Whirlpool Properties, Inc the company behind the well-known KITCHENAID food mixer has successfully prevented registration of the trade mark KitchenMaid.
Huilong Electrical Appliances Pty Ltd (”Huilong”) applied in 2008 to register KitchenMaid as a trade mark in Australia for goods which could broadly be described as kitchen appliances for preparing food and domestic cleaning appliances.
In Whirlpool Properties, Inc. v Huilong Electrical Appliances Pty Ltd [2010] ATMO 79 (25 August 2010), Whirlpool opposed registration of Huilong’s trade mark on the grounds that:
- it had a reputation in the KITCHENAID trade mark at the date of filing of the KitchenMaid trade mark and due to that reputation use of the KitchenMaid mark was likely to deceive or cause confusion; and
- KitchenMaid was substantially identical or deceptively similar to Whirlpool’s family of KITCHENAID trade marks and for similar goods or closely related services; and
- Huilong did not have a bona fide intention to use the trade mark as at the filing date of its application.
In his decision, the Delegate of the Register of Trade Marks recognised the popularity amongst consumers of the KITCHENAID trade mark particularly, the KITCHENAID food mixer. On the facts, he found that Whirlpool had a significant reputation in Australia in its KITCHENAID mark for a range of kitchen appliances and utensils as at the 31 March 2008 filing date of Huilong’s application. Due to this reputation, use of the mark KitchenMaid on Huilong’s appliances was found to be likely to deceive or cause confusion. Huilong’s trade mark was therefore denied registration pursuant to the s.60 ground of opposition set out in the Trade Marks Act 1995 (Cth).
The Delegate also agreed with submissions from Whirlpool’s attorneys, Phillips Ormonde Fitzpatrick, that the trade marks KitchenMaid and KITCHENAID were deceptively similar, finding the omission (or inclusion) of a letter in the centre of one of the trade marks could be easily overlooked during the purchase of kitchen appliances.
The similarity of the goods of the KitchenMaid application and the goods and services of Whirlpool’s various KITCHENAID trade mark registrations was the subject of detailed analysis in the decision. Each of the goods of the KitchenMaid application were found to be either closely related to the services covered by Whirlpool’s registrations, or to be for similar goods. Consequently, the Delegate refused registration of the KitchenMaid trade mark for all the goods for which registration was sought pursuant to the s.44 ground of opposition of the Trade Marks Act 1995 (Cth).
Whirlpool was unsuccessful in arguing that Huilong did not have a bona fide intention to use its mark at the time of filing (in line with the policy introduced by the Registrar following the Food Channel Network decision of the Full Federal Court earlier this year). Whirlpool was ultimately successful as only a single ground of opposition needs to be established to prevent registration of a trade mark.