Representations on Packaging and in Advertising – the Full Federal Court finds that Kimberley-Clark has not Engaged in Misleading Conduct by using “Flushable”.

The Australian Competition and Consumer Commission (ACCC) has lost its Full Court appeal that Kimberly-Clark Australia (KCA) had misled and deceived consumers, by representing on its website and on product packaging, that its  Kleenex Cottonelle Flushable wipes (KCFC wipes) were suitable for flushing down toilets.

The full decision can be found here.


Earlier Federal Court Proceedings

In 2006 the ACCC commenced Federal Court proceedings against KCA alleging that KCA had, by its advertising and marketing of the KCFC wipes during May 2013 and May 2016:

(1)     engaged in conduct in trade or commerce which was misleading or deceptive, or likely to mislead or deceive, in contravention of s 18(1) of the Australian Consumer Law, being Sch 2 of the Competition and Consumer Act 2010 (ACL);

(2)     made false or misleading representations that its KCFC wipes had a particular quality in  contravention of s 29(1)(a) of the ACL and/or had particular performance characteristics, uses and/or benefits, in contravention of s 29(1)(g) of the ACL; and

(3)     engaged in conduct in trade or commerce that was liable to mislead the public as to the nature, characteristics, and suitability for purpose of KCFC wipes, in contravention of s 33 of the ACL.

 The ACC alleged that KCA’s packaging and website represented that the KCFC wipes:

(1)     “were suitable to be flushed down the toilet and into sewerage systems in Australia” (flushability representation);

(2)     “had similar characteristics to toilet paper when flushed”, as they would behave in a similar way to toilet paper when flushed in that they break up or disintegrate in a timeframe and manner similar to toilet paper” (characteristics representation); and

(3)    “would break up or disintegrate in a timeframe and manner similar to toilet paper” (disintegration representation).

The representations included statements on the webpages of KCA’s website , such as “Flushable Cleaning cloths” and “will break up in the sewerage or septic system like toilet paper”, use on the product packaging of words, such as “flushable” and “Cloths break down in sewerage system or septic tank” and of the logo (depicted below).

At the time there was no legislation or generally accepted industry standards governing the characteristics of what could be marketed as “flushable”, although KCA argued that the KFCF wipes met the tests for flushability under the “GD3 Guidelines for flushability”, which had been developed by manufacturers, including Kimberley-Clarke Corporation.

KCA denied making the characteristics or disintegration representations but accepted that it made the flushability representation. However, it argued that the flushability representation was not false or misleading and was within the G3 Guidelines.

While accepting that the KCFC wipes do not break down as quickly or easily as toilet paper, Gleeson J found that the characteristics and disintegration representations had not been made.  This was because in the website or packaging context in which the alleged representations appeared, they would not convey to an ordinary reasonable consumer anything about how the flushed KCFC wipes behaved, except that they might be “flushable” (although not equivalently flushable to toilet paper).

Having regard to the ACCC’s concession and the evidence, Gleeson J found that the flushability representation had been made by KCA. However, her Honour found that the flushability representation was not false, misleading or deceptive because there was insufficient evidence that harm had actually eventuated to household plumbing and the sewer network to demonstrate that the KCFC wipes were unsuitable for flushing.

While there was disagreement over the G3 Guidelines being an acceptable standard, Gleeson J found that, in the absence of this evidence of harm, they were an “appropriate framework for assessing flushability” and a “reasonable benchmark for making a flushability claim”.

The Appeal to the Full Federal Court

The ACCC unsuccessfully appealed Gleeson J’s decision to the Full Federal Court on 8 appeal grounds, all of which were dismissed. Appeal grounds 1 to 6 related to the flushability representation.

In the 1st ground of appeal,  the ACCC argued that the trial judge, Gleeson J was in error because she “approached the question of ‘harm’ as might be done in a damage claim in negligence, elevating the inquiry to proof of causation as opposed to assessing falsifiability under the consumer law”. The ACCC argued that her Honour should have considered the question of whether  there was a real risk of harm or that the KC wipes had the potential to cause harm rather than that the KC wipes contributed to or caused actual harm (including blockages) to household plumbing (including septic tanks) or to the sewerage network.

