Kimberley-Clarke Worldwide, Inc v Alexandra Goulimis
[2008] ATMO 8
•17 January 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Alexandra Goulimis to register 1085541(35) “Huggie” Mummy and opposition thereto by Kimberley-Clark Worldwide, Inc.
Delegate: Iain Thompson Representation: Applicant. Did not appear, did not file written submissions. Opponent: Lance Scott of Spruson & Ferguson Decision: 2008 ATMO 8
1. Section 52 proceedings, sections 42, 43, 44 and 60 not established. Closely related goods and services discussed.
2. Costs awarded against opponent.
Background
Alexandra Goulimis (‘the applicant’) of Belmore, New South Wales, filed an application register a trade mark, current details of which appear below:
App No: 1085541
Filing Date: 15 November 2005
Goods:Class: 35 Direct selling of baby-toddler's toys, videos, CD's, books, games and accessories
Trade Mark: “HUGGIE” MUMMY
The application was examined and subsequently advertised as accepted in the Australian Official Journal of Trade Marks on 16 March 2006.
On 14 June 2006, Kimberly-Clark Worldwide, Inc of Wisconsin, United States of America, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites the following grounds under the Trade Marks Act 1995 (‘the Act’):
(a) The opposed trade mark is not capable of distinguishing the goods and/or services for which registration is sought from the goods or services of other persons.
(b) The use of the opposed trade mark would be contrary to law.
(c) The use of the opposed trade mark would be likely to deceive or cause confusion.
(d) The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks including: 307608, 463304, 550615, 616732, 642211, 714181, 776806, 979515, 1005401 and 1032741 registered by the opponent in respect of similar goods or closely related goods or services and for which the priority date is earlier than that of the opposed trade mark.
(e) The applicant is not the owner of the opposed trade mark.
(f) The applicant does not intend to use or authorise use of the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia in relation to the goods and/or services for which registration is sought.
(g) The opposed trade mark is substantially identical with, or deceptively similar to, another trade mark or other trade marks including: HUGGIES that, before the priority date of the opposed trade mark had acquired a reputation in Australia for goods or services for which registration is sought, and because of the reputation of that other trade mark or those other trade marks the use of the opposed trade mark would be likely to deceive or cause confusion.
The opponent has served and filed evidence in support and further evidence. The applicant has not served and filed evidence in reply, or in answer. The matter came before me as a delegate of the Registrar of Trade Marks in Sydney on 15 August 2007. Lance Scott of Spruson & Ferguson, of Sydney, made submissions on behalf of the opponent. The applicant did not appear or put in written submissions.
At the hearing Mr Scott relied on section 42, 43, 44, and 60 of Act. For the sake of completeness I now note that those other grounds on the Notice have not been established by the opponent.
Evidence
The first declaration in support is by Elizabeth Brigden, Packaging & Trade Mark Co-ordinator of the Kimberly-Clark Australia, of Milsons Point, New South Wales, a wholly owned subsidiary of the opponent.
Ms Brigden attests to several of the opponent’s trade mark registrations in Australia. I will return to the details of the most relevant of these in my discussion of the opposition under section 44 of the Act.
Ms Brigden goes on to say:
Kimberly-Clark first commenced use of the Trade Mark in the United States on 14 June 1976. Kimberly-Clark Australia first commenced use of the HUGGIES trade mark (the "Trade Mark") in Australia in October 1987 in relation to baby nappies. Since then, use of the Trade Mark has been continuous and has extended to disposable diapers, diaper liners, bibs and baby wipes, disposable training pants, washcloths, disposable wash mitts, disposable changing pads, absorbent underpants for babies, infants and young children, disposable swim wear for babies and toddlers, overnight pyjama pants for toddlers and young children, toilet training pants for toddlers and young children, disposable changing pads for babies and infants, diaper rash creams and ointments, baby shampoo, baby bath soaps and cleansers, baby lotions and powders, disposable wash mitts impregnated with skin cleansers and disposable washcloths impregnated with skin cleansers. Use of the Trade Mark has extended throughout all the States of Australia. Nappies sold under the Trade Mark are the number one selling and recognised nappy in Australia, and have been trusted by Australian parents for over 15 years.
