Anastasia Beverly Hills, LLC v Pias Corporation
[2024] ATMO 123
•5 July 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Anastasia Beverly Hills, LLC to registration of trade mark application number 2003182 (classes 3, 8, 21, 41 and 44) – ANASTASIA MIARAY - in the name of Pias Corporation.
Delegate: | Timothy Brown |
Representation: | Opponent: Jarrod Lichtblau of Spruson & Ferguson Patent and Trade Mark Attorneys. Applicant: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys |
Decision: | 2024 ATMO 123 Trade Marks Act 1995 (Cth) and Trade Mark Regulations 1995(Cth) – opposition under section 52 – ss 42((b), 44/reg 4.15A, 58, 60 and 62A considered – s 44/reg 4.15A partially established – opportunity to amend – application not amended – trade mark refused. |
Background
This decision concerns an opposition brought under section 52 of the Trade Marks Act (Cth)[1] by Anastasia Beverly Hills, LLC (‘Opponent’) to the registration of the following trade mark:
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade mark number: 2003182
Trade mark: ANASTASIA MIARAY (‘Trade Mark’)
Filing date: 15 April 2019
Owner: Pias Corporation (‘Applicant’)
Goods and services: Class 3: Soap; hair lotions; cleansing milk; hair shampoos; cosmetic soap; perfumery; aromatics (essential oils); hair colorants; false eyelashes; cosmetic kits; cosmetics; cosmetic pencils; cosmetic creams; make-up removing preparations; depilatory preparations; depilatory wax; lotions for cosmetic purposes; eyebrow cosmetics; false nails; make-up powder; eyebrow pencils; tissues impregnated with cosmetic lotions; mascara; lip glosses; sunscreen preparations; wrinkle preventing cream; skin whitening creams; tooth whitening creams; acne cream; spot removing cream; dentifrices
Class 8: Curling tongs; cuticle nippers; hair-removing tweezers; pedicure sets; crimping irons; hand implements for hair curling; razor blades; razors, electric or non-electric; nail files, electric or non-electric; fingernail polishers, electric or non-electric; hair clippers for personal use, electric and non-electric; nail clippers, electric or non-electric; manicure sets, electric or non-electric; eyelash curlers; nippers; emery files; tweezers; scissors; blades (hand tools)
Class 21: Soap boxes; soap dispensers; soap holders; combs; comb cases; brushes; nail brushes; cosmetic brushes; toothbrushes, electric or non-electric; floss for dental purposes; cosmetic utensils; toilet cases; fitted vanity cases; toilet sponges; powder puffs; powder compacts; eyebrow brushes; perfume sprayers; cheek brush; eyeshadow brush; eyelash brush
Class 41: Educational services; provision of information about educational services; beauty arts instruction; provision of information about beauty arts instruction; teaching of beauty skills; provision of information about teaching of beauty skills; hairdressing instruction; provision of information about hairdressing instruction; arranging and conducting of beauty contests; provision of information about arranging and conducting of beauty contests; arranging, conducting and organization of seminars; providing online electronic publications, not downloadable
Class 44: Eyebrows beauty salons; health care; aromatherapy services; therapy services; hospices services; Turkish baths; beauty salons; massage; manicuring; visagists services; hairdressing salons; chiropractics; dentistry services; medical clinics; chiropractic surgery; plastic surgery
(‘Applicant’s Goods and Services’)
The Trade Mark was advertised for acceptance on 16 September 2019.
The Opponent filed a notice of intention to oppose registration of the Trade Mark on 15 November 2019, followed by a statement of grounds and particulars (‘SGP’) on 16 December 2019. The Applicant filed a notice of intention to defend the opposition on 6 March 2020.
The Opponent then filed evidence in support on 30 September 2022. The Applicant filed evidence in answer on 5 January 2023. The Opponent did not file evidence in reply.
Once the evidence stage ended, the Opponent requested an oral hearing. I heard this matter, as a delegate of the Registrar of Trade Marks on 22 March 2024. The Opponent was represented at the hearing by Jarrod Lichtblau of Spruson & Ferguson Patent and Trade Mark Attorneys and the Applicant was represented by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys.
Grounds, Onus and Relevant Date
The grounds of opposition nominated in the SGP were sections 42(b), 44, 58, 58A, 60 and 62A. During the hearing the Opponent advised that it did not press section 58A and I treat that ground as abandoned.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is 15 April 2019 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
Evidence in Support
Declaration of Claudia Soare, President of the Opponent, made on 28 September 2022 (‘Soare’), made on 28 September 2022, with Annexures CS 1 to CS-25, including Confidential Annexures CS-5 to CS-8, CS-11A, CS-17 to CS-20B and CS-20 to CS-25.
Declaration of Danielle Spath, employee of Spruson & Ferguson Patent and Trade Mark Attorneys, made on 29 September 2022 (‘Spath’) with Annexure DS-1.
Evidence in Answer
Declaration of Yoichi Matsumoto, Assistant General Manager of Corporate Planning of the Opponent, made on 28 December 2022 (‘Matsumoto’) with Annexures YM-1 to YM-6.
Opponent
The Opponent is a cosmetic business founded by Anastasia Soare in Beverly Hills in 1997. According to Soare, the Opponent is one of the fastest growing brands in the beauty industry. At present, the Opponent provides cosmetic and beauty services to over 25 countries, including Australia, New Zealand, the United Kingdom, USA and Canada.
The Opponent is the owner of the following Australian trade mark registrations (collectively, ‘Opponent’s Trade Marks’):
| Trade Mark No. | Trade Mark | Priority Date | Goods & Services |
| 1312136 | ANASTASIA BEVERLY HILL | 24 February 2009 (convention) 29 July 2009 | Class 3: Cosmetic preparations; cosmetics; eyebrow colors; eyebrow cosmetics; non-medicated preparations all for the care of skin, hair and scalp; eye-area moisturizers, gels, and creams Class 8: Eyebrow tweezers and eyebrow grooming scissors Class 21: Cosmetic brushes; stencils for applying make-up Class 44: Beauty salon services, namely hair removal, dressing and styling |
| 1399861 (IR 1058635) | ANASTASIA BEVERLY HILLS | 26 October 2010 | Class 3: Cosmetic preparations; cosmetics; eyebrow colors; eyebrow cosmetics; non-medicated preparations all for the care of skin, hair and scalp; cosmetics, namely foundation, concealer, pressed powder, blush, eye shadows, mascara, eyeliners, lip coverings, lipstick, lip gloss, lip liners, eyebrow color products, eyebrow pencils, eyebrow powder, eyebrow pomade, eyebrow gel; skin care products, namely facial moisturizers, eye creams, eye gels, eye-area moisturizers, eye area gels, eye-area creams, and facial serums Class 8: Eyebrow tweezers and eyebrow grooming scissors Class 21: Cosmetic brushes and stencils for applying make-up Class 44: Beauty salon services, namely hair removal, dressing and styling |
| 1754738 (IR 1289618) | 11 January 2016 | Class 3: Cosmetics Class 8: Eyebrow tweezers, eyebrow grooming scissors Class 16: Eyebrow stencils Class 21: Cosmetic brushes Class 44: Beauty salon services |
The Opponent has used the Opponent’s Trade Marks in Australia since 2006. The Opponent’s initial distributor in Australia was Fox Hairdressers and Day Spa (Fox Salon & Brows Pty Ltd). Annexed to Soare is a copy of the Opponent’s distribution agreement with Fox Salon & Bows Pty Ltd,[4] and copies of invoices from Fox Salon & Brows Pty Ltd dated 2006, 2007 and 2013.[5]
[4] Soare Confidential Annexure CS-7.
[5] Ibid Confidential Annexure CS-6.
Soare annexes examples of cosmetic product packaging bearing the Opponent’s Trade Marks.[6] Goods sold under the Opponent’s Trade Marks are sold through third party retailers, including Mecca, Adore Beauty and Sephora. The Opponent’s goods are also sold through the Opponent’s website at (‘Opponent’s Website’). In support, Soare includes the Opponent’s annual sales of goods bearing the Opponent’s Trade Marks in Australia from August 2017 to July 2022,[7] and a breakdown of sales of the Opponent’s products through the retailers Adore, Mecca and Sephora for the financial years 2019 to 2022.[8]
[6] Ibid Annexure CS-4.
