Bondi Sands Pty Ltd v Marq Group Holdings B.V

[2023] ATMO 189

TRADE MARKS ACT 1995

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

Re:Opposition by Bondi Sands Pty Ltd to registration of trade mark application number 2162645 (classes 3 and 21) – Australian Sands and sun device – in the name of Marq Group Holdings BV

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Siobhan Ryan of Counsel instructed by Pointon Partners Pty Ltd

Applicant: Ian Horak of Counsel instructed by Phillips Ormonde Fitzpatrick

Decision:

2023 ATMO 189

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 60 and 62A pursued – ground of opposition established under s 60 –registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Bondi Sands Pty Ltd (‘Opponent’) to registration of the following trade mark:

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

   Trade mark number        2162645 (‘Application’)

   Trade mark:   (‘Trade Mark’)

   Applicant:  Marq Group Holdings B.V. (‘Applicant’)

   Filing Date:  11 March 2021

   Specification:  Class 3: Artificial skin tanning preparations for human use; Cosmetic preparations adapted for sun-tanning; Self tanning creams (cosmetic); Self tanning lotions (cosmetic); Self tanning mists (cosmetic); Self tanning preparations (cosmetic); Tanning removing preparations; Moisturising body lotion (cosmetic); Tints (cosmetics); Conditioning preparations for the skin; Exfoliants for the care of the skin; Oils for the skin (cosmetics); Products for browning the skin; Skin toners; Body scrubs; Toilet articles for the care of the skin; Sprays (preparations) for the body (other than for medical use)

   Class 21: Applicators for cosmetics; Applicators in the nature of sponges (other than for medical use); Loofahs; Cosmetics brushes; Skin cleansing brushes

   (‘Applicant’s Goods’)

2. The Trade Mark was examined and advertised as accepted for possible registration on 12 August 2021.

3. On 7 October 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 27 October 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 13 December 2021. The Applicant filed a Notice of Intention to Defend the opposition on 11 January 2022.

4. The Opponent filed Evidence in Support on 12 April 2022. The Applicant filed Evidence in Answer on 5 July 2022. The Opponent filed Evidence in Reply on 10 October 2022.

5. The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties elected to be heard orally by video conference. The matter was heard on 24 August 2023. Providing submissions for the Applicant was Ian Horak of Counsel, instructed by Michael O’Donnell of Phillips Ormonde Fitzpatrick. The Opponent’s submissions were made by Siobhan Ryan of Counsel, instructed by Stefano Mazzeo and Jessica Tomlinson of Pointon Partners Pty Ltd. The hearing took place before another delegate of the Registrar of Trade Marks, however due to unforeseen circumstances that delegate was not available to decide this matter, and as such has now been allocated to me for decision. I have read all the relevant documents and materials in respect of this opposition including the SGP, evidence and written submissions and have listened to the recording of the hearing. As a delegate of the Registrar of Trade Marks, I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42, 43, 44, 58, 58A, 59, 60 and 62A. However, the Opponent’s written submissions state that the Opponent will not press ss 42, 43, 58, 58A and 59. For completeness I find the ss 42, 43, 58, 58A and 59 grounds have been abandoned.

7. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Filing Date.[3] The ground considered in this decision is determined at the priority date, which in this case is the same as the Filing Date, being 11 March 2021 (‘Relevant Date’).

   [2]  Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

   Evidence

8. The following evidence was filed:

   Evidence in Support (‘EIS’)

   Declaration of Shaun Garry Wilson, director of Bondi Sands Pty Ltd made on 12 April 2022, with Exhibits AAA, A to D, F, G, I, K to Z, AA, BB and Confidential Exhibits E, H and J.

   Evidence in Answer (‘EIA’)

   Declaration of Cameron Campbell, director of Marq Group Holdings B.V. made on 29 June 2022 with Exhibits CC-1 to CC-7.

   Evidence in Reply (‘EIR’)

   Second Declaration of Shaun Garry Wilson made on 10 October 2022, with Exhibits A to F.