The Trade Mark has been the market leading nappy brand in Australia for many years. Spontaneous brand awareness of Kimberly Clark's nappy range sold under the Trade Mark is 96% of mothers with babies 0-30 months of age. Kimberly Clark has tracked the Trade Mark's spontaneous brand awareness levels for many years and since at least 1993. The tracking consists of interviews conducted with female main grocery buyers that have a child between 0-30 months old. A total of 70 interviews are conducted in Sydney/Melbourne each week as well as 52 regional locations, a total of 122 interviews per week for approximately 42 weeks per year. The brand awareness for Kimberly Clark's products sold under the Trade Mark is very high. At the prompted level, brand awareness is very close to 100% of the relevant market. Now shown to me and marked "Confidential Exhibit KC-1" is Colmar Brunton's Huggies Brand Health Tracking report for the period 2003 to June 2006.
Kimberly-Clark is the owner of the Trade Mark and variants thereof in many countries around the world. Now shown to me and marked "Exhibit KC-2" is a schedule outlining Kimberly-Clark's ownership of the Trade Mark and variants thereof around the world.
Ms Brigden also discusses the advertising of the opponent’s products under the trade mark HUGGIE, she avers:
I am aware that Kimberly-Clark has extensively used, advertised and continuously promoted its products under the Trade Mark every year since its launch in October 1987 by way of:
(a) Advertisements, articles and promotional activities in the print media. By way of example, articles referring to Kimberly Clark's products sold under the Trade Mark have been published in numerous Australian magazines including: Mother & Baby, Woolworths Australian Parents, Practical Parenting, Sydney's Child, Melbourne's Child, Adelaide's Child and Pregnancy & Birth. Now produced, shown to me and marked "Exhibit KC-4" are examples of the aforementioned advertisements.
(b) National Metropolitan, Regional and Pay-TV television campaigns. The Trade Mark has been consistently and extensively advertised on national, regional and Pay-TV television.
(c) The Trade Mark has been featured on the outdoor posters in shopping centres, baby change rooms, swimming pools and other places where parents and their babies and toddlers frequent.
(d) The Trade Mark is featured on Kimberly-Clark's Australian websites at: and Now produced, shown to me and marked "Exhibit KC-5" are hard-copy printouts from the aforementioned websites.
(e) Kimberly Clark's 'Huggies Baby Clubs' allow users to gain access to a range of special offers and competitions, regular newsletters and information specific to their child's development, be part of the Huggies community in Parents Exchange and gain access to our panel of experts. These include the 'Huggies Baby Club', Huggies Mum To Be Club' and `Huggies Book Club'. Of note is the fact that the 'Huggies Book Club' offers books, CDs and DVDs to its members. Now produced, shown to me and marked "Exhibit KC-6" are hard-copy printouts related to the aforementioned clubs.
Now shown to me and marked "Confidential Exhibit KC-7" is a table setting out Kimberly-Clark's Australian sales for the period 2003-2005 for its products bearing or sold under the Trade Mark.
Now shown to me and marked "Confidential Exhibit KC-8" is a table setting out Kimberly-Clark's estimated Australian advertising expenditure for its products bearing or sold under the Trade Mark for 2005 and 2006.
I understand that the Opposed Trade Mark includes the main element of Kimberly-Clark's Trade Mark being the word "HUGGIE".
Ms Brigden also attests as to the modes of marketing the opponent’s goods under the trade mark HUGGIES. I will quote this in full as I think that it illustrates one of the underlying problems for the opponent in the establishment of its opposition:
Ms Brigden says:
The Opponent sells its range of HUGGIES branded products (as described in my earlier declaration) in a variety of stores, including but not limited to the following:
(a) Stores that sell the full range of HUGGIES branded products:
(i) Supermarkets that sell the full range of HUGGIES branded products.
These include, but are not limited to, the popular, nationwide stores such as Coles, Bi-Lo, Woolworths (Safeway in Victoria), Franklins and IAG.
(ii) Grocery stores and other local independent supermarkets. These include but are not limited to, Jewels, Foodies, FoodWorks, FoodRight, Best Choice and Clancy's. These independent stores offer the full range of the majority of the range of HUGGIES branded products.
(iii) Pharmacies and chemists. These include, but are not limited to, nationwide chains such as Amcal, Blooms, Chem-Mart, ChemWorld, ChemSave, Guardian, Priceline Pharmacy, Soul Patterson, Terry White and other independently owned pharmacies that stock the HUGGIES branded products.
