Blinc Inc v SKNCompany Pty Ltd

[2019] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by Blinc, Inc to registration of trade mark application 1821739 (3, 5) – PINC SKINCARE REVITALISE & HYDRATE– in the name of SKNCompany Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant:  Omond & Co
Decision:	2019 ATMO 28 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Blinc, Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of SKNCompany Pty Ltd (‘Applicant’): 

Application Number:	1821739
Filing Date:	24 January 2017
Goods:	Class 3: Cosmetics; Body soaps; Cosmetic soaps; Deodorising soaps; Facial soaps; Liquid soaps (non medicated); Non-medicated soaps; Non-medicated creams for the skin; Non-medicated skin care products Class 5: Pharmaceutical preparations for skin care; Sanitary preparations for medical purposes; Medicated cleansing preparations for the skin; Medicated creams for protection of the skin; Medicated creams for softening the skin; Medicated creams for soothing the skin; Medicated creams for the skin; Medicated preparations for nourishing the skin; Medicated preparations for the treatment of the skin (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2. Following the advertisement on 10 August 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 10 October 2017.  The Opponent then filed a Statement of Grounds and Particulars on 10 November 2017 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58A, 59 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 21 November 2017.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 28 February 2018.  This evidence consists of a declaration by Lewis Farsedakis, president of the Opponent, made on 27 February 2018 with Exhibits LF-1 to LF-12 (‘Farsedakis Declaration’).

4. The Applicant filed Evidence in Answer (‘EIA’) on 5 June 2018.  This evidence consists of a declaration made on 5 June 2018 by James Omond, legal representative of the Applicant, with Exhibits JLO-1 to JLO-7 (‘Omond Declaration’).  Exhibit JLO-1 is a declaration by Helen Prentice, director of the Applicant, made on 25 July 2017 with Annexures HP-1 and HP-2 (‘Prentice Declaration’).  The Opponent did not file any evidence in reply.

1. The Opponent makes a broad claim for confidentiality over the entirety of information disclosed in the Farsedakis Declaration.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim 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.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

   6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 12 October 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions.

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act 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

   8. The Opponent is a United States company that was incorporated in 1999. 

   9. The Opponent is the owner for the trade marks listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1039383	BLINC	31 Dec 2004	Class 3: Cosmetics, shampoos, conditioners, body wash and skin care products Class 8: Hand implements for cosmetic treatment of eyelashes (electric and non-electric); hand-operated instruments for cosmetic purposes; hand-operated tools for cosmetic purposes

10. I also note the Opponent in respect of the s 44 ground of opposition relies on the mark referred to below registered to Z Krpan and C Krpan (‘Pinq Mark’).  For the purposes of the decision the Opponent’s Trade Mark and the Pinq Mark shall be collectively referred to as the ‘s 44 Marks’.

