Active Skin Pty Ltd v Yey Pty Ltd
[2022] FedCFamC2G 865
Federal Circuit and Family Court of Australia
(DIVISION 2)
Active Skin Pty Ltd v Yey Pty Ltd [2022] FedCFamC2G 865
File number(s): SYG 1636 of 2019 Judgment of: JUDGE BAIRD Date of judgment: 25 October 2022 Catchwords: INTELLECTUAL PROPERTY – TRADE MARKS – appeal from decision of a Delegate of the Registrar of Trade Marks refusing registration of trade marks – where Delegate upheld respondent’s opposition to applicant’s trade marks registration for cosmetics and certain distribution services under s 60 of the Trade Marks Act 1995 (Cth) – ss 60 and 42(b) of the Act grounds of opposition –similar trade marks – whether reputation in respondent’s trade mark established – online retailing services for cosmetics – whether similar goods and/or services – whether use of trade marks likely to deceive or cause confusion – likelihood of misleading or deception – whether use of trade marks contrary to law –appeal dismissed Legislation: Competition and Consumer Act 2010 (Cth) Schedule 2, ss 18, 29
Trade Marks Act 1995 (Cth) ss 12, 42, 55, 56, 60, 197
Trade Marks Amendment Act 2006 (Cth)
Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264; [2017] FCAFC 56
Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511; (2014) 109 IPR 187; [2014] FCA 1304
Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507; [2020] FCAFC 130
Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2019) 142 IPR 1; (2019) 367 ALR 393; [2019] FCAFC 71
Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397; [2007] FCAFC 70
Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd [2020] FCCA 1718
ConAgra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302
Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9; (2010) 86 IPR 437; [2010] FCAFC 58
Gain Capital UK Ltd v Citigroup Inc (No 4) (2017) 123 IPR 234; [2017] FCA 519
Jafferjee v Scarlett (1937) 57 CLR 115; [1937] ALR 404
Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 51 IPR 1; [2000] FCA 1587
McCormick & Co Inc (2000) 51 IPR 102; [2000] FCA 1335
Monster Energy Company v Mixi Inc (2020) 156 IPR 378; [2020] FCA 1398
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR379; [2017] FCAFC 83
Primary Health Care Limited v Commonwealth of Australia (2017) 260 FCR 359; [2017] FCAFC 174
Qantas Airways Limited v Edwards (2016) 228 ALR 134; [2016] FCA 729
Quintis Ltd (subject to Deed of Company Arrangement) (ACN 092 200 854) & Ors v Certain Underwriters at Lloyd’s LondonSubscribing to Policy Number B0507N16FA15350 & Ors [2021] FCA 19
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Rodney Jane Racing Pty Ltd v Monster Energy Company (2019) 370 ALR 140; [2019] FCA 923
Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd (2019) 141 IPR 463; [2019] FCA 719
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 28 ALJR 540
Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388; (2015) 116 IPR 207; [2015] FCAFC 156
Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661; [2012] FCAFC 159
Division: Division 2 General Federal Law Number of paragraphs: 188 Date of last submission/s: 17 February 2021 Date of hearing: 8 – 10 February 2021 Place: Sydney Counsel for the Applicant: Ms S Chrysanthou SC with Mr Hazan Solicitor for the Applicant: Hazan Hollander Solicitors Counsel for the Respondent: Mr A Fox with Ms A Spies Solicitor for the Respondent: Actuate Legal ORDERS
SYG 1636 of 2019 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: ACTIVE SKIN PTY LTD ACN 121 217 892
Applicant
AND: YEY PTY LTD ACN 088 605 181
Respondent
order made by:
JUDGE BAIRD
DATE OF ORDER:
25 October 2022
THE COURT:
1.DISMISSES the Notice of Appeal dated 2 July 2019 seeking to set aside the decision of the delegate of the Registrar of Trade Marks dated 11 June 2019.
2.STANDS OVER the proceeding to a date to be fixed after consultation with the parties for a timetable for the determination of costs.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
Judge Baird
introduction
The applicant, Active Skin Pty Ltd, appeals from a decision of a Delegate of the Registrar of Trade Marks given on 11 June 2019 (Decision), refusing to register two Australian trade mark applications filed by Active Skin: trade mark application 1682979 for the fancy mark ‘ActiveSkin’ (979 mark), and trade mark application 1688858 for the word mark ‘activeskin’ (858 mark) (together, the Active Skin Applications), each seeking registration in respect of specified goods in class 3 and specified services in class 35 of the Register of Trade Marks.
Before the Registrar, Yey Pty Ltd, the opponent, and respondent in this proceeding, successfully opposed the registration of the Active Skin Applications under s 60 of the Trade Marks Act 1995 (Cth) (TM Act): Yey Pty Ltd v Active Skin Pty Ltd [2019] ATMO 89.
By way of notice of appeal filed 2 July 2019, Active Skin appeals the whole of the Decision. By notice of contention filed on 26 July 2019, Yey contends that the Active Skin Applications were correctly refused by the Registrar pursuant to s 60, and that the decision should also be affirmed on the ground that each of the Active Skin Applications should be rejected pursuant to s 42(b) of the TM Act. Yey relies upon either or both s 18 and s 29(1)(g) or s 29(1)(h) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (ACL).
The Active Skin Applications
The trade marks the subject of the Active Skin Applications, and their filing dates are:
Table 1
Number Trade Mark Filing date 1682979 24 March 2015 1688858 activeskin 22 April 2015
The specifications of the goods and services in respect of which the Active Skin Applications are sought to be registered are set out in Annexure A to these reasons. Broadly, all the specified goods are skincare, beauty and cosmetic (including make up) products. The specified services are certain distribution services in relation to cosmetics, creams, serums, supplements, and vitamins. Unless I consider the context requires otherwise, generally I refer to those specified goods and services collectively as the AS Goods and Services, the specified goods as cosmetics, and the specified services as cosmetics distribution services.
In support of its appeal Active Skin also seeks to rely on 3 earlier Australian trade mark registrations it owns, which are set out in Annexure C. It suffices here to observe that the registrations comprise or include as an element of the mark the words ‘Active Skin’ depicted with varying degrees of prominence, and are each for ‘cosmetics’ in class 3, and in 2 instances also for distribution of goods in class 35 of the Register. Unless I consider the context requires otherwise, I refer to the Active Skin Applications and Active Skin’s existing registered trade marks collectively as the Active Skin trade marks. I refer to trade mark registration number 1127968 for the figurative mark comprising poppies image and ACTIVE SKIN for ‘cosmetics’ in class 3 as the AS flower mark.
Yey’s Trade Marks
Yey is an Australian company, incorporated in July 1999, which has been trading since about November 1999. Yey is the owner of the following Australian registered trade marks (Yey Registered Marks), registered in respect of specified services in classes 35 and 44 of the Register:
Table 2
Number Trade mark Filing date 1094648 17 January 2006 1688828 activeskin 22 April 2015
The specifications of the services in respect of which each of the Yey Registered Marks is registered are set out in Annexure B to these reasons. Broadly, the specified class 35 services are online retail and wholesale of haircare products, skincare products, cosmetics, and for pharmaceuticals, veterinary, and medical supplies, and online discount services for the above cosmetics, and the specified class 44 services are beauty and skin care services, beauty salons, and consultancy services relating to the above.
In addition, Yey contends that in the course of its trading activities it has used as trade marks the following common law (unregistered) trade marks. I refer to the 4 coloured and ‘fancy’ or ‘logo’ marks, depicted in the following table, and registered trade mark number 1094648 above, as the ‘logo versions’.
Table 3
Trade mark
Period of use
ACTIVESKIN
since March 2006
March 2006 to around September 2007 September 2007 to around July 2013 July 2013 to July 2015 July 2014 at least to 22 April 2015
Where I do not consider it necessary to distinguish among the Yey Registered Marks and Yey’s unregistered word mark and the logo versions, I refer to them collectively as the Yey trade marks, or Yey’s trade marks.
The one trade mark – ‘activeskin’ trade mark
It is convenient here to state that further to my consideration of Yey’s evidence I discuss below, I am satisfied the evidence before me establishes that Yey has used the word mark ‘activeskin’ and ‘active skin’ as a trade mark continuously since March 2006. I do not consider that there is any material difference in the presentation of the mark as one word or two words, in lower case, capitals, or capital first initials; they are visually and aurally substantially identical, and convey the same meaning, playing on the ordinary meanings of the two word components.
Yey’s logo versions have been updated in form on a number of occasions, and used in the forms and in the periods I set out in the above Table 3, as well as in the fancy word form depicted in registered trade mark 1094648 (see Table 2, above). Each logo version has as its essential, and sole or more prominent feature the word ‘activeskin’, and each features the use of bold type for the first word component, ‘active’. Each form conveys the same meaning, with embellishment giving visual emphasis to the first letter of the mark, or comprising a coloured rectangle framing the word ‘activeskin’ visually communicating the mark as the one word comprising two word components, or with a subsidiary descriptive or non‑distinctive element, ‘.com.au’. As I expand upon below at [90], I am satisfied the use of Yey’s domain is a use of the word mark ‘activeskin’ as a trade mark.
Yey submits that given the level of similarity between the uses of the Yey trade marks (the word mark and logo versions), they are capable of being considered together for the purposes of s 60. I accept this submission. I consider that the word forms ‘active skin’, and the logo versions are each uses of the one word mark ‘activeskin’ as a trade mark, with, at most, additions or alterations that do not substantially affect the identity of the trade mark: see s 7(1) of the TM Act. Thus, although in these reasons I refer to the ‘Yey trade marks’ in the plural, that expression should also be understood as referring to the one trade mark ‘activeskin’.
Priority Date
For the purposes of determining this appeal, the dates at which the rights of the parties are to be determined are the priority dates of the respective Active Skin Applications: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at [595]; [1955] ALR 115; (1954) 28 ALJR 540; see s 12 of the TM Act; see also s 29(1) TM Act. In the present case, the filing dates of the Active Skin Applications are their priority dates.
The Active Skin Applications have different filing dates and thus priority dates: in the case of the 979 mark, 24 March 2015, and in the case of the 858 mark, 22 April 2015. Given the close proximity of these dates, counsel for each party accepted that there is no relevant difference of significance between those two dates. The more extensive specification of goods is that sought for the 858 mark, whilst the specification of services is the same for both Active Skin Applications. Accordingly, I adopt 22 April 2015 as the relevant Priority Date of the Active Skin Applications. Further, Yey contends, and the evidence establishes, that there were no material changes in Yey’s business or in the way that Yey used the Yey trade marks between the 2 filing dates of the Active Skin Applications, and no material difference in its reputation.
Relevant legal principles on an appeal to this Court from the decision of the Registrar
Although styled an “appeal”, this proceeding arises as a hearing de novo under s 56 of the TM Act from the Decision, involving the exercise of the original jurisdiction of the Court: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2019) 142 IPR 1; (2019) 367 ALR 393; [2019] FCAFC 71 per Greenwood J at [2]; in this Court, see e.g., Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd [2020] FCCA 1718, at [21]. See also, s 197 TM Act.
The Court is to determine judicially whether the application should succeed on its merits, not whether the Registrar has lawfully discharged her duties: Jafferjee v Scarlett (1937) 57 CLR 115; [1937] ALR 404, at 126; Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511; (2014) 109 IPR 187; [2014] FCA 1304, at [22]. The Court approaches the matter “afresh and without concern as to the ratio decidendi of the registrar”. That said, and whilst there is no general presumption that the Registrar’s decision is correct, weight should be given to the Registrar’s opinion as “a skilled and experienced person”: see discussion in Apple at [23]‑[25]. See also Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388; (2015) IPR 207; [2015] FCAFC 156, at [181]. On the appeal, the parties may adduce further evidence and examine and cross‑examine witnesses. They did so in this case. Self‑evidently, the appeal is to be decided on the evidence adduced before me.
On an appeal under s 56 of the TM Act from a decision of the Registrar under s 55 made on an opposition, the Court decides whether or not the mark should proceed to registration having regard to the extent (if any) to which any ground of opposition raised in the proceeding has been established by the opponent: see generally, ss 55 and 197 of the TM Act. In this proceeding, the identified grounds of opposition are the grounds specified in Yey’s notice of contention, namely grounds under ss 60 and 42(b) of the TM Act.
Onus and standard of proof
The opponent to registration, in this case Yey, bears the onus of establishing a ground of opposition: Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9; (2010) 86 IPR 437; [2010] FCAFC 58, at [32], and [48]. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities: Phone Directories at [181]. In cases of doubt, the benefit is afforded to the applicant for registration.
The Delegate’s decision
As I have said above, the Delegate found Yey established its ground of opposition under s 60 of the TM Act. Accordingly, he did not consider the other grounds of opposition nominated by Yey before the Trade Marks Office. Excepting the ground under s 42(b), those other grounds are not pressed before me.
The Delegate found that given the size of the cosmetics industry in Australia, Yey’s annual turnover from its online retail services offered through its website, and its mailing list subscribers were not huge, but were not insignificant. The Delegate referred to the operation of Yey’s website under the Activeskin Mark (as he defined the word ‘activeskin’ used by Yey) for 9 years, with a significant number of unique visitors from Australia, and to Yey’s considerable expenditure on advertising and search engine optimisation. He was satisfied that the evidence showed a reasonable and consistent turnover between 2009 and 2014, and that Yey’s website received a considerable number of unique visitors each year.
The Delegate was satisfied on the evidence placed before him that Yey had, at the priority dates (23 March 2015, and 22 April 2015), acquired a reputation in Australia in its Activeskin Mark in respect of the retail of cosmetics, although that reputation was on the weaker end of the spectrum. However, the Delegate did not find such a reputation established in respect of the physical beauty salon operated by Yey, given that whilst it had operated as a salon since 1999, it had only operated under the name Activeskin for about 9 months before the priority dates.
The Delegate did not accept Active Skin’s submission that the presence of third party goods on Yey’s online retail store (that is, on the Yey website) diluted Yey’s reputation in its Activeskin Mark, stating that Yey is an online retailer, and it would be expected to retail products produced by third parties. The Delegate stated: “it is easy to anticipate a circumstance where a consumer familiar with the Activeskin Mark as the mark of a cosmetic retailer, would see either of the [Active Skin Applications] used for (for example) a cosmetic product and be caused to wonder whether that cosmetic product was a private label product offered by [Yey]”.
The Delegate found each of the Active Skin Applications was a mark substantially identical to the Active Skin Mark, and that there was a clear nexus between the retail of cosmetics, the area in which Yey’s Active Skin Mark has a reputation, and the AS Goods and Services. He was satisfied that because of Yey’s reputation in the Activeskin Mark, if the Active Skin Applications were to proceed to registration, the degree of similarity between the respective marks and the nexus between the respective goods and services was such that the use of either of the Active Skin Applications in connection with the AS Goods and Services would be likely to deceive or cause confusion. The Delegate found Yey established the ground of opposition under s 60 of the TM Act.
this appeal
Active Skin commenced this proceeding by filing a Notice of Appeal in the Federal Circuit Court of Australia, as this Court was then named. As I have adverted to at [1] and [3], Active Skin appeals from the whole of the Delegate’s Decision, seeks to set aside that Decision, and says, inter alia, that the Delegate should have dismissed the opposition under s 60 of the TM Act, and permitted the Active Skin Applications to proceed to registration.
Active Skin contends that the Active Skin trade marks and the Yey trade marks have been used concurrently for “over 14 years” without causing any instance of confusion, and that Active Skin has sufficient reputation to reduce the likelihood of any confusion occurring in the future if the Active Skin Applications were to proceed to registration. It submits that rejection of the Active Skin Applications will “lead to the peculiar result” that, on the assumption that the parties achieved “the requisite reputation (where each have existing registrations for ‘activeskin’ and/or ‘active skin’), either could successfully oppose any future trade mark applications by the other”, and that neither party “could achieve registration of any future ‘activeksin’ applications, despite their prior use of the mark and their historic registrations.”
It suffices to say that the assumptions inherent in the above submission are not borne out by the evidence before me. The evidence adduced by Active Skin is insufficient to substantiate the reputation or extent of use claimed. In any event, this Court is concerned with the application of the legal principles I have summarised at [16]-[19] above, and the exercise of its jurisdiction under the TM Act to consider and determine the grounds of opposition pressed, and not to speculate on theoretical distorting future possibilities and extreme examples.
Grounds of opposition on the appeal
As I have said at [3], Yey presses grounds of opposition under ss 60, and 42(b) of the TM Act, relevantly ss 18, 29(1)(g) or 29(1)(h) of the ACL.
It is important to observe at the outset that the grounds of opposition are not concerned with the question of ownership or first use, nor any contest as to ownership or first use. No ground of opposition under s 58 of the TM Act was pressed in the opposition proceeding before the Registrar in the Trade Marks Office, nor before this Court on the appeal. Whilst it was apparent at hearing before me that the parties have competing arguments as to what was the nature of any first use by either of them (or any predecessors), and in respect of what goods or services, those arguments are not matters for determination in this proceeding.
So too, the fact that both parties have existing Australian trade mark registrations does not bear upon whether the Active Skin Applications ought to proceed to registration; the issue for determination before me is whether Yey establishes either of the grounds of opposition it presses under ss 60 and 42(b) of the TM Act in respect of those Applications. Active Skin’s submissions to the contrary are misconceived and must be rejected: see further the legal principles discussed below.
Hearing and evidence on the appeal
I heard the appeal in person at the Court in Sydney on 8, 9 and 10 February 2021. Each party called evidence from a representative of the party, and from their lawyer. A number of documents were tendered separately.
Yey read and relies on the affidavits of Mr Ben Wyeth, affirmed 13 March 2020, and of Mr Cameron Lang, affirmed 17 March 2020:
(a)Mr Wyeth is a director of the holding company for Yey, and has been the general manager of Yey’s online retailing arm of Yey’s business since 2004. He is responsible for the day-to-day operations of the online retailing arm, including management of the marketing, graphic designs and accounts teams. Mr Wyeth gives evidence of the history of Yey’s business and its provision of online retail, salon retail and beauty services using the Yey trade marks;
(b)Mr Lang is a solicitor at Actuate IP, the legal representative for Yey. His evidence sets out the examination and opposition history of the Active Skin Applications, and the results of various website and online searches he conducted, including via the Internet Archive Wayback Machine, for Yey’s website.
Active Skin read and relies on the affidavits of Mrs Kim Marie Smith, affirmed 22 May 2020; and of Mr Peter Whitehead, affirmed 22 May 2020:
(a)Mrs Smith is a director and the company secretary of Active Skin, and has been since it was incorporated in 2006. Mrs Smith is responsible for Active Skin’s business - the products it manufactures and sells, third party products it distributes, its advertising and marketing activities. Mrs Smith gives evidence of the history of Active Skin’s business, and its sales and distribution of skincare and cosmetics using the Active Skin trade marks;
(b)Mr Whitehead is a partner at Hazan Hollander, the legal representative for Active Skin. He sets out the results of searches he caused to be conducted of and with the assistance of the Audited Media Association of Australia, which collects and provides magazine and other media distribution and readership data, Roy Morgan website, and ‘Wellbeing’ and ‘Natural Health’ magazine media kits.
Mr Wyeth and Mrs Smith were each cross‑examined. Messrs Lang and Whitehead were not required for cross‑examination. The parties provided written opening outlines, I heard oral openings, received written closing submissions, and heard oral closing submissions from counsel. I have had the benefit of transcript, as well as my contemporaneous notes, aiding my recollection of the witnesses’ demeanour and their evidence.
Confidential evidence
At the hearing, both parties claimed confidentiality in certain parts of their evidence, and I made an order maintaining those claims of confidentiality. Given the passage of time since the Priority Date and since hearing, shortly before delivery of these reasons I sought and obtained clarification of the parties’ positions on the appropriateness of that order continuing on foot, and the continued status of evidence ruled confidential. To the limited extent now sought, I am satisfied that the parties’ requests to the Court for the continuance of confidentiality be maintained in those limited respects. It is appropriate that the confidentiality order otherwise cease to have continuing effect. I make orders to this effect with the delivery of these reasons.
relevant statutory provisions AND LEGAL PRINCIPLES
Section 60 of the TM Act provides (at the relevant time, and now):
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Section 42 of the TM Act provides:
An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.
Section 18(1) of the ACL provides:
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Sections 29(1)(g) and 29(1)(h) of the ACL relevantly provide:
A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g)make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h)make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
Whilst s 18 takes a different form to s 29, the prohibitions are similar in nature. There is no material difference between the expressions ‘false or misleading’ in s 29, and ‘misleading and deceptive’ in s 18. I discuss the relevant principles applicable to the statutory prohibitions by reference to those established in respect of s 18 of the ACL.
Section 60 – applicable principles
To establish a ground of opposition under s 60 of the TM Act, an opponent, in this case Yey, must demonstrate that as at the relevant priority date of the applicant’s trade mark application there was ‘another trade mark’ which had acquired a reputation in Australia, and that, because of that reputation, the use of the trade mark sought to be registered would be likely to deceive or cause confusion. On its face, the section does not require that the other trade mark (‘another trade mark’) be the opponent’s trade mark, nor that the reputation accruing to that other mark be in respect of the goods or services of the applied for trade mark. Further, since amendments to s 60 enacted by the Trade Marks Amendment Act 2006 (Cth), there is no requirement of substantial identity or deceptive similarity of the trade marks.
The reputation of the other trade mark is to be assessed at the priority date: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379; [2017] FCAFC 83, at [21], citing Southern Cross. The existence of a reputation is not assumed, and must be established as a matter of fact: ConAgra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302, at [77], [118].
As to what is meant by the ‘reputation’ of the other trade mark in the context of s 60, in McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335, Kenny J, at [81] by reference to the ordinary meaning of the word, stated it is ‘the recognition of the [trade mark] by the public generally’.
The assessment of the reputation of a trade mark goes beyond mere examination of sales or turnover of goods sold under the trade mark, and contemplation of the advertising and promotional figures. As O’Bryan J said in Rodney Jane Racing Pty Ltd v Monster Energy Company (2019) 370 ALR 140; [2019] FCA 923, at [83], citing Kenny J in McCormick at [85]‑[86], the reputation of a trade mark has both quantitative and qualitative dimensions. The quantum of sales, advertising, and promotion of goods or services in relation to which the mark is used contributes to the ‘recognition’ component of the trade mark’s reputation. The qualitative dimension concerns the image and values projected by the trade mark, which attaches to the ‘esteem’ or favour in which the mark is held by the public generally, as do the public events and other trader’s marks with which the owner of the trade mark in question chooses to associate the trade mark via sponsorships, cross‑promotions, ‘contra deals’ and so forth. Reputation is commonly established by reference to sales and advertising figures, and other promotions without any direct evidence of consumer appreciation of the mark, as opposed to the product: McCormick at [86] and the cases there cited.
The relevant reputation is commonly said to be that held amongst a significant or substantial number of persons in the relevant market. What is a ‘significant’ or ‘substantial’ number, however, will depend upon the nature of the goods or services in question. Although decided under s 28(a) of the Trade Marks Act 1955 (Cth), the statements of Heerey J at first instance in Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 51 IPR 1; [2000] FCA 1587, at [20] provide guidance - for some highly specialised goods or services, awareness among a few thousand persons, or even less might be sufficient. Where, as in that case, the relevant goods are foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets, the relevant market is ‘virtually the entire Australian population from early teenage years onwards’. See also, inter alia, Pham Global [71]-[74]: the nature of the goods or services in question which the applied for trade mark is to distinguish necessarily informs the identification of the relevant class of persons who may be deceived, and informs the understanding of the characteristics of that class; the relevant goods or services inform an evaluation of the sufficiency of the number of persons within the relevant class of potential consumers who are likely to be deceived or confused.
Active Skin submits that s 60 of the TM Act requires that the reputation of the other mark, that is, the Yey trade marks, must be with respect to the goods or services of the applied for mark – the AS Goods and Services. This is incorrect. Active Skin’s proposed construction is not supported by the text of s 60, nor by the case law. The question is purely one of prior reputation.
However, although not necessary requirements for s 60, the similarity of the trade marks, and the similarity of the goods or services in respect of which the reputation is established and the specified goods or services of the trade mark application are relevant considerations. In Qantas Airways Ltd v Edwards (2016) 338 ALR 134; [2016] FCA 729 at [142]-[143], Yates J said:
… the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.
A further matter to note in relation to the s 60 objection is that, contrary to the respondent’s submission, the “other” mark need not have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application. However, I accept that if such a reputation does exist at the relevant time, it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.
See also, e.g., Monster Energy Company v Mixi Inc (2020) 156 IPR 378; [2020] FCA 1398.
When considering the likelihood of confusion or deception, one must consider the notional use, that is, the fair and normal use in respect of the specified goods or services, to which the applied for trade mark could be put if the application were to proceed to registration. The relevant comparison is between the other mark as actually used and the reputation thereby established, and a notional fair and normal use of the mark sought to be registered: Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661; [2012] FCAFC 159, at [113]-[114]; Qantas Airways at [178]. As I have said, the Court assesses the likelihood at the Priority Date, although looking forward to prospective conduct after registration.
As Barwick CJ stated in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 355:
But the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark. The question is whether its use is likely to confuse. In answering that question, the capacity of the respondent to apply its mark to merchandise of the same kind as that sold by the appellant must be borne in mind even though as yet it has not done so. The answer to the question cannot be confined to the circumstances of the trade presently obtaining.
Thus, the comparison with the applied for trade mark is not limited to the particular use to which the trade mark applicant has put the applied for trade mark to date (if it has used the mark prior to filing), nor to the goods or services on which it proposes to immediately use the mark. Actual use may be illustrative of what is normal and fair, however, as the question is the notional use of the specification, it may have limited relevance to s 60.
When considering what is required in respect of causing confusion or deception, noting that the decision was concerned with deceptive similarity for the purposes of s 44(2) of the TM Act, in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] FCA 1020, French J (referring to the off cited propositions articulated by Kitto J in Southern Cross) stated at [50(ii)]:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
It is enough that there is a real and tangible danger of confusion or deception. A mere possibility is not sufficient: Southern Cross, at 594-595; Woolworths, at [50]; Rodney Jane Racing, at [84].
Evidence of actual confusion is not required: Berlei at 355; Rodney Jane Racing at [84]. To reiterate, the issue is what can the trade mark applicant do if the mark achieves registration - not limited to any prior use made of that or other marks by the applicant. Accordingly, whilst there are cases where an absence of confusion over a period of past use has been taken into account, each case is to be determined on its own facts, having regard to the circumstances of any concurrent use established in the particular case.
In the context of contravention of the ACL, in Australian Competition and Consumer Protection v Coles Supermarkets Australia Pty Ltd (2014) 317 ALR 73; [2014] FCA 634 (ACCC v Coles), Allsop CJ said at [45]:
Evidence that someone was actually mislead or deceived may be given weight. The presence or absence of such evidence is relevant to an evaluation of all the circumstances relating to the impugned conduct. Where the conduct and representations are to the public generally and concern a body of simple direct advertising, the absence of individuals saying they were misled may not be of great significance… The objective assessment of advertising using ordinary English words in an attempt to persuade can be undertaken without the lengthening of a trial by the bringing of witnesses of indeterminate numbers. Language, especially advertising, seeking to raise intuitive senses and associations, can have its ambiguities and subtleties. The task of evaluating the objective character and meaning of the language in the minds of reasonable members of the public is not necessarily one that will be assisted in any cost‑effective manner by calling members of the public. The question is one for the Court.
There is no honest concurrent use exception to s 60: Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd (2019) 141 IPR 463; [2019] FCA 719 at [82]-[86], and authorities there considered, including McCormick, at [90]‑[96] (Kenny J’s considered analysis there concluding that s 44 and s 60, are separate, stand‑alone grounds of opposition). There is no prior use exception.
Active Skin also submits that the purpose of s 60 is to “provide protection for prior well‑known marks, whether registered or not”. This is incorrect. The plain words of s 60 do not so proscribe its purpose or application. The Explanatory Memorandum to the Trade Marks Amendment Act 2006 (Cth) makes clear that unlike s 120(3) (infringement of well‑known marks), Section 60 is not so limited, at [4.10(1)]:
The provisions have not been written so as to establish a new class of trade marks (“well‑known” marks) or to prescribe a particular threshold of how well‑known a mark must be. Rather, the test has been written so that it can be applied to all marks.
See also, e.g., Pham Global; c.f., Rodney Jane Racing at [82]. Contrary to Active Skin’s submissions, it does not follow that because some owners of well‑known marks have availed themselves of the s 60 ground of opposition the ground is limited to such marks.
Section 42 – applicable principles
Under the ground of opposition provided by s 42(b) of the TM Act, an application for registration of a trade mark must be rejected if its use “would be” contrary to law. It is not enough to show that the relevant law might be contravened. Yey relies on s 18 and/or ss 29(1)(g) or 29(1)(h) of the ACL as the relevant law. Yey must prove, on the balance of probabilities, that one or more of those provisions would be contravened by the use of the Active Skin Applications: Primary Health Care Limited v Commonwealth of Australia (2017) 260 FCR 359; [2017] FCAFC 174 at [411].
The applicable principles concerning contravention of s 18 and ss 29(1)(g) and (h) of the ACL are well‑known. As I foreshadowed above at [40], it suffices to identify those relevant to s 18 of the ACL. They have been explained and summarised recently in Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507; [2020] FCAFC 130 at [22]-[23], as follows (citations omitted):
[22]The central question is whether the impugned conduct, viewed as a whole, has a sufficient tendency to lead a person exposed to the conduct into error (that is to form an erroneous assumption or conclusion about some fact or matter) … A number of subsidiary principles, directed to the central question have been developed:
(a)First, conduct is likely to mislead or deceive if there is a real or not remote chance or possibility of it doing so…;
(b)Second, it is not necessary to prove an intention to mislead or deceive …;
(c)Third, it is unnecessary to prove that the conduct in question actually deceived or misled anyone…Evidence that a person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential…The question whether conduct is misleading or deceptive is objective and the Court must determine the question for itself…;
(d)Fourth, it is not sufficient if the conduct merely causes confusion …;
(e)Fifth, where the impugned conduct is directed to the public generally or a section of the public, the question whether the conduct is likely to mislead or deceive has to be approached at a level of abstraction where the Court must consider the likely characteristics of the persons who comprise the relevant class to whom the conduct is directed and consider the likely effect of the conduct on ordinary or reasonable members of the class, disregarding reactions that might be regarded as extreme or fanciful.
[23] … the “significant number” test …
(b)has never been embraced by the High Court. As early as 1981 in Puxu, the High Court formulated the relevant question as the effect of the impugned conduct on reasonable or ordinary members of the class of persons to whom the conduct was directed. In the High Court cases that have followed Puxu, particularly Campomar and Google, the test has always been stated in substantially the same terms.
…
(f)… Whether or not speaking of a reasonable member of a class implies as a matter of strict logical necessity that one is speaking of a significant proportion of that class, nothing in the language of the statute requires the Court to determine the size of any such proportion. … the test of reasonableness involves the recognition of the boundaries within which reasonable responses will fall. In our view it does not require any attempt to quantify, even approximately, the hypothetical reasonable individuals who have a particular response. The idea that such a quantification is possible will almost always be an illusion, and illustrates how the test of “a not insignificant number” distracts from the terms of the statutory prohibition and the guidelines to its application laid down in Campomar;
(g)While, in our view, s 18 of the ACL (and analogous provisions) do not require the satisfaction of the “significant number” test in order to establish contravention, a party may choose to put its particular case that way. … [if it does so] that will be a function of how the case is put; it is not a requirement inherent in the statute.
See also, in the context of the application of s 42(b) of the TM Act, summary of the relevant principles in Primary Health, per Rangiah J at [412]‑[418], Greenwood J at [2], and Katzmann J at [78], agreeing. The representations relied on by the opponent (Yey) for the purposes of s 42(b) of the TM Act must be representations that will be made by the applicant by using the trade marks as trade marks, that is, to distinguish the applicant’s goods or services from those provided by another trader: Primary Health at [418].
There are two key differences between ss 60 and 42(b) of the TM Act, where s 18 (or s 29) of the ACL are relied on:
(1)an opposition under s 42(b) does not require an opponent to establish that there is a reputation in respect of “another trade mark”; and
(2)s 18 (and s 29) of the ACL requires an opponent to establish on the balance of probabilities that consumers would be, or are likely to be, misled or deceived, whereas the standard required under s 60 is less stringent, conduct that causes confusion or wonderment establishes the ground.
Further, it is not necessary that Yey establishes that it has an exclusive reputation in order to establish a likelihood of misleading or deception by use of an Active Skin Application. In this regard, the Full Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397; [2007] FCAFC 70, stated at [96]-[97]:
[96]…, it certainly does not follow that there cannot be a contravention of the Trade Practices Act [now the ACL] because Cadbury does not establish that it has an exclusive reputation in relation to the colour purple. The question is whether Cadbury can establish facts that demonstrate that a particular use by Darrell Lea of the colour purple is likely to mislead or deceive consumers into believing that there is some relevant connection between Darrell Lea and Cadbury or their respective products.
[97]Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to [the ACL]. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his (sic) product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant’s product.
Relevantly, ownership of a registered trade mark is not a defence to a contravention of s 18 or ss 29(1)(g) or (h) of the ACL.
Yey submits that the notional use of each of the Active Skin Applications will give rise to at least the following representations which would contravene those provisions of the ACL:
(a)Class 3: the use of the trade marks in respect of the specified goods in Class 3 (cosmetics, beauty and skincare goods) would represent that there is an association or affiliation between those goods and Yey. A reasonable cohort of consumers are likely to be misled or deceived into perceiving that the goods are the ‘home’ brand goods of Yey;
(b)Class 35: the use of the trade marks in respect of the specified services in Class 35 (distribution services in respect of cosmetics, and advertising material, samples and prospectus for cosmetics) would represent that there is an association or affiliation between those services and Yey. Some consumers (being consumers in the cosmetic industry) are likely to be misled or deceived into perceiving that the services of Yey have expanded beyond the online retailing of cosmetics to the distribution of such materials.
The specified goods and services
I have referred to the AS Goods and Services at [5] above, and set out the specifications in full in Annexure A to these reasons.
The Active Skin Applications each specify goods in class 3. Whilst there is some difference in the goods specified in each Application, as I have said, all of the goods are skincare, beauty and cosmetic products (collectively, cosmetics). The market for cosmetics encompasses retail consumers – those who acquire the products to consume themselves or gift to others, personal service providers - members of the cosmetics industry who acquire the products for application or other use in the course of their provision of beautician, skincare, make-up and similar services (i.e., cosmetic services, including salon services, make up artists, beauty blogging or vlogging), also reseller intermediaries such as wholesalers and distributors who acquire the products for resale to retailers, and retailers, who may also be described as ‘stockists’. Cosmetics retailers may be ‘bricks and mortar’ businesses, having physical stores able to be visited in person by potential consumers, and online stores. Physical stores include department stores, stand-alone cosmetics stores, and in‑store boutiques (as at the date of these reasons, retail stores such as MECCA – which retails third party brands and its own ‘home label’ brand, CHANEL boutiques, DIOR Cosmetics, AESOP, The Body Shop, LUSH, and Jo Malone come to mind), beauty and skincare salons, pharmacies and health stores. In addition, the market for cosmetics includes telephone, mail order and catalogue businesses, although I posit likely in declining numbers.
It is apparent from the above that the relevant class of consumers is a broad demographic of the purchasing public, in Australia.
The Active Skin Applications each contain the same specified services in class 35. I have referred to these as cosmetics distribution services. This phrase however may not adequately describe the specified services. Active Skin emphasises that this class is directed in particular to ‘distribution’ of materials used in the marketing and promotion of the cosmetics themselves. The class 35 specification also includes services for the distribution of cosmetics, limited to ‘agent, wholesale, representative services, by any means’.
Yey draws attention to the Nice Classification, and the explanatory notes to the 2015 version of the Nice Classification. These aid in the construction of the classes of the Register, relevantly class 35, and thus, the specified class 35 services of the Active Skin Application. Under the Nice Classification, class 35 specifically excludes transport services, which are provided for in class 39. The explanatory notes state that class 35 includes ‘the bringing together … of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. Such services may be provided for example by retail stores, by means of websites, by mail order, and by catalogue, and arguably, harking back to earlier times, by travelling sales men and women. The class 35 specified services of the AS Goods and Services also includes the services of advertising agencies and distribution of prospectuses and samples in relation to cosmetics.
The market or class of consumers for the distribution services of the class 35 specification includes wholesalers and retailers of cosmetics, and the providers of cosmetics services, as I have identified above.
Whilst Active Skin submits that the notional use of the AS Goods and Services does not go beyond what Active Skin (and before incorporation, Mrs Smith and her husband) had been doing since 2004, the evidence before me does not make good that claim. Active Skin’s actual use prior to the Priority Date, and thereafter, does not reflect the scope of the terms and phrases claimed by the AS Goods and Services – whether the class 3 or class 35 specification. The corroborated evidence is of a subset of products, primarily skincare, and activities and also personal care products (viz., foot pads for help in detoxifying the body). In her written evidence, Mrs Smith stated that Active Skin’s business targeted women and men 35 years and over, and focused on ‘natural products’. Mrs Smith agreed in cross‑examination that the sale of cosmetics (see specifications in Annexure A) generally targeted a broader group of consumers than was targeted by Active Skin’s business.
The evidence of use and reputation
The witnesses and their evidence
Mr Wyeth was a considered and credible witness, who made concessions or corrections where appropriate, and without demur. He readily and ably explained matters in his affidavit and concerning Yey’s business and record keeping systems. Senior counsel’s cross‑examination did not undermine Mr Wyeth’s credibility, nor undermine his evidence.
As to Mrs Smith, cross‑examination exposed the limits and lack of substantiation of much of her written evidence. Her husband (with her, co‑director and co‑shareholder) was in Court during most of her cross‑examination. Notwithstanding that I observed gestures passing between them during Mrs Smith’s cross‑examination, and instances where Mr Smith sought to answer questions posed of Mrs Smith (as remarked on transcript), I do not consider that Mrs Smith was a coached witness, but rather that on occasions she was unsure about her answers, and that she sought Mr Smith’s assistance and reassurance. Considering her evidence overall, whilst I have concluded that Mrs Smith considerably overstated Active Skin’s claims to use and its trading activities, I do not consider her a dishonest witness.
In the circumstances however, and given the paucity, and absence, of evidence of the total quantum of sales, numbers or kinds of products offered, number of transactions, or total numbers of customers (retailers, and consumers), or total advertising or marketing expenditure of Active Skin’s business, and that conducted by Mrs Smith and her husband prior to incorporation, for any year, or for any other or lesser period, and given the limited evidence of product packaging and presentation (partly ascertainable from print advertising), I am not persuaded Mrs Smith’s claims and statements are reliable where not substantiated by the documentary record.
In my consideration of the evidence and my findings below, I have had regard to, and taken into account the written, oral and documentary evidence of the parties, and the critiques of the evidence made by opposing counsel in their written and oral submissions. Save as I have said above, and unless the context makes clear otherwise, my stating in this section of my reasons without qualification a fact is taken to be a finding of the fact I state.
yey’s evidence of use and reputation
Yey’s business and commencement
As at the Priority Date, and since about 2006, Yey’s business has comprised three components: online retail services for skincare, cosmetics and beauty products provided to consumers via the Yey website, and through the Yey salon, retail services for third party skincare, cosmetics and beauty products, and beauty treatment, consultancy and salon services (which I define below at [81]). By the 2006‑2007 financial year (FY), online retail services were the largest part of Yey’s business, and by FY 2015, the online retail services accounted for approximately 80% of Yey’s total turnover of $6,138,405 (including GST).
Yey was established and incorporated on 13 July 1999 by Ms Yvette Wyeth. Since April 2007, when it was incorporated, Holvette Pty Ltd has been the holding company of Yey, and Ms Wyeth and her husband Mr Wyeth have held minority shareholdings (in total 10%) in Yey. Ms Wyeth is Yey’s director and secretary. At all relevant times Mr Wyeth and Ms Wyeth have been 2 of the directors of Holvette. Since 2004, Mr Wyeth has been the General Manager of the online retailing arm of Yey’s business, working full time with Yey. As I have said above, he is responsible for the day to day operation of the online retailing business. A particular focus of his role is managing the online marketing of the Yey business. Mr Wyeth obtained a Batchelor of Business degree from the University of Technology, Sydney, with a major in marketing in 1988, and had advertising and account management experience prior to joining Yey.
On 4 October 2005, Yey registered the business name ‘Active Skin Solutions’. Relevant to Yey’s online retailing activities discussed below, I note that the Yey website depicted copyright notices on its home page footer banner referencing the business name (apparent in 2006‑2007 on the Wayback page captures), and in the first capture on 17 June 2006, depicted the name ‘Active Skin’ in its copyright notice).
Yey salon
In November 1999, Yey commenced operating the Yey salon, a professional skin and beauty salon, under the name Escape Skin and Body in Balgowlah, a northern suburb of Sydney, near Seaforth, Manly and the northern beaches.
In around June 2009, the Yey salon was rebranded Sensora Salon, and in around July 2014, approximately 9 and a half months before the Priority Date, it was rebranded Activeskin Salon, and adopted the use of Yey’s trade marks for its salon retail and salon services, on shopfront signage, employee uniforms, and advertising. A photograph in evidence of the rebranded Yey salon shows prominent street front neon signage (in a clean, san serif font, not reproduced here) ‘ACTIVESKINsalon’, above and across the breadth of the salon’s glass façade.
At all times, the Yey salon has been located in Balgowlah (over time at different locations including as at the Priority Date, a Stockland Shopping centre), and has marketed and provided a range of beauty and skincare services including, facials, skincare treatments and makeovers, and massages, and marketed and supplied a range of third party skincare, cosmetics and beauty products, with an emphasis on ‘salon exclusive’ products. By the Priority Date, its brand offerings had expanded to include a number of major department store and other skincare, cosmetics, beauty and body brands. It has offered and provided these services (for convenience, I refer to these as salon services) and products (for convenience, generally skincare and cosmetics) targeting female consumers between the ages of 21 and 70 living in Balgowlah and nearby local areas, including Seaforth and Manly.
For FY 2015, during which the salon operated under the name ACTIVESKIN salon, Mr Wyeth deposes to total turnover (including GST) from the salon in the order of $651,000 for skincare and cosmetics sales, and $727,000 for the provision of salon services. The evidence does not enable an accurate breakdown of salon revenue on a monthly or quarterly basis to determine actual revenue as at the Priority Date, however, by reference to Yey’s FY 2015 total (i.e., both salon and website) quarterly turnover figures in evidence (excluding GST), it is reasonable to infer that gross revenue was consistently generated each quarter, and accordingly that salon revenue when trading under the Activeskin salon name was approximately $525,000 for skincare and cosmetics sales, and $585,000 for salon services (both inc GST) for FY 2015 up to the Priority Date.
Whilst Yey undertook some print advertising of the Yey salon under the Activeskin salon name and referencing the Yey website domain in Stockland’s print marketing and the Manly newspaper in the period July 2014 to the Priority Date, that advertising was very limited and appears local in scope.
Yey website – online retail services
Commencing in about 2004, Mr Wyeth conducted research into the online retail of skincare and cosmetics products that the Yey salon sold and other popular brands. He discovered there were few online skincare and cosmetics retailers at that time, identifying only Adore Beauty and Fountain Cosmetics. Mr Wyeth saw an opportunity for Yey and began developing a business plan for Yey to launch an online retail store for skincare and cosmetics.
On 25 February 2005, preparatory to developing the Yey website, Yey registered the domain The Yey website located at that domain was launched in March 2006 and commenced using the Yey word trade mark and the first logo version. Since its launch, the Yey website has been continuously active under that domain name. At launch, the Yey website offered for sale approximately 500 skincare and cosmetics products, then being the entire product offering retailed through the Yey salon. As at the Priority Date it offered for retail sale approximately 6,000 different products.
As at the Priority Date, Yey had been trading through the Yey website operating its online retail store for 9 years.
Products and suppliers
Since launch, the Yey website has continuously retailed third party skincare and cosmetics to customers throughout Australia. Over time, Yey gradually expanded its range of product offerings on the Yey website to include, in addition to salon exclusive products, brands offered in department stores and pharmacies, and more types of products, such as bath and body products, fragrances and hair products (all of which I include in the expression skincare and cosmetics). The core of Yey’s online retailing business has remained salon exclusive skincare and cosmetics. Drop down menus, and other page links on side bars and the like on the Yey website pages evidence that skincare and cosmetics products and retailing services (FAQs, delivery, cart, checkout, accounts, promotional deals), and skin and beauty advisory services have been provided since 2006.
Mr Wyeth attests to Yey’s ongoing relationships with wholesalers, distributors and manufacturers of skincare, and cosmetics (a summary of suppliers for the period 1 January to 30 April 2015 lists approximately 40 suppliers). He attests to Yey attendances and interactions with the cosmetics industry at trade only conferences, exhibitions and shows from around‑2006 to the Priority Date. Among the leading brands, and distributors/wholesalers of such brands with whom Yey has had ongoing relationships since 1999 (initially through the Yey salon, and thence in its online retailing), are L’Oreal (including Lancome, SkinCeuticals, Redken, Matrix), Clarins, Youngblood Mineral Cosmetics, Haircare Australia (labels Evo, Morocconoil, Mason Pearson, Neuma), Dateline Imports (Keratin Complex, The Wet Brush, Tweezerman), and Advanced Cosmeceuticals, and manufacturers of leading beauty lines/wholesalers, Dermalogica, Ecoya, AlphaH, GHD Jamelia Australia, Skinstitut Australia and Ultraceuticals. I note additionally other salon exclusive, and department store brands (including Thalgo, Dr Hauschka, Clinique, ASAP, L’Occitane) retailed on the Yey website and promoted on the Yey website pages in evidence. Every year since 2009, Dermalogica has recognised Yey for its high sales achievements in its Platinum Circle VIP program.
Trade marks used
The evidence establishes that from the commencement of the Yey website in 2006 to the Priority Date, in addition to use of the domain name, and the Yey word mark ‘activeskin’, the Yey website has continuously featured the use of one or other of the logo versions, over time updating the form of presentation as I have summarised in Table 3 at [9] above. From Mr Wyeth’s evidence and my review of the pages of the Yey website captured by the Wayback machine, I am satisfied that throughout the period June 2006 to the Priority Date, the then current logo version was depicted prominently at the top of the Yey website on the home page, and on the top of each of the drop down menu pages. It appeared on almost every page of the website captured.
Throughout, the domain name is also depicted in the search box apparent on each page of the website. The domain name comprises the Yey word mark – ‘activeskin’. On the evidence, I am satisfied that the domain name takes the inquirer to the Yey website, and acts as a sign for Yey’s retailing services which are available at the Yey website, and which include those of the Yey class 35 and class 44 specifications, noting that Yey does not appear to promote itself as a wholesaler. I am satisfied that the domain name acts as a trade mark, and that trade mark is ‘activeskin’. As the Full Court stated in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 124 IPR 264; [2017] FCAFC 56, at [197]:
Use of a domain name incorporating a trade mark taking an inquirer to a service provider’s website is, in the modern world, a more ubiquitous form of advertising goods or services than a traditional “advertisement” of the kind about which Kitto J was speaking in Shell v Esso.
The documentary evidence establishes that the invoices (representative instances of which are evidenced) issued at least in the period 1 August 2013 to the Priority Date with an order placed via the Yey website depicted the then current logo version, and also the statement ‘Yey Pty Ltd t/a Activeskin’.
Customers and transactions
Since launch the Yey website has been able to be viewed and accessed Australia‑wide. The target market of the Yey website has been female consumers between the ages of 21 and 70 who live in Australia, and are seeking to purchase salon quality cosmetics and skincare products. By reference to the skincare and cosmetics brands and product ranges offered on the Yey website in the webpages in evidence, it is apparent that the target market of consumers is broader than those seeking only salon exclusive products. I also note that at least since early 2014, the Yey website homepage has also included a drop down menu specifically for and promoting men’s products.
The majority of orders placed through the Yey website each year have been from New South Wales, Victoria, and Queensland, noting that sales have been made in all states and territories. Over the period 2007–2015, the data analytics reports in evidence establish that approximately 35‑40% of sales per annum were to customers in New South Wales, approximately 22-28% to customers in Victoria, 18-20% to customers in Queensland, 10% to customers in Western Australia, and the remainder to customers in the other states and territories.
The average sales transaction was around $131 in the FYs 2014 and 2015, and somewhat higher in preceding years (decreasing from $160 in FY 2007 to $135 in FY 2013), consistent with purchasing a broadening range of products. Multiple products may be included in the one transaction. Having regard to total turnover from the Yey website, and the reports from the data analytics programs employed by Yey, the evidence is that the number of transactions per calendar year steadily grew from 14,589 in 2008, to 22,344 in 2009, 25,355 in 2011, 32,036 in 2013, to 36,958 in 2014 (whilst other years are in evidence, these years are sufficient to show the growth in numbers and trend). In 2015, there were 38,735 transactions, demonstrating a continuingly growing number of sales in the period encompassing the Priority Date.
The Google Analytics data shows that the transactions each year included new and repeat visitors to the Yey website. Whilst the number of visitors grew, tracking the growth in transactions, the percentages of new and repeat visitors to the website throughout calendar years 2007 to 2014 (and in 2015) were in the order of 40-44% new visitors and 60-56% returning visitors. It is reasonable to infer from these percentages that the mix of new and repeat customers was similar to the percentages of visitors to the website.
It is convenient here to address Active Skin’s submission that as Yey does not indicate that every transaction of an online retail sale is a unique order by a different customer, the Court must infer that the number of transactions evidenced includes repeat customers, and that the Court should find that such an inference dilutes any reputation Yey claims. I draw a different conclusion. I consider a reasonable inference from repeat custom is that consumers buying third party products from a retailer’s website do so because they form the view that a particular online retailer is credible and reliable, and that the product range is attractive. Whether the number of transactions evidenced by Yey are unique orders by different customers, or include repeat customers, the number of transactions all contribute to establishing the ‘esteem’ component of Yey’s reputation in the Yey trade marks.
While the Yey website can be viewed by persons outside of Australia, Yey has never shipped, sold, or advertised its products to consumers outside of Australia.
Sales
Yey’s annual total sales figures for its total business for each of the FYs ending 30 June 2006 to 30 June 2015 are in evidence. The gross sales figures (and GST components) for the total business, and within those totals, for the salon components (retail products and salon services), are taken directly from Yey’s accounting records. Yey did not keep separate accounting records for its online retail sales. Approximate figures were calculated by deducting from the total turnover, salon product and services revenues, adjusted for GST. Based on his familiarity with Yey’s business and its accounts, Mr Wyeth attests to his satisfaction that the sales figures for the online retail sales are an accurate approximation of Yey’s turnover from its online retail business via the Yey website.
Having regard to the summaries from Yey’s financial and accounting records, I am satisfied by Mr Wyeth’s assurances. In sum, the sales figures demonstrate gross turnover (inc GST) from the Yey website activities commencing with FY 2006 in the order of $207,880, and growing in subsequent years: sales (inc GST) in FY 2007 of $1,639,240, in FY 2008 of $2,675,050, in FY 2009 and FY 2010 averaging approximately $3,870,000 each year, in FY 2011 and FY 2012 averaging approximately $4,425,000 each year, in FY 2013 of $4,123,060 and in FY 2014 of $4,834,620. Further to my reference to the FY 2015 quarterly total turnover figures for Yey’s business above (see [82]), on the assumption that the sales earnings profile is similar as between the Yey website and the Yey salon, which on the evidence I consider a reasonable assumption to make, the gross sales (turnover) for the Yey website were in the order of $4,029,955 (inc GST) for quarters 1‑3 FY 2015 (to 31 March 2015), and thus, conservatively, up to the Priority Date.
Yey website traffic
Between March 2006 and the Priority Date, the Yey website received significant, and consistently increasing amounts of internet traffic. Yey’s Google Analytics data for the calendar years 2007 to 2015 show that the Yey website received unique visitors, visits, and page views steadily increasing in numbers each year. By reference to that data, I am satisfied that the data for the calendar years 2007, 2008, 2010, 2012, and 2014 are sufficient to demonstrate the amount and growth in the traffic to the Yey website from 2007 to the end of 2014:
Google Analytics Results (rounded figures)
Year
Unique Visitors
Visits
Page Views
2007
26,750
48,240
446,090
2008
134,440
245,770
2,012,730
2010
183,650
327,990
2,362,540
2012
269,150
427,730
2,607,590
2014
400,540
673,180
3,721,050
In 2015 (encompassing the Priority Date) there were (rounded) 472,240 unique visitors, 789,080 visits, and 4,389,990 page views. The growth over time was consistent, and the numbers considerable.
Mr Wyeth estimates that as at the Priority Date there were around 12,000 “backlinks” provided to the Yey website by third party publications. Mr Wyeth confirmed in his oral evidence in chief that at the date of his affidavit there were 20,679 such links from third party publications to the Yey website.
Yey website – mobile version
In mid 2013, Yey launched the mobile version of its website, with a new website design that was more accessible to mobile phone users. Mr Wyeth stated this was an important step in increasing overall traffic to the Yey website. It allowed visitors to search and navigate the Yey website from mobile devices much more easily and faster. He regarded Yey’s early adoption of its mobile version of its website gave Yey a competitive advantage. The increase in website traffic supports this view.
Yey’s advertising and marketing
From 28 April 2008 until the Priority Date, Yey made use of GoogleAds (formerly known as Google Adwords) and search engine optimisation (SEO) marketing strategies as its main modes of advertising and promotion. Yey sought to achieve a first page ranking in online searches for a variety of terms such as ‘active skin’ and key third party skincare and cosmetics brands.
Yey’s annual expenditure on GoogleAds between 2008 and 2015 increased from $20,000 in 2008, to approximately $40,000 in 2009, $60,000 in 2010, just over $70,000 in each of 2011 and 2012, to over $150,000 in 2013, and $216,000 in 2014. In 2015, Yey’s Google Ads spend was just over $260,000. The GoogleAds spend was primarily on the brand names of third party cosmetics, where the Yey website was provided as the sponsored link. In simple terms, the product name search resulted to that product as supplied by ‘activeskin’ and linked to the Yey website.
Mr Wyeth explained the SEO marketing of the Yey website. In mid 2006 Yey appointed the digital marketing agency Amblique to manage its SEO strategy and to increase visibility of the Yey website in Google search results. Mr Wyeth stated in his written evidence that SEO marketing is pivotal in attracting (i) new customers searching the internet for an online beauty retailer, and (ii) new customers who are searching the internet for specific skincare and cosmetic products. He stated that based on his experience, having and maintaining a strong SEO presence (and thereby organic listings on Google) is critical to attracting new customers for an online retailer, at least in the skincare, cosmetics and beauty products industry.
As at April 2015 – approximately the Priority Date – the Yey website achieved page 1, and top 2 to 5 rankings for brands such as ‘dermalogica’, ‘asap skin care’, ‘glo minerals’, ‘napoleon makeup’, ‘bare minerals’, ‘clarins’ and ‘clinique’. Mr Wyeth explained that achieving first page ranking, and a high ranking overall is important as the organic listings on Google are free and more importantly consumers do place a higher relevance and trust on organic listings as they cannot be bought, unlike paid GoogleAds.
It is convenient here to address Active Skin’s submission that sales of skincare and cosmetics under and by reference to third party brands does not establish the reputation of Yey in ‘Activeskin’ (that is, the Yey trade marks). It submits that the name of a website or the website itself is irrelevant to consumers searching for a product, and that because Yey’s GoogleAds and SEO marketing strategy were directed to key product brands, the reputation of the product brand (that is, trade marks) cannot accrue to the Yey trade marks, and to the Yey website. It ‘dilutes’ the prominence of any association between the Yey trade marks and Yey. These submissions do not persuade.
Active Skin misunderstands the nature of retailing services, and the nature of a retail or wholesaling services trade mark, in the present case for skincare and cosmetics. Online searches for a product or a brand of product result in the identification of a supplier of the product or brand (here, the retailer Yey) at the Yey website, in circumstances where the Yey trade marks are the domain name and that of the online retail store. The reputation of the Yey trade marks is furthered by visitors to the Yey website purchasing the products there offered for retail sale, or being aware by visiting the pages of the Yey website that those third party products are available for purchase at the Yey website. In short, it is reasonable to infer the more sales, the more visits, the greater the reputation accrues to the Yey website, and the Yey trade marks used for and in connection with the website and retail and advisory services offered by it. That third party branded products are supplied by the retailer, or advertised by the retailer does not ‘dilute’ the retailer brand.
Direct email marketing
Beginning in 2006, Yey has sent direct email marketing communications to customers who sign up through the Yey website to its mailing list. Mr Wyeth’s evidence is that generally Yey sent out 2 email newsletters per week. Yey does not have records of these emails prior to April 2014, as it used a different email marketing distribution platform before that time. Yey changed its platform again before Mr Wyeth’s written evidence.
In April 2014, Yey started using a new email marketing distribution platform and rebranded its direct email marketing communications as a membership program through the Yey website. It named the membership program the ‘A‑List’, and exported its existing subscribers mailing list from the email program then used to the A‑List direct email marketing program. During May 2014, Mr Wyeth exported some 30,000 existing subscriber email addresses to the A‑List, which then went live. As at the Priority Date, Yey had in the order of 37,380 active subscribers to its A‑List program newsletter, whom it contacted 3-4 times a week with special offers, sales and promotions, product launches, reward points, and professional beauty advice. Subscribers comprised customers who had purchased skincare and cosmetics from the Yey website, and visitors to the website who had subscribed to the Yey mailing list. Subscribers subscribe to Yey’s mailing list by their email address. Senior counsel’s cross‑examination of Mr Wyeth went nowhere, and failed to undermine this evidence. I am satisfied that the daily figures of subscriber numbers for the period 1 April 2014 to the Priority Date (and thereafter) were obtained directly from Yey’s records, and are reliable. I am satisfied that Yey’s subscriber mailing list grew organically from 2006; it was not bought.
Mr Wyeth’s evidence is that in all its direct email marketing communications Yey used the Yey trade marks. Whilst Mr Wyeth does not exhibit any examples of those direct emails, it was not suggested that they did not depict Yey’s trade marks, or that they were not sent. I am satisfied with Mr Wyeth’s explanation that he was unable to access instances of Yey’s direct email marketing communications prior to the Priority Date as Yey changed its direct email marketing platform in 2014, and again prior to his written evidence (see [110] above).
Yey’s social media presence
Mr Wyeth also gave evidence of Yey’s social media presence and marketing through an ‘Activeskin’ Facebook account since 2009, to which it posted regularly, approximately 3-4 times per week, to around 7,500 followers as at the Priority Date, and an ‘Activeskin’ Instagram page since December 2014, to which it posted approximately 87 times up to the Priority Date, to around 300 followers. The Yey word mark ‘Activeskin’ identifies each post on Facebook in evidence (since 2010), and on each post on Instagram. Because of the way Facebook updates profiles, the logo depicted in the screenshots of the Facebook posts is the updated Yey logo version, current since July 2014.
Conclusion on Yey’s evidence - reputation in the Yey trade marks
Yey’s evidence demonstrates that in Australia, building over the 9 years before, and as at the Priority Date, the Yey trade marks:
(a)were used in generating significant and increasing sales of skincare and cosmetics;
(b)were used prominently on the Yey website which offered those products for sale, and which attracted substantial website traffic, assisted by:
(i)significant online advertising expenditure;
(ii)a high level of prominence of the Yey website in results for Google searches for leading brands of skincare and cosmetics;
(c)were seen by a significant number of active subscribers to Yey’s direct email marketing communications (regularly communicated over the period 2006 to the Priority Date);
(d)had obtained third party recognition in the cosmetics industry by a significant number of leading skincare and cosmetics brands wholesalers, distributors and manufacturers; and
(e)were used in Yey’s social media presence on Facebook since 2009, and on Instagram since December 2014.
Whilst I consider as at the Priority Date, Yey, by the use of the Yey trade marks as the name of the Activeskin salon, established a reputation in the provision of salon services and salon retail of skincare and cosmetics in Balgowlah and surrounding geographical areas, I am not persuaded that the Activeskin salon contributed to a relevant reputation beyond those areas for the purposes of Yey’s s 60 ground of opposition. Accordingly, I do not consider it further.
The evidence establishes that the Yey trade marks were used prominently on and in relation to the Yey website for its online retailing activities in relation to skincare and cosmetics (being an extensive range of such products, and encompassing skincare, hair, and beauty advisory services, product and use recommendations, promotional and special offers, and rewards) promoted and sold to Australian consumers throughout Australia, primarily women aged between 21 and 70. I am satisfied on the evidence that Yey’s customers are the relevant category of consumers: Australian consumers of skincare, cosmetics and beauty products.
The Yey website’s sales, average sale transaction amounts, number of transactions, and the product range offered on the Yey website over the 9 years to the Priority Date was consistent, and increasingly substantial. The evidence demonstrates a strong and sustained growth in sales, transactions and product range, advertising and marketing over that time.
I am satisfied on the evidence of the sales, and transactions, the product range, the website traffic (unique visitors, visits, page views), mix of new and repeat numbers of website visitors, and inferentially, customers, the direct email subscriber list numbers, the marketing, advertising and promotional expenditure and activities (Google Adwords, SEO marketing, direct email marketing, and to a lesser extent Facebook, and in the period shortly before the Priority Date, also Instagram) that Yey has established that the Yey trade marks had acquired and maintained a significant or substantial reputation in Australia before the Priority Date among a significant number of the relevant class of consumers, in connection with the online retail of skincare and cosmetics, and online advisory services relating to skincare and cosmetics.
Further, I am satisfied by the above evidence and on the evidence of its product range, long standing and on-going commercial relationships with a considerable number of leading brands and other skincare and cosmetics suppliers, and Mr Wyeth’s evidence of Yey’s attendance and interactions at trade only conferences, exhibitions and shows, that the reputation of Yey’s trade marks before the Priority Date extended beyond retailing to a significant reputation in the skincare and cosmetics industry more generally.
As I am satisfied that before the Priority Date, the Yey trade marks had acquired a reputation in Australia, the question under s 60 turns to whether, because of that reputation, the use of the Active Skin Applications (or either of them) would be likely to deceive or cause confusion.
Active Skin’s evidence of USE AND reputation
Overview
Active Skin asserts it has prominently and extensively used ‘Active Skin’ in its business continuously since 2004, and has a significant reputation in the Active Skin trade marks. It relies on evidence from Mrs Smith as to the history of its business and its use of the Active Skin trade marks, and sought to draw support from Mr Whitehead’s evidence of publication distribution and readership figures, as relevant to the overall circumstance in which the Court assesses the likelihood of deception or confusion, or misleading by use of the trade marks the subject of the Active Skin Applications.
For the reasons I state below, Active Skin’s claim of prominent, continuous and extensive use and reputation in any Active Skin trade marks is overstated, and is neither established on the evidence, nor reasonably able to be inferred. Active Skin’s evidence does not establish that any of the trade marks the subject of the Active Skin Applications or the prior trade mark registrations (Annexure C) have a reputation of any significance in Australia at the Priority Date, the relevant date. Active Skin’s use of the term ‘Active Skin’ and trade marks in its business that I consider is evidenced within the period 2004 to the Priority Date (which, as I expand upon below I have concluded is in respect of a very modest business), and any consumer recognition that may be inferred (and I have concluded that there is at most, de minimus recognition extant as at the Priority Date) does not obviate, dilute or render nugatory the reputation that Yey has established in the Yey trade marks as at the Priority Date, and because of that reputation, the likelihood of confusion or deception by the notional use of either of the Active Skin Applications if they obtain registration.
A considerable focus of Active Skin’s evidence was on Mrs Smith’s claims of first use of the name Active Skin and the AS flower mark, or variants of it, and her activities in the period from 2004 to 2006. Mrs Smith’s evidence after Active Skin’s incorporation in 2006 was principally directed to the years between 2006 and 2010, and less thereafter. For the most part, after 2006, Mrs Smith did not in her narration distinguish the periods before, at, and after the Priority Date, nor when particular sales and promotional activities commenced or ceased, print publication advertising being a partial exception.
Relevantly, as I have adverted to above, and discuss further below, Active Skin provided no total sales, total advertising or marketing expenditure, no financial statements, no management accounts, no accounting records, and no summaries from any such records, or taxation returns for any period whatsoever.
It is apparent from the whole of Mrs Smith’s evidence, including its magazine marketing, that the Active Skin business declined significantly from about 2009 to the Priority Date.
As I have said, above at [29], questions of first use or ownership of trade mark are not before me for determination. To put it another way, the s 60 and s 42(b) grounds of opposition to registration of the Active Skin Applications are each to be determined as at the Priority Date. That is the date at which reputation, and the overall circumstances pertaining to the questions of deception or confusion, deceptive or misleading conduct are to be determined. Active Skin’s emphasis on its early use of any Active Skin trade marks, in the circumstances of its evidence of use in the whole period to 2015, does not speak to, and does not bear on, the overall circumstance pertaining at the Priority Date.
Commencement and first 2 years of Active Skin’s business
In 2004, Mrs Smith and her husband established a partnership through which Mrs Smith could earn an income whilst maintaining flexibility to look after her 2 teenage children. Mrs Smith explained she chose to start a skin care business as she had had a passionate interest in the area since she was a teenager.
Mrs Smith states her focus was on skin care products whose ‘active ingredient’ was natural, botanical, or organic. She chose the name ‘Active Skin’. As a partnership, on 11 March 2004, the Smiths registered the business name ‘ACTIVE SKIN’ with a PO Box in Wetherill Park, in Sydney’s western suburbs, as its place of business, and its address for service. Mrs Smith applied for a merchant facility for credit card processing, and obtained a local telephone number and a 1300 number for her business.
Product range and suppliers
Mrs Smith purchased some products from overseas suppliers to trial their suitability for her to sell in Australia. She names 3 American suppliers of skincare and supplements of whom she enquired about distribution rights. It appears the first product she subsequently distributed in Australia was a foot pad product for help to detoxify the body called ‘Detoxi‑Pad’, supplied by a Japanese company, Kenrico.
From 2004, the partnership sold a number of third party skincare products, and also bath salts and soaps which Mrs Smith manufactured out of her home. In 2005, Mrs Smith engaged a United States skin care manufacturer to manufacture and package for Active Skin a range of skincare products under the name Active Skin and on which the AS flower mark was depicted. These Active Skin skincare products included cleansers, toners, moisturisers, gels and serums, and masks. A page of a product brochure from around this time depicts the Active Skin product range as comprising some 13 hyaluronic water based skincare products.
Mrs Smith states that she entered into a total of 6 exclusive distribution agreements with overseas companies in 2004. In cross‑examination, Mrs Smith confirmed that 5 of the agreements had ceased, or significantly narrowed in scope. She was able to recall one exclusive distribution agreement ceased in 2010 (Hanson, a US skin care supplier), but was unable to recall when the others ended and whether they continued as at the Priority Date.
Marketing activities in 2004 - 2006
Mrs Smith gives evidence of the activities Mrs Smith and her husband undertook for Active Skin’s business in its early years (I infer from 2004 to 2006) – cold calling and visiting health food stores, pharmacies and beauty salons in Sydney, and Canberra, weekends walking around some of Sydney’s inner west suburbs doing residential letter box drops. She retained an unidentified number of casual sales representatives, mostly students, to cold call, visit and sell to similar businesses in regional areas, naming Northern New South Wales, Brisbane and the Gold Coast, and Melbourne.
Mrs Smith states that all the advertising material she used to promote her Active Skin business featured her business telephone numbers, and that she answered telephone enquiries and other calls with the name ‘Active Skin’. She states that all the advertising material features one or more of the Active Skin trade marks (although not all the advertisements in evidence do so).
Magazine and radio advertising in period 2004 to 2006
Mrs Smith gives evidence that in 2004 to 2006 she placed advertisements in a variety of publications and directories to promote ‘the Active Skin Products’ that is, third party products she distributed, and her own brand products for the period 2004 to 2006. Mrs Smith lists some 37 publications, in which she attests placing advertisements (from once, to 9 instances, depending on the publication) over that period. Of those, 18 advertisements are corroborated in the exhibited documents. I return to Active Skin’s magazine advertising to the Priority Date below.
Mrs Smith attests that she placed a 30 second advertisement “featuring Active Skin and my business telephone number” on the Melbourne radio station JOY94.9, which played approximately 80 times from 21 August to 20 November 2004. She provides no transcript of the advertisement, nor details of broadcast time of day, frequency, or relationship to programming.
Incorporation; Active Skin from 2006
In 2006, Mrs Smith and her husband incorporated their partnership as Active Skin Pty Ltd. As I have said above, Mrs and Mr Smith are each a director and shareholder of Active Skin. Mrs Smith is also the company secretary.
Active Skin business operations
From 2004 to date Mrs Smith has conducted Active Skin’s business out of the family home, in a western suburb of Sydney. Whilst in cross‑examination Mrs Smith stated that Active Skin also had an office in Surry Hills during 2006, Sydney, she was extremely vague about it.
No street address was ever given in any advertisements, nor did any customers or suppliers between 2006 and 2015 ever request to visit Active Skin. Active Skin has never operated a retail outlet (I refer to pop-up stalls in shopping centres below), nor, save for the single reference to the above office, has it had the need for any business premises other than the Smith family home.