[7] Soare Confidential Annexure 24.
[8] Ibid.
Soare attests that the Opponent’s Trade Marks have been promoted in Australia via various means, including through the Opponent’s Website, websites of third-party retailers, and the Opponent’s social media accounts. Annexed to Soare are extracts from both the Opponent’s Website and the websites of the party retailers,[9] as well as extracts from the Opponent’s Facebook page,[10] Twitter page,[11] YouTube account,[12] Instagram account,[13] and Pinterest account.[14] Other examples of advertising annexed to Soare are public relations reports from 2020 to 2022,[15] a spreadsheet detailing the media plan for a gift with purchase program with Nunn Media for February and March 2022,[16] and a market awareness survey conducted in 2022 by Ingenuity Research concerning the sales of the Opponent’s goods and services in Australia. Soare also includes the Opponent’s advertising expenditure from 2020 to 2022.[17]
[9] Ibid Annexures CS-10 to CS-16.
[10] Ibid Annexure CS-21.
[11] Ibid Annexure CS-21A.
[12] Ibid Annexure CS-21B.
[13] Ibid Annexure CS-21C.
[14] Ibid Annexure CS-21D.
[15] Ibid Confidential Annexures CS-20 to CS-20B.
[16] Ibid Confidential Annexure CS-19.
[17] Ibid Confidential Annexure 25.
Applicant
The Applicant was established in Japan in 1947 and deals in products and services in the beauty and healthcare industry. In 2004 the Applicant opened its first salon in Tokyo under a license agreement with the Opponent.
Matsumoto attests that the Opponent and the Applicant are known to each other with the Applicant having signed an exclusive sales agreement with the Opponent for the sale of the Opponent’s goods and services in Asian territories in 2006.[18] Matsumoto annexes a summary detailing the history of its partnership with the Opponent.[19] This summary states that the agreement between the parties was revised at the request of the Opponent in June 2017 to provide its own range of beautician techniques and products. At this point, the Applicant decided to create a new brand name and adopted the trade marks ANASTASIA MIARAY and ANASTASIA MAREMO. At present, the Applicant operates beauty salons in Japan and Thailand.
[18] Matsumoto Annexure YM-4.
[19] Ibid.
According to Matsumoto, the Applicant promotes its goods and services via YouTube. Matsumoto claims that the Applicant’s and Opponent’s videos co-exist on YouTube. Annexed to Matsumoto are extracts of YouTube search results showing both the Applicant’s and Opponent’s videos.
Discussion and Reasons
Section 44/Regulation 4.15A
Section 44 relevantly provides:
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Regulation 4.15A relevantly provides:
For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark ( applicant's trade mark ) in respect of goods ( applicant's goods ) must be rejected if:
(a)the applicant's trade mark is substantially identical with, or deceptively similar to:
(i)a protected international trade mark; or
(ii)a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the other trade mark in respect of the similar goods or closely related services.
I note that reg 4.15A is identical to section 44 but applies when the basis for the ground of opposition is a Protected International Trade Mark, such as trade mark numbers 1399861 and 1754738. Accordingly, to succeed under either ground, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar, or closely related to the Applicant’s Goods and Services.
The Opponent relies on the Opponent’s Trade Marks as the basis for this ground of opposition.
I note that the Opponent’s Trade Marks have earlier priority dates than the Trade Mark and are held in name of another person.
Comparison of Goods and Services
Section 14 provides:
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
Whether goods are of the same description depends on ‘whether the goods belong to the same of different trades’[20]. This is determined through consideration of a number of factors, including the nature of the goods,[21] the purpose for which the goods will be used,[22] and the trade channels through which the goods are bought and sold.[23] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.[24]
[20] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).
[21] Ibid.
[22] Ibid.
[23] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).
[24] (1954) 70 CLR 84, 94.
The Act does not define ‘closely related’ goods and services. Justice French noted in Registrar of Trade Marks v Woolworths:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[25]
[25] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37].
