Beiersdorf AG v Matex Lab Switzerland SA

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Beiersdorf AG to extension of protection of International Registration 1435666 (3, 5, 10, 41, 44) (Australian trade mark application 2225414) – NEAUVIA – held by Matex Lab Switzerland SA

Delegate: Robert Wilson

Representation: Opponent: Written submissions by Spruson & Ferguson Pty Ltd
Holder: Written submissions by Corrs Chambers Westgarth

Decision: 2024 ATMO 65

Trade Marks Act 1995 (Cth): Regulation 17A.33 opposition: ss 42(b), 44, 58, 59, 60, 62A considered – none established – protection may be extended to Australia

Background

Trade mark number 2225414 is the Australian designation of a request made under the Madrid Protocol by Matex Lab Switzerland SA (‘Holder’) to extend protection of the trade mark subject of International Registration 1435666 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Beiersdorf AG (‘Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:

IRDA:

2225414

International Registration:

1435666

Filing Date:

24 September 2021

Specification:

Class 3: (including) cosmetics

Class 5: (including) pharmaceutical preparations; dietary supplements for humans

Class 10: (including) surgical, medical, apparatus and instruments

Class 41: (including) education

Class 44: (including) medical services; hygienic and beauty care for human beings

Full specification appears in the annexure to this decision

(‘Holder’s Goods and Services’)

Trade Mark:

NEAUVIA

(‘Holder’s Trade Mark’)

Endorsement:

The applicant has advised that the words in the Mark have no meaning in English

Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
Following publication of notice of the IRDA’s acceptance, the Opponent filed a Notice of Opposition (‘Notice’) consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’). The SGP raised grounds of opposition pursuant to ss 42(b), 44, 58, 58A, 59, 60, 62A. The Holder subsequently filed a Notice of Intention to Defend the opposition.
The Opponent filed Evidence in Support (‘EIS’) of its opposition which consisted of:
·Declaration made on 17 October 2022 by Anuschka Roudi, the Head of Corporate Trademarks of the Opponent, with Exhibits AR-1 to AR-58 (‘Roudi declaration’).
The Holder filed Evidence in Answer (‘EIA’) which consisted of:
·Declaration made on 19 January 2023 by Dariusz Salamon, the Deputy Chief Finance Officer and Member of the Board of the Holder, with Annexures A to H (‘Salamon declaration’).
The Opponent did not file Evidence in Reply.
Once the time allowed for filing evidence had ended, the Opponent requested to be heard by way of written submissions. The Opponent’s submissions were prepared by the Opponent’s representative, Spruson & Ferguson Pty Ltd. The Holder requested an oral hearing which was scheduled for 5 April 2024. Following preliminary discussions at the hearing the Holder chose to rely on written submissions only—those submissions were prepared and filed prior to the hearing by Corrs Chambers Westgarth.
The opposition was decided as required by reg 17A.34N which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all the goods or services listed in the IRDA; or
(b)To extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
I have decided this matter in my capacity as a delegate of the Registrar of Trade Marks, based on the material discussed above.
The Opponent
According to the Roudi declaration:
[The Opponent] was founded 130 years ago and is one of the world’s leading branded goods companies with leading global brands in a number of different areas, including in the cosmetic, and skin care (medicated and non-medicated) areas. …
One of the more important brands for [the Opponent] is the NIVEA brand, which is used across a number of products. [The Opponent’s] range of NIVEA branded products include cosmetic and personal care products, including various creams, lotions, moisturisers, lip balms, scrubs and wipes …
[The Opponent] currently owns more than one hundred Australian Trade Mark Registrations (or pending Australian Trade Mark Applications) for or including the term NIVEA for various goods and services …
Some examples of the trade marks registered by the Opponent are provided below (‘NIVEA Examples’).

