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  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).
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  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 objected to the registration of Plantation's mark on 2 grounds:
- 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
- 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.