherry affidavit) shows some of the different products available under the SOMAT brand.
The SE Gelcaps are provided in a plastic tub (see image below). This is the first dishwashing capsule to be offered for sale in a plastic tub in Australia.
Prior to launching, in June 2019, Henkel filed two Australian Design registration applications in respect of the shape of the SE Gelcap.
Retail sales of dishwashing products
The following is taken from the expert and lay evidence.
Automatic dishwashing detergent products come in three forms: tablets, capsules, or gelcaps (which I refer to collectively as capsules, unless necessary to distinguish), powders and gels.
Automatic dishwashing detergent products are predominantly sold in supermarkets such as Coles, Woolworths, and IGA. The products are also sold in other retailers such as Big W and The Reject Shop; and online at websites including Amazon and the Coles and Woolworths online shops. All the evidence as to physical displays and consumer purchase behaviour related to the sale and display of dishwashing detergent products in supermarkets.
The dishwashing capsule market is a brand heavy sector in which consumers are focussed on brand products. FINISH is the dominant market leader in the dishwashing capsule market and has been for many years. It has around 63% of the market. FAIRY is the other major brand. Together FINISH and FAIRY account for approximately 90% of the dishwashing capsule market. The remaining 10% of the market is taken up by other brands including EARTH CHOICE, the LOGIX brand sold by Aldi, Coles’ home brand ULTRA, and Woolworths’ home brand SHINE.
The products of the main players are packaged in foil packaging. The EARTH CHOICE products are sold in cardboard boxes, while the SHINE, ULTRA and LOGIX products are sold in both foil packaging and cardboard boxes.
The capsules of the FINISH and FAIRY brands vary in price, although the evidence showed that there was frequent discounting and that usually one variety of capsules from one brand is on sale in the major supermarkets at any time.
Blocks of each brand’s dishwashing products are located together on the supermarket shelves. The bulk of the products are capsules, but there are also machine cleaners and liquids. The capsule products occupy most of the shelf space.
Each capsule product has the brand name displayed prominently on the front of the package. For each brand, the brand name is highly visible. It is in the top third of the package and easily seen as it is written in large font that contrasts against the background and is thus easy to read. In the case of FINISH, the brand name is in blue writing surrounded by a white outline. In the case of FAIRY, the writing is red on a white background.
It is common to the trade to display stylised product depictions on the front of the packaging to distinguish between the varieties of dishwashing capsule within the brand range. Each brand (including the home brands) displays a stylised picture of the capsule found inside the packaging centrally on the front of the packaging.
It is also common in the trade that the top of the range capsules of a brand have more components than those capsules lower in the range. For example, the FAIRY Platinum and FAIRY Platinum Plus Expert capsules each have four components; whereas the FAIRY Original capsules have three. The consumer can see the number of components in the stylised product depiction on the front of the packaging.
The packaging of the major brands’ dishwashing capsules was described by the experts as “cluttered”. By way of example, Mr Blanket identified some 18 visual elements on the packaging of the FINISH Quantum Ultimate Pro packaging. The packaging for each follows a similar form. Both FAIRY and FINISH:
(a)use similarly sized foil packaging for their dishwashing tablets;
(b)prominently display the brand name in logo format on the front of the packaging;
(c)use words such as “Quantum” or “Platinum” to describe the sub-product, usually placed prominently just under or near the brand logos;
(d)use a stylised depiction of the capsule product on the front of the packaging;
(e)have laudatory epithets or call outs such as “anti-dull technology”, “our best cleaning”, “#1 recommended”, “all in one” covering much of the rest of the front of the packaging, these call outs differing between the various sub-products;
(f)have the number of capsules in the package written on the front; and
(g)adopt consistent colour schemes for the packaging of their varieties of tablets (neither using red for the background colour or gold for the text):
(i)FAIRY packaging is predominantly green and silver; and
(ii)FINISH packaging predominantly uses a blue and silver colour scheme, but with other colours to denote variants: black, red, yellow, or purple, or green and silver for products which claim environmental benefits;
Consumer behaviour and cues
The following is taken from the evidence of Professor O’Sullivan, Professor Klein and Mr Blanket.
The experts agreed that the category of dishwashing products was a “low involvement” category (relative to many other purchases such as appliances or clothing) in which consumers spend relatively little time studying the product packaging. The experts observed that among supermarket products detergents generally rank low on involvement for many consumers, lower than for example, shampoo or toothpaste. The experts considered that dishwashing capsules are likely to be similar to detergents in this regard although they noted that the relatively higher price of the capsule products may make involvement higher than for detergent.
Consumers purchase dishwashing capsules occasionally (once in several weeks) but they use the capsules much more frequently, perhaps daily. Consumers see the front of the package on use as well as the tablet. If the dishwashing capsules are stored under the sink, the consumer is likely to view the brand logo at the top third of the packaging, rather than the lower down stylised product depiction.
Even for low involvement supermarket products such as dishwashing products, the experts agreed that consumers are likely to be motivated to select their preferred product. The consumer comes to the supermarket already determined to buy a dishwashing product, perhaps with a product of a particular brand in mind, or a shortlist of products.
All dishwashing capsules are found together in the same section of the supermarket. A consumer wishing to purchase dishwashing capsules will first seek out where that category of goods is located within the store.
For a low involvement product such as dishwashing capsules, consumers are unlikely to lift up the different packages from the supermarket shelves and examine or compare them as part of the decision making process.
In the shopping context when consumers are searching for particular types and brands of products they use visual stimuli to help them categorise a product as being of a particular product type or brand. Consumers use cues to help them find products in busy environments. The cues differ in their ability to correctly assign an object to a category. A cue with a high degree of ability to correctly assign an object is known as a “diagnostic” cue. In the context of brand recognition, a perfectly diagnostic cue will allow a consumer to identify a product as belonging to a particular brand each and every time. Professor Klein gave the example of COCA-COLA or PEPSI as being perfectly diagnostic cues of the brand of cola product.
Brand names, colours, typefaces and layout, graphics and imagery, and package shapes and formats all may, in a given circumstance, play a role in allowing a consumer to identify a branded product.
However, the consumer’s visual diagnostic system is set up to use the most diagnostic cue available. This is typically the brand name.
Faced with multiple cues, consumers tend to place greater weight on cues that they perceive to be more useful in differentiating between brands and products from different brands. Consumers rely on the fewest possible cues, as few as one or two, to make their decision. When multiple cues are available people seeking to categorise objects focus on the most diagnostic cue available.
The experts agreed that generally, the brand name is the most diagnostic cue for identifying one’s preferred brand. Other cues may be pictures of the product, the colour of the packaging, brand variants, and pack size.
The experts agreed that consumers will select a dishwashing capsule using only one or two cues, very rapidly (in the order of 2–3 seconds), and after examining a very small number of products. The utility of a brand element in cueing the brand is dependent on the element being readily identifiable and unique to the brand.
When a cue is used by multiple brands within a category, and is thus not unique, it has less utility as a cue that products come from a specific brand. Customers will not typically scan the shelves for such an element.
Cues which are common to the packaging of FINISH and other dishwashing capsule packaging include the brand name (on all packaging), a depiction of the product (on all packaging), streaks of light (also found on FAIRY, LOGIX and SOMAT packaging), a depiction of a wine glass (also found on SHINE, LOGIX and SOMAT packaging), and references to “new” or “best” (also found on FAIRY, LOGIX and EARTH CHOICE packaging).
As a low involvement and fairly frequent purchase, consumers will typically arrive at the supermarket with a specific brand or brands in mind (ie, a FINISH capsule product and/or a FAIRY capsule product) as part of a semi-fixed decision rule (ie, buy any brand I recognise; buy a specific brand; buy the cheapest of a predetermined set of brands).
