‘HUGGIE’ MUMMY for nappy services disposed of
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In Kimberly-Clark Worldwide Inc v Goulimis ( FCA 1415, September 16 2008), the Federal Court of Australia has allowed an appeal by Kimberly-Clark Worldwide Inc against the decision of the registrar of trademarks to accept an application to register the mark 'HUGGIE' MUMMY.
Alexandra Goulimis applied for the registration of the trademark 'HUGGIE' MUMMY in respect of services described as "direct selling of baby-toddler’s toys, videos, CDs, books, games and accessories".
Kimberly-Clark is the owner of 10 Australian registrations for trademarks that include the word 'huggies', each with a priority date earlier than that of Goulimis’s application. The trademarks cover, among other things, "clothing, disposable diapers, bibs, baby wipes and disposable underpants". Kimberly-Clark opposed the application based on its registered HUGGIES marks. The registrar ordered that the application proceed to registration. Kimberly-Clark appealed.
The Federal Court allowed the appeal on several grounds.
First, the appeal was allowed based on Section 44(2) Trademarks Act 1995 (Cth). In particular, the court held that the mark 'HUGGIE' MUMMY was deceptively similar to HUGGIES because:
- the essential feature of Goulimis’s trademark is the word 'huggie'; and
- the effect or impression of the mark involved a real likelihood that some consumers would wonder whether Kimberly-Clark was in fact the true source of Goulimis’s goods.
In this regard, the court noted that:
- 'huggie' was a made-up word and the inverted commas around the word gave it emphasis (as did the artificial 'ie' ending), which would thus attract the particular attention of consumers; and
- the singular form (ie, 'huggie' as opposed to 'huggies') was a "weak point of distinction".
In addition, the court held that Goulimis’s services were closely related to Kimberly-Clark’s products because the normal and fair use of Goulimis’s mark would involve a substantial overlap with Kimberly-Clark’s trade channels, particularly in terms of the locations where sales may occur. Moreover, it would be open to Goulimis to offer and promote her services alongside and in the same publications and forums as the extensive distribution channels used by Kimberly-Clark for its HUGGIES-branded goods.
Second, the court held that the evidence established that HUGGIES had acquired a reputation in Australia for the purposes of Section 60 of the act because:
- HUGGIES is the dominant brand in the market for baby-toddler personal care items and ancillary items; and
- HUGGIES is a household name with a substantial degree of notoriety or familiarity in Australia.
Therefore, due to the substantial reputation attaching to the HUGGIES mark, Goulimis’s trademark would be likely to deceive or cause confusion, as consumers in the relevant market would wonder whether Kimberly-Clark was the true source of Goulimis’s services.
Third, the court held that use of the mark 'HUGGIE' MUMMY would contravene Section 42 of the Fair Trading Act 1987 (NSW) and Section 52 of the Trade Practices Act 1974 (Cth), as consumers would be likely to:
- identify Kimberly-Clark as the source of the relevant goods; or
- believe that there was an affiliation between Kimberly-Clark and Goulimis’s services.
Therefore Goulimis’s use of her mark would be contrary to law for the purposes of Section 42(b) of the Trademarks Act.
Fourth, the appeal was allowed under Section 59 of the act. The court held that Goulimis lacked the requisite intention to use her trademark - that is, she lacked a real and definite intention and had only (at best) a mere general intention of expanding her business at some future time. Goulimis conceded that she had registered 'HUGGIE' MUMMY "only [...] as a business idea at this stage" and was "still a long way off from doing anything".
Julian Gyngell, Julian Gyngell, Wahroonga
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