Kimberley-Clark Worldwide Inc. v the Reject Shop Limited

[2015] ATMO 2

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Kimberley-Clark Worldwide Inc. to registration of trade mark application 1419066(3) – KLEENZ Logo - filed in the name of The Reject Shop Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Tracey Berger of Spruson & Ferguson, Patent & Trade Mark Attorneys

Applicant: Susan Gatford of counsel, instructed by the Applicant

Decision:

2015 ATMO 2

s52 proceedings: ss41, 43, 44, 59 and 60 pressed – s60 established; likelihood of confusion; application rejected.

Costs: awarded against Applicant

Background

1. In this matter The Reject Shop Ltd (‘the Applicant’) has filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below:

   Application No: 1419066

   Filing Date:  8 April 2011

   Goods:Class 3: cleaning agents for the hands

   (‘the Goods’)

   Trade Mark:  

   (‘the Trade Mark’)

2. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 12 January 2012.

3. On 9 July 2012 and after obtaining an extension of time to do so, Kimberley-Clark Worldwide Inc. (‘the Opponent’) filed a Notice of Opposition to registration of the Trade Mark.

4. The parties filed evidence as later described after which a hearing was convened in Sydney on 16 October 2014 before me, Debrett Lyons, acting as a delegate of the Registrar of trade Marks.   The Opponent was represented by Tracey Berger of Spruson & Ferguson, Patent & Trade Mark Attorneys.  The Applicant was represented by Susan Gatford of counsel, instructed directly by the Applicant.

5. In accordance with directions I gave before the hearing, the parties exchanged outline written submissions from which it was clear that the Opponent intended to rely for its opposition on sections 42, 44 and 60 of the Act. Those grounds were the only grounds pressed at the hearing.

6. The Opponent bears the onus of establishing one or more of those grounds of opposition on the balance of probabilities[1] and it is under section 60 that I have decided the matter. The date at which that ground of opposition must be established is the date of filing of the application.[2]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663.

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   The evidence

7. Evidence-in-Support comprises the declaration of Roslyn Russell made 8 July 2013 with Exhibits 1-16 (the “First Russell Declaration”).

8. Evidence-in-Answer comprises the declaration of Helen Senjov made 23 December 2013 with Exhibits A-F (the “Senjov Declaration”).

9. Evidence-in-Reply comprises the declaration of Roslyn Russell made 8 April 2014 with Exhibits 1-14 (“Second Russell Declaration”).

   Section 60

10. Section 60 provides:

    60  Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

    Note:For priority date see section 12.

11. The “other trade mark” on which the Opponent relies is KLEENEX (“the Opponent’s trade mark”).

12. Success under section 60 is contingent upon proof of a reputation in the Opponent’s trade mark in Australia before the filing date of the application – 8 April 2011. The question of whether the Trade Mark would be likely to deceive or cause confusion requires, in practical terms, that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade mark, the degree of similarity of the trade marks and finally, the nexus of the goods.

13. The Opponent’s written submissions included the following statements:

    Although there is no requisite for the Opposed Trade Mark to be substantially identical or deceptively similar to the Opponent’s mark for the Opponent to succeed under section 60, in the present instance the trade marks are … deceptively similar.

    Similarly, it is not necessary for the Opponent to establish that its own reputation is in respect of particular goods or services the subject of the Opposed Application.  In this case however, the Opponent has extensively used and acquired a reputation in those exact goods and in respect of closely related goods.

14. The Opponent reasons that the Trade Mark and the Opponent’s trade mark are similar in the following ways:

    The applicant’s trade mark and the Opponent’s registered mark have a common prefix.  The prefix is the dominant and memorable element of both marks.  In other words, the element “KLEEN-” is the essential feature of both the Opponent’s registered marks and that of the Applicant;

    The two marks differ by only a couple of letters at the end of the marks.  These minor differences do not avoid the likelihood of confusion;

    …

    The Opposed Mark and Opponent’s mark convey a similar idea and are similar in sight and sound as a result of the common element “KLEEN-” and given that both marks contain few other distinguishing features.

15. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

    In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

    Justice Kenny continues at 129 with the words:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

16. The claim to a reputation in Australia in the Opponent’s trade mark rests on evidence from the First and Second Russell Declarations of use since 1951 first in relation to facial tissues, expanding to tissues impregnated with cosmetic lotions in 1995, toilet paper and paper towels in 2002, cleaning products such as soaps and impregnated wipes in January 2008, and wet wipes for hands, face and body since September 2008.

17. The Opponent points in particular to evidence of sales in Australia of:

    (a)    KLEENEX Hand and Face Wipes, including the product “KLEENEX Sensitive Wipes” and KLEENEX Regular Wipes since 2009;

    (b)    KLEENEX Anti-Bacterial Wipes, including the product “KLEENEX Anti-Bacterial Wipes” since 2010;

    (c)     KLEENEX General Purpose Foam Hand Soap, including products such as “KLEENEX General Luxury Foam Skin Cleanser with Moisturiser”, “KLEENEX Luxury Foam Frequent Use Hand Cleanser” and “KLEENEX Luxury Foam Fragrance and Dye Free Skin Cleanser” since 2008;

    (d)    KLEENEX General Purpose Liquid Hand Soap, including the product “KLEENEX Frequent Use Hand Cleaner” since 2008;

    (e)    KLEENEX Antibacterial Foam Hand Soap, including the product “KLEENEX Luxury Foam Antibacterial Skin Cleanser 0.5% Triclosan” since 2008;

    (f)   KLEENEX Antibacterial Liquid Hand Soap, including the product “KLEENEX Antibacterial Hand Cleanser” since 2008;

    (g)    KLEENEX Foam Hand Sanitiser, including products such as “KLEENEX Antibacterial Luxury Foam Moisturising Instant Skin Cleanser”, “KLEENEX Moisturising Instant Hand Sanitiser” and “KLEENEX Luxury Foam Moisturising Instant Hand Cleanser” since 2009; and

    (h)    KLEENEX Liquid Instant Hand Sanitiser, including products such as “KLEENEX Moisturising Instant Hand Sanitiser” and “KLEENEX Instant Hand Sanitiser with Moisturiser” since 2011.

18. Confidential sales and advertising information is provided in the evidence which I can describe in broad terms as being very substantial on a year-by-year basis from before the filing date of the application.

19. In its written submissions the Applicant concedes that “[T]aken as a whole the evidence reveals that KLEENEX as a brand and/or descriptive term for tissues is well known.”

20. Nevertheless, it was put to me that the evidence should be read more broadly.  It is said that the evidence shows “that there are a range of composite marks that include the word Kleenex in a cursive font, and most often with a curved leaf or petal shaped logo, viz.

21. It was put to me that the actual use of the Opponent’s trade mark was very frequently in this cursive font and accompanied by “a stylized leaf or petal shaped logo, referencing the natural fibres of that the tissue are made of.”

22. Further, the Applicant submitted that whilst the evidence shows use of “a stable of KLEENEX marks such as Kleenex Viva, Kleenex Aloe Vera, Kleenex to go and others”, it did not prove that the Opponent had a relevant reputation in the term, KLEEN, used as a prefix or otherwise.  The Applicant submitted that “the Opponent's brand extension strategies are based around adding words and logos to its KLEENEX brand, and not around developing a range of trade marks based on the KLEEN prefix.” 

23. It was then said that the Senjov Declaration provided evidence that KLEEN is often incorporated into other trader's trade marks.  Examples given include KLEENUP plus a hands logo for hand cleansers and KLEEN GUARD, SELLEYS OVEN KLEEN and KLEEN MAGIC, each for a range of cleaning products.  Furthermore, the Senjov Declaration gave examples of business names including the element KLEEN such as Ozi Kleen, Kwik N' Kleen, Kleen Group, Kleen Sweep, Kleen Kanteen, Selley's Super Kleen, Mint Kleen and Genie Kleen.

