Kimberly-Clark Corporation v Vereinigte Papierwerke Schikedanz and Co

[1967] HCA 45

HIGH COURT OF AUSTRALIA

Windeyer J.

KIMBERLY-CLARK CORPORATION v. VEREINIGTE PAPIERWERKE SCHIKEDANZ &CO.

(1967) 118 CLR 79

21 November 1967

Trade Marks

Trade Marks—Registration—Opposition—Likelihood of deception—Similarity to mark already on register—Mark not entitled to protection of court—Lack of distinctiveness—"Coldex"—"Kotex" already on register—Trade Marks Act 1955-1958 (Cth), ss. 28 (a) (d), 33 (1).

Decision

WINDEYER J. I have come to a conclusion in this matter and I do not think that any good purpose would be served by my reserving my decision, except that I might express my reasons better and in a more orderly fashion; but I hope to state them clearly enough for the parties to know both the result and my reasons. I may elaborate these when I revise the transcript. (at p81)

2. The matters before me are two applications to register as a trade mark the word "Coldex". The question in each case is whether the registration should be refused because of the presence on the register of the trade mark "Kotex" and the use of that mark since 1936 in relation to articles, which have been in these proceedings called sanitary napkins or sanitary pads, used by women during periods of menstruation. (at p81)

3. The matter comes before me in the original jurisdiction of the Court in the form of an appeal from the decision of the Assistant Registrar of Trade Marks who allowed the registration of the mark "Coldex". The Registrar of Trade Marks had notice of the proceedings. He has not sought leave to intervene pursuant to s. 113 of the Trade Marks Act 1955-1966 (Cth). (at p81)

4. For convenience I shall call the respondent before me the applicant, as it is the party seeking to register the mark. It is a German company which has for long had large business connexions in many countries. A wide range of its products have been sold under the name "Coldex", but it has never used that name in Australia; nor, I think, has anybody else used that name, certainly not in relation to any goods such as those with which we are now concerned. (at p82)

5. The appellant - I shall call it the opponent - is an American company which, by its subsidiaries or associated companies, has also had a large business in many parts of the world, including Australia. It is the registered proprietor of the trade mark "Kotex" in Australia and also of a trade mark "Wondersoft Kotex". The mark "Kotex" is registered in respect of "sanitary pads", being goods included in class 5. It is also registered in respect of "sanitary belts", articles which have an ancillary use. The mark "Wondersoft Kotex" is registered in respect of "sanitary pads, towels and bandages", included in class 5. (at p82)

6. The two applications before me are numbered 167606 and 167607. They were both lodged in or before the year 1962. In that year they were accepted. Later, after hearing the present opponent and another opponent in opposition, an Assistant Registrar, exercising by delegation the functions of the Registrar, decided they should be registered. The appeal from his decision has, for one reason or another, taken some time to come on for hearing and no use has been made of the mark "Coldex" in Australia in the meantime. The mark "Kotex" has been continuously used. (at p82)

7. Application No. 167606 is for the registration of "Coldex", in respect of "paper and pulp foils for hygienic purposes, sanitary pads and belts therefor, tampons" in class 5. (at p82)

8. Application No. 167607 is for the registration of "Coldex" in respect of "goods made from paper or pulp as substitutes for textile goods, namely, face-cloths, handkerchiefs, napkins, wrappers, doyleys, diapers" in class 16. (at p82)

9. The opponent invokes s. 28 (a) and s. 33 (1) of the Trade Marks Act 1955 and bases its opposition primarily upon the phonetic similarity of the words "Kotex" and "Coldex". Whether "Coldex" would be deceptively similar to "Kotex" if used in respect of the same goods, and whether, if it were so used, confusion would be likely to result, are the critical questions. They are not to be determined by simply considering the similarity of the two words in appearance or in sound. All the circumstances of the trade in goods of the kind in question must be considered. (at p82)

10. I do not think it necessary to rehearse the whole of the evidence. The matters which seem to me to be most relevant and which are well established by the evidence are as follow: "Kotex" is, as I have said, very well known as a brand name for sanitary napkins sold in Australia in packages bearing that name and widely advertised under that name. It has been used only for those goods and for belts for ancillary use. It may be that, within the ambit of the registration of the mark "Wondersoft Kotex", that name could be used for any kinds of towels and bandages although they had no relation to, or association with, sanitary pads. I do not have to decide whether that is so. In fact the name "Wondersoft Kotex" has been used only for goods of the Kotex kind. The opponent does sell other goods. It sells cleansing tissues, or facial tissues as they are called. These are sold under the trade mark "Kleenex". (at p83)