Consumers of packaged goods sold in supermarkets are highly responsive to sales promotions and respond in large part by switching between variants of the same brand or between brands in response to sales promotions. Professor O’Sullivan’s evidence was that a large percentage of sales of detergent products come off sales promotion. The supermarket catalogues in evidence show that in each catalogue at least one of the FINISH or FAIRY products is usually on sale. The depth of discounting can be substantial, up to 50% off the usual price. Where the consumer views products as being functionally equivalent and prices vary significantly over time, it is rational for consumers to give the bulk of their fleeting attention to price information.
The experts identified, or were asked to consider, several classes of consumer looking to purchase from the major brands of dishwashing capsules. The level of each hypothetical consumers’ “involvement” in the purchase would impact the likelihood of confusion.
(a)A loyal or “welded on” consumer who specifically wants, for example, a FINISH QUANTUM ULTIMATE PRO product. Professor O’Sullivan’s evidence was that such a consumer would take more than a cursory look at the shelf, as the risk of mis-purchase was high for such a customer (and therefore the risk of confusion low).
(b)A consumer who tends to buy FINISH products but will move between various sub-brands depending on factors like discounting.
(c)A “repertoire shopper” consumer who is open to purchase a product from a range of familiar brands, for example either FINISH or FAIRY. Again, selection will likely be impacted by factors like discounting.
(d)A “forgetful shopper” consumer who is looking to replenish the FINISH tablets they have at home but who cannot recall the name FINISH. This hypothetical consumer is, however, able to recall what the product looks like as they have handled the product itself when putting it into the dishwasher.
The experts were in agreement on many issues. The main area of disagreement was as to the primacy of brand or imagery as the diagnostic cue (particularly in the case of the hypothetical forgetful shopper).
Professor Klein and Mr Blanket agreed that, when searching for a FINISH dishwashing capsule product, the brand name would be the most important cue for consumers. On the other hand, Professor O’Sullivan’s opinion was that consumers are likely to rely on the red ball in relation to the capsule as a visual cue to identify the FINISH products.
Professor O’Sullivan’s evidence was that brand names are neither efficient nor sufficient cues for consumers seeking a specific product, and the image is an efficient clue for such consumers. The brand name extends beyond the capsule products, as do the other packaging elements such as dominant pack colour and in his opinion this does not allow the consumer to zero in on the goal with which many enter the store: to replenish the stock of a tablet that they regularly use.
In Professor O’Sullivan’s opinion, the consumer would use the central image as the dominant cue when searching for the FINISH capsule. It was clear that Professor O’Sullivan regarded the red Powerball — either embedded in or elevated above the capsule — as the highly distinctive element of the central image on the FINISH packaging, not the totality of the red ball with the predominantly white tablet with blue wave form, or with a blue and white gelcap. In the joint report Professor O’Sullivan noted that in his opinion “consumers are likely to rely on the image of the red ball in relation to the tablet when searching for Finish Tablet products. The image is uniquely a feature of the Finish tablet range and features prominently on the packaging”. He challenged Professor Klein in the joint session:
So the fact that there’s a red ball, a relatively large red ball prominent in that it’s in the middle of the packaging and that’s common to all variants in the tablet range, you still don’t think that they would rely on that as a cue when selecting, when searching for Finish tablet products?
In Professor O’Sullivan’s opinion, where the FINISH brand is also used on products other than dishwashing tablets, such as rinse aid and other detergents, the brand was not a sufficient cue for a consumer seeking a FINISH dishwashing capsule. Professor O’Sullivan preferred the red Powerball to the FINISH POWERBALL Logo, saying there was no variance in the red ball, although he conceded that “[t]here is variance in the relationship [of the ball] to the tablet. So that diminishes the efficiency somewhat”.
The unlikelihood of product images being the primary diagnostic cue for a particular variant of a brand was demonstrated by a line of cross-examination relating to a hypothetical involving “fig yoghurt”. It was suggested to Professor Klein that if there was only one brand of yogurt that had a fig variety, the consumer could cut out the brand entirely and go straight to the fruit picture as the shortcut to finding the desired yoghurt. Professor Klein disagreed, explaining that unless the picture of the fig was larger than the images on all other yoghurts or otherwise different to the pictures of strawberries or raspberries on the other yoghurts, the image would not be a good diagnostic cue.
The proposition that a consumer would approach the yoghurt aisle of the supermarket of a major supermarket looking for a yoghurt with a picture of a fig as the sole source of diagnostic choice, rather than looking for the brand known to have a fig variety, could only be suggested by someone who has not shopped for yoghurt in a large supermarket for some time. There is a vast line-up of products, which, unlike dishwashing tablets, are too extensive to be capable of being scanned at a distance.
It is clear that Professor O’Sullivan regarded the red ball image as a diagnostic cue for finding FINISH capsule products. Having found those products, the forgetful shopper, wanting a particular variant, would need to conduct a second review of the images to find the particular variant.

In Professor Klein’s opinion the FINISH POWERBALL Logo was the most diagnostic cue for the consumer to find a FINISH capsule product. She did not consider the depiction of the capsule to be a very efficient cue. In a situation where all brands of dishwashing tablet have a stylised depiction of the product on the packaging, Professor Klein did consider that the image was the most diagnostic cue.
…all the brands have tablets on their package. If only one brand did, then boom, it would be easy and really quick. They all have brands. They’re all different from each other. They use different combinations of colours. So if you sort of remember, “I think mine had yellow,” they’re going to have to look at a bunch of packages to see all the different yellow ones, to see if it’s theirs.
Professor Klein’s evidence was that the cognitive effort in recognising the brand name is minimal and takes “milliseconds”, and the same for recognising that the packaging is red “and they’re going to be processing this stuff by looking at the package anyway, so it’s no extra cognitive effort”.
I consider Professor Klein’s two-step, brand then variant, process more inherently plausible than Professor O’Sullivan’s red Powerball, then other cue to find the desired product. The consumer is going to be looking at the packaging whether they are looking for the image or the brand — as Professor Klein observed, “they’re going to be processing the brand and packaging colour anyway”. Professor Klein’s two-step brand–variant process is consistent with the experts’ evidence that consumers will use the least number of cues, usually one or two. That a consumer would look at the image on the packaging and not actively see the prominent brand or packaging colour and only focus on the image on the packaging seems much less plausible.
Ultimately, beyond my remarks above and what follows in my findings, I do not consider it necessary to resolve the dispute between Professor Klein and Professor O’Sullivan. As the Full Court of this Court has observed (in the context of a claim under s 52 of the Trade Practices Act 1974 (Cth)), expert evidence is of limited assistance in determining whether consumers are likely to be misled, and the question is ultimately a matter for the court’s impression: see Domain Names Australia Pty Ltd v .au Domain Administration Ltd (2004) 139 FCR 215.
CROSS-CLAIM: NON-USE
Section 92: application for removal of trade mark from Register
Part 9 of the TMA allows for the removal of a registered trade mark from the Register for non-use. Section 92(1) permits a person to apply to the Registrar for removal of a trade mark from the Register where it has not been in use. Where, as in this case, there is pending litigation concerning the trade mark, the person cannot apply directly to the Registrar but must instead apply to the Court under s 92(3) for an order directing the Registrar to remove the mark.
Section 92(4) provides the grounds on which an application under ss 92(1) or (3) can be made. Henkel relies on s 92(4)(b), which permits removal where a mark has been registered for a continuous period of three years but has not been used in Australia. Section 92(4)(b) reads:
An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
The trade mark owner bears the onus to prove use in the relevant period in respect of all goods in respect of which the trade mark is registered (s 100(1)(c) of the TMA). Section 100(1)(c) reads:
(1)In any proceedings relating to an opposed application, it is for the opponent to rebut:
…
(c)any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
For the purposes of s 100(1)(c), the trade mark owner must establish use of the trade mark, or of the trade mark with additions or alterations not substantially affecting its identity.
