It´s Not a Baby

By Fernanda Alonso Duran

The Uruguayan Patent and Trademark Office fully recognized the worldwide notoriety of Kimberly-Clark Worldwide, Inc.’s mark HUGGIES in an opposition proceeding said company lodged against an application for HUGGY filed by the Spanish company Fábricas Agrupadas de Muñecas de Onil S.A.

Among other important arguments, the P.T.O. rejected the application in question as in said body’s opinion the applicant was seeking to use the fame and prestige of a well-known trademark, with many years in the international market, for its own advantage, and that if the trademark applied for were to be granted, once the products identified by it were on the market it would remind consumers of the famous trademark, leading them to associate it with the same origin.

KIMBERLY-CLARK WORLDWIDE, INC. filed an opposition against the Spanish company FÁBRICAS AGRUPADAS DE MUÑECAS DE ONIL S.A.’s application for HUGGY, which was requested to cover “toys, toy building blocks, dolls, doll beds, doll clothes, baby bottles for dolls, dollhouses, doll rooms, marionettes, masks (toys), toy mobile phones, toy cars, accessories and toys for parties or dances, stuffed toys, action figures, water toys, remote control toys, rocking horses, slides for toy accessories, bubble makers, spinning tops, toy pools, teddy bears, play masks, doll carriages, twirling batons” in Class 28.

The aforesaid action was based mainly on the following grounds:

- The similarity between the applied mark HUGGY and the previous registrations of HUGGIES owned by the opposer in Classes 3, 16 and 25;
- The existing relationship between the goods cover by both marks, i.e. diapers and toys as both are directed to children;
- KCWW had advertisement campaigns in which with each pack of diapers they bought, consumers were given a toy identified with the mark HUGGIES;
- The worldwide notoriety of the mark HUGGIES.

In order to prove the aforesaid allegations, abundant evidence was furnished with the P.T.O.

The P.T.O. issued a resolution fully supporting KCWW’s position. This ruling was based on a Legal Adviser’s opinion, which mainly stressed that:

“As for the evidence furnished and with respect to the opposing mark's multiple registrations in other countries it should be noted that while these do not constitute irrefutable proof that the trademark is famous, and despite the fact that the protection granted through registration is limited to the territory in which the trademark is registered, it is no less true that such registrations are always an indication of a trademark's fame.
Moreover, in view of the evidence submitted and without even considering the widespread presence that the opposing mark has in international markets, including the long-standing presence in this country and its permanence in the domestic market, it is a well-known fact that "HUGGIES" is a famous trademark throughout the world.

In addition, and even bearing in mind that neither term means anything specifically, a quick look at the two word marks leaves no doubt as to the great similarity that exists between them - that is, between the requested mark, HUGGY, and the opposing trademark, HUGGIES.

Furthermore, it is a recognized fact that a trademark is in itself an indication of the existence of a market and a price. The use of a mark by somebody other than its owner, whether directly or indirectly by taking advantage of the prestige of the mark or of the manufacturer of the products identified by the mark, entails immediate and specific damage.

When an act of unfair competition is committed -as is the case with the registration requested by the applicant-, such act represents without a doubt a potential damage, even if such damage never effectively materializes. It should be noted that the law does not require damage to have actually occurred, the presumption of intent to commit an act of unfair competition being enough. Such presumption is absolute, and that is what has occurred in the case at hand.

The fact that the mark applied for is almost identical to the previously registered trademark, compounded with the well-known status of the latter - regardless of the classes for which it is registered-, leads the undersigned to believe that the challenged applicant was seeking to "get a free ride," by profiting freely from the efforts of others. Even though the applicant sought registration for its mark in a class the existing mark is not registered in, there is undoubtedly an evident connection between the international class requested for the new trademark and the international classes in which the opposing party's famous mark has been registered in, and there is also a connection between the consumers targeted by the products identified by the two trademarks. More so considering that HUGGIES distributes products covered under international class 28 as corporate gifts free of charge.

From this it can be concluded that, given the history of the mark in question, the applicant was seeking to use the fame and prestige of a well-known trademark, with many years in the international market, for its own advantage, and that if the trademark applied for were to be granted, once the products identified by it were on the market it would remind consumers of the famous trademark, leading them to associate it with the same origin.”

The applicant did not appeal the TM Office’s decision. Thus, it became firm and final.