(iv) Variety stores, such as Big W, Kmart, Target and Priceline that generally stock the full range of HUGGIES branded products.
(b) Stores that sell a smaller range of HUGGIES branded products such as nappies, lotions and wipes:
(i) Convenience stores. These include, but are not limited to, 7 Eleven, FoodMart, Quix and Night Owl.
(ii) Service stations such as Ampol, BP, Caltex, Caltex/Woolworths, Mobil, Shell (with Coles Express) and other independent service stations.
(iii) Baby specialty stores, such as 'Toys "R" Us' that offers "Jumbo Nappy Boxes" being bulk boxes of 64, 72, 90 and 108 of HUGGIES branded nappies and 'Babies Galore' that also offer bulk-boxes of 96 and 100 HUGGIES branded nappies, lotions and wipes.
(iv) Discount stores such as Campbells Wholesale (formerly Campbells Cash and Carry), The Bulk Warehouse and other independent stores. Those stores offer "bulk buys", that is, jumbo boxes of HUGGIES branded nappies, lotions and wipes for sale.
In addition to the abovementioned retail outlets, the Opponent also has a number of online retail partners that will also deliver HUGGIES nappies direct to consumers and details of those suppliers are included on the HUGGIES website ( Now shown to me and marked Exhibit EB-1 are printouts from the HUGGIES website entitled "buy HUGGIES", "Neo-natal retailers" and "buy HUGGIES online", that provide details on where to buy the Opponent's HUGGIES branded products together with details and hyperlinks to the Opponent's on-line retail partners.
Now shown to me and marked Exhibit EB-2 are printouts of each of the Opponent's on-line retail partners websites (as listed in Exhibit EB-1) that offer the Opponent's HUGGIES branded products for sale including nappies, wipes, lotions at all stores and other products that are stocked by the larger stores, over various internet sites throughout New South Wales. I refer to Exhibit EB-2 and note that these businesses include the following:
• The Nappy Site ( Be Clean ( that offer deliveries to all States
•Shopfast ( that offers deliveries to Sydney Metropolitan, Central Coast, Wollongong and Blue Mountains areas
•Nappies Are Us ( that offers deliveries Australia wide
•Green Grocer ( that also offers deliveries to Melbourne Metro areas
•Babies Galore ( that offers deliveries to Australia wide
•The Bulk Warehouse ( that offers deliveries to Western Australia, Tasmania, Queensland, South Australia, Victoria, New South Wales and ACT
•Baby Wishes ( that offers deliveries Australia wide
•Coles Online ( that offers deliveries Australia wide
In addition to the Opponent's on-line retail partners as listed above, online sales of the Opponent's HUGGIES branded products including nappies, wipes and lotions are also available for delivery in other States. Now shown to me and marked Exhibit EB-3 is a bundle of printouts from the other online suppliers, located in all the other States including the following:
•Victoria through businesses such as Aussie Nappies, Busy Bottoms and Premium Nappies
•Western Australia through businesses such as Nature's Babies Nappy Services and Nappy Online
•Queensland through businesses such as Nappy Land, Mum's Happy Nappies and Babies Galore
• South Australia through Nappy World Discount Warehouse
•All national online supermarkets such as GreenGrocer, Coles Online and Woolworths Homeshop.
I am also aware that a number of pharmacies sell the Opponent's HUGGIES branded products including nappies, wipes and lotions online at Pharmacy Direct ( and Pharmacy Online ( to only name a few. Now shown to me and marked Exhibit EB-4 are search extracts obtained from both pharmacy websites including 46 HUGGIES branded products including nappies, wipes, lotions, swimming and training pants from pharamcydirect and 7 HUGGIES branded wipes from pharmacyonline.
Other specialty websites offering baby products for sale:
Although the Opponent has entered into an online retail arrangement with the businesses mentioned in Exhibit EB-2 and EB-3, I am also aware that a significant number of the Opponent's HUGGIES branded products including nappies, lotions and wipes are also supplied to many other internet wholesale suppliers that offer bulk-buying purchases to its customers in warehouse outlets and/or for sale on the Internet. In fact, many of these bulk-businesses are advertised on online websites that are specifically developed for parents with young children including the popular website, The Bub Hub ( am informed and believe that the Bub Hub website is aimed at providing a portal of information of all the different stages of parenthood including conception, pregnancy and raising children. The website provides information, articles, an online forum and other online services such as a due date calculator and also includes a classified section and a search facility.