The Full Court dismissed this ground of appeal for two reasons.  First, there was no error in the primary judge’s reasons because her Honour simply responded to the case argued by the ACCC at trial on the flushability representation, which was on the basis that the actual harm had been caused, not that flushing the KC wipes posed a risk of harm. The Full Court said “No such case was run at trial. It cannot be run now”, as it was a different case.

Secondly, the Full Court found that Gleeson J had, in any event, considered and addressed the risk of harm but concluded that it was not shown to be materially greater than the risk posed by toilet paper, and that it was not erroneous to take into account, as the primary judge did, whether any harm in fact eventuated to household plumbing and the sewerage network, when assessing the level of risk posed by the KCFC wipes.

Related to this second issue, the ACCC argued in its 2nd  and 3rd  appeal grounds  that Gleeson J’s  findings that the KCFC wipes did not present a risk of harm “over and above” or “materially greater” than that posed by toilet paper and her finding that flushing the KCFC wipes down the toilet would contribute to, or cause harm, were in error because they were inconsistent with and against the weight of the evidence.

In dismissing these grounds, the Full Court found that It was not erroneous (for the trial judge) to have regard to “the paucity of evidence of harm in reaching the conclusion that the risk posed by KCFC wipes was not materially greater than the risk posed by toilet paper”.

Some of the problems identified by the primary judge in the evidence led by the ACCC were:

  • Most of the evidence was directed to how wipes in general caused blockages, but not that the KCFC wipes caused blockages. The ACCC had presented only very weak evidence of blockages in household drain lines and in the sewer (beyond the household drain line) caused by the KCFC wipes.
  • It was accepted, as a matter of logic, that the more quickly an item breaks down after flushing the less the risk of snagging or clumping in the sewerage system. The KCFC wipes were shown to break down and disperse more slowly than toilet paper but this did not support an inference that flushing KCFC wipes down the toilet led to a materially greater risk than toilet paper of causing blockages to the sewerage system, when there was a lack of evidence that KCFC wipes actually did cause blockages.
  • KCA’s change of packaging in October 2015 to indicate that it did not recommend KCFC wipes be flushed into a domestic septic tank was insufficient to support the inference (contended for by the ACCC) that the KCFC wipes contributed to or caused harm to household plumbing or the sewer network.

In the 4th ground of appeal, the ACCC argued that the trial judge erred in finding that the evidence of 26 consumer complaints in KCA’s business records (regarding how their household plumbing (including septic tanks) had been blocked by KCFC wipes) was “weak” and insufficient to support a finding that the KCFC wipes were not suitable to be flushed down toilets.

The Full Court said that the small number of consumer complaints (most of which related to  blockages in septic tanks not the sewerage systems as argued by ACCC at trial) and the absence of evidence from any consumer or plumber to verify the facts in any of the complaints  was “hardly a sound basis” for reaching the conclusion that KCA falsely representing that KCFC wipes were flushable, and “rather suggests that the KCFC wipes were suitable to be flushed into domestic drain lines”.

In the 5th ground of appeal, the ACCC argued that the trial judge erred in finding that the GD3 Guidelines were an “appropriate framework for assessing flushability”, because manufacturers, including KC had developed the guidelines themselves, “to avoid government regulation which might constrain their business”.

The Full Court dismissed this ground.  They found that the primary judge was “plainly aware that the manufacturers were developing their own guidelines” and their development had been informed by various “real world” tests.

The ACCC’s 7th and 8th grounds of the appeal concerned the characteristics and disintegration representations.

The Full Court found that the primary judge was correct to conclude that the characteristics and disintegration representations were not made and so it was not necessary to consider then whether they were false and misleading.