Number	Trade Mark	Priority Date	Goods
1220197	PINQ ‘Pinq Mark’)	21 Jan 2008	Class 3: Anti-sun preparations (cosmetics); biological products used as components in cosmetics; body creams (cosmetics); colour cosmetics for the eyes; colour cosmetics for the skin; cosmetics; cosmetics for bronzing the skin; cosmetics for eyebrows; cosmetics for eyelashes; cosmetics for personal use; cosmetics for protecting the skin from sunburn; cosmetics for skin tanning; cosmetics for suntanning; cosmetics for the treatment of dry skin; cosmetics for the use on the hair; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of eye shadow; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics in the form of mascara; cosmetics in the form of milks; cosmetics in the form of nail polish; cosmetics in the form of oils; cosmetics in the form of powders; cosmetics in the form of rouge; cosmetics preparations; cosmetics to remove pigmentation marks; essential oils for use in cosmetics; eyebrow cosmetics; facial wipes impregnated with cosmetics; hair cosmetics; liners (cosmetics) for the eyes; milks (cosmetics); moisturisers (cosmetics); nail base coat (cosmetics); nail enamel (cosmetics); nail enamel remover (cosmetics); nail gloss (cosmetics); nail hardeners (cosmetics); nail polish removers (cosmetics); nail preparations (cosmetics); nail revitalising lotions (cosmetics); nail tips (cosmetics); nail treatment creams (cosmetics); nail treatment gels (cosmetics); nail treatment lotions (cosmetics); nail varnish remover (cosmetics); nail varnish removing preparations (cosmetics); night creams (cosmetics); non-medicated cosmetics; nourishing creams (cosmetics); oils for the body (cosmetics); oils for the breasts (cosmetics); oils for the skin (cosmetics); paper hand towels impregnated with cosmetics; powder compacts (cosmetics); preparations for removing cosmetics; skincare cosmetics; sprays for use on the body (cosmetics); sun barriers (cosmetics); sun blocking cream (cosmetics); sun blocking gel (cosmetics); sun blocking lipsticks (cosmetics); sun blocking lotions (cosmetics); sun blocking oils (cosmetics); sun blocking preparations (cosmetics); sun creams (cosmetics); sun gel (cosmetics); sun lotions (cosmetics); sun milk (cosmetics); sun protecting creams (cosmetics); sun protection oils (cosmetics); sun protection products (cosmetics); sun protectors for lips (cosmetics); sun screen preparations (cosmetics); sun screening preparations (cosmetics); sun skin care products (cosmetics); suntan lotion (cosmetics); suntan milk (cosmetics); suntan oils (cosmetics); suntan preparations (cosmetics); sun-tanning preparations (cosmetics); tanning compositions (cosmetics); tanning creams (cosmetics); tanning oils (cosmetics); tanning preparations (cosmetics); textile pads impregnated with cosmetics; tints (cosmetics); tissues impregnated with cosmetics; toilet napkins of cellulose impregnated with cosmetics; toilet napkins of cellulose wadding impregnated with cosmetics; toilet napkins of paper impregnated with cosmetics; toy cosmetics (usable); varnishes (cosmetics)

11.     The Farsedakis Declaration contains the following claims/statements:

·     The Opponent has since 1999 used the Opponent’s Trade Mark, in plain or stylised form.  The initial use was in relation to mascara but the Opponent’s product lines have expanded to include a wide range of cosmetics, including eyeliners, eyeshadows and eyebrow trimmers.  The Opponent has used the Opponent’s Trade Mark in Australia since 2007.

·     The Opponent has used the Opponent’s Trade Mark on its products, on its websites, social media accounts and promotional materials.  Such use of the Opponent’s Trade Mark is often combined with a pink colour scheme.

·     The Opponent’s BLINC products are distributed in Australia by International Beauty Supplies through various stores in Australia including David Jones and general skincare and cosmetic retailers, as well as by the Opponent’s website at Opponent’s extensively promotes its products under the Opponent’s Trade Mark on social media, including Facebook where its Australian page has 658 followers, and Instagram and twitter.  The Deponent considers that the Opponent has developed a substantial reputation in the Opponent’s Trade Mark, both in plain and stylised forms and considers that there is a significant risk that consumers of the goods will be confused by the similarity between the Opponent’s Trade Mark and the Trade Mark.  

12.     The Farsedakis Declaration provides evidence of worldwide followers of its Facebook (International page), Twitter and Instagram accounts but does not attempt to estimate what proportion of these are based in Australia (other than suggesting, without evidentiary support that “a large number of which would originate in Australia”).  The Farsedakis Declaration also provides 300 pages of sample invoices for sales of its products in Australia, both directly and to its distributor, but does not provide any clear statement of what its actual sales have been in Australia since 2007.

The Applicant

13.     The Applicant is a company based in Australia that produces cosmetics.

14.     The Prentice Declaration contains the following claims/statements:

·     The Applicant first started producing cosmetics under the Trade Mark in May 2015.  It promotes its products by means of instore marketing at the South Melbourne Pharmacy, social media and its online store at Prentice Declaration provides details of the sales made of products under the Trade Mark as well as marking expenditure.  Both amounts are unimpressive given the potential breadth of the market for the Applicant’s Goods.  The Prentice Declaration also provides labels used by the Opponent, supposedly displaying the Trade Mark.  Each of these labels features a mark that is substantially identical to the Trade Mark, with the descriptive element ‘skincare’ being replaced by various other descriptive terms.