I am informed and believe that a search of the Bub Hub website as at 11 July 2007 using the phrase "huggies" has returned a number of results including general articles and a number of online businesses offering the Opponent's HUGGIES branded products for sale on their website. Now shown to me and marked Exhibit EB-5 are printouts of the search results from the Bub Hub website and the extracts of the relevant pages obtained from the search results. I refer to Exhibit EB-5 and make the following comments as to the online websites appearing in these search results:
A further search of "huggies" was conducted on this website which revealed over 40 results of the Opponent's HUGGIES branded baby products that are sold online from this website.
A review of the products offered on this website showed that the Opponent's HUGGIES branded nappies were included in many of the "Nappy Cake" gift pack/designs.
This site appeared in 4 separate results in the original search. A further search of "huggies" found a further 29 products of the Opponent's HUGGIES branded products offered for sale on this website.
A further search of "huggies" found a further 35 products of the Opponent's HUGGIES branded products were offered for sale on this website.
A review of the products offered on this website showed that the Opponent's HUGGIES branded nappies formed the basis of "Diaper Cakes" gift packs offered for sale.
Bayside Nappies. This site featured a number of the Opponent's HUGGIES branded nappies in jumbo boxes for sale.
A further search was also conducted of the Bub Hub website on 12 July 2007 returned a different set of results including a link to a general newsletter sponsored by HUGGIES, links to 2 other websites selling the Opponent's HUGGIES branded nappies and an advertisement for an upcoming Baby Expo where the Opponent will be exhibiting its HUGGIES branded products. Now shown to me and marked Exhibit EB-6 is a printout of the website results together with extracts of the relevant webpages. I refer to Exhibit EB-6 and note that both retail websites, Nappy Online and Mum's Happy Nappy's are also the Opponent's online retail partners and extracts from these page already appear with Exhibit EB-3.
As outlined in my earlier declaration, I am aware of a publication called "Sydney's Child" published by Copeland Publishing, as well as "Melbourne's Child", "Brisbane's Child", "Adelaide's Child", "Canberra's Child" and "Perth's Child" which are similar publications that are distributed in the respective states. Now shown to me and marked Exhibit EB-7 is an extract from Copeland Publishing's website regarding the circulation and distribution details of the Sydney's Child publication, as at September 2005. I refer to Exhibit EB-7 and note that the magazine is available by subscription or readily available for collection at venues such as:
(i) education locations, such as schools, pre-schools, kindergartens, playgroups, community centres, libraries, museums
(ii) retail outlets such as children's boutiques, bookshops, family businesses
(iii) health locations such as doctors, chemists, hospitals, maternal and children health centres, medical offices
(iv) recreational and entertainment venues such as sports recreation locations, theatres and cinemas.
I am informed and believe that Sydney's Child and its associated affiliates are free magazines that are published monthly (11 times a year) and are specifically aimed at providing information, articles and associated advertising to parents and/or expectant parents. Now shown to me and marked Exhibit EB-8 is the June 2007 edition of the Sydney's Child publication.
I refer to Exhibit EB-8 and note that the magazine includes a number of special feature stories including a special on Nappies in the June edition as well as other regular features such as letters from readers, general resources and information for parents and children, community feature stories, family calendars, DVD and book reviews, party planning information and a large amount of classified and advertising concerning children's goods including a large range of products such as baby clothes, nappies and nappy suppliers including those that could be purchased through the Internet.
Now shown to me and marked Exhibit EB-9 are copies of advertisements featured in the June 2007 edition of Sydney's Child publication. The majority of advertisements also contain a website address and offer products sold online. Examples of these online businesses are contained in Exhibit EB-9 and include the following:
• Moltex Eco-Nappy
• Bambo Nature
• The Bulk Warehouse
• The Toilet Paper Man
•A full-page colour advertisement for HUGGIES branded "PULL-UPS" training pants.