24. Finally, the Applicant submitted that whilst the Second Russell Declaration claims use of the Opponent’s trade mark in connection with “personal cleaning and sanitizing products” such as wipes, cleansers and sanitizers, a critical view of the evidence shows that many of the goods are commercial cleaning products and that only a small cluster of products fitting that description are consumer items sold in supermarkets and retail chains.  It is argues that those consumer oriented cleaning products contribute, on any reading of the evidence, a very minor percentage to the overall revenue from goods sold under the Opponent’s trade mark.

25. Those criticisms do not take the Applicant far in my view.  On application of the McCormick case it is fair to say that the Opponent’s KLEENEX trade mark has a massive reputation in Australia.  That reputation existed before the Priority Date and extended either directly to the Goods or to goods so closely connected to the Goods that nothing in my mind turns on any difference.

26. I accept the Applicant’s comment that the evidence does not point to a reputation in the term KLEEN per se, as I believe so did the Opponent at the hearing. I also accept that KLEEN is a common, deliberate misspelling of the word “clean”. I should address here a case which has some bearing on these matters, albeit that it was referenced by the Applicant in connection with its reply to the section 44 ground of opposition. The Applicant wrote:

    In Kimberly-Clark Worldwide, Inc v Robert James Alver [2005] ATMO 56 (17 October 2005), where the word KLEENEX was sought to be relied on in opposing registration of a composite mark that include the words "Kleenwipes". The hearing officer in that case said in respect of the section 44 ground:-

    I do not agree that KLEEN of itself is likely to suggest a connection with the opponent nor do I think that customers will recall the opponent’s trade mark by anything other than the full word KLEENEX. KLEEN in both marks conveys a common idea of cleanliness, however, ‘the fact that two marks convey a common idea becomes relevant only it the marks themselves look or sound alike, per their Honours Wilcox, Heerey and Lindgren JJ in the Sports Cafe case [1998]1614 FCA. Taken as a whole the applicant’s mark and the opponent’s mark are neither visually nor aurally deceptively similar. I am not satisfied that there is ‘a real tangible danger of deception or confusion occurring’ per Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 and confirmed by French J in Registrar of Trade Marks v Woolworths Ltd, [1999] FCAFC 1020.

27. However, it remains that the Trade Mark prominently features the word component, “Kleenz” (not “KLEEN” or some “KLEEN” prefixed term), which in my assessment has a significant visual resemblance to the Opponent’s trade mark.  I do not read the evidence as limiting the Opponent’s reputation to the term KLEENEX used in a certain cursive font and/or accompanied by particular motifs.  Indeed, if I carried away one impression of the way in which the Opponent’s trade mark was used, it would be of consistent initial capitalization, “Kleenex”, a matter going directly against the Applicant which chose a similar format for the Trade Mark.

28. In terms of the likelihood of confusion, the Opponent suggested that:

    Consumers generally do not take a large amount of care in purchasing products of the sort covered by the applicant’s trade mark.  Soaps and antiseptic personal cleaners are generally bought at supermarkets or pharmacies without much care or time being given to consideration of the product.  The goods have a low retail value and are picked up in passing.  In any event, a probability of confusion is sufficient, even though the confusion may not persist up to the point of, and be a factor inducing, actual sales.

29. The Opponent’s statements assume that the Goods are consumer products.  There is no evidence of that.  There has been no sale of goods under the Trade Mark but fair and normal use of the Trade Mark would be on hand cleaning agents directed to ordinary consumers.  The Opponent’s reputation sits squarely in the consumer goods space.  Confusion is in my view inevitable; certainly there is a reasonable likelihood of confusion among a substantial number of persons if the Applicant were to use the Trade Mark normally and fairly in respect of Goods (see Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362).

30. The Opponent has established the section 60 ground of opposition.

    Decision and Costs

31. At the relevant date subsection 55(1) of the Act provided:

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

32. My decision is to refuse to register the Trade Mark and I award costs against the Applicant calculated in the normal manner and in accordance with the Trade Mark Regulations 1995.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    9 January 2015