The use must be by the “registered owner”. Section 7(3) of the TMA provides that an “authorised use” of a registered trade mark is taken to be use of the mark by the registered owner. “Authorised use” and “authorised user” are defined in s 8 of the TMA, which provides in sub-s (1) that a person is an authorised user of a mark if they use the mark under the control of the owner of the trade mark. Without limiting the concept of control in sub-s (1), sub-ss (3) and (4) provide that control can be established by the owner exercising quality control over the goods in relation to which the mark is used, or exercising financial control over the other person using the marks.
The Court has a discretion under s 101(3) of the TMA to allow the trade mark to remain on the Register even if non-use is established during the relevant period. For the discretion to operate in favour of the registered owner, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed.
Applicable principles
Use as a trade mark
In order to establish use of the 914 Mark during the relevant period, the use must be use as a trade mark.
Section 17 of the TMA provides that “a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.
The tests regarding what will constitute “use as a trade mark” have been well established. Justice Kitto in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (Shell) sets out the relevant question at 425:
… the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.
This approach has been adopted many times: see for example Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 66 IPR 19 at [36]–[37]; see also Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161 (Kettle Chip) (Sackville J).
In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 (E & J Gallo), the majority of the High Court (French CJ, Gummow, Crennan and Bell JJ) at [43] approved the following test for use “as a trade mark” as formulated by the Full Court of this Court in Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]:
Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods …
The question of whether a mark has been used as a “badge of origin”, or to distinguish its goods from the goods of other traders, is an objective one, to be determined from the perspective of the consumer: see Shell at 425; Pinnacle Runway Pty Ltd v Triangl Ltd (2019) 148 IPR 211 at [168] (Pinnacle).
Justice Allsop (as his Honour then was) in an oft cited passage from Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 (Anheuser-Busch) at [185]–[186] said:
The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others.
The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use.
(Citations omitted).
His Honour also noted at [191] that the branding function can be carried out in different places on packaging with different degrees of strength and subtlety, observing that “of course, the existence on a label of a clear dominant ‘brand’ is of relevance to the assessment of what would be taken to be the effect of the balance of the label”.
The display of a sign or mark in relation to goods may, of course, have more than one role. As Allsop J explained in Anheuser-Busch at [189]:
The usage of a word may fulfil more than one purpose on a label. For example a word may have a descriptive element, but also an element of trade mark or branding or distinguishing role. Equally, a word may have a role in identifying a geographical location, but also a trade mark or branding or distinguishing role. It depends on context.
(Citations omitted.)
Provided that one of the roles of the mark is to distinguish the trader’s goods dealt with or provided in the course of trade from the goods of other traders, the display of the mark in advertising will be use as a trade mark: see Pinnacle at [171].
In Kettle Chip, the Full Court held that the word “KETTLE” was not used as a trade mark in respect of kettle cooked potato chips. Relevantly, the potato chips packet also prominently displayed the well-known trade mark “THINS” and another well-known phrase “DOUBLE CRUNCH”. Sackville J, with whom Lockhart J agreed, said at 213:
The purpose and effect of the words are to be determined by having regard to the context in which they are used. In this connection, the fact that Frito-Lay has used the words in conjunction with its own distinctive mark (THINS and, perhaps, DOUBLE CRUNCH) does not prevent the use being for the purpose of distinguishing its chips from those of other traders. However, the use of the distinctive marks on Frito-Lay’s packets has a bearing on whether the words ‘Kettle Cooked’ have been used to show the commercial origin of the potato chips in the packets, or whether they have some other purpose and effect. It is necessary to consider the words used, as they present themselves to buyers or potential buyers of Frito-Lay’s chips who are to form a view about what they are meant to connote.
Substantially identical
For the purposes of rebutting an allegation of non-use, it is enough to demonstrate use if, during the relevant period, it can be shown that a trade mark with additions or alterations not substantially affecting the identity of the registered trade mark has been used.
Section 7(1) of the TMA provides that the Court may decide a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. This has been interpreted to require that the two marks must be substantially identical to each other: Optical 88 Limited v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457 (Optical 88 (FCA)) at [256], affirmed in Optical 88 Ltd v Optical 88 Pty Ltd (2011) 93 IPR 202 (Optical 88 (FCAFC)) at [35]–[39] and PDP CapitalPty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174 (PDP Capital) at [161].
The test for assessing substantial similarity involves a side by side comparison of the two marks. The Court must be satisfied that, when viewed side by side, having regard to their similarities and differences, a total impression of similarity emerges from a comparison of the two marks: Shell at 414; PDP Capital at [161]; Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391.
Authorised use
Authorised use of a mark requires the trade mark user to establish “control as a matter of substance”: see Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 at [97] (Lodestar); Ceramiche Caesar SPA v Caesarstone Ltd (2020) 154 IPR 237 (Ceramiche). Determining whether there has been control will be a case-specific enquiry and a question of fact and degree: Lodestar at [98]; Ceramiche at [40].
In Lodestar, the Full Court of this Court determined that control was not made out. While the trade mark owner had issued a licence to the trade mark user, that, without more, is not sufficient to establish control within the meaning of s 8 of the TMA: Lodestar at [97], [108]. Examining the terms of the licence and the evidence before the Court, Besanko J (Allsop CJ, Greenwood and Nicholas JJ agreeing) found at [107] that the quality control provisions did not have a precise standard, and there was no evidence of the registered trade mark owner ever contacting the user to ensure compliance.
In Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 143 IPR 1 (Trident), a differently constituted Full Court considered authorised use in the context of a corporate group where one entity held the registered marks while another used them. The Court differentiated the factual circumstances from those in Lodestar, finding that in this situation the companies had a “unity of purpose” and common directors. At [45]–[46], the Full Court said:
The issue is not whether one company controlled the other but rather whether Trident Foods, even though a wholly owned subsidiary of Manassen, had control over Manassen’s use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purchase. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks… This is not a case like Lodestar in which there was no relationship between the owner and user of the marks beyond a licence. This case is at the other end of the spectrum. As Trident Foods submitted, it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand. The fact that this must also have been Manassen’s purpose simply confirms the unity of purpose between the corporate entities. But unity of purpose is not inconsistent with the existence of control in a case such as the present.
… The natural and ordinary inference given the relationship between the companies would be of unity of purpose, rendering redundant any particular illustration of the actual control of Trident Foods must have had as the owner of the marks. Unity of purpose is indicative of the existence of actual control vested in Trident Foods as the entity owning the marks over Manassen as the entity using the marks.
The 914 Mark
The parties’ submissions
Taking the 914 Mark first, Henkel contends there are four reasons why the 914 Mark should be removed for non-use.
First, to the extent that RB has used product images on packaging and related marketing materials, those images are not substantially identical to the 914 Mark.
Second, even if the Court finds that the Finish capsule images are substantially identical to the 914 Mark, RB has not used the product images as a trade mark, but rather has used the images to identify the dishwashing capsule products being offered for sale.
Third, RB has not used the 914 Mark under the control of RB BV. In other words, to the extent there has been any use of the 914 Mark it has not been use by the trade mark owner, or with their authorisation.
Fourth, RB has not used the 914 Mark in relation to goods for which it is registered in classes 1 and 3, other than dishwashing products.
RB relies on three “marks” it used during the relevant period to demonstrate use of the 914 Mark.
(a)The Quantum Device (as shown on the front of the FINISH Quantum packaging):
(b)The Quantum Ultimate Device (as shown on the front of the FINISH Quantum Ultimate packaging):
(c)The Quantum Ultimate Product (being product depictions in television commercials, on the Amazon webpage and on some historical forms of packaging):
RB submits that on the basis of the examples of use of the marks set out above it has used the 914 Mark, or the 914 Mark with additions or alterations that do not substantially affect its identity, during the relevant period.
RB accepts that there has not been use of the 914 Mark on the non-dishwashing products in the registration, but relies on the Court’s discretion to retain the registration for those products. RB submits that it would not be in the interests of the parties or the public to remove the mark, as RB has not abandoned the 914 Mark and products bearing the 914 Mark remain on sale. Retaining the 914 Mark on the Register would maintain the purity of the Register rather than undermining its integrity.