I refer to the abovementioned online retailers featured in Exhibit EB-9, and note that The Bulk Warehouse is one of the Opponent's online retail partners and extracts of the pages for that online retailer appear at Exhibit EB-2. In addition, the first 2 mentioned online retailers only advertise their own specific nappy products. However, the other online retailers prominently feature HUGGIES branded products including nappies and wipes for sale on those websites. Now shown to me and marked Exhibit EB-10 are printouts also obtained from the sites advertised (other than the Bulk Warehouse which is contained in Exhibit EB-2) that are also featured in the Sydney's Child publication.
Now shown to me and marked Exhibit EB-11 are 19 further representative examples of the Sydney's Child publication from the period 15 November 2005 (being the filing date of the Opposed Mark) to July 2007. This Exhibit includes copies of the front covers, together with examples of advertisements from a number of regular online suppliers offering the Opponent's HUGGIES branded products for sale on websites that have also featured in the Sydney's Child publication.
Submissions
The opponent in its written submissions reserved the right to pursue the ground under section 58 if the matter should be pursued further. At the hearing I observed that as the trade marks of the parties are non-identical,[1] I would immediately dismiss this ground. I am not certain why the opponent should reserve the right to pursue this ground. An appeal from this decision is de novo[2] and the opponent might pursue a ground that was not in its Notice, or consequently argued at the hearing or mentioned in submissions if it so wished,[3] without the need to reserve the right to do so.
[1] Carnival Cruiselines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495; PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.
[2] Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300; Registrar of Trade Marks v Muller (1980) 144 CLR 37.
3 See Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 successful on a ground not argued at hearing before the Registrar’s delegate.
In his submissions, Mr Scott referred me several times to the examiner’s reports which have issued in relation to this application, observing that the examiner had initially reported that there were grounds for the rejection of the application under section 44 in respect of three of the opponent’s registrations. I gather that Mr Scott wished to convince me that the examiner was correct.
There are two problems with this approach. First, I must decide this matter according to my own opinion, freely, fairly to the parties, and independently, based on the evidence and my application of the relevant law. Second, if I were to be swayed by the examiner’s opinions (which I am not), the examiner obviously had a change of mind and accepted the application for registration.
Additionally, Mr Scott submitted:
Section 55 of the Trade Marks Act 1995 (the “Act”) has been construed such that it is up to the Opponent to establish a ground of opposition: refer Pfizer Products Inc v Karam [2006] FCA 1663 at [8].
There is a live issue as to the applicable onus. The Opponent submits that it has to be established as any other matter has to be established in civil proceedings of an administrative character (that is, on the balance of probabilities). That standard was recently applied by Gyles J in Pfizer Products v Karam where he reviewed the authorities and held that there is no binding full court authority for the application of a higher onus: Pfizer Products Inc v Karam [2006] FCA 1663 at [26].
Where the Opponent has raised matters which require an answer and the Applicant has not put anything to answer them, the Registrar will not act as an advocate for the Applicant.
If there is doubt as to whether the Applicant’s mark will cause deception or confusion in the public’s mind, the matter must be resolved against the Applicant: Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596.
I generally accept these propositions, except for that in the last paragraph, above. This amounts to a recasting of the onus in the first paragraph, above, to one that essentially mirrors that in Eno v Dunn (1890) 15 App. Cas. 252, applied by the Australia Courts in, for example, A and F Pears Limited v Pearson Soap Company Limited [1925] HCA 52; (1925) 37 CLR 340; and, Eclipse Sleep Products Inc. v. The Registrar of Trade Marks above, at 313, per Dixon C.J, Williams and Kitto JJ. However, this standard as regards onus is not applicable under section 55 of the Act – the onus is on the opponent to establish its opposition to my satisfaction on the balance of probabilities.
And, while I will not act as an advocate for the opponent, neither will I necessarily agree with all of the opponent’s submissions – I must, as I have said, exercise my delegation freely and fairly towards both parties and have regard to whether the grounds have, on the balance of probabilities, been established.
I will discuss the balance of Mr Scott’s submissions against the grounds under which they were argued.
Reasoning
Section 44
Section 44 of the Act relevantly provides for applications made in respect of services:
44 Identical etc. trade marks
[…]
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
The opponent relies on its registered trade marks. Absent argument that the trade marks are substantially identical, to found this ground the opponent must establish that its registered trade marks, registered in respect of goods, and the opposed trade mark which is for services, are:
· deceptively similar, and,
· the relevant goods or services of the parties are closely related goods and services; and,
· the priority of the opponent’s registrations is earlier than that of the opposed application.
