Beiersdorf AG v KOSE Corporation

[2024] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by Beiersdorf AG to registration of trade mark application 2084290 (3) – Q10 VITAL AGE (Figurative) – in the name of KOSE Corporation

Delegate:

Nicholas Smith

Representation:

Opponent: AJ Park

Applicant: Griffith Hack

Decision:

2024 ATMO 71

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Beiersdorf AG (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of KOSE Corporation (‘Applicant’): 

Application Number:

2084290

Filing Date[1]:

27 April 2020

Services:

Class 3: Cosmetics; Perfumes; Cosmetic soaps; Cotton for cosmetic use and Hair care preparations

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 27 May 2022 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44 and 60.  The Applicant filed a Notice of Intention to Defend on 13 July 2022. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Anuschka Roudi, Head of Corporate Trade Marks for the Opponent (‘Roudi declaration’)	12 October 2022	AR-1 to AR-33
Evidence in answer
Kazutoshi Kobayashi, President and CEO of the Applicant (‘Kobayashi declaration’)	6 January 2023	1 to 7
Sara Cruz Jose Pearson, Lawyer and Trade Marks Attorney for Griffith Hack (‘Pearson declaration’)	16 January 2023	SP1 to SP2
Evidence in reply
N/A

1. The entirety of the Kobayashi declaration, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

5. The Opponent is German company that provides branded goods in a number of different areas including cosmetic, personal hygiene and skin care.  It provides these products under the NIVEA brand and through a number of brands/marks featuring the letter/number combination Q10 (‘Q10 Mark’).  It provides evidence of ownership of other marks but those marks, not being particularised in the SGP, are of no relevance to the proceeding.

6. The Opponent is the owner of the trade marks set out in Annexure A to this decision (‘Opponent’s Trade Marks’) that feature the Q10 Mark.  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’.

7. The relevant claims/statements in the Roudi declaration can be summarised as follows:

   ·     The Opponent produces a range of skin-care products under the NIVEA brand and around 2002 the Opponent’s researchers launched a line of NIVEA skin-care products featuring the Coenzyme Q10 product.  It now sells a range of skin care products in Australia under the Q10 Mark and the Opponent’s Trade Marks.

   ·     The Opponent has sold goods bearing the Q10 Mark in Australia since 2015 through a number of major retailers including Woolworths, Coles, Priceline, Chemist Warehouse and Amazon Australia. Sales of products bearing the Q10 Mark have been significant.

   ·     The Opponent has extensively marketed its goods under the Q10 Mark, including through paid advertising in television and magazine advertising as well as social media and shopping centre promotions. They have also been the subject of media articles such as product reviews. The Opponent’s Q10 products have received several awards in Australia, including for most innovative product and best anti-aging hand cream and body treatment.   

   ·     The similarities between the Trade Mark and the Opponent’s Trade Marks are not limited to the Q10 elements.  The marks are similar stylistically and share the same curved line under or as part of the ‘q’ Element.  The term ‘vital age’ in the Trade Mark is a descriptive term used in cosmetics worldwide.

8. The annexures to the Roudi declaration display various marketing material that use the Q10 Marks, third-party catalogues featuring the Opponent’s Goods bearing the Q10 Mark, or third-party articles featuring the Opponent and its Q10 Mark.  While details of the Opponent’s sales and advertising spend are confidential I note that the level of sales in Australia since 2015 is extensive, even given that the Opponent’s Goods are fast moving consumer products, while the level of advertising spend is unimpressive.

   The Applicant

9. The Applicant is Japanese multinational corporation that develops, manufactures and sells personal care products such as skincare, cosmetics and hair care.  

10. The relevant claims/statements in the Kobayashi declaration can be summarised as follows:

    ·     The Applicant has been using the Trade Mark internationally since 2000 and owns registered trade marks featuring the Q10 mark in China, Mongolia and Taiwan.  It has filed other trade mark applications around the world.

    ·     Co-Enzyme Q-10, also known as Q-10, Co!-10 or Co10 is an antioxidant that is naturally occurring in the human body.  The Applicant chose to use the Q10 Mark in its trademark as a reference to the co-enzyme.  

    ·     Both the Applicant and the Opponent use the Q10 mark for various products in Japan and the declarant is not aware of any confusion arising.  There are also numerous companies in Australia that use Q10 or other references to Co-enzyme Q-10 in Australia for skin-care products.

11. The annexures to the Kobayashi declaration include information about Coenzyme Q-10.  At Exhibit 7 the declarant annexes examples of various skin products sold in Australia that refer to or display the Q10 Mark.

