The Federal Court recently handed down its decision in an important trade mark case involving leading global health and hygiene company Kimberly-Clark (K-C). The decision deals with trade mark concepts of deceptive similarity and a comparison of goods and services.
The Federal Court found in favour of K-C in its opposition to Ms Goulimis’ application to register the trade mark “HUGGIE” MUMMY.
K-C owns the famous HUGGIES disposable nappy brand and a portfolio of HUGGIES trade mark registrations in various classes.
Ms Goulimis’, application was for the trade mark “HUGGIE” MUMMY “direct selling of baby-toddler’s toys, videos, CDs, books, games, clothing and accessories” in class 35.
Ms Goulimis initially prevailed in the opposition proceedings before the Trade Marks Office and K-C appealed to the Federal Court.
Federal Court Appeal
K-C appealed to the Federal Court pursuing four opposition grounds:
- s 44 – comparison of marks – that the “HUGGIE” MUMMY mark was deceptively similar to K-C’s HUGGIES trade marks and covers closely related services;
- s 60 – protection of well known marks – that the opposed trade mark was deceptively similar to K-C’s HUGGIES trade mark, that the HUGGIES mark had acquired a reputation in Australia and, because of that reputation, the use of the respondent’s trade mark would be likely to deceive or cause confusion;
- s 42(b) – contrary to law – that use by Ms Goulimis would be contrary to law (for example, use would infringe K-C’s HUGGIES trade mark); and
- s 59 – no intention to use – that Ms Goulimis did not intend to use, or authorize the use of the trade mark in Australia.
Ms Goulimis did not participate in the opposition before the Trade Marks Office or the appeal to the Federal Court.
K-C established phenomenal use in Australia since 1987 in connection with disposable diapers and extraordinarily high resultant brand recognition. The product range expanded to include absorbent underpants, toilet training pants, baby wipes, pyjamas and swimwear for babies and toddlers, changing pads, wash cloths, bath washes, powders and lotions. Evidence established that K-C has significantly increased its product range and distribution channels to the point where the HUGGIES brand is both ubiquitous and pre-eminent in the baby and toddler market.
Evidence from an investigator included an admission that the respondent considered it “only…as a business idea at this stage” and was “still a long way off doing anything.”
Jagot J found in favour of K-C on all four opposition grounds pursued. Notable aspects of the decision included:
“HUGGIE” MUMMY mark is deceptively similar to K-C’s HUGGIES trade mark. Although the marks are to be considered as a whole, Jagot J was influenced by the fact that HUGGIE is a made-up word and that the inverted commas in the applied for mark gives this element emphasis. The singular HUGGIE was a weak form of distinction in the context of the services and goods;
- There was sufficient nexus between the respondent’s services and K-C’s goods such that they are closely related;
- The activity of “direct selling” is not limited to door-to-door sales and that this includes, for example, internet sales (whether from a website maintained by the respondent or via links from other websites to the respondent’s website), sales from market stalls, sales from a “HUGGIE” MUMMY branded shop, as well as sales to end consumers under arrangements with other retailers (for example, by lease or licence of part of the space or a counter within a shop or through factory outlet centres or at places frequented by those responsible for caring for babies and toddlers);
- There is a ‘substantial overlap’ between K-C’s trade channels and the ‘normal and fair use’ of Ms Goulimis’ trade mark permitted by direct selling;
- Notional use of “HUGGIE” MUMMY for the applied for services would infringe K-C’s HUGGIES trade mark (s 120(2) Trade Marks Act) and /or contravene s 42 of the Fair Trading Act 1987 (NSW) such that use of the mark would be contrary to law; and
- The admission by Ms Goulimis the investigator that her trade mark was only a business idea at this stage, the lack of evidence of use and other circumstances showed a lack of any real and definite intention to use the trade mark.