11. The word "Kotex" has thus come to have special associations and to designate a particular kind of article for a special use. Women buying these goods in retail shops, mainly in chemists' shops, commonly ask for them by the name Kotex. And they very often, understandably, ask in a quiet and subdued voice. Any word not clearly distinct in sound from Kotex might therefore be mistaken. Moreover goods of this kind are very often delivered by the shop assistant to the customer already wrapped. Thus she does not see the package until she gets home. It is when a person buys in a retail shop that mistakes are most likely to occur. Notwithstanding what was said in some of the affidavits, I do not think it likely that any significant confusion would occur in telephonic communications between a retailer and a wholesaler. No doubt either word might be misheard on the telephone; but as between a shopkeeper and a supplier, both of whom it may be assumed would know both names, and know them as referring to the products of different manufacturers, it seems to me that in the giving and taking of orders by telephone the persons at both ends would ordinarily be at some pains to avoid a misunderstanding the possibility of which they would know. On the other hand in a retail shop, a chemist's shop or a store, a person asking for goods of one brand might by an honest misunderstanding of a shop assistant - or conceivably by a pretended misunderstanding - be given the other brand. When she became aware of this she might hestitate to go back or think it not worthwhile doing so. It is in ways such as this that I think that the similarity of the marks could cause confusion and be, in the trade-mark sense, deceptive. (at p83)

12. I should, I think, mention that Mr. Bannon, for the opponent, urged, as an independent ground of objection, that "Coldex" was a mark which was "disentitled to protection in a court of justice", within the meaning of s. 28 (d). I said during the argument that, in my opinion, this proposition could not possibly be sustained. It seemed to me very far-fetched. But, as the argument was seriously put, I think I should state how it was put, and why I rejected it. "Coldex", Mr. Bannon said, is merely an ordinary English word with a meaningless suffix: if it was to be regarded as an invented word, it was, he said, disqualified for registration because it was descriptive of the quality or character of the goods in respect of which it was sought to register it. Paper, he said, is cold] and in relation to application No. 167607 registration of the word "Coldex" is sought for a range of products made from paper. As to this, I would say first that it seems to me that the words of s. 28 (d) refer to some characteristic of the mark other than mere lack of distinctiveness or capacity to distinguish and to some characteristic other than a direct reference to the character or quality of the goods. A mark which "would otherwise be not entitled to protection in a court of justice" refers, I think, to something intrinsically objectionable which disqualifies a mark otherwise registrable: see In re Imperial Tobacco Co.'s Trade Marks (1918) 2 Ch 207, at pp 224, 229 . However that may be, it cannot be said that the word "Coldex" is disqualified for registration because it contains the word "cold", and thereby has a direct reference to the goods. It is true that "ex" is not in the ordinary use of the English language a suffix. Nevertheless it is often the last syllable of a trade name for goods. Sometimes such a name may indirectly suggest the material out of which the goods are made. Sometimes it may carry a suggestion of their purpose, as for example in the opponent's mark "Kleenex", the first syllable of which seems to be but a misspelling of "clean". Sometimes it may indirectly suggest the nature of the goods. "Kotex" for example could well be thought to be derived from the word "cot" (which is sometimes spelt "cote") used in one of its regular and recognized meanings as a sheath, cover, or coat, a protection. So regarded "Kotex" seems to be no more than, using counsel's phrase, a word made by adding a meaningless suffix to a known and descriptive word misspelt with a "K". Yet I would gravely doubt whether at any stage of its history the word "Kotex" could have been supposed to be disqualified for registration. The word "Coldex" may in some way be suggestive of the word "cold" if it be used for paper handkerchiefs, useful articles for persons suffering from a common cold. But I am quite unable to understand counsel's proposition that paper is by nature a cold substance. No doubt for inner garments it is an advantage in hot weather if they be made of some material other than, say, flannel or wool. And for some people "Coldex" might perhaps suggest coolness, lack of warmth; but that could not possibly be so in reference to such things as paper table napkins, wrappers and doyleys. Moreover the argument that because of its first syllable the invented word "Coldex" is in some way or other disqualified as descriptive of goods, can I think be disposed of by quoting a sentence from the judgment of Dixon J. in Howard Auto-Cultivators Ltd. v. Webb Industries Pty. Ltd. (1946) 72 CLR 175, at p 181 :

" . . . the new word need not be wholly meaningless and it is not a disqualification that 'it may be traced to a foreign
source or that it may contain a covert and skilful allusion to the character or quality of the goods'".