Grounds of Opposition, Onus and Standard of Proof

16. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59 and 60. To successfully oppose the application the Opponent needs to establish at least one of the remaining grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

17.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 24 January 2017 (‘relevant date’), being the priority date of the application in Australia.[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

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

Discussion

Section 44

18. The relevant provisions of the Act with respect to the ground of opposition pursuant to 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.

19. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

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

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

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

1. In the event that each of these requirements is satisfied by the Opponent it may 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) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist 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 marks.

2. The Opponent has particularised the ground of opposition in the SGP by reference to the s 44 Marks. Each of the s 44 Marks have a priority date that is earlier than the priority date of the Trade Mark. I consider that at least some of goods for which each of the s 44 Marks are registered are similar to some of the Applicant’s Goods, as each of the respective marks are registered for cosmetics and skin care products. The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

3. I will now consider whether the Trade Mark is substantially identical to either of the s 44 Marks. For the purpose of this proceeding it is only necessary to consider the Pinq Mark as it is clearly more similar to the Trade Mark than the Opponent’s Trade Mark. Were I to find that the s 44 ground is not established in respect of the Pinq Mark, I would necessarily reach the same conclusion when considering the Opponent’s Trade Mark.

   23.        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.[5]

   [5] (1963) 109 CLR 407, [12].

   24.     The Trade Mark and the Pinq Mark are set out below:

   PINQ

   25.     On a side by side comparison there is a clear difference between the respective trade marks, in that both marks consist of different misspellings of the word ‘pink’ and the Trade Mark includes various additional words, though such words are likely to be descriptive of the Applicant’s Goods.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Pinq Mark are deceptively similar.

   26.     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].[6]

   [6] Ibid [13].

   27.     Jacobson J 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[7] at [49]; Australian Woollen Mills[8] at 658.

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

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

   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[9] 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.

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

   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[10] at 594 – 595.

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

   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].[11]

   [11] [2012] FCA 1022, [38]-[46].

   28.     I do not consider that the fancy script or large dot at the top of the ‘I’ in the Trade Mark will operate to prevent confusion in any significant way.  The particular script used in the Trade Mark does not appear to be particularly distinctive and unique and is likely, in the context of which the Applicant’s Goods are purchased (on the shelf of a supermarket or cosmetics retailer), to be read by the consumer as ‘pinc’.  Furthermore, to the extent that the consumer will have regard to the Trade Mark as a whole, it is obvious, from the differing font sizes and emphasis placed on the various elements, that the dominant element in the Trade Mark is the word ‘pinc’

   29.     In the context of the Applicant’s Goods, being cosmetics and skincare products the additional elements ‘skincare’ and ‘revitalise & hydrate’ are completely descriptive, do not change the meaning behind the Trade Mark and have a very low level of distinctiveness.  In such circumstances the presence of these elements ought to be discounted considerably in considering whether the respective marks are deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS).

   30. It is unlikely that a consumer will seek to purchase a skincare product using the full name of the Trade Mark, being ‘pinc skincare revitalise & hydrate’. Rather the consumer, being a person of imperfect recollection, is likely to focus on the elements ‘pinc’ and ‘pinq’ in the respective marks. These elements are phonetically identical. They are also conceptually identical, in that they both evoke the word ‘pink’ but with a misspelling. While there is a visual difference between the marks, both in the spelling of the respective ‘pink’ elements and the presence of the additional (though discounted elements) in the Trade Mark I consider that, in the circumstances in which the respective marks will be used (most notably in on a skincare product available on the shelf of a retailer), it would be quite possible for a consumer of imperfect recollection, when seeing a product bearing the Trade Mark, to be caused to wonder if the ‘pinc skincare revitalize & hydrate’ product is from the same source as the ‘pinq’ skincare product they are aware of. As such there is a real tangible danger of consumer confusion arising from the shared use of the dominant ‘pinc/q’ element in both marks. The requirements under s 44(1) of the Act have been satisfied.

   31.      I find the EIA to be insufficient to satisfy me that there has been honest concurrent use of the Trade Mark, or other circumstances exist 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 Pinq Mark, being 2008.

   32. I find that the Opponent has established its ground of opposition under s 44 of the Act.

   Decision

   33. I have found that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

   Costs

   34. The Opponent 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 Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   27 February 2019