The Full Court noted that of the 8 representations relied upon by the ACCC, 6 did not mention toilet paper at all or compare the KCFC wipes with the characteristics or performance of toilet paper. The 5th representation, that the KCFC wipes “will break up in the sewerage or septic system like toilet paper” (appearing on a webpage of the website) was the only statement which directly compared the KCFC wipes to toilet paper. However, the Full Court agreed with the judge at first instance that this representation had to be considered in the context of the immediately following sentience; “However, do not flush an excessive amount of wipes at one time (no more than two wipes per flush)” The Full Court said that in this context (i.e. the direction not to flush any more than two wipes)the reasonable consumer would not have understood that the KCFC wipes broke up in the same way as toilet paper .

Regarding the eighth representation, the  image,  the Full Court said that he image did not, of itself, or together with the other representations read in context, convey that KCFC wipes “had similar characteristics to toilet paper when flushed” or that they “would break up or disintegrate in a timeframe and manner similar to toilet paper”.


The ACCC’s case ultimately failed because it could not prove that KCA made the false and misleading statements that the ACCC alleged.  The ACCC didn’t help its own cause by arguing at first instance (which could not be changed on appeal) that the KFCF wipes were not suitable for flushing because they caused actual harm to the sewerage system. With this argument the ACCC gave itself a higher evidentiary burden to meet than the argument that the KCFC wipes posed only a risk of harm. It is worth noting that the ACCC’s argument at first instance that the flushabiilty representation by KFA was in respect of a “future matter”, and so within section 4 of the ACL, was not successful.  If the ACCC had succeeded with this argument and section 4 found to apply, the evidentiary burden would instead have been on KCA to present evidence that it had “reasonable grounds” for making the flushability representation and so (for that reason) the representations could not be taken as misleading.

Authored by Sean McManis

Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 (3 February 2020)

On 3 February 2020, Dr August Wolff GmbH & Co. KG Arzneimittel (Dr Wolff) successfully appealed against a decision by the Registrar of Trade Marks, which refused registration of its VAGISAN trademark.


The VAGISAN trade mark was filed by Dr Wolff on 27 May 2015 for a broad range of personal care products in classes 3 and 5.

This registration was successfully opposed by Combe International Ltd (Combe), the owner of prior VAGISIL trade mark registrations which also cover personal care products classes 3, 5 and 10.

A Delegate of the Registrar of Trade Marks refused registration of the VAGISAN trade mark on 29 September 2017 under s60 of the Trade Marks Act 1995 based on Combe’s reputation of its earlier VAGISIL trade mark.

Dr Wolff subsequently appealed this decision.

Grounds of Opposition

Section 44

The VAGISAN application covers the following goods:

Class 3: Soaps and cosmetics, all aforementioned goods not for the indication and application of tired legs and/or arms

Class 5: Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes, all aforementioned goods not for the indication and application of tired legs and/or arms

(VAGISAN Goods).

The VAGISIL registrations cover the following goods:

Class 3: Medicated lotions and medicated creams; non-medicated products for feminine use

Class 5: Medicated products for feminine use; vaginal lubricants; medicated creams, gels, lotions

(VAGISIL Goods).

Dr Wolff accepted that the class 3 VAGISAN Goods are similar to the class 3 VAGISIL Goods.  However, it did not consider the class 5 VAGISAN Goods to be similar due to the “highly specialised” nature of the class 5 VAGISIL Goods.

Stewart J found that “pharmaceutical products” and “sanitary products for medical purposes” covered by the VAGISAN trade mark are similar to the class 5 VAGISIL Goods on the basis that:

(1) the goods would typically sold through the same trade channels (i.e. pharmacies, supermarkets and online);

(2) producers of pharmaceutical products might also produce medicated lotions and medicated creams; and

(3) producers of sanitary products for medical purposes might also produce medicated products for feminine use, medicated douches and various other goods.

On the issue of deceptive similarity, Stewart J found that both the VAGISAN and VAGISIL trade marks are likely to be understood as being associated with products to be used in relation to the female genital area. However, while the idea of VAG (or VAGI) is descriptive, the words VAGISAN and VAGISIL do not have a close phonetic resemblance and neither of the words lends itself to mispronunciation. Further, both words are invented words and the suffix elements SIL and SAN are quite distinct.

