Kimberley-Clark Worldwide Inc. v the Reject Shop Limited

Kimberley-Clark Worldwide Inc. (the Opponent) opposed the registration of a trade mark by The Reject Shop Limited (the Applicant) in proceedings before Debrett Lyons, a Hearing Officer of the Trade Marks Hearings. The dispute concerned the Applicant's proposed trade mark, which the Opponent argued should not be registered due to its similarity to the Opponent's well-known KLEENEX trade mark.

The primary legal issue before the Hearing Officer was whether the registration of the Applicant's trade mark should be opposed under section 60 of the *Trade Marks Act 1995* (Cth). This required determining whether the Opponent's trade mark, KLEENEX, had acquired a reputation in Australia prior to the filing date of the Applicant's application (8 April 2011), and if so, whether the use of the Applicant's proposed trade mark was likely to deceive or cause confusion due to that reputation.

The Hearing Officer reasoned that success under section 60 hinged on establishing a reputation in the Opponent's trade mark, the degree of similarity between the trade marks, and the nexus between the goods. The Opponent contended that its trade marks were deceptively similar, sharing a common and dominant prefix "KLEEN-", which was the essential feature of both marks. The Hearing Officer found that the Opponent had successfully established the ground of opposition under section 60.

Consequently, the Hearing Officer ordered that the registration of the Applicant's trade mark be refused and awarded costs against the Applicant.