The Holder

According to the Salamon declaration
ITP SA and [the Holder] are part of the MATEX LAB Capital Group.
[The Holder] is the owner of all of ITP SA's common shares. Until recently, ITP SA was particularly the owner of all rights associated with [the IRDA]. In December 2021, ownership of all intellectual property rights owned by ITP SA were transferred to [The Holder].
For the sake of simplicity, for the remainder of this decision, ITP SA will be referred to as the Holder. It was further declared in the Salamon declaration:
[The Holder] started developing the NEAUVIA brand and products in 2012 in Poland and Italy.
The name and mark NEAUVIA has, since 2012, been used as the name of the business and as the brand name for its products and services.
The name and mark NEAUVIA was originally selected by Mr Gabriele Drigo, the President and CEO of NEAUVIA North America. It was chosen to reflect the brand's ethos of a ‘new way’ (or ‘nuova via’ in Italian) of approaching medical and cosmetic treatment and products. …
The Neauvia business has, since 2012, offered a range of products and services that focus primarily on non-invasive cosmetic and medical treatments. NEAUVIA is [the Holder’s] leading brand for medical and beauty care devices … soft tissue fillers … and organic cosmeceuticals …
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition pursuant to ss 42(b), 44, 58, 58A, 59, 60, 62A. The Opponent did not press the s 58A ground. It is necessary that the Opponent establish only one ground of opposition to successfully oppose the IRDA. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the filing date of the IRDA. The filing date here being 24 September 2021 (‘Relevant Date’).[3] The Relevant Date is also the priority date for the grounds of opposition pursuant to ss 44 and 60.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Discussion
Grounds for rejecting and opposing IRDA
Regulation 17A.28 relevantly states:
(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:
(a)a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(b)the reference in paragraph 41(3)(b) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and
(c)each reference in subparagraphs 44(1)(a)(i) and (2)(a)(i) to a trade mark registered by another person included a protected international trade mark held by another person; and
(d)each reference in subparagraphs 44(1)(a)(ii) and (2)(a)(ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.
(3)The ground set out in section 177 of the Act is a ground for rejecting an IRDA that is for a certification trade mark.
Regulation 17A.34 relevantly states:
(1)The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.
(2)The extension of protection may also be opposed on any of the grounds set out in sections 58 to 61 and 62A of the Act, as affected by subregulation (3).
(3)sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if:
(a)a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(iii)to the registration of a trade mark were a reference to the extension of protection in Australia to the trade mark that is the subject of the IRDA; and
(b)the reference in paragraph 60(a) of the Act to the priority date for the registration of the trade mark were a reference to the priority date for the trade mark that is the subject of the IRDA.
(4)The extension of protection may also be opposed on the grounds that:
(a)a document filed in support of the IRDA was amended contrary to the Act; or
(b)the Registrar accepted the IRDA on the basis of evidence provided, or a representation made, by the holder that was false in a material particular.
Note: section 66 of the Act provides for the amendment of documents filed with the Registrar.
Section 44
16. Provisions relevant to the consideration of s 44 in this matter 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)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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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.
Section 14 – Definition of similar goods and similar services
(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.
In the SGP, the Opponent nominated some 102 of its registered, or applied for, trade marks to support this ground. The vast majority are registered in respect of goods which can broadly be described as cosmetics in Class 3, however, some are registered in respect of other goods and services. It is unnecessary to list all of them, however, the NIVEA Examples provided above are representative. All the trade marks relied upon include NIVEA as a significant element.
As a starting point, to successfully oppose registration pursuant to s 44 the Opponent must establish that at least one of the nominated trade marks:
·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);
·     is registered in respect of at least some goods or services which are similar or closely related to the Holders Goods and Services (‘the second requirement’); and
·     is substantially identical with or deceptively similar to the Holder’s Trade Mark (‘the third requirement’).
The first requirement
19.     All of the trade marks nominated by the Opponent have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.
The second requirement
20.     The vast majority of the trade marks nominated by the Opponent are registered in respect of cosmetics. These are goods which are similar to, at least, the Class 3 goods claimed in the IRDA. The second requirement is therefore satisfied in respect of at least those trade marks.
The third requirement
Substantially identical?
21.     I will firstly consider whether the Holder’s Trade Mark is substantially identical to the Opponent’s Trade Mark. 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.[4]
[4] [1963] HCA 66, [12].
The trade marks relied upon by the Opponent all prominently feature the word NIVEA with varying levels of stylisation and additional material. The comparison of trade marks here can focus on a comparison of the Holder’s Trade Mark with NIVEA as that sign represents the high water mark for the Opponent. The respective signs are juxtaposed below.

