Summary

On 19 August 2014, the Federal Court of Australia handed down its interlocutory decision in the dispute between Unilever Australia Limited v Revlon Australia Pty Ltd (No 2) [2014] FCA 875. This is the second interlocutory application the Court has heard in recent months with the dispute being set down for final hearing in September 2014.

Dismissing Revlon’s interlocutory application, the Court ruled that Revlon failed to establish that it has a substantial reputation in its Mitchum Clinical products in Australia and even if it did, it is unlikely that consumers would be misled into believing that Revlon’s product, Mitchum Clinical, and Unilever’s product, Rexona Clinical Protection, were associated.

Business Impact

  • These proceedings are a timely reminder that a brand owner’s reputation in the ‘get-up’ of a product may be protected in Australia through the law of passing off and Australian Consumer Law (even if a brand owner does not have a registered trade mark).
  • ‘Get-up’ refers to how a good is presented for sale and can include distinguishing features such as a product’s shape, container, packaging, labelling or in some cases the design of the product itself. To be protected, it must be shown that consumers associate the ‘get-up’ with the brand owner’s goods. The existence of a reputation needs to be established through evidence.
  • The case demonstrates the value of deploying detailed evidence, even upon an interlocutory, from a brand owner’s own technical and marketing specialists, as well as possibly expert witnesses.
  • The decision also demonstrates the efficiency and availability of the Australian Courts in resolving such disputes in a timely manner. The responsiveness of the Courts to act quickly is good news for brand owners of consumer goods who may need to move swiftly to protect their brand in the face of fast-moving product launches or advertising campaigns.

Background

Unilever and Revlon manufacture and sell competing brands of ‘clinical’ anti-perspirant deodorant products in Australia. ‘Clinical’ anti-perspirant products are a special category of anti-perspirants, designed to provide protection against heavy sweating. These products make up approximately 1.8% of the total sales of the broader antiperspirant deodorant market, equating to approximately $20 million in value. Unilever’s products are sold under the brand names Rexona and Dove, with Revlon’s products being sold as Mitchum.

In late May 2014, Unilever commenced proceedings in the Federal Court of Australia against Revlon in relation to its Mitchum Clinical product then recently launched in Australia over allegedly misleading representations. Unilever sought an interlocutory injunction to restrain Revlon’s advertising campaign for its Mitchum Clinical product. While the Court was of the opinion that consumers may be misled by Revlon’s advertising campaign, on balance, the Court did not grant the interlocutory injunction. In doing so, the Court placed emphasis on the fact that an injunction would have a serious adverse impact on Revlon’s worldwide marketing campaign and the fact that final trial could be scheduled to take place shortly.

In July 2014, Unilever began marketing and distributing its Rexona Clinical Protection products in a new packaging. Unilever gave evidence that the new packaging was part of a worldwide rebranding of the Rexona products. Revlon alleged that Unilever’s rebranding amounted to passing off and misleading and deceptive conduct in breach of the Australian Consumer Law. Revlon argued that Australian consumers are likely to be confused by the new Rexona packaging, thinking that the Rexona products are Mitchum Clinical products or in some way associated with the Mitchum brand. In early August 2014, Revlon sought an interlocutory injunction to restrain Unilever from selling or marketing the Rexona Clinical Protection products in the new packaging.

In Australia, an interlocutory injunction is a discretionary remedy. To award an injunction, the Court needs to be satisfied that the applicant’s case is sufficiently strong to justify the order. The strength of the applicant’s case is then balanced against other factors, including for example, the suitability of damages and the duration of the proposed injunction.

Judgment of the Federal Court

The central question considered by the Court was whether Revlon had acquired a substantial reputation in the ‘get up’ of its Mitchum Clinical products in Australia. In support of its reputation, Revlon relied on sales figures, its marketing campaign and market share in clinical anti-perspirant products since January 2014. Revlon also placed particular emphasis on a number of visual features of the Mitchum Clinical packaging, including what Revlon described as the ‘Mitchum Three Toned Triangles’.

Finding against Revlon, the Court was not convinced that Revlon had established that it has a reputation in the ‘get-up’ of its Mitchum Clinical products. In doing so, the Court was of the view that evidence as to Revlon’s marketing and advertising campaign was not sufficient to establishing the existence of a reputation. Referring to a past decision, the Court noted that a trade reputation can however be proved by brand specialists or evidence about the reactions of randomly selected shoppers to the brands in question.

Although the Court’s finding on reputation was crucial to both the passing off and misleading and deceptive conduct claims, the Court was minded to consider all elements of Revlon’s case. The Court considered that the packaging for the Mitchum Clinical and Rexona Clinical Protection products were distinct and unlikely to be confused by consumers. In this regard, the Court was of the view that the prominent use of brand names on each product and the use of the Mitchum green on the Mitchum Clinical packaging were key distinguishing features between the products.

Conclusion

In Australia, the ‘get-up’ of products, namely secondary aspects of branding such as packaging and product shape, can have a reputation independent of brand name. While the decision is interlocutory, it is a reminder to brand owners that evidence is essential to establishing the existence of a reputation in the ‘get-up’ of a product.

In a separate case in 2011, Bodum was successful in establishing that it had a reputation in the shape and look of its coffee plunger. To establish its reputation, Bodum relied on a vast amount of advertising and promotional material, including numerous product catalogues, advertisements and third party publications. Based on this evidence, the Court held that the shape and features of the Bodum coffee plunger had become distinctive in the minds of consumers. As a result, a competitor’s failure to adequately distinguish its product from Bodum’s resulted in the Court ruling that the competitor had engaged in passing off and misleading and deceptive conduct (see Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639).