Consideration
Substantial identity
I now turn to the question of whether RB has used a mark substantially identical to the 914 Mark during the relevant period.
The 914 Mark is a three dimensional shape mark. The 914 Mark is defined in the endorsement as:
… a rectangular shaped capsule with rounded corners; the capsule has a RED cylindrical compartment embedded in the capsule; the RED centre is partly encircled by a BLUE portion of the capsule resembling a wave; the BLUE wave portion of the capsule is made of a gel substance; the remaining portion of the capsule consists of multicoloured granules of powder.
The Quantum Ultimate Product is shown face-on in some of the product packaging (as depicted in supermarket catalogues), in the Amazon online store, and in television commercials. In these contexts, a three dimensional view of the product is not available.
The Quantum Ultimate Product has several similarities to the 914 Mark, including:
(a)a rectangular shaped capsule with rounded corners;
(b)a red circle in the centre of the top surface of the product which is flush with the surface of the product.
The endorsement to the registration of the 914 Mark notes that capsule has a red cylindrical compartment embedded in the capsule. In the depiction of the 914 Mark, the cylinder appears as a red circle on the top surface of the capsule which is flush with the surface. It is not possible from the depiction alone to know whether the red circle is a spot, or whether the red has depth and extends into or through the capsule, or whether it is visible on the bottom of the capsule. Likewise, in the Quantum Ultimate Product there is a red circle on the top surface which is flush with the surface, it is not possible to see whether the circle has depth and extends into or through the product.
Additional similarities between the 914 Mark and the Quantum Ultimate Product exist. The red circle in the centre of the top surface of the product is partly encircled by a blue portion of the product loosely resembling a wave. The blue portion of the product appears to be made of a gel substance.
The contours of the blue and white compartments of the Quantum Ultimate Product emphasise the shape of the blue wave and central red circle, as does the 914 Mark.
The remaining portion of the Quantum Ultimate Product as pictured on the packaging appears to consist of white granules of powder, not the multi-coloured granules of the 914 Mark endorsement. It is not clear whether the granules depicted in the Amazon advertisement of the Quantum Ultimate Product have faint speckles.
The multi-coloured speckles are only faintly visible as dots on the representation of the 914 Mark on the register. I do not consider that the absence of multi-coloured speckles in the non-blue wave section of the Quantum Ultimate Product substantially affects the identity of the 914 Mark.
For those reasons, I consider that the Quantum Ultimate Product as depicted on the packaging is substantially identical to the 914 Mark.

However, I do not consider that the Quantum Device nor the Quantum Ultimate Device (together, the Quantum Devices) are substantially similar to the 914 Mark.
There are significant differences between the 914 Mark and the Quantum Devices (the only difference between the two Quantum Devices being the presence of a blue spiral in the Quantum Ultimate Device which is not present in the Quantum Device). A comparison between the Quantum Devices and the 914 Mark shows that there are material differences such that no total impression of similarity emerges.
Both the Quantum Devices feature a prominent red ball floating above the capsule. In contrast the 914 Mark does not feature any image of a red ball. The endorsement refers to a red cylindrical compartment being “embedded” in the capsule and the depiction has a flat red circle flush with the top surface. Even though the cylinder of the 914 Mark is not visible to the viewer, it is apparent to the viewer of the Quantum Devices that the red ball floating above the capsule is not the embedded “cylindrical compartment” of the endorsement.
The red cylindrical compartment is said in the endorsement to be partly encircled by the blue section. In the 914 Mark depiction, the red circle is partly encircled by the blue wave like section of the capsule. In the Quantum Devices the red ball is suspended above the surface of the capsule; there is no contact between the red ball and the capsule, including the blue section.
The red ball in the Quantum Devices floats above the capsules, it is wholly separated from the capsule. In contrast the 914 Mark endorsement refers to a red cylindrical compartment and the depiction has a flat red circle flush with the top surface. 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.
The separation of the red ball from the capsule is emphasised in the Quantum Devices by a “star burst” effect which surrounds the red ball, and of which reflections can be seen on the surface of the red ball. There is also a translucent column of light emanating from the empty hole or cavity in the capsule which connects the ball to the capsule, and suggests that the red ball has burst or exploded dynamically from the capsule. The dynamic movement of the red ball in the Quantum Devices has no counterpart in the 914 Mark.
In addition to the “star burst” effect and translucent column, the Quantum Ultimate Device has a blue spiral which starts in the blue section of the capsule and coils one and a half times to finish on the far side of the red ball. This further emphasises the dynamic movement of the red ball and its separation from the surface of the capsule. Again there is no counterpart in the 914 Mark to the blue spiral.
The Quantum Devices are not substantially identical to the 914 Mark.
Use as a trade mark
I now turn to consider whether RB has used the 914 Mark as a trade mark during the relevant period, being 16 July 2018 to 16 July 2021. Given my finding that the Quantum Devices are not substantially identical to the 914 Mark, it is only necessary to consider whether RB used the Quantum Ultimate Product as a trade mark during the relevant period.
The use of the Quantum Ultimate Product relied upon by RB is
(a)use on product packaging for various Finish Quantum products sold or advertised for sale;
(b)use in television commercials for the Finish Quantum Ultimate product; and
(c)use on the Finish Quantum product page on the Amazon website.
The first example of “use” of the 914 Mark on product packaging was the purple FINISH Quantum package pictured in a South Australian Foodland catalogue published during the relevant period.
The purple packaging has the FINISH POWERBALL Logo prominently displayed at the centre of the top of the packaging. Under the FINISH POWERBALL Logo is a Quantum Device in the centre of the packaging, with the word “QUANTUM” underneath on a triangular purple section.
A row of four Quantum Ultimate Products is displayed at the bottom of the packaging. The two centre Quantum Ultimate Products are mostly obscured by the purple triangular section that rises up from the bottom of the packaging. The far left and right Quantum Ultimate Products are partially obscured by the purple triangular section, with about three quarters of each visible.
I do not consider that the use of the image of the Quantum Ultimate Product is use as a trade mark on this packaging. The only purpose of the presence of the Quantum Ultimate Product image on this packaging is to show what the product inside the packaging looks like. This is not an example of use of the 914 Mark as a trade mark.
A further example of “use” on product packaging was taken from a weekly specials catalogue for the Supabarn Farmer’s Market supermarket chain published during the relevant period.
In this packaging, there is a clear cut out on the front of the bag, where shoppers can see six of the actual Quantum tablets inside the packaging.
Again, I do not consider this packaging to be use of the 914 Mark as a trade mark. Although this packaging does allow shoppers to see the actual product, that product in my view is not functioning as a trade mark. Rather the clear window in the packaging allows the customer to see what the tablets that are otherwise concealed in the packaging look like, taking the place of the stylised depiction.
The next examples of use relied upon by RB were use displayed during television commercials broadcast during the relevant period. Three commercials were relied upon, each advertising FINISH Quantum Ultimate, and contained images such as the following.
Henkel accepted Mr Le Guay’s evidence that the three commercials were broadcast during the relevant period.
The first commercial begins with the focus on a packet of FINISH Quantum Ultimate in the centre of the screen on a blurred white kitchen bench and a voice over saying “new FINISH Quantum Ultimate with even more cleaning power”.
The FINISH Quantum Ultimate packaging which appears in each of the television commercials has the FINISH POWERBALL Logo prominently displayed at the centre of the top of the packaging. Under the FINISH POWERBALL Logo is a Quantum Ultimate Device in the centre of the packaging, with the words “Quantum Ultimate” underneath on a triangular silver section.
In an animated sequence the Quantum Ultimate Device on the front of the package transforms into a Quantum Ultimate Product which explodes into round droplets of blue and white liquid. The blue and white liquid droplets then swirl amongst the dirty dishes and glasses to clean them, including, according to the voiceover, by removing grease and leaving them shining. It is during this sequence that the two images relied on by RB appear.