NEAUVIA

NIVEA

The Opponent asserted that a total impression of similarity emerges from a side by side comparison the Holder’s Trade Mark with NIVEA as ‘both marks incorporate the essential word elements NOO-VEE-A and NI-VEE-A. The overall impression of the marks is that of the word NIVEA’.
I accept that the Opponent’s phoneticisation of NEAUVIA as NOO-VEE-A is one which may be adopted by a significant number of Australian consumers—although, as suggested by the Holder, NO-VIA is also a likely pronunciation with
the letters “EAU” being pronounced with a long ‘o’ sound, as in ‘eau de toilette’ and ‘beau’, both of which are expressions which [the Holder] submits are familiar to Australian consumers.
However, it is far more likely that NIVEA would be read as NIV-EE-A than in the manner submitted by the Opponent. When phoneticised in these ways there is a significant aural difference between the two signs. The visual difference, while vaguely similar, is significantly different. As submitted by both parties, both signs are invented terms with no meaning. When these factors are taken into account, on a side by side comparison the signs have significant differences. It follows that the signs are not substantially identical.
Deceptively Similar?
25. Guidance for determining whether trade marks are deceptively similar is generally found in 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].[5]
[5] Ibid [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
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.[6]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
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.[7]
[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
Third, allowance must be made for imperfect recollection.[8]
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
Fourth, the effect of the spoken description must be considered.[9]
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
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.[11] …
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
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.[12]
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
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.[13]
[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (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.[14] 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.[15] [16]
[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).
[15] Ibid [100].
[16] [2012] FCA 1022, [37]–[46].

