Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415

Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415

The respondent's direct selling services were closely related to the applicant's HUGGIES goods because normal and fair use of the respondent's specification would overlap with the applicant's trade channels and could include baby-toddler accessories covering the applicant's product range. The essential feature of "HUGGIE" MUMMY was "HUGGIE", which was too close to the applicant's HUGGIES marks given the low-value, high-volume baby-toddler goods market and the applicant's strong reputation. Use of the respondent's mark would be likely to cause consumers to wonder whether the applicant was the source of, or affiliated with, the respondent's services, satisfying ss 44(2), 60 and 42(b) of the...

Jurisdiction
Australia
Judgment Date
16 September 2008
Procedural Posture
Appeal Under S 56 of the Trade Marks Act 1995 (cth) From a Decision of a Delegate of the Registrar of Trade Marks Permitting Registration of Trade Mark Application No 1085541 / Final Judgment on Appeal
Outcome
Appeal allowed; Registrar's decision set aside; Trade Mark Application No 1085541 refused.
Legal Topics
['deceptive Similarity' 'closely Related Goods and Services' 'trade Mark Reputation' 'intention to Use Trade Mark' 'use Contrary to Law' 'misleading or Deceptive Conduct']
['intellectual Property' 'trade Marks' 'consumer Protection'] ['deceptive Similarity' 'closely Related Goods and Services' 'trade Mark Reputation' 'intention to Use Trade Mark' 'use Contrary to Law' 'misleading or Deceptive Conduct']

Case Brief

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Procedural Posture

Appeal Under S 56 of the Trade Marks Act 1995 (cth) From a Decision of a Delegate of the Registrar of Trade Marks Permitting Registration of Trade Mark Application No 1085541 / Final Judgment on Appeal

Legal Issues

  1. 1 ["Whether the respondent's services for direct selling of baby-toddler toys, videos, CD's, books, games and accessories were closely related to the applicant's HUGGIES goods for the purposes of s 44(2) of the Trade Marks Act 1995 (Cth)." 'Whether the mark "HUGGIE" MUMMY was deceptively similar to the applicant\'s HUGGIES trade marks.' 'Whether the applicant\'s HUGGIES marks had acquired a reputation in Australia such that use of "HUGGIE" MUMMY would be likely to deceive or cause confusion under s 60 of the Trade Marks Act 1995 (Cth).' "Whether use of the respondent's mark would be contrary to law under s 42(b) of the Trade Marks Act 1995 (Cth), including by reason of misleading or deceptive conduct and trade mark infringement." 'Whether the respondent had a real and definite intention to use the "HUGGIE" MUMMY trade mark in Australia.']

Ratio Decidendi

The respondent's direct selling services were closely related to the applicant's HUGGIES goods because normal and fair use of the respondent's specification would overlap with the applicant's trade channels and could include baby-toddler accessories covering the applicant's product range. The essential feature of "HUGGIE" MUMMY was "HUGGIE", which was too close to the applicant's HUGGIES marks given the low-value, high-volume baby-toddler goods market and the applicant's strong reputation. Use of the respondent's mark would be likely to cause consumers to wonder whether the applicant was the source of, or affiliated with, the respondent's services, satisfying ss 44(2), 60 and 42(b) of the...

Court Disposition

Appeal allowed; Registrar's decision set aside; Trade Mark Application No 1085541 refused.

Orders

  • ['The appeal is allowed.' 'The decision of the Registrar of Trade Marks dated 17 January 2008 with respect to Trade Mark Application No 1085541 is set aside.' 'Trade Mark Application No 1085541 is refused.' "The respondent (Alexandra Goulimis) is to pay the opponent's (Kimberly-Clark Worldwide, Inc's) costs of the...