   Summary of EIS

9. Wilson states that the Opponent has been supplying self-tanning products and applicators since 2011 and cosmetics and skincare products, including cosmetic applicators and brushes since 2017 (collectively ‘Opponent’s Goods’). The Opponent’s Goods are claimed to have been sold under the trade marks BONDI SANDS and  (‘Bondi Sands Logo’) (collectively ‘Bondi Sands Marks’) since 2011.

10. Wilson provides a list of 13 prior registered marks in the name of the Opponent which were filed before the Relevant Date. For convenience, details are provided in the 2 tables at Annexure A of this decision. Table 1 shows the Bondi Sands Marks. Table 2 shows the Bondi Sands Formative Marks, being adaptations of the Bondi Sands Marks which the Opponent states have been progressively introduced to designate new product lines.

11. Wilson states that the Opponent has three registered domain names. The domain name ‘ has been operational since 2012 and the Opponent’s Goods under the Bondi Sands Marks have been available to purchase on that site since then. Wilson provides screen shots from this website in March 2022 and archived extracts of the website from the Wayback Machine dated between 10 December 2012 to 14 November 2021.[4] I note that the Wayback Machine extracts show use of the Bondi Sands Marks on self-tanning products from 2012 onwards. I also note that use of the Bondi Sands Marks on applicators and mitts is only shown from 2016 and sun protection and skin care products from 2020.

    [4] >

    Wilson states that the Opponent’s Goods under the Bondi Sands Marks are also sold by major retailers in Australia, including Priceline (since 2012), Coles (since 2015), Woolworths (since 2016) and Chemist Warehouse (since September 2018). Undated screenshots of these retailer’s websites show the Opponent’s Goods under the Bondi Sands Marks priced between $7 and $27.

12. Wilson claims that sales of the Opponent’s Goods under the Bondi Sands Marks are significant and by way of example, provides worldwide annual sales figures for the self-tanning product BONDI SANDS LIQUID GOLD from its launch in 2015 to 2020, together with the approximate percent of Australian sales. The figures are extensive. The Wayback Machine extracts and the screenshots of the retailers’ web sites indicate that the approximate retail unit price of the BONDI SANDS LIQUID GOLD products is between $19 and $27. Copies of redacted invoices from the Opponent to its distributors give an indication of the wholesale price of the BONDI SANDS LIQUID GOLD product. Using the upper end of the retail price point, $27, and the annual sales for Australia/New Zealand for the financial years 19/20 and 20/21, I estimate that the number of units of BONDI SANDS LIQUID GOLD products sold between 2015 to 2020 is impressive.

13. Wilson claims that the Opponent’s Goods under the Bondi Sands Marks have been advertised since 2011. Wilson provides a total figure of marketing spend from 2011, which is extensive. Wilson provides copies of advertisements in catalogues and promotional materials circulated by Chemist Warehouse claimed to be in several one to two week periods between November 2020 and February 2021. While none of these catalogues and promotional materials are dated, they do show use of the Bondi Sands Marks on self-tanning and sun protection products.

14. Wilson also claims use by the Opponent of the Bondi Sands Marks as follows:

    ·On stationery, business cards, websites, the Opponent’s Goods and product packaging; and in advertising images, trade fairs and emails. Wilson claims web site visits in the year April 2021/2022 of over 3 million but does not provide evidence to support this claim. Wilson also provides evidence of a business card which displays the Bondi Sands Logo claimed to be in use from at least 2015 and examples of promotional material sent by email to approximately 350,000 email subscribers. I note that of the examples, only one is dated before the Relevant Date.

    ·Social media including Twitter, Instagram (February 2013 - switching to a business account (@bondisands) in July 2016), Facebook (June 2011) and YouTube. Followers for both Instagram and Facebook are provided together with copies of Instagram pages. The majority are dated before the Relevant Date. In addition, Wilson provides links to five of the Opponent’s YouTube videos and five third party YouTube videos.

    ·Marketing catalogues from August 2015 to 2016, one of which appears to be directed to the US market.

    ·Billboard advertisements, banners, catalogues and sample products. Wilson provides photos of billboard advertisements for sunscreen from 7 February 2021 to 21 February 2021 at three prominent locations in Melbourne. I note that no evidence is provided of use of the Bondi Sands Marks on banners, catalogues or sample products.