The Opponent’s submissions in respect of deceptively similarity are based on the same phoneticisation relied on in respect of substantial identity (discussed above) with on additional emphasis on imperfect recollection and that:
Visually, the marks are for the words NIVEA and NEAUVIA. Both marks are one word trade marks, they both start with the letter N, both marks have the letter V as a letter within the trade mark and end in the letter A. Both marks also end in VEA and VIA.
Conceptually neither NEAUVIA or NIVEA have clear meanings and therefore cannot be differentiated by different conceptual meanings.
Based on the visual and aural similarities of the NIVEA Marks and the Opposed Mark and the fact there is no clear conceptual meaning of either the Opposed Mark or the essential element NIVEA of the NIVEA Marks, when considering a consumer’s imperfect recollection there is a real danger of consumer confusion. In addition, the goods and services of the Opposed Mark and the NIVEA Marks are the same and/or similar.
I am not persuaded by the Opponent’s submissions on this point. While there are some similarities between the signs NEAUVIA and NIVEA, on balance, I am not satisfied that the Holder’s Trade Mark so nearly resembles any of the Opponent’s Trade Marks that its use is likely to deceive or cause confusion. Consequently, this ground of opposition is not established.
Section 58
Section 58 is reproduced below:
Section 58 - Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The owner of a trade mark for particular good/services is the person who first used it in Australia, or the person who first filed an application to register the trade mark in Australia, whichever is the earlier. It is well established that to succeed under this ground of opposition, amongst other requirements, the Holder’s Trade Mark must be substantially identical to the trade mark(s) upon which the Opponent relies.[17] In the SGP, the Opponent indicated that it relies on the same trade marks for this ground as those upon which it relied in respect of the s 44 ground. I found in considering the s 44 ground that none of those trade marks is substantially identical to the Holder’s Trade Mark; accordingly, this ground of opposition is not established.
[17] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).
Section 59
31. Section 59 of the Act is reproduced below:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia, or
(b) to assign the trade mark to a body corporate for use by the body Corporate in Australia;
in relation to the goods and/or services specified in the application.
As observed by Jacobson J, s 59 is a ‘difficult’ ground for an Opponent to establish because of
the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent.[18]
[18] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161].
Additionally, the onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Holder’s lack of intention, at which stage the onus moves to the Holder for rebuttal.[19] The intention to use a trade mark must exist at the date of application,[20] consequently, it is incumbent upon the Opponent to establish that the Holder did not intend to use the trade mark at the time of filing.
[19] Ibid [163].
[20] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
In respect of this ground the Opponent submitted:
[The Holder] states in their evidence that there have been no sales of the NEAUVIA goods and services in the Australian market despite the brand having been launched in 2012.
This indicates a lack of real intention to use [Holder’s Trade Mark] on the [Holders Goods and Services] in the Australian market.
The Opponent referred to paragraph 30 of the Salamon Declaration to support its submission, wherein in it is declared:
While [the Holder] has not yet commenced noticeable sales of the NEAUVIA branded Products in Australia, it intends to commence sales in Australia in the future, and to use the NEAUVIA mark in Australia in the same way that it has used it in other countries.
The previous paragraph of the Salamon Declaration states:
On [the Relevant Date], [the Holder] had already been applying the NEAUVIA mark to and in relation to many of the goods and services covered by [the IRDA], and had an intention to use the NEAUVIA mark for all of the goods and services.
If it were so that the Holder had not used its trade mark in connection with its goods and services as at the time the Opponent filed its EIA, this would not, of itself, be sufficient to draw a conclusion of no intention to use at the Relevant Date. There are any number of reasons that a trade mark owner might delay use of a trade mark following the filing of an IRDA or application to register a trade mark. Without more, and in the light of the statements in the Salamon Declaration, I am not satisfied that the Holder lacked the requisite intention at the Relevant Date. Consequently, this ground of opposition is not established.
Section 60
38. The ground based on s 60 is particularised in the SGP as follows:
The Opponent has been using the NIVEA Marks (in various forms) internationally and in Australia for over 100 years in relation to skincare, sun care and body care goods and services. Over that period of time a significant reputation has been established.
Because of the Opponent’s reputation in the NIVEA Marks in Australia and internationally before the priority date for registration of the Opposed Mark, use of the Opposed Mark, in relation to the goods/services for which registration is sought, was, and remains, likely to deceive or cause confusion.
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.