The Applicant’s class 3 goods all relate to cosmetic products. These goods are the same or similar to all of the cosmetic products specified in class 3 of the Opponent’s Trade Marks. Similarly, the Applicant’s class 8 goods are comprised of various hair dressing, nail or cosmetic apparatus. These goods are all the same or similar to the Opponent’s ‘eyebrow tweezers and eyebrow grooming scissors’ in Class 8.
The Applicant’s class 21 goods comprise a range of hair brushing utensils, eyebrow brushes, dentil utensils, dispensers, toiletry cases and soap boxes. The Applicant’s cosmetic, hair and eyebrow brushing utensils are the same, or similar the Opponent’s ‘cosmetic brushes; stencils for applying make-up’ in Class 21. I also consider cases for these products to be similar to the Opponent’s goods in class 21. I do not consider the remainder of the Applicant’s Goods in class 21 to be the same or similar to the Opponent’s Goods. These goods are for toiletry or dental purposes and have little in common with the Opponent’s cosmetic goods.
Regarding the class 44 services, I note that the Applicant’s services are comprised of a range of hair dressing, beauty, medical, therapeutic and surgery services. The Opponent’s services in class 44 are ‘beauty salon services’, which I consider to be the same or similar to the Applicant’s beauty salon, manicure, visagists, hairdressing, massage, bath and aromatherapy services. These services also fall within the broad descriptions of ‘therapy services’ and ‘health care’ specified in the Applicant’s Services. I do not consider the Opponent’s beauty salon services to be similar to the Applicant’s medical clinic, chiropractic, plastic surgery and dentistry services. These services are explicitly medical or surgical in nature and have different trade channels and origins to the Opponent’s Services.
Turning to the Applicant’s class 41 services, I note that these services are generally education or instruction services. In my view, there is a clear nexus between the Opponent’s cosmetic and makeup goods in Class 3 and education and instruction services related to makeup. Traders who primarily deal in make-up products often provide videos instructing purchasers in the application and use of the goods. Soare includes examples of its own videos published on YouTube and TikTok demonstrating how to use its makeup products.[26] For these reasons, I am satisfied that the Applicant’s Services in class 41 relating to education for beauty and makeup are closely related to the Opponent’s cosmetic products in class 3. I do not regard to other services specified in Class 41 by the Applicant to be closely related to the Opponent’s Goods or similar to the Opponent’s Services.
[26] Soare Annexure CS-9.
I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Marks.
Comparison of Trade Marks
The Trade Mark and the Opponent’s Trade Marks are set out below:
| Trade Mark | Opponent’s Trade Marks |
| ANASTASIA MIARAY | ANASTASIA BEVERLY HILLS |
| ANASTASIA BEVERLY HILLS |
Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[27] On a side by side comparison there are clear differences between the trade marks. Whilst the trade marks share the use of the name ‘Anastasia’ as an essential feature, the addition of the second word ‘Miaray’ in the Trade Mark is sufficient to differentiate the trade marks when compared side by side. I am satisfied that there is not a total impression of resemblance between the trade marks.
[27] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
Section 10 defines ‘deceptive similarity’ in the following terms:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[28]
[28] [1963] HCA 66, [13].
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[29] Accordingly, an allowance is made for imperfect recollection of the trade marks.[30] The impression comes from the trade marks in their entirety,[31] and is informed by the look, sound and ideas conveyed by the trade marks.[32]
[29] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[30] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[31] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[32] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[33] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[34]
[33] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[34] Ibid.
The Opponent advanced a number of reasons why the Opponent’s Trade Marks should be considered deceptively similar to the Trade Mark, in particular:
Each trade mark incorporates the word ‘Anastasia’ as an essential feature;
The word ‘Anastasia’ is the first element of each trade mark, and the prominent visual and aural element of both trade marks;
‘Beverely Hills’ is a commonly understood geographic reference that is less distinctive than the word ‘Anastasia’;
The Trade Mark is likely to be viewed by consumers as part of a suite of marks owned by the Opponent;
The overall impression of each trade mark is the word ‘Anastasia’.