12. The Pearson declaration simply contains two exhibits.  The first exhibit is a search result of the Australian Trade Marks Register for registered trade marks containing Q and 10 in class 3 and associated classes.  It shows that there are four other trade marks in Australia featuring the Q10 Mark registered to third parties for class 3 goods. The second exhibit consists of various webpages showing use of Q10 in relation to class 3 goods.  This includes discussions about the benefits of Q10 in skincare and how Coenzyme Q10 operates as an anti-aging ingredient.  It is clear from the evidence that there are numerous products in the global and Australian beauty market which feature the Q10 Mark which is used to refer to the presence of Co-Enzyme Q-10 in the product.

    Grounds of Opposition, Onus and Standard of Proof

13. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

14. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

    [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

    Section 44

15. The relevant provisions of s 44 are reproduced below:

    Section 44 - Identical etc. trade marks

    (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)it 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.

    Note 1: For deceptively similar see section 10.

    Note 2: For similar goods see subsection 14(1).

    (2)…

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

    Note:  For limitations see section 6.

    (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)              the similar goods or closely related services; or

    (ii)             the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant's trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

    Note 2: For predecessor in title see section 6.

    Note 3: For priority date see section 12.

    Section 10 - Definition of deceptively similar

    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.

16. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

17. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. 

18. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade  Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  They are also all registered for cosmetic products, which are similar goods to at least a subset of the Applicant’s Goods, most of which can be described as cosmetic products.

    Substantially identical and/or deceptively similar

19. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

    [6] [1963] HCA 66, [12].

20. For the purposes of comparison, I only need to consider the Opponent’s registered trade mark No. 1613779 (‘S44 Mark’).  This mark is registered for the broadest range of goods and is the most similar to the Trade Mark.  Were I to find that this mark was not substantially identical or deceptively similar to the Trade Mark I would by necessity reach the same conclusion with the remainder of the Opponent’s Trade Marks, each of which contains additional elements that further distinguish it from the Trade Mark.   The Trade Mark and the S44 Mark are set out below:

21. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the S44 Mark and the Trade Mark being the addition of the term ‘vital age’ and the different stylisation of the Q10 element (the wavy line being below the ‘o’ rather than intersecting it and extending underneath the 10 and the letter/number combination in a different font).  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

22. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[7]

    [7] Ibid [13].

23. Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[8] at [49]; Australian Woollen Mills[9] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[10] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[11] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[12]

    [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [12] [2012] FCA 1022, [37]-[46].

1. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[13]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[14]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[15], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[16]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[17]

   [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [14] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [15] Act, s 68.

   [16] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [17] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

2. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[18]

   [18] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

3. The issue in the present case is that, based on the evidence provided by the Applicant, I am satisfied that the term ‘Q10’ has a descriptive meaning in the market for cosmetic products, being an abbreviation of Coenzyme Q10, and is common to the trade.[19]  There are numerous other skin-care products available in Australia using the Q10 Mark and the S44 Mark co-exists with other trade marks on the Register that contain the Q10 Mark (along with, like the Trade Mark, additional material).  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

   [19] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34] (Hearing Officer Thompson).

4. Justice Stephen observed[20] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[21]

   [20] Albeit in relation to trade practices.

   [21] 140 CLR 216, 229.

5. I acknowledge that there are similarities between the marks being the presence of the Q10 element.  I accept that there is some similarity in stylisation, being the use of the wavy line as part of or below the letter Q (thought there are also differences, including the placement of the wavy line and the different font used for the letter/number combination).  I note that the term ‘vital age’ can also be seen as descriptive.  However, I also note that the S44 Mark contains a colour endorsement, restricting or limiting the use of the S44 Mark to the colour yellow, which appeared necessary to allow the registration to proceed in the face of ss 41 and 44 grounds for rejection.  While acknowledging the similarities in the stylization between the Trade Mark and the S44 Mark I am on balance persuaded that the differences, including stylisation, colour and addition of word elements are sufficient that the marks are not deceptively similar.  A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘Q10’ in respect of cosmetics and other similar goods.  The Opponent does not have such a monopoly.  Any confusion that might occur would most likely stem from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks themselves.    

6. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

7. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

8. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

9. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[22]

   [22] [2023] FCA 487, [20-21] (Kennett J)

10. In McCormick & Co Inc v McCormick[23], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[24]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[25]

    [23] [2000] FCA 1335.

    [24] Ibid, [81].

    [25] (1992) 33 FCR 302, 343.

11. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[26]

    [26] (1999) 47 IPR 423, 436.

12. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[27] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with 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.[28]

    [27] [2000] FCA 1587.