To establish the ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Holder’s Trade Mark would be likely to deceive or cause confusion. It is apparent from the SGP that the Opponent relies on reputation acquired by ‘the NIVIEA marks’ to support this ground. In its submissions, the Opponent referred to ‘the Opponent’s reputation in the NIVEA Marks in Australia and worldwide at the Relevant Date’.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[21] Her Honour quoted with approval the following words of Lockhart J from 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 …[22]
[21] [2000] FCA 1335, [81] (Kenny J).
[22] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).
On the subject of reputation Kenny J also referred to the Hugo Boss decision, 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.[23]
[23] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).
As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[24] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. 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.[25]
[24] [2000] FCA 1587 (Heerey J).
[25] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.
The Roudi declaration is some 1516 pages long. It contains many examples of use of various trade marks which include NIVEA as element in connection with various cosmetic preparations and skin care products. The Holder was critical of the evidence, submitting, ‘Much of the Opponent’s evidence and submissions refer to the Opponent’s use of its mark and reputation in other countries’. While this is so, I am nevertheless satisfied that due to its long history, extensive sales and exposure in Australia, the sign NIVEA has acquired a significant reputation in Australia in respect of cosmetic preparations and skin care products.
It is not sufficient that the Opponent merely establish that NIVEA has acquired a significant reputation, I must also be satisfied that because of that reputation use of the Holder’s 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 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.[26]
[26] (1937) 58 CLR 641, 658.
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘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.^[27]
[27] [1979] RPC 410, 423 (citations omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[28]
[28] (1997) 38 IPR 495, 501 (Heerey J) (citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
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.
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.[29]
[29] [1999] FCA 1020, [50] (French, Branson and Tamberlin JJ). These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
In submitting that deception or confusion are likely, the Opponent noted that deceptive similarity is not a requirement for deception or confusion under s 60 but submitted that this is, nevertheless, ‘a factor that points significantly in the Opponent’s favour when determining the likelihood of confusion’. In its submissions, the Opponent essentially repeated its submissions on deceptive similarity made in respect of the s 44 ground, and concluded, ‘Based on the visual, aural and conceptual similarities and a consumer’s imperfect recollection, there is a real danger of consumer confusion between [the Holder’s Trade Mark] and the NIVEA Marks’. I note the Opponent’s submission regarding ‘conceptual similarities’ was made notwithstanding an accompanying submission by the Opponent that, ‘Conceptually neither NEAUVIA or NIVEA have clear meanings and therefore cannot be differentiated by conceptual meanings’. I am of the view that neither sign having a clear meaning is not a conceptual similarity.
For the same reasons that deception or confusion was found to be unlikely in the consideration of the s 44 ground, I am not satisfied that because of the reputation acquired by NIVEA, or any of the Opponent’s trade marks, use of the Holder’s Trade Mark is likely to deceive or cause confusion. If anything, the reputation acquired by NIVEA is likely to reduce any likelihood of deception or confusion.[30]
[30] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065, [29] (Jessup J).
Section 42(b)
51. The relevant provisions of s 42 are 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) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Holder’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[31] The relevant time for assessing whether the use of the Holder’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[32]
[31] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
[T]he Opponent has a reputation in the NIVEA Marks in Australia in relation to its goods/services. As a result of this, the use of the Opposed Mark would be in breach of the misleading and deceptive conduct provisions of the Australian Consumer Law and/or constitute passing off or trade mark infringement.
In its submissions, the Opponent referred specifically to ‘sections 18, 29(1)(g) and/or 29(1)(h) of Schedule 2 of the Consumer and Competition Act (Cth) (Australian Consumer Law or ACL)’ and passing off, and provided submissions in respect of those. It is noted that there are no submissions, or any reference at all, by the Opponent regarding infringement. In the absence of such submissions—including submissions as to why it is appropriate to consider infringement under this ground—infringement will not be considered further in this decision.
In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[33] I am satisfied that the Opponent has also failed to establish that the use of the Holder’s Trade Mark would be contrary to s 18 of the ACL.
[33] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
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, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (Cth) (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[34] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) 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:
[34] [2003] FCA 104, [107].
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.[35]
[35] [1989] FCA 506, [40] (citations omitted).

