RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd

The applicants, RB (Hygiene Home) Australia Pty Ltd and RBF, part of the Reckitt Benckiser group, brought proceedings against Henkel Australia Pty Ltd, seeking relief for alleged trade mark infringement, passing off, and misleading and deceptive conduct. RB sought to have Henkel's use of its SOMAT dishwashing capsule as a trade mark found to be an infringement of their registered trade marks under the Trade Marks Act 1995 (Cth). RB also sought to have Henkel's device, the SOMAT capsule, found to be deceptively similar to their marks and to have it declared that Henkel used its device in good faith to indicate the kind, quality, or some other characteristic of the goods. Additionally, RB sought to have Henkel's use of its device found to constitute passing off or misleading and deceptive conduct under the Australian Consumer Law. Henkel, in turn, brought a cross-claim for removal of the applicants' registered trade marks for non-use under the Trade Marks Act 1995 (Cth).

The primary issue before the court was whether Henkel's use of its SOMAT dishwashing capsule as a trade mark constituted an infringement of RB's registered trade marks. The court also had to determine whether Henkel's device was deceptively similar to RB's marks and whether it was used in good faith to indicate the kind, quality, or some other characteristic of the goods. Furthermore, the court had to consider whether Henkel's use of its device constituted passing off or misleading and deceptive conduct under the Australian Consumer Law. The court also needed to assess Henkel's cross-claim for removal of RB's registered trade marks for non-use under the Trade Marks Act 1995 (Cth).

The court found that RB had failed to establish its claims of trade mark infringement, passing off, and misleading and deceptive conduct. The court held that the SE Logo did not infringe either the 914 Mark or the 311 Mark, and that Henkel's use of its SOMAT capsule as a trade mark did not constitute an infringement of RB's registered trade marks. The court also found that RB had not used the 914 Mark or the 311 Mark during the relevant period and thus Henkel succeeded on its cross-claim. The court exercised its discretion not to permit the 914 Mark and the 311 Mark to remain on the Register.

In conclusion, the applicants failed to prove their claims against Henkel, and Henkel was successful in its cross-claim for removal of the applicants' registered trade marks for non-use. The parties were required to confer and submit an agreed minute of orders to give effect to these reasons within 14 days. If the parties could not reach an agreement, each party was to provide their proposed minute of orders within the same period specified in the order.