Injunction prevents sale of MAXCLEAN toothbrushes

In Beecham Group PLC v Colgate-Palmolive Pty Ltd, the Federal Court of Australia has granted Beecham Group PLC's application for an interim injunction against Colgate-Palmolive Pty Ltd in relation to the latter's use of the mark MAXCLEAN on a type of toothbrush.

Beecham is the registered trademark owner for the word mark MACLEANS in relation to toothbrushes. It filed a complaint with the Federal Court of Australia after Colgate commenced selling a small battery-powered toothbrush with the mark COLGATE MAXCLEAN displayed on its packaging. The 'X' was rendered in a stylized form, in a different typeface from the rest of the mark. Beecham sought interlocutory relief to restrain Colgate from using or threatening to use a MAXCLEAN mark on the packaging of its toothbrushes.

In response, Colgate offered an undertaking that after October 21 2004 it would not import any further stocks of the MAXCLEAN toothbrushes into Australia. Further, Colgate proposed that the matter be fixed for hearing at a date approximately four months in the future. Beecham argued that this was insufficient as, in the interim, the value of its trademark would be significantly diluted in a manner that could not easily be calculated.

To succeed on its claim, Beecham had to show that:

• there was a serious question to be tried on the issue of infringement;
  
  
• an award of damages at trial would not provide an adequate remedy; and
  
  
• the balance of convenience favoured the grant of the injunction.

In relation to the first requirement, the court held that notwithstanding the presence of the COLGATE mark, MAXCLEAN was serving to distinguish one Colgate product from other Colgate products and so was functioning as a trademark. It next stated that the phonetic and visual similarities between the MAXCLEAN and MACLEANS marks were likely to cause a number of persons to wonder whether the two sets of toothbrushes came from the same source.

Further, evidence was presented that Colgate marketing experts were aware of the competing MACLEANS mark and were specifically targeting that mark in their campaign. The court cited authorities for the proposition that in cases where an element of intention to deceive is present the court will more readily infer that there has been deceptive conduct. Accordingly, it found that there was a serious question to be tried on the issue of infringement.

After considering the second requirement and deciding that the difficulty of measuring the damage in monetary terms meant that damages at trial would not be an adequate remedy, the court assessed whether the balance of convenience favoured the granting of an interlocutory injunction. Where the level of damages is not readily measurable, the court held that stopping someone from selling a new product is less inconvenient and less likely to produce irreparable damage than allowing "him to sell and merely keep an account, thus forcing the plaintiff to commence a multitude of actions against the purchasers" (Plimpton v Spiller, [1876] 4 Ch D 286 at 292 to 293).

The court did not find the evidence supplied by Colgate (that if it could not sell the MAXCLEAN product then it would not be able to fill its allotted supermarket shelf space with other products) to be convincing.

Of relevance in this analysis was the conduct of Colgate. There were indications that on August 12 2004, before any approach by MACLEANS, Colgate Australia was directed by an internal memorandum not to proceed with the MAXCLEAN-marked product due to the legal risks. However, COLGATE MAXCLEAN toothbrushes arrived in Australia from China around August 27 2004. Further, Colgate offered an undertaking that pending the resolution of the matter, it would not import any further stock after October 21 but in doing so Colgate did not reveal its knowledge that a further substantial shipment of MAXCLEAN toothbrushes was anticipated by that date.

The balance of convenience therefore favoured Beecham and its application for injunctive relief was granted.

Tim Golder and Tanya Vaysman, Allens Arthur Robinson, Sydney