Facts:

In the substantive decision ((2014) 108 IPR 162) Brown J held that Knauf’s use of the EARTHWOOL name and brand was misleading and deceptive because there was a real likelihood that a substantial number of people, including prospective purchasers, would be misled about the composition of the product.  In particular, persons seeing this brand would be likely to make the erroneous assumption that the word “wool” in EARTHWOOL meant a product manufactured from animal wool.

Brown J had made orders including:

“(2) An injunction restraining the defendants from using the name or the brand EARTHWOOL® except where that name or brand is printed immediately alongside the words “glasswool” or “glass insulation” in the same font and print size.”

Leave was reserved to apply for revised terms of orders.  Pursuant to that leave, Knauf sought (inter alia) to have the words “immediately alongside” replaced by the phrase “immediately proximate to”, along with two other alternative proposed variations.

The reason for this was to provide a greater degree of flexibility as to the location of the words “glasswool” or “glass insulation” relative to the brand EARTHWOOL, for example above or below the brand name as compared with appearing “alongside” the brand name.

Tasman opposed any departure from the “immediately alongside” formula of the order, maintaining that it was necessary to retain the “alongside” reference in order that EARTHWOOL was used “in the manner of an adjective” in relation to the words identifying the composition of the product.

In the course of the hearing attention was drawn to a television advertisement which had been recently broadcast for Knauf’s product.  The advertisements led to a consideration of the acceptable use of the words in a broadcast.

Held:

(1) The issue raised by the use of EARTHWOOL for insulation was a question of appropriate trade description, the concern being that members of the public could be led to believe that the product was something which it was not.  The objective of any order responsive to that concern should be that members of the public were disabused of any erroneous assumption that they may make on seeing the EARTHWOOL trade mark.  That outcome was likely to be achieved if, at the same time as the public was exposed to the EARTHWOOL name, they were also exposed to a description of the product in close association: hence the use of the phrase “in association with” [11].

(2) There were two components involved in achieving that state of association so as to ensure that the public was made aware of the true composition of the product.  One was the requirement that the description (i.e. “glasswool” or “glass insulation”) be in the same size and font as the brand name.  The second was the requirement for the degree of proximity of the description to the brand name.  The intention (i.e. of the phrase “in association with”) was that the two components would work in combination [12].

(3) Provided that the descriptive words were in the same size and font as the brand, the requisite degree of association could be achieved where the descriptive words were sufficiently proximate to the brand, whether that location was beside, above or below the brand [13].

(4) The necessary association would also be achieved where a tag line (assuming that would contain the word “glasswool”) was sandwiched between the brand and the descriptive words [15].

(5) While the court naturally wished to avoid too prescriptive a form of order, there were advantages in creating a form of order which left the least possible room for interpretation or uncertainty as to what was required.  There was merit in the suggestion that the order should distinctly address the various contexts in which the word EARTHWOOL might be used [16] and [17].