Reckitt & Colman (Overseas) Limited v S.C Johnson & Son, Inc

Reckitt & Colman (Overseas) Limited (the applicant) sought an interlocutory injunction against S.C Johnson & Son, Inc (the respondent) to restrain the respondent from infringing the applicant's registered trade mark "COACHMAN" for use on insect repellent products. The dispute concerned the respondent's proposed use of the mark "COACHMAN" on its own insect repellent products, which the applicant alleged would cause confusion and damage to its established goodwill and reputation. The matter came before Ian Forno J in the Supreme Court of New South Wales.

The primary legal issue before the court was whether the applicant had established a sufficient likelihood of success in its claim for trade mark infringement and passing off to warrant the grant of an interlocutory injunction. This required the court to consider whether the respondent's proposed use of the mark was likely to deceive or cause confusion among consumers as to the origin of the goods, and whether the applicant's mark had acquired a reputation such that the respondent's actions would amount to passing off.

His Honour applied the well-established principles for granting interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that the balance of convenience favoured the grant of the injunction. In assessing the likelihood of deception or confusion, the court considered the similarity of the marks, the nature of the goods, the relevant class of purchasers, and the circumstances of their use. The court also considered the potential for damage to the applicant's goodwill and the adequacy of damages as a remedy.

The court ultimately granted the interlocutory injunction, finding that the applicant had established a serious question to be tried regarding trade mark infringement and passing off, and that the balance of convenience favoured the applicant. His Honour was satisfied that the applicant had demonstrated a real likelihood of confusion and damage to its reputation if the injunction were not granted.