Gillette Co & Anor v Pharma-Goods Australia Pty Ltd [1997] FCA 629 (15 July 1997)

FEDERAL COURT OF AUSTRALIA

PRACTICE and PROCEDURE - interlocutory injunction - whether words on packaging were misleading by suggesting an association with applicant or its products - use of the expression "compatible with" - whether it meant more than "fits"

TRADE MARK - non-trade mark use by statement showing the respondents' product fitted the applicant's.

Trade Marks Act 1995, s 122

Interlego AG v Croner Trading Pty Limited [1992] FCA 624; (1992) 39 FCR 348

Interlego AG v Croner Trading Pty Ltd (1991) 102 ALR 379

Re: Cornwall Resource Corporation NL; Cornwall Resource Corporation NL v Waraluck Limited (Burchett J, unreported, 22 May 1997)

THE GILLETTE COMPANY & ANOR v PHARMA-GOODS AUSTRALIA PTY LTD

NG 348 of 1997

Burchett J

Sydney

15 July 1997

IN THE FEDERAL COURT OF AUSTRALIA	)
	)
NEW SOUTH WALES DISTRICT REGISTRY	) 348 of 1997
	)
GENERAL DIVISION	)

BETWEEN:	THE GILLETTE COMPANY First Applicant GILLETTE AUSTRALIA PTY LIMITED Second Applicant
AND:	PHARMA-GOODS AUSTRALIA PTY LTD First Respondent FRANKLINS LIMITED Second Respondent

JUDGE:	BURCHETT J
PLACE:	SYDNEY
DATED:	15 JULY 1997

MINUTES OF ORDER

THE COURT ORDERS THAT:

The respondents bring in, on a date to be fixed, short minutes of orders in accordance with the reasons of the Court.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA	)
	)
NEW SOUTH WALES DISTRICT REGISTRY	) 348 of 1997
	)
GENERAL DIVISION	)

BETWEEN:	THE GILLETTE COMPANY First Applicant GILLETTE AUSTRALIA PTY LIMITED Second Applicant
AND:	PHARMA-GOODS AUSTRALIA PTY LTD First Respondent FRANKLINS LIMITED Second Respondent

JUDGE :	BURCHETT J
PLACE:	SYDNEY
DATED:	15 JULY 1997

REASONS FOR JUDGMENT

BURCHETT J

The applicants seek an interlocutory injunction to restrain the sale of safety razor blade cartridges in packets bearing in large block letters, both on the front and on the back, the words "MOVING BLADE", and also bearing, among other things, on the front the words and symbols "*No Frills Moving Blades are compatible with Sensor® Razors", and on the back the following:

"Made in USA

Packed in UK for

*Trade mark Franklins Limited

62 Hume Highway,

Chullora N.S.W. 2190

No Frills Moving Blades fit Actiflexx&tm;

and Sensor® handles.

Actiflexx&tm; is a registered trade mark of

The American Safety Razor Co.

Sensor® is a registered trade mark of

Gillette".

Relief is also sought in respect of other similar packaging, but no significant difference was suggested, and I shall confine my discussion of the problems in the case to the context of the "No Frills" sales that are referred to in the evidence.

At the root of the dispute between the parties is a technological divide. It seems to be generally accepted that more sophisticated users of safety razors (or those who can afford to be more sophisticated) prefer blades capable of making adjustments of position in order to follow the contours of the face. Not far short of one hundred years after the introduction in 1903 of double-edged razor blades, the applicants ("Gillette") began in the present decade to sell "Sensor" brand razors, utilizing twin blades "floating" on plastic springs so as to be capable, independently of each other, of moving back into the shaver cartridge upon encountering a bulge of skin. The system incorporates an improved guard, and other advanced features. In a still newer version, the "Sensor Excel", the guard has been replaced by what are called "microfins", which assist in the shaving actions of the blades. An alternative technology, employed by The American Safety Razor Co., the manufacturer of the blade cartridges distributed by the first respondent, also involves individually moveable twin blades. But these blades move by flexing at the cutting edge, not by retreating upon springs. They are mounted so that a substantial proportion of the blade is flexible on its longitudinal axis, being cantilevered away from its support.

In the competition between these two shaving systems, Gillette claims to have developed a particularly sophisticated technology, which involves its blades having complete freedom of movement. An aspect of its case is the assertion that what happens during the use of the rival blades is not, at any rate in the same sense, a moving, but a flexing. For that reason, the words "MOVING BLADE" are said to be misleading. To this, the respondents make two answers. First, they point out that the flexing of the blade is certainly a movement of it. Indeed, it is a movement of the part that matters, the cutting edge. Secondly, they draw attention to the fact that the challenged package in which their cartridges are sold contains, as probably its most prominent feature, a pictorial representation of the razor which (they say) could leave no-one who glanced at it for even just a couple of seconds in any doubt as to the nature of the movement of the blades allowed by the system. They are plainly shown to be flexing. Furthermore, immediately against that representation, there is placed conspicuously the description: "ACTIFLEXX MOTION".

Gillette seeks to lift the argument onto another plane by referring to the words "No Frills Moving Blades are compatible with Sensor Razors". But these words are much less prominent than the pictorial representation and its description. That description appears to show what kind of movement is referred to when the blades are called "moving". It is difficult, in this context, to think that any reader could be misled by some kind of transferred meaning (arising out of the reference to "Sensor" razors) into thinking that the movement in question is not that depicted, but the free movement of the whole blade attained by the Gillette technology.