As the priority dates of the registrations on which the opponent relies are earlier than that of the opposed application, the questions resolve themselves to those at the first two of the ‘dot-points’, above.
There are several registrations on which the opponent relies and those which appear to be most relevant and typical are:
Regn Number: 307608
Priority Date: 27 May 1977Goods:Class: 25 Clothing, including disposable diapers, all for infants
Trade Mark: HUGGIES
Regn Number: 463304
Priority Date: 13 April 1987Goods:Class: 16 Disposable diapers , bibs and baby wipes, all being predominantly of paper and/or cellulose
Trade Mark: HUGGIES
Endorsements: Registered under provisions of paragraph 45(1)(b)Regn Number: 550615
Priority Date: 18 February 1991Goods:Class: 25 Clothing for young children, inclusive of, but not limited to, disposable underpants used for training young children in the proper use of the toilet
Trade Mark: HUGGIES PULL-UPS
Endorsements: Registration gives no right to the exclusive use of the words PULL-UPS
Registered under provisions of paragraph 45(1)(b)
Regn Number: 776806
Priority Date: 29 October 1998
Goods: Class: 16 Disposable swim wear for childrenClass: 25 Disposable swim wear for children
Trade Mark: HUGGIES LITTLE SWIMMERS
Regn Number: 1032741
Priority Date: 2 December 2004Goods:Class: 3 Baby shampoo, baby bath soaps and cleansers, baby lotions and powders; disposable wash mitts impregnated with skin cleansers, disposable washcloths impregnated with skin cleansers
Class: 5 Diaper rash creams and ointments
Class: 16 Disposable washcloths, disposable wash mitts, and disposable changing pads
Trade Mark: HUGGIES
The question of whether the goods and services of the parties are closely related goods and services should be considered first as stated in, for example, Registrar of Trade Marks v Woolworths [1999] FCA 1020 where French J said:
Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as "closely related goods" in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.
There have been a number of Court decisions as to whether goods and services are closely related. In Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 48 ALR 511, the close relationship was between the hire of earth moving machinery and the relevant goods registration. In Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, the close relationship was between the restaurant services on the application rendered in relation to goods which were ‘of the same description’ as those of the registered trade mark.
There does not appear to me to be the same immediate relationship between the “baby-toddler's toys, videos, CD's, books, games and accessories” in respect of which the applicant proposes to use the trade mark in respect of its “direct sales” services and the goods for which the opponent’s HUGGIES trade marks are registered. The goods are not, according to the usual tests, the same goods or goods of the same description: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at paragraph 8.
French J also observed in Woolworths, at paragraph 40:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.
So I will turn now to the trade marks and consider whether they are deceptively similar. This consideration is largely in the abstract as I have, as yet, made no finding that the goods and services are, or are not, closely related. The classic approach to the question in relation to trade marks in respect of goods, is that the comparison of trade marks occurs in the context of the goods and marketplace: in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.
The concept of deceptive similarity was comprehensively discussed in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40, as follows:
There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:
"But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."
Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:
"On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions."
Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade.
The word HUGGIE appears to me to be a made up adjective, based on the real words HUG or HUGGABLE, which qualifies the word MUMMY following it. The word HUGGIES appears to me to be a made up noun derived from the same source. It is thus understood to allude to the goods themselves. The expression “HUGGIE” MUMMY, I think, is likely to be perceived as meaning, essentially, ‘cuddly mother’ in baby language. It is, or would be, I think, because of this adjectival appearance of the word “HUGGIE” within the opposed trade mark, artificial to subtract it from the opposed trade marks and to compare it directly with the registered trade marks of the opponent. It is unlikely, because of its adjectival appearance and function, to be regarded as a distinct component of the opposed trade mark and the opposed trade mark is thus likely to be viewed as a ‘corporate identity’.
Further, these observations feed into to any perceptions that the public might have that the opponent has a family of HUGGIES trade marks such as HUGGIES PULL-UPS or HUGGIES LITTLE SWIMMERS, or HUGGIES DRY COMFORT, and that the trade mark “HUGGIE” MUMMY might be a member of that family. The word MUMMY does not function in the same way in relation to the opponent’s goods that the words PULL-UPS, LITTLE SWIMMERS, or DRY COMFORT do – the quality of ‘mummy’ is not a desirable attribute of the opponent’s goods or descriptive of them in the same way.