The transformation sequence commences with the red ball suspended above the tablet on the packaging sinking down into the tablet and being absorbed into and becoming a part of the tablet. The tablet then rises out of the packaging to become a Quantum Ultimate Product which comes towards the viewer and for an instant an image like the 914 Mark is seen. It appears that it is during this sequence that the image of the product packaging image (with the Quantum Ultimate Product rather than the Quantum Ultimate Device) above is taken.
The Quantum Ultimate Product is then seen for an instant in a dishwasher before exploding into white, blue and red balls which, in turn, explode outwards. On closer examination the white ball appears to be a clear ball containing granules. The focus of the commercial is then only on the white and blue balls as they travel towards the dirty dishes. Where the balls splatter on the dishes, the dishes are clean. A blue ball then swirls around a glass leaving it clean and shining.
For the last three seconds of the 15-second advertisement the FINISH Quantum Ultimate packaging (as seen at the start of the advertisement) is displayed.
In the first commercial, the display of the Quantum Ultimate Product in the form shown above is the fleeting appearance during the transformation at around the two second mark.
Even less time is devoted to the shot of the product packaging with the Quantum Ultimate Product, which appears only as part of the sequence whereby the Quantum Ultimate Device on the packaging transforms to the Quantum Ultimate Product in the dishwasher.
The second commercial is 30 seconds in length. The first 10 seconds are taken up showing various families sharing a meal. At the 11 second mark the same image of the FINISH Quantum Ultimate packaging on a blurred white kitchen bench as seen in the first commercial appears. The same animated transformation sequence as described above then takes place at the same speed as in the first commercial. The FINISH Quantum Ultimate packaging is prominently displayed for the last four seconds of the commercial.
The third commercial is also 30 seconds long. It commences by looking at a number of control panels of dishwashers from “leading” dishwasher manufacturers. At the 10-second mark a man in a white lab coat appears holding a tablet device on which the name of three dishwashing product brands: FAIRY, LOGIX and EARTH CHOICE. The man swipes the display of the tablet across to reveal only the FINISH logo (in the same form as the FINISH POWERBALL Logo, but without the white text reading “powerball” on the red portion).
Next, the FINISH Quantum Ultimate packaging is seen and the transformation animation sequence occurs, if anything, faster than in the other two commercials. The man in the lab coat reappears at about the 24 second mark, holding the FINISH Quantum Ultimate packaging. The last few seconds of the commercial has the FINISH Quantum Ultimate packaging displayed underneath the logos of seven “renowned” dishwasher manufacturers.
In each of the three commercials, it is only possible to discern the stages of the transformation animated sequence described above by stopping the video at millisecond intervals. This is a facility not available to the ordinary viewer of the advertisement on the television during a commercial break. The impression left with the ordinary viewer when the commercial is viewed in its entirety is of the FINISH Quantum Ultimate packaging, as this packaging is displayed at the start and finish of the advertisement for a time sufficient for the viewer to see and read the packaging. This impression is reinforced by the voiceover which emphasises the FINISH brand, for example ending “Choose the Number 1 recommended brand, FINISH”. The viewer is left in no doubt that what is being advertised is a dishwashing capsule product made and offered for sale under the FINISH brand.
The two still images relied upon by RB to show use as a trade mark are decontextualised images, removed from the context in which the consumer viewing the advertisement would actually see them. They are visible if the viewer knows to look for them, and then only if the viewer is able to stop the video to see them, otherwise their appearance is at best fleeting and overwhelmed by the surrounding colour and movement of the advertisement.
These fleeting glimpses of the 914 Mark are not dissimilar to the animated humanised oil drop in the Shell case. In that case, a humanised oil drop was seen throughout the advertisement, but there were only ‘fleeting glimpses of substantial identity’.
In Shell at 425, Kitto J (with whom Dixon and McTiernan JJ agreed) posed the following question:
…whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.
Kitto J then considered the question:
Clearly they were used so that the figure in all its varying forms would be understood as representing Shell petrol for the purposes of the disjointed tale that is told. But the connexion in the films between the oil drop man and the petrol he symbolizes is a connexion limited by the purpose of the occasion. At every point of the exhibition, whether the resemblance to the respondent's trade marks be at the moment close or remote, the purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol. This fact makes it, I think, quite certain that no viewer would ever pick out any of the individual scenes in which the man resembles the respondent's trade marks, whether those scenes be few or many, and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs.” And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin. No doubt if, later, the viewer were to come across the respondent's trade mark used in relation to petrol his recollection of the films might lead him to think that the appellant, taking advantage of a reputation created for the oil drop figure by means of the films, had adopted the figure, in one of its forms, as a mark for its petrol. But that would be quite a different matter from inferring, while sitting in front of his television set, that the figure in one or more, some or all, of its exhibited forms was being placed before him there as a trade mark for Shell petrol.
This reasoning applies with respect to each of the three commercials relied upon by RB, and the short animated sequence within them. The FINISH Quantum Ultimate Product appears fleetingly in the commercials for the purpose of conveying by a combination of pictures and words a particular message about the qualities of the FINISH Quantum Ultimate capsules the subject of the commercials. The FINISH Quantum Ultimate capsule is depicted in a functional role to demonstrate the cleaning power of the FINISH Quantum Ultimate capsule. The image of the FINISH Quantum Ultimate Product appears fleetingly in the course of the animated sequence (which itself only occupies a brief portion of the commercial) the purpose of which is to show the FINISH Quantum Ultimate Product quickly and effectively cleaning dirty dishes and leaving them sparkling. It is not used to designate trade origin. That role is performed by the prominent use of the FINISH brand name and FINISH POWERBALL Logo, both in the text displayed throughout the commercials, on the packaging depicted, and in the voiceovers which form part of the commercials.
I do not consider that the fleeting images of the Quantum Ultimate Product in any of the three television commercials constitute trade mark use.
RB’s third example of use is the display of the following images on the Amazon online store during the relevant period:
(the Three-Chamber Technology Images).
RB relied on Mr Le Guay’s evidence that finalised web content including the Three-Chamber Technology Images was provided by RB to Amazon on or about 8 June 2018 (the month before the relevant period), and that similar content was available on the Amazon website on 23 August 2021 (the month after the relevant period). RB asked the Court to infer that like content had been available on the Amazon online store during the relevant period. I am prepared to make the inference sought, that the material existed on the Amazon site during the relevant period. The question is whether it constitutes use as a trade mark.
The Three-Chamber Technology Images display an image of the Quantum Ultimate Product under the heading “THREE-CHAMBER TECHNOLOGY” and in one of the images the capsule is annotated to identify the three elements of the capsule: the “supercharged Powerball”, the gel, and the powder.
Henkel relied on Ms Cade’s evidence that showed that the material on the Amazon website in late August 2021 was not the same as the finalised web content. This material also provided context as to how a consumer would navigate the Amazon website to find the Three-Chamber Technology Images.
Ms Cade’s evidence was that the three-chamber technology images relied upon by RB were not immediately available to the viewer on the Amazon website. In order to view the Three-Chamber Technology Images on which RB relies it was necessary for her to take several steps once she had opened the Amazon.com.au website, including entering the search term “Finish Quantum” into the Amazon site search bar.
Ms Cade’s search produced many different FINISH products, including dishwasher tablets and other products such as rinse aid and machine cleaner. All of the FINISH products in the search results bore the prominent FINISH brand, and the word FINISH in the product description under the pictures. The FINISH brand was also displayed in a banner at the top of the webpage, along with the phrase “Amazing Value Packs on Finish Dishwasher Tablets” (see example below). Ms Cade’s evidence was that the particular product relied on by RB was the seventeenth product listed after searching for “Finish Quantum” in the Amazon search bar.
Ms Cade’s evidence was that, after scrolling down the search results page to the particular product, upon clicking the product page, the main image displayed was that of the product packaging, with a row of small thumbnails (including the Three-Chamber Technology Images) located at the left hand side. Ms Cade could transition from the main image to one of the other images by clicking on the small thumbnails. The image of the packaging was the “default image” each time Ms Cade visited the webpage.
