Australia: The device may not suffice - Two recent Australian trade mark opposition cases

In two recent trade mark opposition cases, IP Australia has considered the distinctiveness of trade marks and illustrated the dangers of using descriptive words in a trade mark.

What this means for you

  • These decisions confirm IP Australia's view of the importance of creating a distinctive trade mark.
  • When developing a trade mark, avoid using words or names which are well known or have a strong reputation. Adding a distinctive graphic to a trade mark may not be enough to reduce its similarity to other existing registered trade marks.
  • If a trade mark is not distinctive, it may be more difficult to stop other traders from using a trade mark which is similar to your mark.
  • Trade marks which describe the goods or services in respect of which they are registered are not distinctive. The best trade marks are often invented or fanciful words.

Kimberley-Clark Worldwide Inc. v The Reject Shop Limited [2015] ATMO 2 (8 January 2015)


The Reject Shop Ltd (Reject Shop) applied to register a trade mark on 8 April 2011 in respect of cleaning agents for the hands, for the following logo:

(the Trade Mark).

On 9 July 2012, Kimberley-Clark Worldwide Inc (Kimberley-Clark) opposed registration of the Trade Mark. The Hearing Officer at IP Australia was persuaded by the reputation that Kimberley-Clark had established in its "KLEENEX" trade mark (Kimberley-Clark's Trade Mark).

Kimberley-Clark's Arguments

To establish the requisite reputation, Kimberley-Clark had to establish that its trade mark had acquired a reputation in Australia before the filing date of the Trade Mark (8 April 2011), in relation to the same goods or services, and due to that reputation, the Reject Shop's use of the Trade Mark would cause confusion in the marketplace.

Kimberley-Clark argued that its Trade Mark and the Reject Shop's Trade Mark (together, the Trade Marks) were too similar to one another, for the following reasons:

  • both Trade Marks incorporate the word "KLEEN" at the beginning of the word, and this is the memorable element in both marks;
  • there are not enough differences between the two trade marks to avoid confusion;
  • both Trade Marks convey a similar idea and are similar in sight and sound; and
  • neither trade mark contains many other distinguishing features.

Kimberley-Clark also argued that it had used its trade mark in relation to the very same goods as the Reject Shop's goods, and its reputation stemmed from that use. The evidence relied upon by Kimberley-Clark of use of its trade mark in Australia dated back to 1951, including use in relation to facial tissues, tissues impregnated with cosmetic lotions, toilet paper and paper towels, cleaning products such as hand soaps and hand sanitisers, impregnated wipes, and wet wipes for hands, face and body.

Very substantial confidential sales and advertising information was also submitted by Kimberley-Clark, which evidenced continuous use of its trade mark from before the date that the Reject Shop filed its application.

The Reject Shop's Arguments

The Reject Shop conceded that the "KLEENEX" brand in relation to tissues was well known. However, it argued that Kimberley-Clark always used the trade mark in a certain way, namely the word "Kleenex" in a cursive font was always accompanied by the image of a stylised curved leaf.

Therefore, the Reject Shop argued, Kimberley-Clark did not have the relevant reputation in the term "KLEEN" given that the word "KLEENEX" was always used together with the leaf image. The Reject Shop submitted that:

"the Opponent's brand extension strategies are based around adding words and logos to its KLEENEX brand, and not around developing a range of trade marks based on the KLEEN prefix".

In an attempt to dilute any reputation of Kimberley-Clark, the Reject Shop argued that the term "KLEEN" was incorporated into several other trade marks and identified other businesses incorporating the word "KLEEN" in their names.

Decision - confusion inevitable

Kimberley-Clark's reputation in its "KLEENEX" trade mark in Australia was found to be considerable, and therefore it was found that there would be a likelihood of confusion in the marketplace if the Trade Mark was registered.

While Kimberley-Clark's evidence did not turn specifically to a reputation in the term "KLEEN", its evidence of use was not found to limit its reputation to the word "Kleenex" always in cursive font and accompanied by graphics.

The memorable impression left from Kimberley-Clark's Trade Mark was found to be the initial capitalisation in the word "Kleenex"used across all its trade marks, which was a feature that the Reject Shop had chosen to adopt in its Trade Mark.

Not only was it found that there would be a reasonable likelihood of confusion among a substantial number of persons in the marketplace, but that due to the similarities between the Trade Marks noted above, confusion was in fact inevitable.

Kimberley-Clark was therefore successful in its opposition and accordingly, the Reject Shop's Trade Mark was refused registration.

BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34(30 April 2015)


On 5 November 2012, Plantation Outdoor Kitchens Pty Ltd (Plantation) applied to register the following trade mark for cooking appliances, gas cooking appliances and grills:

Plantation had been using its mark since July 2012.

BBQ Store Pty Ltd (BBQS) opposed registration of Plantation's mark and a few days later on 13 November 2012, applied for registration of its similar mark (as shown below) for a number of barbeque related goods in class 11.

BBQS developed and began using its mark from February 2011.

BBQS' Arguments

BBQS objected to the registration of Plantation's mark on 2 grounds:

  1. first, because Plantation was using a trade mark which was not its own. This was because Plantation's mark was "substantially identical" to BBQS' mark, which BBQS had been using prior to Plantation's use of its mark - an objection under section 58 of the Trade Marks Act 1995 (Cth) (Trade Marks Act); and
  2. secondly, BBQS had built up a reputation associated with its mark, and Plantation's mark would deceive or confuse traders - an objection under section 60 of the Trade Marks Act.


The delegate of the Registrar of Trade Marks dismissed both of the BBQS' objections to registration of Plantation's mark.

Section 58 objection: – use of BBQS' trade mark

The Hearing Officer acknowledged that BBQS had used its mark before Plantation had used its similar mark. However, the two trade marks were not "substantially identical" and therefore Plantation had not been using BBQS' mark. This was because when comparing the mark, the words "the BBQ Store" in each of the mark were excluded as this element is not distinctive when used in relation to barbeques. Once those words are removed, the features left in each mark, being the flame in Plantation's Mark and the skewer and web address in BBQS' mark, are not identical to each other.

Section 60 objection: – reputation of BBQS

Although traders may be confused as to the origin of the two marks, the confusion arose due to BBQS' choice of a convenient descriptive phrase to describe its goods, not because of the reputation of BBQS' business. Such confusion is an inherent risk of using a descriptive phrase to describe goods and services. If IP Australia protected traders from this risk, it would give BBQS an unfair monopoly on the use of the words "The BBQ Store" in relation to barbeques. This is because common words or names should be available for use by other traders to identify their goods.

Conclusion and Comment

As BBQS was not successful in either of its grounds of opposition, the Hearing Officer allowed registration of Plantation's mark one month following its decision.

This decision is a reminder of the importance of developing a distinctive trade mark and the importance of registering a trade mark as soon as possible after the trade mark is developed to establish an early priority date.

Although BBQS had been using the words "The BBQ Store" in relation to barbeques before Plantation, BBQS could not rely on its prior use of the mark to oppose the registration of a similar mark because the predominant features of the trade mark were not distinctive.

This publication does not deal with every important topic or change in law and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to the reader's specific circumstances. If you have found this publication of interest and would like to know more or wish to obtain legal advice relevant to your circumstances please contact one of the named individuals listed.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions