Allegran Holdings France SAS

[2018] ATMO 84

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReTrade mark application numbers 1780990 (3, 5) – JUVEDERM (logo) – and 1780999 (3) – JUVEDERM – in the name of Allergan Holdings France SAS

Delegate:  Robert Wilson

Representation:                  Applicant: Nigel Robb of AJ Park

Decision:  2018 ATMO 84

Trade Marks Act 1995 (Cth) – ex parte hearing – revocation -- whether acceptance of the applications should be revoked on basis of convention claim – convention claim invalid – priority not claimed using first application in convention country – acceptances not to be revoked

Background

1.     On 4 July 2016 Allergan Holdings France SAS (‘the Applicant’) filed applications (‘the Allergan Applications’) to register the trade marks detailed below:

Application Number:

1780990

Goods :

Class 3: Cosmetics, namely preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals

Class 5: Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin; biological dermal implants, namely, visco-supplementation solutions for filling wrinkles, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals

Trade Mark:

Application Number:	1780999
Goods :	Class 3: Cosmetics, namely preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals
Trade Mark:	JUVEDERM

2. The applications were examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 26 October 2017 the applications were advertised as accepted. The priority date of the Allergan Applications is the date on which they were filed, being 4 July 2016.

3.     On 14 October 2016 Dermavita Company (Limited Partnership) Parseghian & Partners (‘Dermavita’) filed the application detailed below (‘the Convention Application’). 

Application Number:	1802817
Goods :	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; Cosmetics for professional use and for use by the end consumer; Cosmetic creams, emulsions, lotions, liquids, solutions, milks, gels and oils for the skin (of the face, body, hands, feet, and neck), oils for cosmetic purposes; cosmetic kits; cosmetic products and preparations for skin care; cosmetic masks; cosmetics, cosmetic preparations for slimming purposes; cosmetics for exfoliation, cosmetic peelings; cosmetics for smoothing the skin; cosmetics for hair conditioning and care of the hair and scalp; cosmetic sunscreen products and preparations (emulsions, lotions, milks, gels, oils, liquids); cosmetic preparations for skin whitening, skin whitening creams; bleaching preparations (decolorants) for cosmetic purposes; cosmetics for lightening the skin; cosmetics for perfecting the complexion; anti-wrinkle cosmetics, skin rejuvenation cosmetics, skin lightening cosmetics; cosmetic preparations for skin hydration; cosmetics for toning the skin; essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations (‘the Convention Goods’)
Trade Mark:	Juvederm	(‘the Convention Trade Mark’)

4. Dermavita claimed a convention priority date of 22 April 2016 under s 29 of the Act based on Norwegian trade mark application 201606042 (‘the Norwegian Application’). A copy of the Norwegian Application is not before me, but as Dermavita is relying on it to support its Convention claim it is reasonable to assume that the Norwegian Application is for ‘Juvederm’ (‘the Norwegian Trade Mark’).

5. On 1 September 2017 IP Australia sent correspondence to the Applicant indicating its intention to revoke the acceptances of the Allergan Applications based on the Convention Application—as provided for by s 38 of the Act. The correspondence indicated that the Convention Application gave rise to a ground for rejecting the Allergan Applications under s 44 of the Act. In the words of that correspondence:

The trade marks are deceptively similar as they all have the significant element of the word JUVEDERM and both have broad claims for class 3 cosmetics. In addition, your Class 5 claims for preparations for the skin are similar to the earlier trade marks claims for Class 3 preparations for the skin.

6.     The Applicant requested to be heard on the intention to revoke its applications. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 20 March 2018. The Applicant was represented by Nigel Robb of AJ Park. Mr Robb’s oral submissions were supplemented by written submissions provided prior to the hearing.

7.     Following the hearing, and after considering the Applicant’s submissions, I arrived at a preliminary finding that the Allergan Applications should not be revoked for reasons discussed below. As such a decision had the potential to affect Dermavita’s rights I  afforded Dermavita the opportunity to be heard in the form of written submissions in response to the Applicant’s written submissions. Dermavita provided its response on 5 April 2018. The submissions were prepared on behalf of Dermavita by Theodore Doucas of Zone Law.

Discussion

8.     Mr Robb on behalf of the Applicant submitted that the Allergan Applications should not be revoked because Dermavita’s convention claim is invalid. The claim is invalid, submitted Mr Robb, because the Convention Application:

is not the first application Dermavita has filed for the trade mark JUVEDERM. Dermavita has filed applications for the same trade mark, covering the same or comparable goods, since at least as early as 18 March 2015.

9. Section 29 of the Act is reproduced below:

Section 29 – Application for registration of trade mark whose registration has been sought in a Convention country—claim for priority

(1)If:

(a)a person has made an application for the registration of a trade mark in one or more than one Convention country; and

(b)within 6 months after the day on which that application, or the first of those applications, was made, that person or another person (successor in title) of whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or services in respect of which registration was sought in that country or those countries;

that person or that person's successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations.

Note: for month see section 6.

(2)The priority claimed is for the registration of the trade mark in respect of the goods or services:

(a)if an application to register the trade mark was made in only one Convention country--from (and including) the day on which the application was made in that country; or

(b)if applications to register the trade mark were made in more than one Convention country--from (and including) the day on which the earliest of those applications was made.

(3)The regulations may provide for the filing of documents in support of a notice claiming priority and, in particular, for the filing of certified copies of any application for the registration of the trade mark made in a Convention country.

Note: for Convention country see section 225.

10.   According to the Explanatory Memoranda of the Trade Marks Bill 1995, section 29:

gives effect to certain provisions of the Paris Convention on the Protection of Industrial Property relating to trade marks. It enables a person to claim a right of priority for an application in respect of particular goods and/or services based upon an earlier equivalent application made in a Convention country. … An application made under this clause may have more than one priority date, in respect of different goods or services, where multiple applications in Convention countries have been made. Each date claimed must be that of the earliest corresponding application for the particular goods and/or services. For example, the Australian application could specify radios, televisions and cameras. A different priority date for each set of goods may be claimed for the Australian application on the basis of three different applications made in Convention countries, each covering one of the sets of goods. The date of each Convention application is the relevant priority date for the relevant set of goods. Alternatively, more than one Convention application may have been made for, say, radios. In that case, the earliest of those applications must be the one relied on for the purposes of the Australian priority claim. (emphasis added)

11. My reading of s 29 and the explanatory memorandum, satisfies me that where an applicant has applied to register the same trade mark in more than one Convention country for particular goods and/or services they can rely only on the earliest of those applications to support a claim for priority in Australia. The term Convention Country Application (‘CCA’) will be used in the remainder of this decision as a non-specific reference to an application to register a trade mark in a Convention country.

12.   Mr Robb provided, as an annexure to his written submissions, details of a trade mark application made by Dermavita in Bulgaria (‘the Bulgarian Application’). Details of that application are provided below. A ‘selective translation’ of the goods of the application was provided by Mr Robb:

Application Number:	2015136198N
Application Date:	18 March 2015
Goods :	[…] 13.   Abrasives; sandpaper; astringent substances for cosmetic purposes; alkaline solution; ammonia [volatile alkalis] [detergent]; antistatic preparations for household purposes; laundry finishing treatment agent; scenting agents [essential oils]; air fresheners; scented water; scented sticks; scented wood; flavoured substances for tarts and cakes [essential oils]; flavoured beverage supplements [essential oils]; almond soap; almond oil; almond milk for cosmetic purposes; badian essence; hair balsams; balsams, except for medical purposes; bleach; bergamot oil; beard dyes; hair dyes; barber's sharpening stones [astringents]; vaseline for cosmetic purposes; water for mouth rinsing, not for medical purposes; hydrogen peroxide for cosmetic purposes; moustache wax; shoe wax; wax for sewing threads; skin treatment waxes; volcanic ash for cleaning purposes; massage gel for non-medical purposes; teeth whitening gels; geraniol; lip gloss; glasspaper; makeup; eyelash makeup; disinfecting soap; pet deodorants; deodorants for people or animals; deodorising soap; decorative nail patches; decorative decals for cosmetic purposes hair removal wax; hair removers; detergents, except for production operations and for medical purposes; diamantine [finely crushed corundum] [abrasive]; diatomite [diatomaceous earth, tripoli] for polishing; flower extracts [perfumes]; essential oils; cedar wood essential oils; lemon essential oils; lime essential oils; etheric essences; jasmine oil; whitening paste; skin whitening creams; whitening preparations [lighteners] for cosmetic purposes; bleaching agents for treated skins; cleaning bleaches; bleaching salts; artificial eyelashes; artificial nails; dried rose petals [fragrances]; ionone [perfumes sector]; potassium hypochlorite; moulded toiletry soap; stones for smoothing and polishing; amber [perfume]; cosmetic colorants; cosmetic kits; cosmetic creams; cosmetic masks; cosmetic pencils; cosmetic bath preparations; cosmetic skin care products; cosmetic products for artificial eyelashes; cosmetic preparations for weight loss; cosmetics; cosmetics for eyebrows; cosmetics for animals; cleaning starch; skin preservers [brighteners]; soap tree bark for washing; corundum [abrasive]; whitening chalk; shoe cream; creams for processed skins; lipstick boxes; hair waving agents; henna [cosmetic paint]; wipes impregnated with a cleaning preparation; disposable wipes soaked with cosmetic lotions; wipes soaked with makeup removal preparations; lavender water; lavender oil; nail polish; polish removers; breather freshener strips; adhesives for cosmetic purposes; adhesives for fastening artificial eyelashes; adhesives for fastening wigs; volatile alkalis [ammonia] [detergent]; lotions for cosmetic purposes; hair lotions; after-shave lotions; lubricating substances for cosmetic purposes; oils for cosmetic purposes; oils for perfumes and fragrances; toiletry oils; cleaning oils; wintergreen oil; medical soap; mint for the perfumes sector; mint essence [essential oil]; metal carbides [abrasives]; eyebrow pencils; musk [perfumes sector]; non-medical bath preparations; cold-waving neutralisers; starch finishers for washing purposes; grease removal agents with the exception of those for production purposes; shoe wax; Cologne; fabric softeners [for washing]; bases for flower perfumes; dyes for cosmetic purposes; hair dyes; cotton wadding for cosmetic purposes; cotton pads for cosmetic purposes; laundry paraffin; parquet wax; perfumery products; perfumes; razor strop pastes; pumice; cloth sandpaper; cloth sandpaper with abrasive corundum; floor wax; polishing wax; polishing stones; polishing pastes; polishing preparations; polishing tools for teeth and for dentures; polish for furniture and flooring; creams for cosmetic purposes; cleaning chalk; cleaning preparations; tooth powders or pastes; non-slip wax for floors; protection against slippery liquids for floors; shoe polish; plant leaf shine preparation; shaving preparations; makeup preparations; sharpening preparations; preparations for smoothing out creases [starch]; hair straightening preparations; preparations for intimate hygiene for cleaning or scenting; hair curling preparations; decolouring preparations; cleaning preparations; fumigating preparations [perfumes]; preparations for unclogging drain pipes; paint removal preparations; floor wax removal preparations [cleaning preparations]; rust removal preparations; nail care preparations; preparations for cleaning dentures and teeth; wallpaper cleaning preparations; washing preparations; pre-wash preparations; preparations for the removal of limescale for household purposes; stain removal preparations; preparations for giving shine [lacquers]; makeup removal preparations; sun tan preparations [cosmetics]; grinding preparations; dishwasher drying agents; dry cleaning preparations; aloe vera preparations for cosmetic purposes; anti-perspirant preparations [cosmetics]; makeup powder; cleaning solutions; rose oil; soap; shaving soap; soap for cleaning textiles; anti-perspirant soap; anti-perspirant foot soap; safrole; silicon carbide [abrasive]; laundry blue; sunscreen preparations; washing soda for cleaning purposes; bath salts, not for medical purposes; hair spray; cleaning and scenting sprays for linen [sachets]; dry shampoos; toiletry talcum powder; incense; terpenes [essential oils]; turpentine for removing grease; turpentine oil for removing grease; vehicle windscreen cleaning fluids; eau de toilette; toiletries; cleansing milk; pressurised spray cans for cleaning purposes; paper-basked sandpaper with abrasive corundum; paper-baked sandpaper; polishing paper; heliotropin; flower-scented preparations for the household [laundry]; red polishing power; lipstick; shampoos; pet shampoos; emery [ ... ]  (‘the Bulgarian Goods’)
Trade Mark:	JUVEDERM	(‘the Bulgarian Trade Mark’)

14. I am satisfied that Bulgaria is a Convention country for the purposes of s 29.

15. Section 29 refers to ‘an application for the registration of a trade mark in one or more than one Convention country’ (emphasis added). It is agreed by the parties, and I concur, that the first CCA is the first application for the same trade mark. The Norwegian Trade Mark is ‘Juvederm’. The Bulgarian Trade Mark is ‘JUVEDERM’. Mr Robb’s submissions were essentially that an application for the trade mark ‘Juvederm’ is an application for ‘JUVEDERM’ for the purposes of s 29. Mr Doucas, on the other hand, submitted that it is not. Mr Doucas submitted that consideration of the wording of the relevant parts of the Paris Convention and of s 29 of the Act mean that ‘the Norwegian application for the mark Juvederm was the first time that the same mark was filed’; in essence, that the different capitalisation means that the two trade marks are not the same trade mark.