Ms Cade gave evidence that the webpage also included a separate Three-Chamber Technology Image further down the page. This image could be seen after scrolling down approximately one-third of the webpage.
Ms Cade also clicked on to the pages of the 16 FINISH products appearing higher in the search results than the relevant product. She observed that none of them displayed the Three-Chamber Technology Images.
RB submitted that the depiction of the product in the Three-Chamber Technology Images on the Amazon website were used for more than one purpose. It is being used to convey some information to the consumer about the makeup of the products (including the red Powerball), as well as functioning as a trade mark.
The evidence shows that no consumer would ever be immediately confronted with the Three-Chamber Technology Images on entering the Amazon website or searching for “finish quantum”. There are no instances of use of the Three-Chamber Technology Images as the primary image in any advertising use, whether in a supermarket catalogue, television commercial, or online. To the contrary, the evidence is that to find these images, the consumer would need to follow the process undertaken by Ms Cade: to go to the Amazon website, search for “finish quantum”, scroll past 16 other FINISH products displayed as a result of the search (each bearing the prominent FINISH brand), click on the 17^th product, and then, once on the page (displaying a large package of FINISH Quantum), click on to the fourth thumbnail at the side of the page (or, alternately, scroll through several further pages of information relating to the product).
At best, all that can be inferred from the evidence, is that during the relevant period, one page on the Amazon website (being for the particular FINISH Quantum product) displayed an image of the 914 Mark, accessible only if the consumer clicked on the thumbnail or scrolled through the information on the page.

I accept Professor Klein’s evidence, especially with regard to the high number of errors a forgetful consumer would have to make before being mislead into purchasing a SOMAT product.
I do not agree that the representative class of consumers is to be narrowed in the manner suggested by RB. The appropriate class includes all classes of those shopping for automatic dishwashing products. As Deane and Fitzgerald JJ said in Taco Bell at 202 (quoting Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd (1980) 31 ALR 73 at 93):
[O]nce the relevant section of the public is established, the matter is to be considered by reference to all who come within it, “including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations”.
It is not permissible to narrow the class of consumer to exclude a particular group, such as the well-educated to more readily define a class whose members may be more easily misled. All the members of the class will be looking to select a dishwashing tablet from the supermarket shelves, all are exposed to the SE Gelcaps and FINISH products, not just the forgetful shopper. RB seeks to define the class down to a small portion of the general class so as to carve out a class of consumer who may be more likely to be misled.
In my view it is inappropriate to narrow the class of consumers to only the forgetful shopper, or, conversely, those who always buy FINISH Quantum Ultimate Pro.
In a market which the experts described as being “brand driven” and in which there are currently two major players, three with the entry of the SOMAT brand, the forgetful shopper who cannot remember the brand of the dishwashing product they use regularly, even when confronted by supermarket shelves displaying the two (or three) brands is inherently unlikely and is not representative of the relevant class of consumer.
Distinctive components
RB’s passing off case as pleaded in paragraphs 10–11 in the Amended Statement of Claim is that RB has developed a valuable reputation and goodwill in the “distinctive components” of dishwashing products which were advertised and promoted by the use of a prominent depiction of the configuration and appearance of the product. The distinctive components as pleaded include:
(a)A red Powerball (which is to say, a convex circular element) prominently visible; and
(b)The combination of that red Powerball with the colours blue and white.
The indicia as pleaded is broader than just the appearance of the FINISH gelcap which was said to have a red white and blue colour in the configuration of the 914 Mark (the FINISH Quantum and FINISH Quantum Ultimate products).
RB’s written submissions acknowledged that the depictions of the FINISH capsule products on the FINISH packaging over the years have been in a variety of forms (all said to be unique to the FINISH brand) of a blue and white rectangular tablet or capsule with a red centred spherical or circular element. The range of variety can be seen in the sixteen example products below which were relied on in RB’s submissions. Each example tablet was said by RB to have a red circular element, with a blue and white rectangular tablet or gelcap. Some examples are gelcaps with the blue wave form, others are hard tablets with equal amounts of blue and white (top blue, bottom white). Another is a white pouch and a blue pouch separated by a red ball. At least three different versions of FINISH capsules were pictured:
It must also be recalled that there was further variety in the FINISH products in addition to the different combinations of white, blue and red, with some FINISH capsules having the colours yellow or green instead of the blue section, and some being capsules rather than tablets or gelcaps. As at the date of launch of the SE Gelcaps, RB offered for sale a variety of FINISH capsules, many of which were not the gelcap, or even involved the colours red, white and blue.
The one constant in the FINISH capsules as depicted on the packaging is the existence of a red circular element: a sphere (or part thereof) or a circle. But RB did not plead a reputation for the purposes of passing off in just the red Powerball.
RB’s written closing submissions focused on the FINISH gel cap pictured below which it said had a red, white and blue configuration of the 914 Mark. During cross-examination of Professor Klein, RB’s senior counsel described the relevant FINISH product as “a predominantly white tablet with a red circular element and a blue wave like shape”.
RB’s sales figures showed that products using the wave form in the 914 Mark accounted for only a small fraction (approximately 10%) of all the FINISH dishwashing capsules sold in Australia in 2020.
RB’s passing off and misleading and deceptive conduct cases depend upon a narrow class of consumer: the forgetful shopper.
As I have said earlier, I consider that the class of consumers is broader than the forgetful shopper. I do not consider the forgetful shopper to be the hypothetical representative of the reasonable consumer for the purposes of considering whether there has been any misrepresentation. On RB’s case, the forgetful shopper is looking for a predominantly white tablet with a blue wave form and red circular element, like the configuration of the 914 Mark. As at the date of the SOMAT launch, only 10% of all FINISH dishwashing capsule sales were gelcaps in the form of the 914 Mark. Not every purchaser of FINISH capsules will be a forgetful shopper. To the contrary, I consider that only a tiny fraction of the 10% of FINISH dishwashing capsule purchasers who are gelcap consumers are likely to be “forgetful shoppers”. That is in no way representative of the broader class of consumer that is appropriate in this case: the consumer who owns an automatic dishwasher, who may know the main brands in the market, and wants to replace their stock of dishwashing capsules.
Reputation
I do not consider that RB has acquired a reputation in the Claimed Indicia sufficient to found a claim in passing off. I make that finding whether the Claimed Indicia is the red Powerball in combination with the colours white and blue, or the narrower form: a predominantly white tablet, with a blue wave form and red circular element (or 914 Mark gelcap), for the following reasons.
There was no evidence RB had ever used the Distinctive Components (of any kind) on packaging of dishwashing products on its own, without the FINISH POWERBALL Logo also being prominently displayed. The actual use of the FINISH POWERBALL Logo and the Claimed Indicia makes it less likely for the Claimed Indicia to have acquired a secondary meaning: see eg Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 107 IPR 333 at [479]; Stone & Wood at [208].
I do not consider the images of the Quantum Ultimate Products in the television commercials discussed above change that, as they are only fleetingly visible during a moment of the animated sequence of the television commercial. The FINISH POWERBALL Logo is prominently used in each of the commercials.
RB has not consistently applied the Distinctive Components to its dishwashing products or the packaging in which they are contained. The FINISH capsule range includes products of varying colour combinations (such as white and yellow or white and green) and varying shapes (ie, some capsules have the blue section layered on top of the white; some have the white and blue side by side; some have the wave form).
The substantial bulk of RB’s sales (around 90%) are for FINISH capsules other than the gelcap which do not include each of the Distinctive Components.
Professor O’Sullivan and Professor Klein agreed that the colours vary in the packaging of the FINISH capsule range reducing its usefulness as a diagnostic cue. Likewise variation in the colour of the capsules would be expected to reduce the ability of the Distinctive Components to be a useful diagnostic cue to consumers.
The FINISH capsule packaging is very cluttered with up to 18 visual features. Varying stylised depictions of the products does not stand out as much as the well-known and consistently applied FINISH POWERBALL Logo. This part of the packaging is one aspect that has been consistently applied to packaging and advertising for many years.