Mrs Smith is responsible for the products, supply of the products and advertisements. Mr Smith works full time as a consultant engineer. He is responsible for the accounting side of the business. Mrs Smith sources the products, receives supplies of the products Active Skin sourced, receives and processes orders (by telephone, mail, email, and since late 2013, also by the company’s website), packages the products ordered, and sends them to customers (stockists and consumers), in each case, from her home.
Customers, stockists and products
Active Skin provided a customer list for 30 January 2006, and a list of stockists (health stores, pharmacies, other stores) that is a subset of that list. There is no other customer list, or total numbers of customers, or of stockists. Otherwise, save as possibly may be gleaned from interrogating bundles of some individual invoices exhibited by Mrs Smith, there is no evidence of the geographic extent of customers, or the quantum of transactions in any period.
Mrs Smith stated that the core of Active Skin’s business was skincare and cosmetics. Mrs Smith produced an Active Skin product list for the period 2004 to 2006, then comprising approximately 100 products - third party products she distributed, and her own brand bath salts and soaps and skincare products (the latter, US manufactured). Aside from a handful of product/new product brochures (2005, 2006, undated - query 2007), a handful of sales flyers and special pricing offers (2 for 2006 and an order form, one for each of 2008, 2010, 2011), a 2009 wholesale price list (approximately 80 products), and some third party brochures (by name, it appears some 7 third parties/brands), and two undated ‘Active Skin’ single/ double product brochures, there is otherwise no evidence of the number or range of its products.
Limited records
Mrs Smith gave evidence that the records exhibited to her affidavit were the entirety of records that the business had been able to locate.
In her written evidence Mrs Smith explained her lack of documentation in the period before 2006 on the passage of time, and said that the documents she had located were examples of the advertisements placed, the brochures and marketing material she distributed, and the customer call sheets used. Mrs Smith explained that most of her records relating to the casual sales representatives used in 2004 – 2006 to cold call and sell her products in the regional areas – a box of records stored under her home - were destroyed by water damage caused by a leaking hot water tank.
In her affidavit she does not say that the ‘sample’ documents she exhibits from subsequent years are incomplete, or provide any similar or other explanation. In cross‑examination about the lack of production of annual product lists, however, she said a lot of records were lost when a water system blew up, years ago.
Evidence of sales
Sporadic invoices and orders exhibited by Mrs Smith comprise the full extent of Active Skin’s evidence of sales made by the business. Active Skin did not seek to tally these up, nor provide any assistance to the Court in this regard.
Of the bundle of invoices produced for the period 2004 to 2006, Mrs Smith deposes that “given the passage of time, these are not all the invoices issued during the period but the ones I have been able to locate”. Of the invoices produced for the years 2006 to 2015, Mrs Smith states “[the invoices produced] are a sample of some invoices issued by [Active Skin] for the sale of the Active Skin Products for the years noted”.
In cross‑examination Mrs Smith conceded that Active Skin did not make enquiries of other records in its possession, custody, power or control, and within its ability to put before the Court. Further, there was no evidence of sales from Active Skin’s website (since 2013), and no evidence of website traffic (see below). Mrs Smith conceded that she did not make any enquiries of the number of eBay sales (since June 2018), Etsy sales (since 2020), or the number of Amazon sales (since June 2018) that Active Skin made via those platforms, which sales Mrs Smith states occurred after the Priority Date, in any event.
Mrs Smith acknowledged that advertising expenditure and sales information was provided by Active Skin to its accountant each year, that the accountant prepared annual accounts, including profit, loss and income information, which Mrs and Mr Smith signed, as directors. The company has had the same accountant since 2006.
Yey submits that in the circumstances, the Court should infer that additional sales figures and total advertising expenditure would not have assisted Active Skin (in accordance with the principle in Jones v Dunkel (1959) 101 CLR 298; [1959] HCA 8; and Lord Mansfield’s dicta in Blatch v Archer [1774] EngR 2; (1774) Cowp 63 at 65; and referring to the recent discussion by Lee J in Quintis Ltd (subject to Deed of Company Arrangement) (ACN 092 200 854) & Ors v Certain Underwriters at Lloyd’s LondonSubscribing to Policy Number B0507N16FA15350 & Ors [2021] FCA 19 at [252]–[265].
Yey submits that in applying that inference, the Court should not infer or assume that Active Skin’s sales figures and total advertising expenditure were greater than the totals able to be ascertained from the documents in evidence, as to do so would be to assume that there is further evidence that would have assisted its case. In circumstances where Active Skin at all times has been represented by experienced intellectual property solicitors, both before the Registrar, and in this Court, Yey’s submission has considerable force.
The invoices and orders exhibited reveal a total of 235 invoices for the 12 year period from 2004 to the Priority Date, generating total sales of $64,120.16 (inc GST).
The largest number of sales (by number of invoices and orders) Active Skin made was in 2004, with a total of 36 sales; the largest total sales revenue Active Skin received in a year was $9,815.87 (inc GST) in 2010, with sales of between $6,000 and $7,000 per annum in each of the preceding 2 years, and the 2 following years. Total sales made in 2013, 2014, and 2015 (encompassing the Priority Date), were $3,175.77, $2,555.90, and $1,342.62 (including GST), respectively. There is no evidence that any sales were made in 2016 or 2017. Very few sales were made thereafter. It is reasonable to conclude that the Active Skin business was declining steeply, and that as at the Priority Date sales were very few.
Pop-up stalls in shopping centres
Mrs Smith gives evidence that for various short periods between 2006 and the Priority Date, Active Skin operated pop‑up stalls/small kiosks at various shopping centres in Sydney, and for periods between 2006 and 2008, also in Tweed Heads, with licences ranging from one day, to three months. Active Skin operated one stall at a time. Mrs Smith attended and operated that stall on each occasion, and Mr Smith helped out when he was free.
Mrs Smith states she placed signage and banners displaying the Active Skin name and trade marks on these stalls. She does not specify which of the Active Skin trade marks were displayed, nor what products were promoted. There is a photograph in evidence of a stall at a shopping centre in May 2012. The signage appears to be a full height pull up/pull‑down banner, depicting the words ‘Active Skin’.
Active Skin Website
Mrs Smith gave evidence that she launched Active Skin’s website in around October or November 2006 after receiving complaints from customers about the time it took to receive information about Active Skin’s products. She obtained the domain recording her and Mr Smith as registrants.
From 2006 to 2013, the extent of the Active Skin website was a landing page (content limited to a statement) directing customers to call or email ‘Active Skin’ if they wished to place an order. No business address was given. Mrs Smith’s recollection of the website prior to 2013 was not clear. In cross‑examination she accepted that until 2013, the website remained a landing page, and there was no link to a product list or brochure. The evidence shows that as at 16 March 2010, and until at least 30 April 2013, the site included a notice that Active Skin “do not sell our products via the internet, therefore, if you would like to obtain further information on our unique & exclusive range of products please contact us by:” gave telephone contact details and the email address ‘[email protected]’.
At the end of 2013, a redeveloped Active Skin website was launched via which retail purchases (but not purchases by stockists) could now be made. There was no evidence of the number of sales, or the revenue generated from retail sales from the Active Skin website.
There was no evidence of traffic received by the Active Skin website. Mrs Smith’s oral evidence was that she did not know this information. She had not made enquiries of Active Skin’s external IT personnel responsible for the website to provide this information.
Print and radio advertising
Between 2004 and the Priority Date, Active Skin placed advertisements in various local newspapers and publications, and lifestyle, skin care, wellness, and beauty magazines. Mrs Smith was unable to locate records of all of the advertisements she says Active Skin placed during this period. I have referred above to the print advertising in the period 2004 to 2006. The evidence shows that there were a series of advertisements placed in 2004, and the number of advertisements thereafter reduced.
There is no schedule of advertising spend, no identification of the page of the advertisement or section within the publication, and only partial corroboration (by exhibiting instances of advertisements) of her claims as to the placement and content of the advertisements over the period.
The advertisements instanced vary from strip, to one eighth page, and to some full page, advertisements. Reviewing those advertisements, many, if not most of the advertisements are for third party products rather than Active Skin labelled products. Not all advertisements depict an Active Skin trade mark. Where an Active Skin trade mark is depicted in an advertisement commonly at the foot. It predominantly occupies a small portion of the advertisement space, indicates Active Skin as distributor.
The kind of publication in which Active Skin advertised evolved over the course of 2007 – 2009 to health and well-being magazine publications, whilst the frequency of its advertising reduced. None of the number of advertisements each year, the number of publications, and the diversity of publications was maintained or built upon. From June 2009 to May 2013, the principal magazine in which Active Skin advertised was ‘Wellbeing Magazine’. A perusal of the advertisements in that publication reveals that for the most part, the Active Skin trade marks are not promoted, and that the reference to the company is in small type, and as the company.
Between 2011 and 2015, Active Skin placed very few advertisements. Only one magazine advertisement was placed in FY 2014, and one in FY 2015, in ‘Good Health Magazine’. The only references to Active Skin in either year was in the company name. In 2015, no advertisements were placed prior to the Priority Date.
Other marketing
In or around 2009, Mrs Smith purchased 2 magnetic car label (decals) depicting the Active Skin name and 1300 number. She affixed one to her car door, and provided the other to a colleague who provided contract services for Active Skin in Brisbane and Northern News South Wales from time to time for use on her car.
Active Skin has had business stationery featuring the name and Active Skin trade marks over the years since 2004. Mrs Smith’s evidence is that from 2013 onwards, all Active Skin sales were shipped in an Active Skin satchel, bearing the Active Skin name and website details. An undated photograph of one of these satchels is in evidence. As it is undated, I do not place great weight on this evidence.
Some social media presence
Active Skin has had a Facebook profile since 2013, with a first post on 26 October 2013 and about 5 before the Priority Date, and since 2018, an Instagram profile. Mrs Smith exhibits a handful of posts from these accounts. The Facebook profile is ‘ActiveSkin’; that on Instagram appears to be ‘Activatedskin’.
Post Priority Date
Mrs Smith gives evidence that after the Priority Date, since around June 2018, Active Skin has offered for sale and sold products through an online eBay store, and online via Amazon. Since early 2020 it has also offered for sale and sold products online at Etsy. Printouts of some of Active Skin product offerings on those online stores as at May 2020 are exhibited. No evidence of any of Active Skin’s sales made through the eBay store, Amazon store, or Etsy have been produced. Given the lack of evidenced sales, and the sporadic nature of the conduct described, it does not assist.
Conclusion on Active Skin’s evidence – insufficient to establish a reputation
The import of Mrs Smith’s evidence is that the Active Skin business at all times, and in all respects, has been a very modest affair. The magazine advertising evidence, on which Active Skin placed substantial reliance, shows that the advertising effort dwindled considerably over time to almost nothing at the Priority Date. Facebook posts were minimal. The sales evidence (to the extent there is any) similarly, shows a steep decline. To the extent that any pattern can be discerned in the product range offered - whether third party or own brand - (of which little was evidenced – the evidence is that it too declined considerably in size from 2006 to the Priority Date. To the extent that the sales and marketing evidence discloses a customer base, it was extremely small as at the Priority Date.
Yey submits that the omission to lead any evidence of Active Skin’s sales history is significant. It submits that the absence of such evidence, which is typically a critical pillar of any assertion of reputation where sales were in fact made in Australia, has the consequence that Active Skin cannot establish, on the evidence, that it had any reputation of any significance at any time between the commencement of its business through to the Priority Date. I agree.