Stewart J also dismissed Combe’s argument that there is a greater likelihood of confusion as consumers of products for feminine use are not likely to pay attention to what they are purchasing.

The s44 ground of opposition was unsuccessful

Section 60

Section 60 requires a reputation amongst a significant or substantial number of people or potential customers in the relevant mark i.e. the potential customers of the VAGISAN goods. Although, there is not a significant distinction given the overlap in the goods provided by the VAGISAN and VAGISIL trade marks.

Combe sought to rely on evidence comprised of schedules of sales figures and consumption data for VAGISIL products, extracted from a computer database by IRi Australia. It argued that the evidence should be admissible as an exception to the rule against hearsay on the basis that it constitutes business records. Dr Wolff objected to the admissibility of the schedules, not the data contained in the schedules. However, Stewart J was satisfied that the schedules should be admitted.

Both Combe and Dr Wolff sought to tender survey evidence, although Dr Wolff’s evidence was in relation to consumer behaviour rather than Combe’s reputation. Dr Wolff objected to Combe’s survey reports on the basis that they were not business records of the survey companies or Combe itself. Stewart J was satisfied that the reports submitted form part of the records belonging to or kept by Combe in the course of, or for the purposes of a business. The survey evidence from both parties were admitted and Stewart J indicated that there is no reasons to suppose that the hearsay statements recorded in the reports are other than accurate.

There has been consistent use of the VAGISIL brand in Australia since 1986 for personal products for feminine use, which have been sold through approximately 6,400 supermarkets and pharmacies. Further, there has been significant advertising and promotional activity through various channels. Despite the relatively small market share based on the sales figures provided, Stewart J considered that reputation of the VAGISIL trade mark was established in Australia as at the priority date. However, the form of trade mark which enjoys reputation is the VAGISIL trade mark used in conjunction with a “V” Device, rather that VAGISIL on its own. It is used in this composite form:

Consequently, confusion between the trade marks is likely to be less in light of the distinctive “V” Device.

Combe was not able to establish that because of the reputation of the VAGISIL trade marks a significant or substantial number of potential customers might be confused or deceived by the VAGISAN mark such as to wonder whether there is any connection between it and VAGISIL.

Accordingly, the s60 ground of opposition was also unsuccessful

Section 59

As at May 2015, Dr Wolff had the intention to sell five VAGISAN products in Australia. Based on evidence provided on behalf of Dr Wolff, none of these products were directed for use on any part of the human body other than the female genital area. On this basis, Combe submitted that there was no intention to use the trade mark in relation to soaps and cosmetics for use on other body parts

Even though the goods were limited for use on a specific area of the body, Stewart J considered the fact that soap and cosmetic products were proposed to be introduced is sufficient intention to use the VAGISAN trade mark in respect of the designated goods.

The s59 ground of opposition was also unsuccessful


Combe failed to establish any ground of opposition and, therefore, Dr Wolff’s appeal was successful.

Combe subsequently filed an appeal to the Full Federal Court of Australia.


This decision is under appeal and it will be interesting to see if the first instance decision is maintained. Nevertheless, the decision provides some guidance regarding what might be admitted into evidence as business records, and the potential for difficulty establishing reputation in a word alone when it is used with other significant branding elements.

Other Opposition / Invalidity Actions

The VAGISAN trade mark has also been opposed by Combe in a number of other countries. The most recent decisions handed down were in Singapore and the United States.

Combe filed an application for declaration of invalidity with the Intellectual Property Office of Singapore based on the grounds of likelihood of confusion. Combe successfully invalidated the VAGISAN trade mark in Singapore, however, an appeal from this decision to the High Court is pending.

In the United States, the Trademark Trial and Appeal Board (TTAB) dismissed an opposition filed by Combe in the first instance. This decision was subsequently appealed to the US District Court. However, on appeal, the VAGISAN trade mark was found to be likely to cause confusion with the VAGISIL registration.

Authored by Danielle Spath and Sean McManis

Victoria Beckham has failed to prevent the registration of two ‘VB’ trade marks, despite the fact that the oppositions were effectively undefended.