The colours red, blue and white are not limited to the FINISH capsules. FAIRY also uses white, blue and red on its capsules, including in a blue wave in its highest selling FAIRY Platinum Plus capsules.
I accept that RB may have a reputation in the red Powerball, as it is the one constant on the FINISH capsule packaging aside from the FINISH POWERBALL Logo, although there is variation in the depiction of the red ball in respect of its relationship with the tablet or capsule — whether it is embedded in the capsule or floating above. However, the red Powerball is but one part of the Distinctive Components relied upon by RB.
Misrepresentation or misleading conduct
Even if I were to accept that RB has established a reputation in the gelcap, or relied on the red Powerball alone, in my view, for the reasons that follow, RB has not established that Henkel has engaged in misleading or deceptive conduct, or conduct likely to mislead or deceive, or made false representations, in contravention of ss 18 and 29 of the ACL, nor engaged in passing off.
The experts agreed that consumers of low involvement products such as dishwashing tablets use least cues possible, usually only one or two cues.
Professor O’Sullivan agreed that the dishwashing capsules was a brand dominated sector, in which the two major brands had around 90% of the total dishwashing capsule market.
Given this small number of brands, and the possibility of a third entering the market in SOMAT, consumers are confronted with many stylised images. Brand would remain a good diagnostic cue. I do not accept that a consumer would elevate the importance of the product image over that of the brand.
As discussed earlier in the context of trademark infringement, the FINISH POWERBALL Logo is used on all FINISH dishwashing capsule products in the market — and is likely to be the most diagnostic cue for customers. The product images are not consistent across the FINISH range and vary with the varieties, rendering the image less diagnostic.
Professor O’Sullivan’s evidence focussed primarily on the use of the red Powerball, which may be consistent on FINISH packaging, but it is the red ball in combination with the blue and white wave form tablet (as in the 914 Mark) which is claimed as the distinctive components. Further, Professor O’Sullivan and Professor Klein agreed there are variances in how the red Powerball is displayed in relation to the capsules.
The two major brand dishwashing capsule products are stocked in the same area in the supermarket. The products of each brand are stacked together on the supermarket shelves. Consumers are familiar with seeing the two major competing brands next to each other on supermarket shelves. The photos of supermarket shelves in evidence show the SOMAT products occupying comparable shelf space to FAIRY. The arrival of another brand occupying a similar shelf area to one of the major existing brands suggest to the reasonable consumer that another major player has entered the market.
The packaging of each of the two major brands, and the SOMAT packaging, is very cluttered with up to 18 different visual cues, many of which, including the stylised depiction of the product, are common to the trade. One of the few things to stand out from the packaging to a consumer looking at a dizzying array of packages is the brand. The cluttered nature of the packaging forces the consumer to look at the brand. The brand is consistent for each brand variety, whereas the stylised image under the brand varies with variety.
The name SOMAT and the red background colour clearly differentiate those products from the FINISH products. Red and gold is not a colour combination used before in the sector.
In the case of FINISH and FAIRY, the stylised images are never seen without the prominent brand. Consumers would be aware that the stylised image is never seen without brand.
The stylised images of all brands are broadly similar: some configuration of a dishwashing tablet or capsule. The consumer needs to look closely to differentiate between the stylised images. I do not consider that a consumer would scan the various stylised images available in preference to looking for the prominent brand first. It is not a situation where only one brand has one image. There are at least 11 different images for a consumer to scan, if they are going solely by image. In contrast there are only two major brands, or three including SOMAT.
Consumers are unlikely to mistake the SOMAT brand as sub-brand of FINISH, or be misled that the SE Gelcaps are made by RB, or associated with RB.
The SE Gelcaps are different to the FINISH Gelcap, as I explained above in the context of the 914 Mark. Additionally, the overall packaging is different, with the SE Gelcaps sold in red tubs with gold lettering and the distinctive SOMAT brand which bears no similarity to the FINISH brand name. As Henkel submits, there is “virtually no visual connection between the two brands”.
I consider that even the hypothetical forgetful shopper is very unlikely to be misled.
The cross-examination of Ms Sherry as to isolated comments contained in consumer research obtained by Henkel in the UK and Australia is not of assistance.
The consumer research sought to evaluate consumer reactions to proposed 15-second television commercials for SOMAT.
The research reports were not concerned with evaluating consumer responses to SE Gelcaps. Rather, the focus of the reports was evaluating the performance of the commercials against three key marketing messages, concerning the broader SOMAT brand and range of products.
The Court was taken to five particular focus group responses which RB contended demonstrated that the SE Gelcaps were visually similar to a FINISH product, thereby creating a risk of confusion.
One of those responses, from a somewhat xenophobic focus group participant (out of 150) in the UK was as follows: "I really disliked the name of the product. It seems like an Asian name. Therefore a cheaper, inferior product. And because the ad was exactly the same as a Finish ad same blue and red detergent capsule thing, it seems like the company is ripping of Finish". This response, and others like it, do not assist RB. On the contrary, to the extent that it can demonstrate anything, it shows that consumers are not confused as they recognise that it is not a FINISH product.
A further reason why this kind of evidence does not go to establishing the risk of confusion is that there is no indication of which FINISH product the responses are referring to. No participant identified a predominantly white tablet with a blue wave form and red circle. That configuration, or the 914 Mark, is a small portion of sales. Consumers could have been referring to other FINISH products. Additionally, given the dominance of the FINISH brand on the market, it is perhaps expected that consumers would give feedback on a new product with reference to known existing brands.
The brand names are prominently displayed on every package, and the SOMAT packaging has a red background with gold writing, neither used in the FINISH repertoire. In my view there is no real likelihood of confusion, let alone confusion to the extent of being misled or deceived as to any association between the SE Gelcaps and the FINISH capsules.
Biodegradability representation
Prior to 3 September 2021, the SE Gelcaps were offered for sale in packaging that bore the following green device (the Biodegradability Device):
The Biodegradability Device included text reading “biodegradable” at the top of the circle and “100% water-soluble film” at the bottom of the circle, in what can only be described as very small font. The text was white against a green background. The Biodegradability Device appeared on the top right of both kinds of SE Gelcap packaging: the foil bag and the plastic tub. The device was about the size of a 10c piece on the foil bags and a 5c piece on the tubs.
A smaller version of the Biodegradability Device is also found on the side of the tub, and on the back of the foil bag. In both cases, the device is part of a green coloured panel of four “environmental” call outs. In this form the wording is beside the circle containing the image and reads “Biodegradable and 100% water-soluble film”.
Since 3 September 2021, the text of the Biodegradability Device on the packaging of the SE Gelcaps has been altered to read “biodegradable film” and “100% water-soluble film”.
RB contends that the SE Gelcaps are sold and promoted to retailers and consumers by reference to the Biodegradability Device, and that by doing so, Henkel has represented to consumers that the SE Gelcap is wholly biodegradable (Biodegradability Representation).
RB submits that the Biodegradability Representation is false because the SE Gelcaps include several ingredients that it says are not biodegradable including perfumes and dyes. As a result, RB submits that Henkel has engaged in misleading and deceptive conduct in contravention of s 18(1) of the ACL, and made false and misleading representations that the SE Gelcaps are of a particular standard, quality or composition, or have particular performance characteristics in contravention of s 29(1)(a) and (g) of the ACL.
Henkel denied that it had made the representation alleged, for reasons that I shall discuss shortly. Henkel admits that it has represented to consumers that the film that encapsulates the SE capsules is biodegradable.
Henkel says that many of the substances from which the SE Gelcaps are composed are biodegradable, but it accepts that if (which it denied) the Biodegradability Device (prior to amendment) conveyed the Biodegradability Representation, then that representation would be incorrect.