However, the Gillette case then fastens upon the word "compatible", both to enhance the arguments I have just been considering, and also in itself. Counsel for Gillette contended that the use of this word, rather than the word "fit" chosen for the back of the packet, suggests that the system employed by the "No Frills" blades is the same as that of the Gillette "Sensor". In elaboration of the argument, counsel pointed out that "No Frills" is a house brand belonging to Franklins Limited. He suggested that customers would expect the product sold under such a house brand to be equivalent to, though less expensive than, the competition. Since there was a reference to "Sensor", that competition would be identified in the mind of the customer with the Gillette "Sensor". Counsel also suggested that some people would think the "No Frills" product might well have been made by Gillette, since some products sold under the house brands of retail chains are believed to be unbranded products of well-known manufacturers.

There seemed to me, on the evidence available at this interlocutory stage (at which I should make it clear I am making no final judgments), to be two serious hurdles in the way of these arguments, which they have not surmounted. The first is the prominence, already mentioned, of the pictorial illustration demonstrating the nature of the technology involved in the "No Frills" blades. That technology is quite different from the well advertised Gillette technology, which is also clearly proclaimed on the "Sensor Excel" razor packaging, as well as on that of the "Sensor" cartridges. The razor packaging refers to "revolutionary spring-mounted twin blades to sense and adjust to every curve of your face". Secondly, and in any case, to say that something is "compatible" with something else is simply not to say that the two things are equal. When employed with reference to cartridges requiring to be fitted into a razor for use, the word "compatible" must sensibly mean that they fit. Although, on the evidence, the first respondent contemplates marketing "Actiflexx" razor handles in Australia at some time in the future, at present the respondents' cartridges can only be used by persons who have previously purchased Gillette razors.

Notwithstanding the natural meaning of "compatible" in such a context, it is arguable that some persons might take the word also in a broader sense. It can convey, as The New Shorter Oxford English Dictionary (1993) makes clear, the idea of consistency, congruity or harmony. But counsel for each of the respondents proffered an undertaking to amend the packaging, once current supplies are exhausted, so as to substitute the word "fits" for the word "compatible", and to keep appropriate accounts. If such undertakings are given, I do not think the balance of convenience could possibly point to the granting of an interlocutory injunction on the basis of the arguments which have been addressed to the word "compatible".

The final ground upon which Gillette sought to make out a case was its claim that the references to "Sensor" and the statement that this was "a registered trade mark of Gillette" were each impermissible uses of its trade mark. But s 122 of the Trade Marks Act 1995 permits use "in good faith to indicate the ... intended purpose ... of goods (in particular as accessories or spare parts) or services". In Shanahan on Australian Law of Trade Marks and Passing Off, second edition (1990) at 351, it is stated that the similar provision in the previous Act "cannot greatly have altered the pre-existing law". Shanahan goes on:

"It had been recognised in both infringement and passing-off proceedings that a trader is entitled to use a statement such as `suitable for an X' in describing a product, provided that this is a bona fide description and will not cause confusion."

See also Interlego AG v Croner Trading Pty Limited [1992] FCA 624; (1992) 39 FCR 348 at 392, per Gummow J. The reasoning of Sheppard J in Interlego AG v Croner Trading Pty Ltd (1991) 102 ALR 379 at 422 et seq, which deals with very special facts, is not inimical to the proposition stated by Shanahan. In the present matter, I do not think a sufficient case has been made out to sustain an interlocutory injunction on the footing of use by the respondents of Gillette's trade mark as a trade mark.

The nature of what is required to be shown to secure an interlocutory injunction, speaking generally, is no longer controversial. In Re: Cornwall Resource Corporation NL; Cornwall Resource Corporation NL v Waraluck Limited (unreported, 22 May 1997), I summarised the applicable principles, as follows:

"The applicant must show `at least a serious question to be tried which if resolved in its favour would entitle it to final relief' (Kolback Securities Ltd v Epoch Mining NL (1987) 8 NSWLR 533 at 535, per McLelland J); and the Court in deciding whether to grant or withhold relief will weigh the balance of convenience, it being impracticable to decide the outcome of the proceeding at the interlocutory stage. In considering whether there has been shown a sufficiently serious question to be tried, and in weighing the balance of convenience, the Court does not place these two questions in watertight compartments; rather, the strength or weakness of the case in one respect may be a factor affecting the decision upon the other: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 416 (leave to appeal refused 19 September 1995, unreported, Lockhart, Sheppard and Beazley JJ). Generally, it is not appropriate for the Court to attempt to decide, on an interlocutory application, a contested question of fact upon which further evidence may throw light at the ultimate hearing, although questions of law may sometimes be decided at the earlier stage: Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543 at 547 et seq."

Subject to the one matter of the use of the word "compatible", I do not think a sufficient case has been made out in accordance with these principles on any of the bases put forward; and so far as the word "compatible" is concerned, as I have said, the balance of convenience does not favour the grant of an interlocutory injunction, at least if the foreshadowed undertakings are given. Accordingly, upon the bringing in of appropriate short minutes, I shall dismiss the motion.

I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Burchett

Associate:

Dated: 15 July 1997

Counsel for the Applicants:	D.K. Catterns QC and J.V. Nicholas
Solicitors for the Applicants:	Allen Allen & Hemsley
Counsel for the 1st Respondent:	M.R.J. Ellicott
Solicitors for the 1st Respondent:	Griffith Hack
Counsel for the 2nd Respondent: Solicitors for the 2nd Respondent:	D.M. Yates and G.L. Raffell Blake Dawson Waldron
Date of Hearing:	23 May 1997
Date of Judgment:	15 July 1997