The Federal Court has recently published its decision following the first instance trial on the merits in the ongoing stoush between Reckitt Benckiser (RB) (manufacturer of FINISH dishwasher products) and
In
Despite this initial victory, following detailed consideration of the issues and evidence (including additional expert evidence) in a full trial on the merits,
This decision has important lessons for brand owners seeking to protect and enforce 'secondary' or subsidiary branding elements, namely:
- the need to ensure that subsidiary branding elements are used consistently and prominently across the life of the trade mark registration;
- the need to use subsidiary branding elements to designate trade origin independently of the main brand; and
- the difficulties that brand owners can face in enforcing trade marks that could be said to perform a functional role, such as depicting product appearance, particularly in the context of 'low involvement' consumer products where the brand name can be considered the primary differentiator for the consumer. In this context, additional and deliberate effort may be required to ensure the use of a subsidiary mark follows principles (1) and (2) above.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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