I agree with the Opponent’s submissions. The trade marks share the word ‘Anastasia’ as the first word of each trade mark. The Opponent’s Trade Marks also include the words ‘Beverly Hills’. The Applicant submits that the words ‘Beverly Hills’ remain a significant aspect of the Opponent’s Trade Marks and are likely to be perceived by consumers as indicating the Opponent’s products and services are high-end or luxury focused goods and services. In my view, even if the words ‘Beverly Hills’ convey some form of laudatory meaning, the consumers are likely to construe the words as a geographic reference to the location in Los Angeles, USA. Consequently, in the context of the Opponent’s Trade Mark, I consider the word ‘Anastasia’ to be the main essential feature of the Opponent’s Trade Mark.
The Trade Mark includes the additional word, ‘Miaray’. The Applicant submits that ‘Miaray’ could be understood as a surname, which when combined with ‘Anastasia’ conveys the impression of a full name. There have been a number of decisions involving the comparison of one name with a full name or multiple names. These decisions often result in different outcomes. For example, in Chloe SA v Lin Australia Pty Ltd[35] the word CHLOE was considered deceptively similar to SONJA CHLOE. In CELINE v Celine Victoria Robinson,[36] the name CELINE was considered deceptively similar to CELINE VICTORIA. In that decision, the Delegate noted that VICTORIA was likely to be construed as a reference to the Australian state rather than a surname.[37] More recently in Gerry Webber International AG v Studio Ray LLC,[38] GERRY was found not to be deceptively similar to GERRY WEBBER.
[35] [2006] ATMO 10 (Delegate McDonagh).
[36] [2022] ATMO 6 (Delegate Smith).
[37] Ibid [24].
[38] [2024] ATMO 59 (Delegate Makrigiorgos).
While consumers may potentially regard the word ‘Miaray’ as a surname, Matsumoto indicates that the term is of Japanese origin,[39] ‘a Japanese ancient word to represent a Shinto ritual and meant birth of a royal person’[40]. In my view, consumers in Australia are not likely to understand the meaning of Miaray and would regard it as an invented term. Although the word ‘Miaray’ is distinctive, in my view it does not perform a transformative function that would convey a different conceptual meaning when combined with the name ‘Anastasia’. Consequently, the word ‘Anastasia’, being the primary and leading identifying feature of the Opponent’s Trade Marks, retains its identity as an essential feature within the Trade Mark. For these reasons, I am satisfied that there would be a real tangible danger of confusion between the Trade Mark and the Opponent’s Trade Marks. Accordingly, the section 44 and regulation 4.15A grounds of opposition are established in relation to the following goods and services:
[39] Matsumoto Annexure YM-4.
[40] Ibid.
Class 3: Soap; hair lotions; cleansing milk; hair shampoos; cosmetic soap; perfumery; aromatics (essential oils); hair colorants; false eyelashes; cosmetic kits; cosmetics; cosmetic pencils; cosmetic creams; make-up removing preparations; depilatory preparations; depilatory wax; lotions for cosmetic purposes; eyebrow cosmetics; false nails; make-up powder; eyebrow pencils; tissues impregnated with cosmetic lotions; mascara; lip glosses; sunscreen preparations; wrinkle preventing cream; skin whitening creams; tooth whitening creams; acne cream; spot removing cream; dentifrices
Class 8: Curling tongs; cuticle nippers; hair-removing tweezers; pedicure sets; crimping irons; hand implements for hair curling; razor blades; razors, electric or non-electric; nail files, electric or non-electric; fingernail polishers, electric or non-electric; hair clippers for personal use, electric and non-electric; nail clippers, electric or non-electric; manicure sets, electric or non-electric; eyelash curlers; nippers; emery files; tweezers; scissors; blades (hand tools)
Class 21: combs; comb cases; brushes; nail brushes; cosmetic brushes; cosmetic utensils; powder puffs; powder compacts; eyebrow brushes; cheek brush; eyeshadow brush; eyelash brush
Class 41: Educational services; provision of information about educational services; beauty arts instruction; provision of information about beauty arts instruction; teaching of beauty skills; provision of information about teaching of beauty skills
Class 44: Eyebrows beauty salons; health care; aromatherapy services; therapy services; Turkish baths; beauty salons; massage; manicuring; visagists services; hairdressing salons;
For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use.[41] Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under section 44(3)(b) or regulation 4.15A(3)(b). I now need to consider whether the Opponent has established any of the other grounds of opposition in relation to the remaining goods, which are as follows:
Class 21: Soap boxes; soap dispensers; soap holders; toothbrushes, electric or non-electric; floss for dental purposes; toilet cases; fitted vanity cases; toilet sponges
Class 41: hairdressing instruction; provision of information about hairdressing instruction; arranging and conducting of beauty contests; provision of information about arranging and conducting of beauty contests; arranging, conducting and organization of seminars; providing online electronic publications, not downloadable
Class 44: hospice services; chiropractics; dentistry services; medical clinics; chiropractic surgery; plastic surgery
(‘Remaining Goods and Services’)
[41] See: ss 44(3) and 44(4); regs 4.15A(3)(a) and 4.15A(5).