In short I can see no reason at all for saying that, if the word "Kotex" were not in the field, the word "Coldex" would not be a registrable trade mark for the whole range of articles for which its registration is sought. It is not any inherent lack of distinctiveness, only its similarity to the word "Kotex", that stands in the way of its registration. (at p85)

13. I may add that the word "Coldex" is not a newly invented imitation of "Kotex". It is a trade mark which the applicant has used in other parts of the world. In several countries the present parties have been in dispute about these same two marks. I can draw no conclusions at all from what happened in proceedings in countries of whose laws I am ignorant, especially as I know nothing of the circumstances of the trade which was the background of the proceedings. The evidence on those matters was I think only admissible for a very limited purpose. It appeared from it that in other places than Australia, and on earlier occasions, each of the parties before me had taken the opposite attitude from that which it now takes. Similarity of the marks was it seems asserted by the present applicant when its mark "Coldex" was first in the field - and it seems that the present opponent then asserted the opposite view. Nothing, I think, is to be inferred from this either way, except that neither party has ever regarded the other's mark as so dissimilar that it could ignore it. (at p85)

14. I have read the reasons of the Assistant Registrar. He gave the matter very careful attention and much of what he said I found helpful. But as I have come to a different conclusion in these proceedings which are a re-hearing, I do not think it necessary that I discuss what he said. (at p85)

15. I was referred by counsel to reported cases in which courts had held two words to be so similar as to be deceptive or likely to cause confusion, and to other reported cases in which the contrary conclusion was reached. And I have been referred to what was said in those cases. I do not intend to discuss them. In my opinion to ask how other words, used for other things, in other circumstances, sometimes in other countries, have been described by other courts is of little help. The words of the Act are plain; and it is this case, and this case only, that I have to consider. I will refer to one only of the cases which were cited, and to one passage in it: in the judgment of Viscount Maugham, in the matter of In re Smith Hayden &Co. Ltd.'s Application (1946) 63 RPC 97 where his Lordship said (1946) 63 RPC, at p 102 :

"When all is said, the question is in truth, as observed by Luxmore L.J. and the House of Lords in the Aristoc Case (1945) 62 RPC 65, at p 73 , one of first impression, on which no doubt different minds may reach different conclusions. It is not profitable in such a case to indulge in minute analysis of letters and syllables, a process, indeed, notoriously productive of confusion in regard to words." (at p86)

16. I should perhaps add that this case is not one in which evidence or the absence of evidence in relation to confusion could be of much weight. As no goods have been marketed under the name "Coldex" in Australia, no instances of actual confusion could have occurred. A number of witnesses for the opponent in their affidavits as first sworn stated they were of opinion that there would be confusion with the "Kotex" brand if sanitary napkins were sold under the name of "Coldex". That evidence in that form was inadmissible, and I rejected it. But, someone having become aware I suppose that that would be the fate of those paragraphs, the deponents made supplementary affidavits. In these they said, in one form or another, that uncertainty or confusion or perplexity would be caused to them because of the similarity of the words and circumstances of the trade. So far as they depose to the circumstances of the trade, of course their evidence is relevant. So far as they state that in their opinion they themselves, being shop assistants, would be perplexed or made uncertain, that, on the authorities, appears to be admissible evidence. But it seems to me to be of no great value. I must decide for myself. (at p86)

17. When witnesses said they would be confused, they did not mean that they would be misled as to the trade origin of the goods, or think that they had the same origin. They meant only that customers might give their orders in an indistinct manner and that they would mistake what they had asked for. Without any evidence I would as a matter of first impression think that the similarity of the words "Kotex" and "Coldex" could lead to mistakes. The evidence as to the circumstances of the retail trade makes me think that mistakes would be likely to occur. (at p87)

18. The onus is on the applicant to shew that there is no likelihood of deception or confusion; for the Court is concerned with the protection of the public rather than the interests of the parties. I am not satisfied that confusion or deception is unlikely. For these reasons I am of opinion that application No. 167606 fails; and that the appeal in relation to it must be upheld. (at p87)