    ·Endorsements and collaborations with celebrities, internet personalities and social media influencers. Wilson provides screenshots of the endorsements/collaborations and while some are dated after the Relevant Date, the majority are before the Relevant Date.

    ·Advertising and editorials in media published in Australia. Wilson provides copies of articles and editorials in various publications dated before the Relevant Date.

    ·Online blog websites. Wilson provides copies of four blog posts dated before the Relevant Date.

    ·Sun protection sponsorship of the 2021 and 2022 Australian Open. Wilson provides a copy of an Australian Open article, screenshots of the Australian Open website showing the Opponent’s sponsorship and a Wayback Machine extract from the ‘ausopen.com’ web site which are all dated before the Relevant Date.[5]

    ·A promotional event in 2018 for 284 guests in relation to the Bondi Sands Liquid Gold product range.

    [5] >

    Wilson then discusses the Applicant and the Trade Mark. According to Wilson internet research into the Applicant shows that the Applicant has not used the Trade Mark in relation to any of the Applicant’s Goods and nor is the Applicant actively engaged in business in Australia under the Trade Mark.

15. Wilson also states that the Applicant provides self-tanning products in Australia under the brand MINE TAN which are retailed in Priceline, Woolworths and Chemist Warehouse, where Wilson notes the Opponent’s Goods under the Bondi Sands Marks are also retailed.

    EIA

16. Campbell discusses the Applicant’s personal care products business of which sunless tanning products occupy a significant proportion of its range. In Australia, these sunless tanning products are not provided under the Trade Mark and are sold via outlets including Chemist Warehouse and Priceline and also online via the website >

    Campbell then comments on the Wilson Declaration, its relevance, his opinion on the evocation of the trade mark Bondi Sands, the fame of Bondi Beach and the differences between the Bondi Sands Device and the Trade Mark. Campbell’s unsubstantiated comments and opinions on the relevance of Wilson’s Declaration, the evocation of the Bondi Sands trade mark and the difference between the marks amount to opinion and are not evidence. Campbell attempts to support his opinions with evidence of the fame and reputation of Bondi Beach in Australia.

17. Campbell states that consumers of sunless tanning products in Australia are exceedingly careful when purchasing a sunless tanning product to ensure it is one they have used before, or, one recommended by a trusted person. Campbell provides one blog reference as support for this conclusion.

18. In response to Wilson’s claim that the Applicant is not using the Trade Mark, Campbell states that the Applicant is seeking registration before embarking on any promotion of products bearing the Trade Mark.

19. Campbell admits that the Applicant was aware of the Opponent’s reputation in the BONDI SANDS trade mark when seeking a brand name for a new product line. He claims there was never any intention of establishing a connection between the Applicant’s products and the Opponent. He states that the Trade Mark was chosen to evoke the idea of a hot summer day in Australia. The stylised sun graphic is included to communicate summer and warmth, the word ‘sands’ evoking the idea of a sandy expanse being heated under the sun graphic. Three photos are provided in the evidence to support Campbell’s statements on evocation namely the red sands of the outback, the White Sands Desert around Perth, and a remote Queensland beach.

    Summary of EIR

20. Wilson provides printouts dated 18 August 2022 from the Register of Trade Marks of pending and registered marks which contain the word BONDI, including in classes 3 and 5, where there are over 100 marks (including the Opponent’s 38 marks).

21. Wilson comments on Campbell’s statements regarding consumers of sunless tanning products. Wilson claims that consumers, when purchasing these products, focus on the qualities or characteristics within the brand, and more specifically whether the product provides a natural look, the type of application within the brand and product as well as how easily it is applied to the body.

22. On the Applicant’s awareness of the Opponent’s Bondi Sands Marks, Wilson notes that in selecting the Trade Mark, the Applicant has adopted the same structure as the Bondi Sands Marks (being an Australian geographic name plus SANDS).

23. On the reason provided by Campbell to choose the Trade Mark, Wilson claims that the word SANDS has nothing to do with tanning products and pairing an Australian geographic word with the word SANDS is unique to the Opponent.