Section 60
Section 60 provides:
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.
To establish this ground of opposition, the Opponent must establish:
- A reputation was acquired by another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent relies on its use of the Opponent’s Trade Marks and contends that as of the Relevant Date, the Opponent’s Trade Marks had established a reputation in Australia and globally in connection with the Opponent’s goods and services.
Reputation
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[42] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[43]
[42] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[43] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[44] or providing evidence of high volume of sales,[45] advertising expenditure or other promotion of goods or services to which the trade mark applies.[46] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[47]
[44] Ibid [118].
[45] McCormick (n 41) [86].
[46] Ibid.
[47] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
Generally, the relevant reputation must be amongst a significant or substantial number of persons.[48] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[49]
[48] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[49] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Opponent’s evidence of use of the Opponent’s Trade Marks is extensive. Soare demonstrates that the Opponent first began using the Opponent’s Trade Marks in Australia in 2006 in relation to beauty services. Soare includes various examples of use of the Opponent’s Trade Marks in relation to cosmetic products from 2006 to the Relevant Date. For example, Screenshots from Sephora’s YouTube account show makeup instruction videos featuring the Opponent’s Trade Marks dated from October 2015 to February 2016. Extracts are provided showing use of the Opponent’s Trade Marks on the Opponent’s Website from 2014 to 2022.[50] This use is supported with information showing revenue from the Opponent’s Website derived from Australian consumers from 2015 to 2022.[51] This information provides the cumulative sales over the period, but does not particularise the revenue from each individual year during that period. Consequently, it is difficult to determine how many goods were sold annually under the Opponent’s Trade Mark prior to the Relevant Date. Similarly, the evidence of the Opponent’s marketing expenditure is from 2020 to September 2022. In this regard the Applicant notes that a significant portion of the Opponent’s evidence is either undated or dated after the Relevant Date. For this reason, the Applicant contends that this evidence should be disregarded. Conversely, the Opponent submits that this evidence can still reflect the reputation acquired by the Opponent’s Trade Marks at the Relevant Date.
[50] Soare Annexure CS-11.
[51] Ibid Confidential Annexure CS-11A.
In my view, despite portions of the Opponent’s evidence being dated after the Relevant Date, the use of the Opponent’s Trade Mark in connection with cosmetic goods is significant. The annual sales of goods bearing the Opponent’s Trade Mark through third party retail from 2017 and 2018 alone are substantial.[52] Based off these figures, a significant portion of the Australian public was exposed to the Opponent’s Trade Marks before the Relevant Date through third party retailers. When considered alongside the numerous examples of use of the Opponent’s Trade Marks included in the evidence, I am satisfied that the Opponent’s evidence demonstrates a reputation in the Opponent’s Trade Marks at the Relevant Date in connection with cosmetic products, such as makeup, applicators, and eyebrow brushes.
[52] Ibid Confidential Annexure CS-24.
The Opponent claims that the reputation in the Opponent’s Trade Marks extends to beauty services. It is evident that the Opponent has offered beauty services in Australia. The Opponent’s Trade Marks were initially used in Australia by Fox Salon & Brows Pty Ltd in 2006. However, use of the Opponent’s Trade Mark in regard to beauty salon services in Australia is otherwise quite limited. The sales revenues included in Soare generated via third party retailers and via the Opponent’s Website only concerns sales of the Opponent’s Goods. Whilst some invoices have been provided from Fox Salon & Brows Pty Ltd, there is insufficient evidence to conclude that the reputation of the Opponent’s Trade Marks extends to beauty salon services.