In any event, Henkel has, without admission, since the injunction hearing taken steps to amend the Biodegradability Device in the manner set out above. Henkel proffered an undertaking to the Court that it would not use the unamended Biodegradability Device on SE Gelcaps again, unless the facts change and the product as a whole is capable of being described as biodegradable.
Henkel submits that the Biodegradability Representation allegations should be rejected for four reasons.
First, when the Biodegradability Device is read as a whole, it clearly states “biodegradable 100% water-soluble film”: a representation that the film, in which the SE Gelcaps are wrapped, is biodegradable. Henkel contends this representation is true.
Second, the Biodegradability Device does not state that the whole of the SE Gelcaps are biodegradable. Henkel submits that the Biodegradability Representation could only conceivable arise if the consumer confined their attention to the top half of the Biodegradability Device, ignoring the text on the bottom half. Henkel submits that such an analysis would be erroneous as the bottom half is just a prominent as the top half, and the entire representation in question should be considered.
Third, the Biodegradability device would be read and understood by the ordinary and reasonable consumer in the context of the SE Gelcap packaging as a whole. The packaging states on the back (and the tub on the side) “Biodegradable and 100% water-soluble film”. In the case of the SE Gelcap packaging, this statement is repeated on the foil sealing the tub closed, albeit that this would not be able to be seen by a purchaser until after purchase.
Fourth, Henkel has voluntarily and without admission, taken steps to amend the device in the way described above. The amended text makes it abundantly clear that the biodegradability representation concerns the SE Gelcap film, and not the entirety of the SE Gelcaps.

The importance of this issue in the context of the proceeding can be seen from the fact that RB devoted two paragraphs in its written closing submissions to the issue.
There was no evidence as to how environmental factors such as biodegradability might influence the relevant class of consumer.
The SE Gelcap packaging is cluttered with visual features, many of which are circles or boxes containing text such as “unique GEL Technology” or “even in eco & short cycles”. The Biodegradability Device is just one of the 16 visual features on the front of the packaging, which include the SOMAT brand and the red background.
As previously discussed, the SE Gelcaps are a low involvement product where consumers take a matter of seconds to select the product that they are to purchase, relying on one or two visual cues to do so.
In the circumstances where the SE Gelcaps are a low involvement product where consumers take a matter of seconds to select the product that they are to purchase, consumers are very unlikely to pick up the packages off the shelf to examine them, and read the many epithets and shout outs on the packaging in detail. The small size of the Biodegradability Device makes it unlikely that any consumers would be able to read the words contained in the circle without picking up and closely examining the packaging.
Those consumers who were minded to pick up and examine the SE Gelcap packaging, would be expected to examine the packaging fully, and not just limit their examination to the front of the packaging. These consumers would also see as part of their examination the Biodegradability Device on the back, or tin foil in the tub, and would not be misled or deceived that the capsule, rather than just the film, was biodegradable.
The Biodegradability Representation misleading and deceptive conduct case must fail.
CONCLUSION
RB has failed on its infringement case. The SE Logo does not infringe either the 914 Mark or the 311 Mark.
RB has also failed on its passing off and misleading and deceptive conduct cases.
Henkel has succeeded on its cross-claim. RB has not used the 914 Mark or the 311 Mark over the relevant period. I will not exercise my discretion to permit the 914 Mark and the 311 Mark to remain on the Register.
I will hear further from the parties concerning orders to give effect to these reasons.

I certify that the preceding four hundred and four (404) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.
Associate:
Dated: 6 September 2022

File number(s):	NSD 823 of 2021
Judgment of:	ROFE J
Date of judgment:	6 September 2022
Catchwords:	TRADE MARKS – whether the respondent infringed the second applicant’s registered trade marks under s 120 of the Trade Marks Act 1995 (Cth) – whether the respondent used the depiction of its SOMAT dishwashing capsule as a trade mark – whether the respondent’s device was deceptively similar to the second applicant’s trade marks – whether the respondent’s device was used in good faith to indicate the kind, quality, or some other characteristic of the goods TRADE MARKS – cross-claim for removal for non-use under s 92 of the Trade Marks Act 1995 (Cth) – whether the second applicant used its registered trade marks during the relevant period – whether the second applicant used devices substantially identical to its registered marks – whether use by the first applicant constituted authorised use CONSUMER LAW – whether the respondent’s use of its device constituted passing off or misleading and deceptive conduct under ss 18 and 29 of the Australian Consumer Law
Legislation:	Competition and Consumer Act 2010 (Cth) Trade Marks Act 1995 (Cth) Trade Marks Act 1955 (Cth) Trade Practices Act 1974 (Cth) Trade Marks Act 1938 (UK)
Cases cited:	Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 286 FCR 259 Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490 Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 278 FCR 450 Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 137 IPR 385 Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 Baume & Co Ltd v Moore (AH) Ltd [1958] RPC 226 Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 129 IPR 482 BP plc v Woolworths Limited (2004) 212 ALR 79 CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 Ceramiche Caesar SPA v Caesarstone Ltd (2020) 154 IPR 237 Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 Colorado Group v Strandbags Group No 2 (2006) 69 IPR 281 Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Domain Names Australia Pty Ltd v .au Domain Administration Ltd (2004) 139 FCR 215 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 Frucor Beverages Ltd v The Coca-Cola Company (2018) 132 IPR 318 Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 66 IPR 19 Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc (2020) 15 IPR 186 Hermes Trade Mark [1982] RPC 425 Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 Kowa Co Ltd v Organon [2005] FCA 1282 Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 87 IPR 464 New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 Optical 88 Limited v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457 Optical 88 Ltd v Optical 88 Pty Ltd (2011) 93 IPR 202 PDP CapitalPty Ltd v Grasshopper Ventures Pty Ltd (2021) 160 IPR 174 Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd (1996) 33 IPR 161 Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279 Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 291 Pinnacle Runway Pty Ltd v Triangl Ltd (2019) 148 IPR 211 Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd (1980) 31 ALR 73 RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2021] FCA 1094 Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd (2018) 129 IPR 238 Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Taxiprop Pty Ltd v Neutron Holdings Inc (2020) 156 IPR 1 Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 107 IPR 333 TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43 Trident Seafoods Corporation v Trident Foods Pty Ltd (2019) 143 IPR 1 Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd (2020) 150 IPR 11
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	404
Date of hearing:	16–18 November 2021
Counsel for the Applicants:	Michael Hall SC with Gilbert Tsang
Solicitor for the Applicants:	Thomson Geer
Counsel for the Respondent:	Ed Heerey QC with Peter Creighton-Selvay
Solicitor for the Respondent:	Ashurst Australia

NSD 823 of 2021
BETWEEN:	RB (HYGIENE HOME) AUSTRALIA PTY LTD First Applicant RECKITT BENCKISER FINISH BV Second Applicant
AND:	HENKEL AUSTRALIA PTY LTD Respondent
AND BETWEEN:	HENKEL AUSTRALIA PTY LTD Cross-Claimant
AND:	RECKITT BENCKISER FINISH BV Cross-Respondent

ORDER MADE BY:	ROFE J
DATE OF ORDER:	6 SEPTEMBER 2022

Product name	Colours	Capsule type
FINISH Classic	White and blue with red Powerball	Tablet
FINISH All in 1	White and blue with red Powerball	Tablet
FINISH All in 1 (Lemon Sparkle)	White and blue with red Powerball	Tablet
FINISH 0%	White and green with red Powerball	Tablet
FINISH All in 1 Max	White and blue with red Powerball	Tablet
FINISH Quantum	White and blue with red Powerball	Gelcap
FINISH Quantum Ultimate	White and blue with red Powerball	Gelcap
FINISH Quantum Ultimate (Lemon Sparkle)	White and yellow with red Powerball	Gelcap
FINISH Quantum Ultimate Pro	Speckled white and blue with red Powerball	Other capsule
FINISH Quantum Ultimate Pro 0% (free from perfume)	White and green with red Powerball	Other capsule
FINISH Quantum Ultimate Pro (Lemon Sparkle)	Speckled white and yellow with red Powerball	Other capsule