19. As to application No. 167607, different questions arise. There the range of goods in respect of which registration is sought is, except as to two items, altogether unlike the goods in respect of which the word "Kotex" is registered, and unlike any goods to which the word "Kotex" has been applied or could, within the ambit of its registration, be applied; unlike also, any goods to which the words "Wondersoft Kotex" have been applied. The two items which cause difficulty are "napkins" and "diapers". If "Coldex" were to be registered for the whole range of goods for which its registration is sought, then the same possibility of confusion as stands in the way of application No. 167606 could occur; because I think the words "napkins" and "diapers" could be read as denoting, among other things, articles such as are sold under the name "Kotex". (at p87)

20. The word "napkin" originally meant, and properly means, I think, a table napkin. It has come to be used also for what are now commonly called babies-napkins, or colloquially "nappies". It has come to be used too in the sense in which the opponent describes the articles it sells under the name "Kotex" as "sanitary napkins". (at p87)

21. As to "diapers", the word has had a curious history. But from the time of Dr. Johnson, indeed from the time of Shakespeare, it has meant, among other things, a napkin or a towel. And for quite a long time it too has been used to describe a babies-napkin. The old English word "clout", defined as "a piece of cloth put to a mean use", seems to have been almost entirely displaced under the influence of euphemisms and genteelisms. (at p87)

22. The question is, then, whether I should allow the registration of "Coldex" in respect of the range of goods referred to in application No. 167607 but excluding "napkins" and "diapers", or alternatively confine the denotation of those words. The alternative presents no difficulty so far as "napkins" is concerned. It is in a collocation of "face-cloths, handkerchiefs, napkins, wrappers, doyleys"; and if it were made to read "table napkins", all objections would disappear. "Diapers" presents another problem. Of itself, and as it stands, it could, as Mr. Rolfe for the applicant concedes, comprehend articles for women as sold under the name "Kotex". It is suggested that it might be limited to what are commonly called babies-napkins and that the word "babiesnapkins" would be preferable to diapers for babies. This, I think, would be satisfactory. The only question that would then remain is whether, if for the word "diapers" the word "babiesnapkins" were used, there would be any reason to think that the use of a word similar to "Kotex" for babies-napkins suggested that the persons who manufacture or sell "Kotex" had embarked upon a new undertaking and were producing a new product, babies-napkins. (at p88)

23. I appreciate of course that, using words of Dixon J., which were quoted by the Full Court in Southern Cross Refrigerating Co.'s Case (1954) 91 CLR 592, at p 608 :

"It is not enough for the applicant 'to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of registration and the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration'."

The words "sanitary pads" or "sanitary napkins" may perhaps as a matter of language not be restricted to articles for use by women. But I am inclined to think that, in this context and having regard to the way in which the opponent has used its mark, they should be regarded as so restricted. I do not think that it would be within the ambit of the registration of the word "Kotex" to apply it to napkins for babies. It seems to me that only by a peculiar and unlikely train of thought could the use of the word "Coldex" for babies-napkins be misleading. So far as "Wondersoft Kotex" is concerned, I realize that the ambit of the registration might be taken to include babies-napkins if the words "towels" and "bandages" be given a very wide denotation. But "Wondersoft" by itself is not, I would think, a registrable mark. It is a laudatory and descriptive adjective. As a trade mark it is part of the mark "Wondersoft Kotex". The existing use of the word "Kotex" and its established associations seem to me to limit the kinds of goods to which the name "Wondersoft Kotex" would be likely to be applied to goods for women's use. (at p88)

24. I think that the applicant is entitled to have its mark "Coldex" registered in respect of goods mentioned in application No. 167607 with the descriptions amended in the way I have suggested, namely, table-napkins for napkins and babies-napkins for diapers. (at p89)

25. In the result I allow the appeal in respect of application No. 167606. In respect of No. 167607, I set aside the decision of the Assistant Registrar and direct the registration of the mark subject to the limitations I have stated. (at p89)

Orders

In case No. 7 of 1965 (being an appeal in respect of trade mark application No. 167606) - Appeal allowed.

In case No. 8 of 1965 (being an appeal in respect of trade mark application No. 167607) - Decision of the Assistant Registrar set aside. In lieu thereof order that the trade mark applied for be registered in respect of the following: "goods made from paper or pulp as substitutes for textile goods, namely face-cloths, handkerchiefs, table-napkins, wrappers, doyleys, babies-napkins", in class 16. The respondent to pay three fifths of the costs of the appellant of the appeals on the basis that they were heard together.

Solicitors for the appellant, Baldick, Macpherson &Walsh.

Solicitors for the respondent, Sinclair &Leahy.

R. A. H.