Likelihood of deception or confusion
The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The Opponent needs to establish a causal connection between the reputation of the Opponent’s Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion.
The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:[53]
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[54]
[53] [1979] 19 RPC 410.
[54] Ibid 423.
The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the remainder of the Applicant’s Goods and Services derive from the same trade source as another trade mark.[55] Factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Applicant’s Goods and Services and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[56] As a delegate of the Registrar of Trade Marks explained in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[57]
[55] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).
[56] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
[57] [2010] ATMO 5 (Hearing Officer Lyons).
As discussed in regard to the section 44 ground of opposition, in my view, the Trade Mark is deceptively similar to the Opponent’s Trade Marks. I also refer to my discussion and conclusion regarding the similarity of the Applicant’s Remaining Goods and Services and the Opponent’s goods and services. Section 60 does not require the goods and services to be similar or closely related, but the differences between the goods and services raised in that discussion remain relevant to the assessment. The reputation of the Opponent’s Trade Marks is limited to cosmetic products. The remainder of the Applicant’s Goods and Services are, in general, education services, medical services, and soap and toiletry products. These are not goods and services associated with the reputation of the Opponent’s Trade Marks. While the differences between the goods and services is not decisive, it is generally more difficult to demonstrate that use of a trade mark in a different field of activity would be likely to deceive or cause confusion. These challenges were explained by Davies J in Singtel Optus Pty Limited v Optum Inc:
Although the language of s 60 does not, in express terms, require that it be shown that the reputation applies to the goods and services the subject of the trade mark application, s 60(b) is unlikely to be satisfied unless such a reputation is established because the use of the mark in respect of such goods or services is not likely to deceive or cause confusion.[58]
[58] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [203].
In my view consumers would appreciate and understand the differences between the Applicant’s Remaining Goods and Services and those associated with the reputation of the Opponent’s Trade Marks. A consumer encountering medical services or event services bearing the Trade Mark would not likely be confused or deceived as to the origin of those services due to the reputation of the Opponent’s Trade Mark. In my view, this is also the case for the remainder of the Applicant’s Goods.
Accordingly, I am satisfied that there would not be a real tangible danger of consumers being caused to wonder whether a connection exists between the Trade Mark and the Opponent’s Trade Marks in relation to the Remaining Goods and Services.
The ground of opposition under section 60 is not established.
Section 58
Section 58 provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and use of a trade mark,[59] or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[60] To succeed in this ground of opposition, the Opponent must establish the following:
· The Trade Mark is identical, or substantially identical, to an earlier trade mark;
· The earlier trade mark has been used in respect of goods and/or services that are ‘the same kind of thing’ as the Applicant’s Goods and Services.
· A person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark in Australia before the Relevant Date.[61]
[59] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).
[60] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[61] Pham (n 59) [50].
The Opponent relies on use the Opponent’s Trade Marks in Australia as the basis for this ground of opposition.
In my discussion on the section 44 ground of opposition, I indicated that I do not consider the Trade Mark to be substantially identical to any of the Opponent’s Trade Marks. For this reason, I am satisfied that the ground of opposition under section 58 has not been established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
This ground was particularised in the SGP as follows:
The Opponent commenced use of its ANASTASIA BEVERLY HILLS trade mark, and ANASTASIA BEVERLY HILLS formative trade marks, in Australia around September 1999 in relation to the same goods, or similar goods and services, as those covered under the Applicant’s Trade Mark. The use of the Opponent’s ANASTASIA BEVERLY HILLS trade mark has been extensive in relation to the services covered under the Applicant’s Trade Mark.
As a result of the extensive use of the Opponent’s ANASTASIA BEVERLY HILLS trade mark, the ANASTASIA BEVERLY HILLS trade mark is well-known in Australia and the Applicant would have been aware of the mark at the time the Applicant’s Trade Mark was filed. The Applicant has, therefore, acted in bad faith by applying to register a trade mark that is substantially identical, or deceptively similar to, the Opponent’s ANASTASIA BEVERLY HILLS trade mark.