For these reasons I am not satisfied that use of the Holder’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
Section 62A
58. In the SGP the ground under s 62A was particularised as follows:
Owing to the Opponent’s reputation in the NIVEA Marks, as identified under the Section 60 ground above, those trade marks have a strong reputation and indicate an association with the Opponent. The similarities between the NIVEA Marks and the Opposed Mark are such that [the Holder] knew or ought to have known that use of the Opposed Mark would be likely to deceive or cause confusion. As a consequence, the intended use of the mark and the filing of the Opposed Mark falls short of reasonable business practices and the application was therefore made in bad faith.
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
- persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
- persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
- persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …
The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[36]
[36] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, 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.[37]
[37] Ibid [165]-[166].
In supporting this ground, the Opponent, essentially, relied on the same factors it relied on in respect of the s 42(b) and s 60 ground; that is, acquired reputation and similarity of trade marks. I found above, that the respective trade marks are not deceptively similar. Further, it was declared in the Salamon declaration that:
The name and mark NEAUVIA was originally selected … to reflect the brand ethos of a ‘new way’ (or ‘nuova via’ in Italian) of approaching medical and cosmetic treatment products.
In these circumstances, I am not satisfied that the IRDA was made in bad faith. Accordingly, this ground of opposition is not established.
Decision
65. The Opponent has failed to establish any of its ground of oppositions. Accordingly, extension of protection of the Holder’s Trade Mark may proceed one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.
In accordance with reg 17A.34N(2), WIPO will be notified of the Registrar’s decision.
Costs
The Holder has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 as per Schedule 8 of the Trade Marks Regulations 1995.
Robert Wilson
Hearing Officer
Trade Mark and Designs Hearings
10 April 2024
Annexure
The Holder’s Goods and Services
Class 3: Cosmetics; lip glosses; cleaning preparations; make-up removing preparations; detergents other than for use in manufacturing operations and for medical purposes; cosmetic preparations for baths; cosmetic preparations for slimming purposes; make-up; cosmetic creams; skin whitening creams; lotions for cosmetic purposes; make-up preparations; beauty masks; oils for cosmetic purposes; hair lotions; after-shave lotions; sunscreen preparations; cosmetic preparations for eyelashes; cosmetic preparations for skin care; cosmetic kits; cosmetic preparations for skin renewal; body lustre preparations for cosmetic purposes; wrinkle-minimizing skin care preparations; cosmetic preparations for skin renewal; anti-ageing effect, anti-ageing, anti-pollution and anti-sagging cosmetics; cosmeceuticals; cosmetics with complementary medical effects (cosmeceuticals); cosmetic products with added medical properties (cosmeceuticals): cosmeceuticals for cosmetic purposes; cosmeceuticals for skin care after aesthetic medicine treatment; anti-aging, regenerative and skin protective cosmeceuticals; cosmeceuticals with fractional hyaluronic acid; cosmetics, concealers and fillers for lines and wrinkles, anti-aging skin care preparation, anti-aging, regenerative and skin protective cosmetics and preparations, beauty serums with anti-aging properties, cosmetic preparations for skin care, cosmetics for use in the treatment of wrinkled skin; all these goods being sold exclusively in: medical clinics, medical aesthetic clinics, cosmetics and plastic surgery clinics as well as in medical spa and aesthetic medicine salons.
Class 5: Pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans; amino acids for medical purposes; protein dietary supplements; albumin dietary supplements; chemical preparations for pharmaceutical purposes; chemical preparations for medical purposes; chemico-pharmaceutical preparations; tissues impregnated with pharmaceutical lotions; disinfectants for hygiene purposes; pharmaceutical preparations; acids for pharmaceutical purposes; medicinal infusions; lotions for pharmaceutical purposes; mineral food supplements; eyepatches for medical purposes; medical preparations for slimming purposes; slimming pills; nutritional supplements; pomades for medical purposes; pharmaceutical preparations for skin care; serums; antioxidant pills; hair growth preparations; disinfectant soap; sanitizer and disinfectant liquids; disinfection gel for hands; mineral food supplements; medical preparations for slimming purposes; pharmaceutical, pharmacological, chemical preparations and products for medical purposes; pharmaceutical, pharmacological and chemical preparations and products for use in aesthetic medicine and for skin care; cosmeceuticals for medical or therapeutic purposes; skin care preparations for medical use; dermatological products and preparations; pharmaceutical, pharmacological and chemical preparations sold in prefilled syringes; filled syringes for medical purposes [containing pharmaceuticals]; pre-filled syringes for medical use; injectable dermal fillers; medicated skin lotions, medicated skin creams, medicated skin tonics, medicated skin care preparations, medicated preparations for skin treatment sold exclusively in: medical clinics, medical aesthetic clinics, cosmetics and plastic surgery clinics as well as in medical spa and aesthetic medicine salons.
Class 10: Surgical, medical, apparatus and instruments; apparatus for use in medical analysis; anaesthetic apparatus; microdermabrasion apparatus; vibromassage apparatus; surgical apparatus and instruments; diagnostic apparatus for medical purposes; electrodes for medical use; needles for medical purposes; surgical implants [artificial materials]; syringes for injections; esthetic massage apparatus; lasers for medical purposes; massage apparatus; anaesthetic masks; masks for use by medical personnel; medical apparatus and instruments; body rehabilitation apparatus for medical purposes; injectors for medical purposes; syringes for medical purposes; vaginal syringes; surgical, medical devices; apparatus, devices and instruments to be used in dermatology, cosmetology, plastic surgery and aesthetic medicine; surgical and medical apparatus, instruments and devices used for electrosurgical, radiofrequency, laser, infrared or ultrasound treatment and procedures; surgical and medical apparatus, instruments and devices used for thermal lifting, skin photobiostimulation and cosmetology; surgical, medical apparatus, devices and instruments incorporating lasers; ultrasound surgical, medical apparatus, devices and instruments; radiofrequency medical and surgical apparatus, devices and instruments; infrared medical and surgical apparatus, devices and instruments apparatus for use in medical analysis; disposable hypodermic and inflation syringes for medical and surgical use; disposable needles for hypodermic syringes; syringes and needles for medical aesthetics purposes.
Class 41: Education; providing of training; education information; practical training [demonstration]; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of workshops [training]; arranging and conducting of seminars; arranging and conducting of symposiums; organization of exhibitions for cultural or educational purposes; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable; publication of books; publication of texts other than publicity texts; academies [education]; provision of medical instruction courses; education services, training courses and teaching relating to aesthetics medicine and use of surgical and medical apparatus, devices and instruments; arranging of beauty contests.
Class 44: Medical services; hygienic and beauty care for human beings; plastic surgery; beauty salons; medical clinic services; health spa services; cosmetics and plastic surgery clinic services; aesthetics medicine services; medical spa services; aesthetics medicine salons; providing information about beauty, health and in the fields of aesthetics medicine; providing medical information via website.

IRDA:	2225414
International Registration:	1435666
Filing Date:	24 September 2021
Specification:	Class 3: (including) cosmetics Class 5: (including) pharmaceutical preparations; dietary supplements for humans Class 10: (including) surgical, medical, apparatus and instruments Class 41: (including) education Class 44: (including) medical services; hygienic and beauty care for human beings Full specification appears in the annexure to this decision (‘Holder’s Goods and Services’)
Trade Mark:	NEAUVIA	(‘Holder’s Trade Mark’)
Endorsement:	The applicant has advised that the words in the Mark have no meaning in English

[2024] ATMO 65

10 April 2024