The case, which is presently the subject of an appeal, concerned the trade marks depicted below:

The first mark sought registration for a wide range of cosmetics, including skin care products, while the second mark sought registration for beauty and hairdressing services.

Victoria Beckham has used the trade mark VB in relation to businesses trading fashion apparel, accessories and cosmetics. She launched a range of luxury womenswear in 2008 and an e-commerce site in 2013. There has been use of her VB trade mark in relation to cosmetics in Australia, and internationally, since September 2016, following the launch of a range with Estée Lauder.

The evidence presented in respect of cosmetics sales in Australia related only to the period 1 July 2017 to 31 December 2017 and indicated sales totalling AU$557, 491. No sales figures were provided for any period before or after the period mentioned.

As she had no prior registration, Victoria Beckham’s main grounds of opposition were:

  • A right to ownership based on prior use of VB
  • A likelihood of confusion based on prior reputation
  • Filing of the application in bad faith


One of the requirements for a successful claim to ownership is that the trade marks concerned need to be at least substantially identical. Ms Beckham’s ownership claim failed due to differences between VB and the ‘Skinlab’ trade mark depicted above. In respect of the “Salon’ trade mark depicted above, she did not have prior use in Australia for the relevant services.

Prior Reputation

As regards Ms Beckham’s reputation in VB, the Hearing Officer characterised the evidence of prior reputation, which is assessed as at the filing date of the application (in this case 26 March 2018), as “at best a very limited reputation in Australia for cosmetic products”. However, this was considered sufficient to establish a basis for a prior reputation opposition.

In assessing the likelihood of confusion, the Hearing Officer concluded:

while the Trade Marks and VB Mark are similar due to the presence of the common VB element, I am not satisfied that any confusion between the Trade Marks and the VB would arise due to the reputation of the VB Mark. I reach this conclusion in respect of the Skinlab Mark bearing in mind the limited reputation of the VB Mark in Australia for cosmetics (and only slightly more extensive reputation for fashion goods) and the differences between the respective marks being the stylisation of the Skinlab mark (including the addition of the horizontal line) and the addition of the word Skinlab, which is not a direct reference to the Applicant’s Goods. I reach the same conclusion in respect of the Salon Mark on the same basis and additionally note the difference between the Applicant’s Services and the goods in which the VB Mark has a reputation.

One factor considered in assessing the opponent’s reputation, and may also have influenced the Hearing Officer’s view on the likelihood of confusion, was the fact that Ms Beckham’s trade mark was commonly used in association with other marks, namely VICTORIA BECKHAM and ESTEE LAUDER.

Bad faith

As regards the bad faith ground, the main basis for this claim was the applicant’s use of a pop-up subscription box on its website featuring a slim brunette with long hair, debatably somewhat similar in appearance to Ms Beckham.

The Hearing Officer noted that an allegation of bad faith is a serious claim and found that it had not been established stating:

I am particularly unpersuaded that the Applicant’s use, on its website (which otherwise makes no express or implied reference to the Opponent) of an attractive female model with long dark hair is in any way a reference to the Opponent; given the fame of the Opponent, it would be obvious to most visitors that the model is a completely different woman. Furthermore, the mere fact that a cosmetics company has used an attractive female model with long dark hair in connection with their products is hardly a basis to assert bad faith.

Concluding Comment

It remains to be seen what the outcome of Victoria Beckham’s appeal will be, although if the applicant continues to play a passive role and does not take part in the appeal proceedings, there is a likelihood of the appeal being successful.

In any event, the difficulties faced by Victoria Beckham would have been much reduced had she registered the trade mark VB at the time she commenced using that trade mark in Australia.

Update – 29 June 2020

The appeal from the Trade Marks Office decision has now been settled by agreement and the trade mark applications opposed by Victoria Beckham have now proceeded to registration. While the terms of the settlement reached and known only to the parties, we would not be surprised if the owner of the applications, VB Skinlab Pty Ltd, has agreed to provide Ms Beckham with a letter of consent if its applications block hers. In Australia, a letter of consent will overcome a citation objection.

Authored by Sean McManis