‘Bad faith’ is not defined in the Act. The meaning of ‘bad faith’ was considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:
For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[62]
[62] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).
In DC Comics v Chequout Pty Ltd, Bennett J summarised the principles the principles for bad faith:
Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
Bad faith does not require dishonesty.
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
Mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[63]
[63] [2013] FCA 478, [62].
Whether the application to register the Trade Mark was made in bad faith requires the delegate to first consider the Applicant’s knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.
The Opponent’s position is based on the reputation of the Opponent’s Trade Marks. Unlike section 60, the question of whether use of the trade mark would cause deception or confusion is not determinative when addressing bad faith. The reputation of the Opponent’s Trade Marks in connection with cosmetics provides context for the Applicant’s decision to apply for registration of the Trade Mark, but it is ultimately a question of whether the Applicant’s conduct falls short of acceptable commercial standards.
Reputation aside, it is evident from the Applicant’s evidence that the Applicant was aware of the Opponent’s Trade Marks having, by its own admission, been a previous licensed trader of the Opponent’s goods and services. It is also apparent that the ‘Anastasia’ element of the Trade Mark is derived from the Opponent’s Trade Mark. According to Matsumoto, following the revisal of the Applicant’s agreement with the Opponent, the Applicant decided to retain the use of ‘Anastasia’ to reflect the historical partnership between the parties.[64] ‘Miaray’ was added to the Trade Mark to create a new brand name based on words of Japanese origin.[65]
[64] Matsumoto Annexure YM-4.
[65] Ibid.
The existence of a former licensor/licensee relationship between the parties may weigh in favour of bad faith being established. However, the details of relationship between the parties are only briefly referenced in the Applicant’s evidence. The Opponent’s evidence contains no reference to the agreement or any other dealings between the parties. Consequently, it is difficult to draw any conclusions regarding the Applicant’s obligations following the end of the agreement. Furthermore, I note that the Opponent’s submission regarding the prior relationship between the parties was not particularised in the SGP. As referenced above, the basis for this ground of opposition was the reputation of the Opponent’s Trade Marks in Australia.
In any event, as far as the Remaining Goods and Services are concerned, I am not satisfied on the balance of probabilities that the application to register the Trade Mark was made in bad faith. Mere awareness of the Opponent’s Trade Marks, alone, is not a basis for bad faith. Furthermore, as discussed regarding the both the section 44 and section 60 grounds of opposition, I do not consider the Remaining Goods and Services to be similar to the Opponent’s goods or services. Due to the differences between the Remaining Goods and Services and the Opponent’s goods and services, I am not satisfied that the application to register the Trade Mark was made in bad faith. Accordingly, the section 62A ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act relevantly provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.
To succeed in an opposition under section 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [66]
[66] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Australian Consumer Law
The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[67] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60.[68]
[67] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
[68] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).
For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark, and the Opponent’s Trade Marks, are related.
Passing Off
Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[69] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[70]
[69] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
[70] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].
Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.
Decision
Section 55(1) of the Act relevantly provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponents have established a ground of opposition under section 44 and regulation 4.15A in respect of some of the Applicant’s Goods and Services. Accordingly, I wrote the Applicant on 21 June 2024 advising the Applicant that I intend to refuse to register the Trade Mark unless the Applicant agreed to amend the Applicant’s Goods to the following:
Class 21:Soap boxes; soap dispensers; soap holders; toothbrushes, electric or non-electric; floss for dental purposes; toilet cases; fitted vanity cases; toilet sponges
Class 41: hairdressing instruction; provision of information about hairdressing instruction; arranging and conducting of beauty contests; provision of information about arranging and conducting of beauty contests; arranging, conducting and organization of seminars; providing online electronic publications, not downloadable
Class 44: hospice services; chiropractics; dentistry services; medical clinics; chiropractic surgery; plastic surgery
The Applicant did not respond to the request to amend the Applicant’s Goods and Services. Accordingly, the Opponent has established a ground for rejection under s 44 and regulation 4.15A, and I refuse to register trade mark application number 2003182.
Costs
Both parties sought an award of costs. As the Opponent has been successful, I award costs against the Applicant under section 221 in accordance with Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
5 July 2024
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