Returning now to the question of whether the goods and services of the parties are closely related. In Aussat Pty Ltd, Re [1993] ATMO 55, I suggested some tests which could be applied to goods and services:
In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:
·. are the goods and services of matching technical complexity?
·. is the technical training of the people who make the goods or provide the services the same?
·. do the people who make the goods or provide the services belong to the same unions or associations?
·. are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in "vehicle hire services" and the goods "cars", there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).
·. do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?
·. is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as "transportation services" and "vehicles"; or, "vehicle hire services" and "vehicles"; or "restaurant and take-away food services" and "food").
·. does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements? (Such as "curtains and furnishings" and "the sewing of furnishings"). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.
·. are the goods and services commonly offered by the one company or organisation? (For example, "retail sales" and the equivalent "goods"; or, "telephone communication services" and "telephones").
·. are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, "advertising services" and "directories", or "publications"; or, "travel agency services" and "publications"; or "telephony services" and "directories").
This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.
On the basis of the above considerations, there is virtually nothing in common between the services of the applicant and the goods of the opponent – except a commonality in the ultimate consumer. However, and I will return to this point later in these reasons, I think that the fact that the same consumers might purchase the goods or services of the parties is not determinative in itself. The tests mentioned in the cases referenced within Southern Cross, above, in respect of goods go further and specify, in addition to the same class of customer, such factors as whether the goods are sold across the same counter, at the same time of year, for a common purpose and so forth. Thus, for example, applying the same analysis to ‘closely related goods and services,’ the fact that car owners might purchase engine oils and also avail themselves of a car washing service, does not in itself force the conclusion that, because car owners are the ultimate consumer, carwashes and motor oils are closely related goods and services.
Approaching the question within a more traditional analysis in line with Aussat, above, it appears to me that the opponent’s goods are not involved in the applicant’s services and that they in fact have little in common and are not, therefore, closely related. Neither do I believe, for the reasons outlined above, that the trade marks of the parties are deceptively similar – they are likely because of their different constructions and allusions to be remembered and recalled in different ways.
The evaluative process outlined by French J in Woolworths, above, suggests to me that the distinctions between the goods in which the parties are engaged, overlaid by the ‘direct selling’ of the applicant and the overall differences between the trade marks are such that there is very little likelihood of deception or confusion.
The opponent has not established its opposition under section 44 of the Act.
Section 60
When this opposition commenced, section 60 of the Act provided:
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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:For deceptively similar see section 10.
Note 2:For priority date see section 12.
To establish grounds under section 60 an opponent must show that its trade mark had a reputation in Australia at the priority date of the opposed application. The opponent must also establish that its trade mark is either substantially identical or deceptively similar to the opposed trade mark. The opponent must also establish that, because of the reputation of its trade mark, the use of the opposed trade mark would deceive or confuse.
As the opponent’s trade mark is not deceptively similar to the opposed trade mark, the opponent cannot establish this ground of opposition. However, if I had found the trade marks to be deceptively similar, the opponent would still have difficulties in establishing its opposition under section 60.
It is clear that, at the priority date, the opponent had a reputation in its trade mark HUGGIES in relation to disposable nappies and probably baby wipes: in McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J posed the question this way at paragraph 81:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
However, the applicant’s services are, “direct selling of baby-toddler’s toys, videos, CDs, books, games and accessories.” Direct sales services are, as I understand them, either those which involve ‘factory direct’ sales to customers, or direct marketing services such as door to door sales, party plan, or sales to or within workplaces by hawkers or canvassers.
I do not think that it is likely that the public would view the applicant’s services, or the goods involved in them, as a logical brand extension from the opponent’s disposable nappies and wipes.[4] Where the opponent has extended the use of its trade mark, it has been in relation to baby wipes, disposable nappies for babies to swim in, baby care lotions, and so forth – goods which have an immediate application in relation to, or in connection with, its primary goods – disposable nappies. The applicant’s goods in respect of which it performs the service are not of that nature.