24. Wilson claims that the sun device adopted by the Applicant in its Trade Mark is similar to sun devices adopted by competitor brands, and therefore a sun device per se is non-distinctive of sunless tanning products. Four examples from the Register of Trade Marks are provided. Wilson also claims that the Opponent has registered trade marks containing a sun device (reproduced below), although it is not immediately apparent which part comprises the sun device (or whether it is the whole image that is referred to).

    Discussion and Reasons

    Section 60

25. The provisions of s 60 are reproduced below:

    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.

    Note:          For priority date see section 12.

26. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

27. The SGP identifies the Bondi Sands Marks as the trade marks supporting this ground of opposition.

    Reputation

28. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[6]

    [6] [2000] FCA 1335, [81] (‘McCormick’).

29. Further, Kenny J stated in McCormick that:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[7]

    [7] Ibid [86].

30. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[8] Here given the nature of the parties’ goods, which fall under the broad description of skin care products, the relevant market is likely to include most Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[9]

    [8] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [9] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].

31. The Applicant submits that the evidence refers to multiple trade marks among the Bondi Sands Marks, and this imprecision does not allow me to form a conclusion on reputation. However, the Opponent’s evidence shows significant use of both the BONDI SANDS word mark and the Bondi Sands Logo. Further, in respect of the Bondi Sands Logo, the evidence shows it is used on all the product packaging of the Opponent’s Goods, either alone or as a house mark with other secondary trade marks such as Aero. As such, I am satisfied each of the Bondi Sands Marks had the necessary reputation at the relevant date. The Applicant’s submission is correct, in that s 60 requires I consider one earlier mark (or at least, one mark at a time). As such, for present purposes, it is sufficient that I focus the enquiry on the Bondi Sands Logo.

32. On the basis of the evidence provided by the Opponent, I am satisfied that at the Relevant Date, the Bondi Sands Logo had acquired a reputation in Australia amongst a significant number of consumers in respect of self-tanning and sun protection products. The reputation enjoyed by the Bondi Sands Logo can be readily inferred from the extensive sales and advertising expenditure figures disclosed together with the extensive marketing and advertising activities detailed in the Opponent’s evidence.

33. Further, public awareness of the Bondi Sands Logo is apparent in the significant reach of the Opponent’s online, print, social media and influencer advertising and marketing.

34. Accordingly, as I am satisfied that the Bondi Sands Logo has a reputation in relation to self-tanning products and sun protection products in Australia before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

    Likely to deceive or cause confusion

35. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:

    “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.[10]

    [10] [1979] RPC 410, 423 (citation omitted).

1. The likelihood of deception or confusion must be real and tangible.[11] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Goods appearing in relation to the Trade Mark were being provided by the same person as the owner of the Bondi Sands Logo.[12] To this end, it has been observed that ‘the threshold for confusion is not high’[13] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[14]

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   [12] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

   [13] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

   [14] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

2. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[15]

   [15] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways Ltd v Edwards [2016] 338 ALR 134, [142] (Yates J).

3. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the Bondi Sands Logo, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods of the parties. Each of these is a variable.

4. The Opponent submits that there is a “real tangible danger” of deception or confusion in relation to the use of the Trade Mark having regard to:

   • the nature and strength of the reputation of the Bondi Sands Marks;
   • the Trade Mark incorporates the essential distinctive elements SANDS and the same word structure;
   • the Opponent’s and the Applicant’s respective products are directed towards the same class of customers and sold in the same outlets at similar price points;
   • the Opponent is known for its brand expansion practices; and
   • searches for “Australian Sands” and “Australian Sands” + “tan” link to the Opponent’s tanning products under the Bondi Sands Marks.

5. In reply the Applicant submits that:

   • the Opponent fails to address the importance of BONDI in qualifying and giving meaning to the words SANDS such that its absence would be readily apparent to a consumer;
   • aurally, visually and conceptually the respective marks are different;
   • similarity of idea is not sufficient;
   • the reference to brand extension is not expanding the BONDI SANDS mark to other SANDS marks and the Opponent never uses BONDI SANDS without the word BONDI; and
   • internet searches for “Australian Sands” and “Australian Sands” + “tan” do not exclusively identify the Opponent’s Goods in their results.