    [28] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

13. The Opponent has particularised the ground of opposition in the SGP in the manner set out below.  It initially notes the existence of the Opponent’s Trade Marks (referred to as the Prior Registered Marks) and then says: 

    6. The Opponent is well known in Australia and internationally as one of the world’s largest skin care brands, with over 50 products available in 173 countries around the world.

    7. The Opponent produces and sells a range of skin care products, including body lotions, eye creams, serums, moisturisers and night creams under and by reference to the Prior Registered Marks. which all include “Q10” as a dominant feature (the Opponent’s Mark).

    8. The Opponent has used and acquired a reputation in the Opponent’s Mark in Australia since at least 2001. The Opposed Mark therefore post-dates each and all of the Prior Registered Marks and the Opponent’s use of the Opponent’s Mark which has acquired a reputation in Australia.

    9. The Opposed Mark is deceptively similar to the Prior Registered Marks and the Opponent’s Mark, featuring the identical prefix ‘Q10’ as a main distinctive element and in a confusingly similar style.

    10. Due to the reputation of the Prior Registered Marks and the Opponent’s Mark, use of the Opposed Mark would be likely to deceive or cause confusion.

14. I am satisfied on the evidence before me that the Opponent had acquired a reputation in one or more of the Opponent’s Trade Marks in Australia for cosmetic skin care products, sufficient for the requirements under s 60(a), given the extensive sales of products bearing the Opponent’s Trade Marks through a wide variety of channels.  It is not clear if this is particularised but to the extent it is I am not satisfied that it has acquired a reputation in the plain Q10 Mark solus.  The Opponent’s skin care products bear the Opponent’s Trade Marks, not the plain Q10 Mark and as discussed elsewhere in the decision I consider ‘Q10’ to be a descriptive term used in the skin-care industry that consumers of the Opponent and Applicant’s Goods would recognise.  

15. It is not sufficient that the Opponent merely establish that its trade marks had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[29]

    [29] (1937) 58 CLR 641, 658.

16. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    (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.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[30]

    [30] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

17. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[31]

    [31] [2012] ATMO 124, [40] (Hearing Officer Thompson).

18. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘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.’[32]

    [32] [2016] FCA 729, [142] (Yates J).

19. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[33]

    [33] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

20. In the present case, to the extent that the Trade Mark and any of the Opponent’s Trade Marks are similar, it is largely due to the presence of the common element ‘Q10’ which is descriptive in respect of cosmetic products.[34]  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[35] extracted at paragraph 31 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  In the present case I am not satisfied that any confusion that could arise between the Trade Mark and any of the Opponent’s Trade Marks would arise because of the reputation of the Opponent’s Trade Marks (or the limited stylistic similarities), as opposed to the shared use of the descriptive term ‘Q10’ (referring to the product containing Coenzyme Q10) in respect of cosmetic products.

    [34] I have noted earlier that there are some similarities in stylization but they are likely to have a limited effect in causing confusion.

    [35] (1978) 140 CLR 216, 229.

21. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

1. Section 42 is reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   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.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[36]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[37]

   [36] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [37] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

3. The Opponent has particularised the ground of opposition in the SGP as follows. It repeated its particulars for the s 44 and s 60 grounds and then stated: 

   11. Use of the Opposed Mark would falsely suggest an association or connection with the Opponent.

   12. Accordingly, use of the Opposed Mark is likely to mislead and deceive consumers that the Applicant’s Goods are those of the Opponent contrary to sections 18 and 29 of the Australian Consumer Law found in schedule 2 of the Competition and Consumer Act 2010 (Cth).

   13. Further, use of the Opposed Mark will result in the Applicant’s Goods being passed off as goods of the Opponent constituting a passing off at common law.

4. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[38] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [38] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

5. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[39], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[40] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered 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.[41]

   [39] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [40] [2003] FCA 104, [107] (Beaumont J).

   [41] [1989] FCA 506, [40] (citations omitted).

6. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Decision and Costs

7. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2084290 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

8. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   23 April 2024
   

   Annex A - s44 Trade Marks

Number	Trade Mark	Priority Date	Goods or Services
1586218	4 July 2013	Class 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices
1613779	8 Aug 2013	Class 3: Cosmetics
1830710	16 Nov 2016	Class 3: Cosmetic skin care preparations
1956733	26 July 2018	Class 3: Cosmetic skin care preparations
2035007	8 May 2019	Class 3: Non-medicated cosmetics and preparations for body and beauty care.
2122673	16 Apr 2020	Class 3: Non-medicated cosmetics; cosmetic skin cleansing preparations, cosmetic skin care preparations, cosmetic facial masks
2122723	16 Apr 2020	Class 3: Non-medicated cosmetics; cosmetic skin cleansing preparations, cosmetic skin care preparations, cosmetic facial masks