The limits and insubstantiality of Active Skin’s evidence of use, and the paucity of the kind and quantum of evidence which is commonly adduced where reputation is sought to be established, as discussed in the authorities to which I have referred, is evident from the above examination of Active Skin’s business activities. As I summarised at [121] –[125] above, I consider that at most there might be some de minimus consumer recognition of Active Skin, extant as at the Priority Date. If any, it was as a supplier of an extremely small number of products, the majority of which, if not all by the Priority Date, were promoted under other names than Active Skin. To the extent that there may have been any consumer recognition generated by any activity in the first years of Active Skin’s business, or use thereafter. The evidence does not establish it had any longevity to bear on the overall circumstance as at the Priority Date.
section 60 ground of opposition
I have concluded that at the Priority Date, Yey had acquired a reputation in Australia in the Yey trade marks – activeskin – amongst a substantial or significant proportion of consumers of skincare, cosmetics, and beauty products, and in the skincare, beauty and cosmetics industry more broadly.
Goods and services have a close nexus
I have discussed the AS Goods and Services above. I consider that there is a close nexus between those specified goods and services and the online retailing services of skincare and cosmetics, and the broader reputation in the skincare, beauty and cosmetics industry in relation to which I have concluded Yey has established a reputation. The class of consumers for the retailing of skincare and cosmetic products is very largely the same as the class for the products themselves. I have concluded that Yey has a reputation more broadly in the skincare, cosmetics and beauty industry. This industry is the same class of consumers as the consumers for the specified services in class 35: see above at [68]-[70]. These close similarities between goods and services are relevant factors which I have taken into account.
Trade marks are very similar
It is not in dispute that each of the trade marks of the Active Skin Applications and the Yey trade marks comprise ‘active skin’, presented variously as the one word, as two word components comprising the one term, or in a stylised or ‘fancy’ form – the logo versions - in which the essential features, and the dominant visual cues are those two word components. The Active Skin Applications and the Yey trade marks are very similar trade marks, substantially identical, or deceptively similar. As the authorities establish, the high level of similarity of the trade marks is a factor which I take into account in determining the grounds of opposition pressed.
Active Skin does not have a concurrent reputation as at the Priority Date
Active Skin asserted use since 2004, and concurrent use of Active Skin trade marks. As I have said above, I have concluded it has not substantiated its assertions of a relevant use and reputation as at the Priority Date. Use of any of the Active Skin trade marks does not establish any significant reputation as at the Priority Date. It follows that the overall circumstance pertaining as at the Priority Date in which I determine the opposition does not comprise the existence of the asserted reputation on the part of Active Skin in its Active Skin trade marks, or any of the Annexure C registrations.
Active Skin Applications – specified goods, Class 3
The concept of retailers producing and supplying their own brand products as well as retailing third party products is long standing, as is the concept of manufacturers also retailing their products, including skincare and cosmetics. Examples include David Jones, Woolworths, Coles, Mecca, and Aesop, among others. Having regard to the above principles I have considered in relation to s 60, I consider that because of Yey’s reputation in its trade mark activeskin, the use of either of the Active Skin Applications in relation to the specified class 3 goods – which I refer to as cosmetics – is likely to deceive or cause confusion. It is likely that consumers would be reasonably caused to wonder – and conclude – that ‘ActiveSkin’ branded cosmetics were a “home brand” or private label from Yey, the online retailer, activeskin. Consumers, and other brand owners, are likely to think that Yey is producing, distributing and retailing its own brand of cosmetics, expanding its activities.
Active Skin Applications – specified services, Class 35
Because of Yey’s reputation in its trade mark activeskin, having regard to the above principles I consider that the use of either of the Active Skin Applications in relation to the specified class 35 services (see my discussion at [68]‑[70]) is likely to deceive or cause confusion. The cosmetics industry and consumers of cosmetics might reasonably be caused to wonder – and conclude - that a business or entity using the trade marks of either the Active Skin Applications – branding themselves ‘ActiveSkin’, or otherwise using the trade mark to distinguish their services - which engages in the distribution of cosmetics, creams, serums, supplements and vitamins, or the distribution of advertising material or prospectuses for those products, or samples of those products, is affiliated or associated with Yey, the online retailer, activeskin. By way of example, industry and consumers are likely to think that activeskin, the online retailer of skincare and cosmetics, has extended its activities to distributing products, advertising materials and samples for the brands it retails.
I am not persuaded by the lack of evidence of any deception or confusion – before or at the Priority Date, or since - that there would be little likelihood of confusion arising if the Active Skin Applications were to proceed to registration. First, as I have said, s 60 of the TM Act is concerned with notional use, not the actual use of the trade mark applicant, and secondly, Active Skin’s actual use and market presence under or by reference to any Active Skin trade mark was historical and extremely limited, at most de minimus, in the period leading to the Priority Date, at the Priority Date, and afterwards. In the circumstances, the lack of sales evidence is determinative. Whilst Yey had been an active and significant online retailer, for 9 years before the Priority Date establishing and maintaining its reputation in the Yey trade marks.
Conclusion on s 60 Ground of opposition
For the above reasons, I have concluded that the grounds of opposition under s 60 of the TM Act has been established by Yey. I have concluded that Yey has established that, at the Priority Date – 22 April 2015, and at the filing date of the 979 mark, 24 March 2015, it possessed a significant reputation in Australia in its activeskin trade mark, among consumers of skincare and cosmetics, and other persons in the cosmetics industry. I consider that because of that reputation in its activeskin trade mark, allowing the Active Skin Applications to proceed to registration is likely to deceive or cause confusion.
As I have found that the ground of opposition under s 60 of the TM Act has been established, it is not necessary that I determine the ground of opposition under s 42 of the Act. However, for completeness, I turn to the s 42 ground of opposition.
SECTION 42 GROUND OF OPPOSITION
I have set out at [64] the representations Yey contends would arise by use of the Active Skin Applications, in contravention of the ACL.
As made clear by the Full Court in TPG Internet, the central question to be considered is whether the conduct, as a whole, would lead, or is likely to lead a person exposed to the conduct into error. For the reasons I have said in relation to the s 60 ground of opposition and those that follow, I am satisfied that Yey has made out its ground of opposition under s 42(b) of the TM Act. If the Active Skin Applications were to proceed to registration, it would be likely that the use of each of them would be likely to mislead or deceive consumers of cosmetics, skincare, and beauty products, – the class 3 goods – the consumers of class 35 specified services.
In determining whether there is a real, or not remote chance or possibility of misleading or deception, I have had regard the similarity of the Active Skin Application trade marks and Yey’s trade marks, and to the similarity of the goods and services sought to be covered by the Active Skin Applications, and the services provided by Yey.
Contrary to Active Skin’s submission, I am concerned with conduct that is deceptive or misleading, not whether any deception that results from that conduct is intentional: TPG Internet at [22(c)].
I am satisfied that allowing the Active Skin Applications to proceed to registration would result in consumers being, or be likely to be misled or deceived that Yey has commenced manufacturing and offering for sale an activeskin ‘home brand’ product line, and has expanded beyond online retailing of cosmetics, to distribution services, as I have said in relation to s 60 above.
I am satisfied on the evidence before me that Yey has established its s 42(b) ground of opposition.
disposition
I am satisfied that Yey has made out its grounds of opposition in respect of each of the Active Skin Applications under each of s 60 and s 42 of the Act. It follows that Active Skin’s appeal should be dismissed. Registration of the Active Skin Applications is refused.
The parties indicated that they may wish to be heard on costs. I will give the parties an opportunity to confer and propose a timetable for the determination of costs. Accordingly, in relation to costs I will stand the proceeding over to a date to be fixed.
I so order.
I certify that the preceding one hundred and eighty-eight (188) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 25 October 2022
Annexure A – The Active Skin trade mark Applications
Mark and number
Classes and specifications
Date
1682979
Class 3: Skincare cosmetics; Skincare preparations (cosmetic); Beauty care preparations; Beauty care products; Beauty creams; Beauty face packs; Beauty gels; Beauty masks; Beauty milks; Beauty preparations; Beauty products; Distilled oils for beauty care; Non‑medicated beauty medication; Non‑medicated skin care beauty products; Products for beauty care; the aforementioned goods being cosmetics
Class 35: Distribution of advertising material; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of prospectus; Distribution of prospectuses; Distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins
24 March 2015
activeskin
1688858
Class 3: Anti‑sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the eyes; Colour cosmetics for the skin; Cosmetics; Cosmetics for animals; Cosmetics for bronzing the skin; Cosmetics for eyebrows; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for skin tanning; Cosmetics for suntanning; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of mascara; Cosmetics in the form of milks; Cosmetics in the form of nail polish; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics in the form of rouge; Cosmetics preparations; Cosmetics to remove pigmentation marks; Essential oils for use in cosmetics; Eyebrow cosmetics; Facial wipes impregnated with cosmetics; Hair cosmetics; Liners (cosmetics) for the eyes; Milks (cosmetics); Moisturisers (cosmetics); Nail base coat (cosmetics); Nail enamel (cosmetics); Nail enamel remover (cosmetics); Nail gloss (cosmetics); Nail hardeners (cosmetics); Nail polish removers (cosmetics); Nail preparations (cosmetics); Nail revitalising lotions (cosmetics); Nail tips (cosmetics); Nail treatment creams (cosmetics); Nail treatment gels (cosmetics); Nail treatment lotions (cosmetics); Nail varnish remover (cosmetics); Nail varnish removing preparations (cosmetics); Night creams (cosmetics); Non-medicated cosmetics; Nourishing creams (cosmetics); Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Paper hand towels impregnated with cosmetics; Preparations for removing cosmetics; Skincare cosmetics; Sprays for use on the body (cosmetics); Sun barriers (cosmetics); Sun blocking cream (cosmetics); Sun blocking gel (cosmetics); Sun blocking lipsticks (cosmetics); Sun blocking lotions (cosmetics); Sun blocking oils (cosmetics); Sun blocking preparations (cosmetics); Sun creams (cosmetics); Sun gel (cosmetics); Sun lotions (cosmetics); Sun milk (cosmetics); Sun protecting creams (cosmetics); Sun protection oils (cosmetics); Sun protection products (cosmetics); Sun protectors for lips (cosmetics); Sun screen preparations (cosmetics); Sun screening preparations (cosmetics); Sun skin care products (cosmetics); Sun-tanning preparations (cosmetics); Suntan lotion (cosmetics); Suntan milk (cosmetics); Suntan oils (cosmetics); Suntan preparations (cosmetics); Tanning compositions (cosmetics); Tanning creams (cosmetics); Tanning oils (cosmetics); Tanning preparations (cosmetics); Textile pads impregnated with cosmetics; Tints (cosmetics); Tissues impregnated with cosmetics; Toilet napkins of cellulose impregnated with cosmetics; Toilet napkins of cellulose wadding impregnated with cosmetics; Toilet napkins of paper impregnated with cosmetics; Toy cosmetics (usable); Varnishes (cosmetics); Skincare preparations (cosmetic).
Class 35: Distribution of advertising material; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of prospectus; Distribution of prospectuses; Distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins
22 April 2015
Annexure B – Yey’s registered trade marks and specifications
Mark and number
Classes and specifications
Date
1094648Class 35: Online retail and wholesale of goods namely haircare products, skincare products, cosmetics, make up and perfumes
Class 44: Beauty and skin care services; beauty salons; skin treatments; massages
17 January 2006
activeskin
1688828
Class 35: Online discount services being the retailing and wholesaling of goods namely haircare products, skincare products, cosmetics, make up and perfumes; Online retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies namely haircare products, skincare products, cosmetics, make up and perfumes; online retailing of goods namely, haircare products, skincare products, cosmetics, make up and perfumes
Class 44: Consultancy services relating to personal appearance (hair, beauty, cosmetics) being beauty and skin services
22 April 2015
Annexure C – Active Skin’s registered trade marks and specifications
Mark and Number
Classes and specifications
Date
1127968
Class 3: Cosmetics
5 August 2006
Active Skin
1137007
Class 3: Cosmetics
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)
22 September 2006
1307342
Class 3: Cosmetics; cosmetics for personal use; cosmetics for the treatment of dry skin; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics preparations; skincare cosmetics
23 July 2009
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