16. Section 29 does not use judicially well considered terms such as ‘identical’, ‘substantially identical’ or ‘deceptively similar’ which would likely simplify the interpretation of the section. Rather it refers to ‘a trade mark’ and later ‘the trade mark’. The section is unclear whether a CCA must be for an absolutely identical trade mark, or perhaps one that is substantially identical. It is not necessary that I determine this question in this decision. We are dealing in this matter with word trade marks. The Bulgarian application is for the trade mark type ‘word’ as is the Convention Application. It is my view that trade marks of this type may be treated somewhat differently to other types of trade marks. In the case of word trade marks, differences in capitalisation are immaterial in deciding whether applications are for ‘the same mark’. In these circumstances, an application for ‘JUVEDERM’ is an application for ‘the same mark’ as an application for ‘Juvederm’. While those two trade marks are not strictly identical, they are, in my view, for the purposes of s 29 the same trade mark.

17. As a result of my findings in the preceding paragraphs, the Bulgarian Application was capable of supporting a claim of a right of priority in Australia. It is unnecessary for me to decide whether the Bulgarian Application is the earliest CCA made by Dermavita in respect of ‘JUVEDERM’ or ‘Juvederm’. The existence of the Bulgarian Application is sufficient to satisfy me that the Norwegian Application is not the earliest relevant CCA so it cannot be relied on by Dermavita to claim a right of priority in respect of the Convention Goods. I note, for the sake of completeness, that the Bulgarian Application is not able to support a convention claim in respect of the Convention Application because the Convention Application was not filed within six months after the day on which that application was made: as is required by s 29(1)(b).

Natural Justice and Procedural Fairness

18.   Mr Doucas submitted:

As the Registrar is exercising a discretion when making a decision under s 38 of the Act, the Registrar must take into account the rules of natural justice and procedural fairness.

19. Revocation of acceptance is provided for in s 38 of the Act. The section is only discretionary where it is found that there are grounds for revocation. Where, as in this case, it is found that there are no grounds for revocation it is not open to the Registrar to nevertheless revoke acceptance.

20.   Mr Doucas made submissions on the necessity for natural justice and procedural fairness in instances where a party’s rights may be adversely affected. He submitted:

[T]he ex parte process followed leading to the preliminary decision is procedurally unfair and cannot be safely relied upon to make a final decision adverse to Dermavita.

The applicable standards of natural justice and procedural fairness are not fixed but vary depending on the consequences of the decision being made, and the nature and resources of the decision maker. Here, the Registrar is well resourced and there is no reason why such standards should not  be upheld. …

Prior and Adequate Notice

Dermavita was not given prior and adequate notice of the decision.

Dermavita was given only 2 weeks’ notice that the Registrar was proposing to declare its convention priority to be invalid. In that time, it was expected to prepare and file substantive submissions on the validity of its convention claim.

Two weeks is a very short time to seek and receive instructions and prepare and file written submissions, particularly given the Easter break fell within the middle of those two weeks. The time frame is not adequate notwithstanding the best efforts of Dermavita.

Adequate Disclosure

Dermavita has not been given adequate disclosure to allow it to make effective representations.

We understand … the Hearing Officer conducted an ex parte hearing in respect of the intention to revoke.

Dermavita did not attend the hearing and so could not rebut any arguments made.

Even after been invited to file submissions on the point, Dermavita was not given a transcription of the hearing, so again is unable to comment on statements made at that hearing.

The reasonable opportunity to present the person’s case to a tribunal

Dermavita has not been given the reasonable opportunity to present its case or make representations. …

Although Dermavita has been afforded an opportunity to make submissions, this is in the face of a preliminary determination against it. As such this is inadequate compared to the opportunity to prepare and file evidence, file submissions and appear at a hearing it would have received in a properly contested hearing such as an opposition.

We submit this does not constitute reasonable opportunity given the importance of the matter at issue.

21.   On the strength of Mr Doucas’ submissions Dermavita was given the opportunity to be heard and a hearing was duly scheduled. In the end Dermavita decided not to attend the hearing nor ‘to take any part in these proceedings moving forward’.

Decision

22. I am satisfied that the convention priority date claimed by Dermavita in the Convention Application is invalid. That application does not, therefore, support a ground for rejecting either of the Allergan Applications on the basis of s 44. Consequently, the Allergan Applications should not be revoked.

Robert Wilson

Hearing Officer

Hearings and Oppositions

31 May 2018