RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10

Federal Court of Australia

RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 Appeal from: RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2022] FCA 1042

File number(s): NSD 915 of 2022

Judgment of: NICHOLAS, BURLEY AND HESPE JJ

Date of judgment: 16 February 2024

Catchwords: TRADE MARKS – non-use – Trade Marks Act 1995 (Cth) s 92(4)(b) – shape trade mark - whether alleged use is use as a trade mark – relevant principles applicable to non-traditional trade marks – consideration of difference between test for whether one mark is "substantially identical" to another and test under s 100(3)(a) regarding use of a "trade mark, or a trade mark with additions or alterations not substantially affecting its identity" – use established. TRADE MARKS – non-use – Trade Marks Act 1995 (Cth) s 92(4)(b) – whether a trade mark used as part of a more complex composite trade mark has been used – principles considered – use not established. TRADE MARKS – non-use –exercise of discretion under s 101(3) to permit mark to remain on the Register –discretion re-exercised. TRADE MARKS – infringement – whether one mark is deceptively similar to another – no error established. CONSUMER LAW – whether primary judge erred in finding that use of "biodegradability" device did not constitute passing off or misleading and deceptive conduct under ss 18 and 29 of the Australian Consumer Law – error established.

Legislation: Competition and Consumer Act 2010 (Cth) Schedule 2 (Australian Consumer Law) ss 18, 18(1), 29, 29(1)(a), 29(1)(g), 232, 232(4)(a) Trade Marks Act 1955 (Cth) s 40(1) Trade Marks Act 1995 (Cth) ss 6, 7(1), 7(3), 7(4), 8, 8(1), 8(3), 8(4), 17, 41 41(3), 41(6), 92(1), 92(1), 92(3), 92(4)(b), 100(1)(c), 100(3), 100(3)(a), 101(3), 120(1), 122(1)(b), 122(1)(b)(i), Part 9 Trade Mark Regulations 1995 (Cth) reg 4.3(7)