[4] See for example, McIlhenny Co v Blue Yonder Holdings Pty Ltd (1997) 149 ALR 496
The opponent also relies on several magazines such as Sydney’s Child in evidence in which its trade mark appears in relation to its goods, and advertisements for toys, videos, CDs, books and games appear in the same magazines. This evidence is alleged to establish that the goods of the parties not only enter the market place through the same trade channels but that the public will recognize this.
However, as I observed at the hearing, there are also advertisements for such goods as motor cars in the same magazines. The magazines, from this stand point, offer confirmation only that parents of young children constitute a market for many goods which range from specialised foods, nostrums, learning aids, and perambulators, through to motor cars and furniture.
At the hearing, Mr Scott submitted that the Internet was one probable trade channel through which the applicant’s goods would reach the market. Mr Scott also pointed to evidence of extensive sales by third parties via the Internet of the opponent’s goods bearing its trade mark HUGGIES. However, there is no evidence of ‘direct sales’ via the Internet by the opponent of its own goods bearing the trade mark HUGGIES and there is no evidence that the public would regard this as being likely.
I have other difficulties with the concept, implicit in Mr Scott’s submission, that the Internet constitutes a single marketplace. In fact the Internet appears to be more akin to a High Street, several thousand miles long, packed with shops, stalls, department stores, libraries, auction houses, amusement arcades, etcetera, each clamouring for attention. The fact that the goods of the opponent and those sold by the applicant as part of its service might be ordered by the same person from an outlet or outlets somewhere along this High Street, could not in itself be determinative.
Mr Scott also submitted that toy stores such us Toys ‘R’ Us sell the opponent’s goods in bumper packs. As I understand it, the stores in question are retail stores and the opposed application does not extend to retail sales – it extends only as far as ‘direct sales’.
It is thus difficult, on the basis of the evidence before me, to see sufficient nexus between the services of the applicant and the goods of the opponent such that it is likely that the public would be confused or deceived.
The opponent has not established its ground under section 60 of the Act.
Section 42
Section 42 of the Act provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
Here the opponent relies on Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 where Madgwick J found that subparagraph 42(b) of the Act might refer to any law. The opponent relies on section 52 of the Trade Practices Act 1974, which provides:
52 Misleading or deceptive conduct
(1)A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2)Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
Note:For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).
In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of section 52 of the Trade Practices Act 1974, was made out in a name/getup case, which can be summarised as follows:
• for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;
• there will be no contravention of s52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;
• conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;
• conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct. The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived. However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question;
• the applicant/plaintiff must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the applicant’s business or goods in a particular country or geographical area (the area may be local or Australia wide);
• section 52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive.
The opponent relies on the alleged similarity of its trade marks to the opposed trade mark to establish this ground. I have already found that the trade marks of the parties are not deceptively similar. Deceptive similarity[5] involves a different scope of similarity than the similarity of those signs which might be found to be misleadingly or deceptively similar in terms of section 52 of the Trade Practices Act: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 per Gibbs CJ at paragraph 8:
In McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592 , a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable. I need not add to what their Honours said on this subject (1980) 49 FLR, at pp 458-459, 475-476; 33 ALR, at pp 397-398, 412-413 .
[5] Section 10 defines:Accordingly, as I have found that the opponent has not established its grounds under section 60 of the Act, it cannot, on the basis of the similarity of the trade marks alone, establish its grounds under section 42 of the Act, relying as it does on section 52 of the Trade Practices Act.
The opponent has not established its ground under section 42 of the Act.
Section 43
Section 43 of the Act provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Here the opponent relies not on some connotation inherent in the opposed trade mark but on the alleged similarity of its own trade marks to the opposed trade mark. However, in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, the Full Bench of the Federal Court observed at page at 521:
The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.
The opponent cannot on this basis establish its ground under section 43 of the Act.
Decision
Section 55 of the Act provides:
Decision
55. 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.
I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.
There is another opposition to the registration of this trade mark, which is pending as a decision on the written record.
I therefore direct that the trade mark application may proceed to registration only if the other opposition is resolved in favour of the applicant. If the Registrar has been served with a notice of appeal against this or the other decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.
Costs
It is difficult to see how the applicant could have incurred any of the costs listed in the Schedule to the regulations. However, if she has, the applicant is entitled to claim them and I order those costs against the opponent.
Iain Thompson
Hearing OfficerTrade Marks & Designs Hearings
17 January 2008
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
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