6. The Bondi Sands Logo is inherently distinctive and its reputation is strong. With respect to the products to which the Trade Mark will be used, the Applicant’s Goods are skin care products with a particular focus on self-tanning products, placing them squarely in the market in which the Bondi Sands Logo has a reputation. Each of these factors tend toward a finding that deception, or at least confusion, is likely. What is left to consider is the degree of similarity between the trade marks and whether in these contexts it is likely to result in deception or confusion.

7. In my opinion, the Bondi Sands Logo and the Trade Mark share a significant degree of similarity as follows:

   ·the main textual elements of each trade mark are a combination of a geographical word – AUSTRALIAN or BONDI - with the word SANDS. Therefore, there is a commonality of idea — that of sands in Australia.

   ·SANDS is a distinctive component in respect of goods in Classes 3 and 21.

   ·the word SANDS appears in the Trade Mark in larger script, different font and in bold in comparison to the word AUSTRALIAN, thereby visually enhancing the presence of the word SANDS as a significant feature of the Trade Mark.

   ·the word BONDI and the word SANDS appear one atop the other, which is the same order and positioning as the words AUSTRALIAN and SANDS in the Trade Mark.

   ·the added matter in the Bondi Sands Logo, namely the Harbour Bridge Device and the phrase ‘The Australian Tan’, are likely to be viewed as enhancers of the ‘Australianness’ of the Bondi Sands Logo and thereby bolster the commonality of idea with the Trade Mark.

   ·albeit minor, the other textual element of the Trade Mark, AUSTRALIAN is present in the Bondi Sands Logo. That said, it appears among other words in diminutive lettering.

8. The use of the sun device in the Trade Mark does not dilute the prominence of the words AUSTRALIAN and SANDS and in my opinion is not sufficient to differentiate the Trade Mark from the Bondi Sands Logo so as to prevent consumer confusion.

9. I believe there is a real and tangible risk of consumers of the Applicant’s Goods, knowing of the Bondi Sands Logo, being induced, left in doubt or caused to wonder whether the goods offered under the Trade Mark have the same origin or are connected in some way to the Opponent’s Goods. In reaching this conclusion I have taken into account that the goods are skin care products and particularly self-tanning products which, I agree, would be bought with a degree of care and consideration because consumers want to ensure the self-tanning product is fit for purpose in terms of shade, time and ease.

10. The Applicant has submitted that a trade mark for tanning products drawing a connection evoking sand is not something consumers would associate uniquely with BONDI SANDS. I do not need to take it this far to reach the conclusion that I have. The question here is whether the Trade Mark as applied for is likely to cause confusion. It is not necessary to consider whether some other mark containing the word ‘sand’ or somehow otherwise evoking sand would also be.

11. In conclusion, I am satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers and therefore the s 60 ground of opposition has been established.

12. Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds be considered.

    Decision

13. Section 55 relevantly provides:

    Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          For limitations see section 6.

14. I have found the Opponent has established the ground of opposition it raised pursuant to s 60. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, 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.

    Costs

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

    Anne Makrigiorgos

    Delegate of the Registrar of Trade Marks

    23 November 2023

    
    

Annexure A

Table 1 Bondi Sands Marks

Number	Mark	Class	Goods/Services
1461516	3, 5	Class 3: Body creams (cosmetics); colour cosmetics for the skin; cosmetics; cosmetics for bronzing the skin; cosmetics for personal use; cosmetics for skin tanning; cosmetics for suntanning; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics preparations; non-medicated cosmetics; oils for the skin (cosmetics); skincare cosmetics; sprays for use on the body (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); artificial tanning preparations; cosmetic preparations adapted for sun-tanning; cosmetic preparations for skin tanning; cosmetic preparations for tanning the skin; cosmetic preparations for use in giving a sun-tan effect; cosmetics for skin tanning; creams for tanning the skin; self tanning creams (cosmetic); self tanning lotions (cosmetic); self tanning mists (cosmetic); self tanning preparations (cosmetic); sun-tanning preparations (cosmetics); tan lotions (cosmetic); tanning compositions (cosmetics); tanning creams (cosmetics); tanning oils (cosmetics); tanning preparations (cosmetics); tanning removing preparations Class 5: Self tanning preparations for medical purposes; sun-tanning preparations (ingestible substances); tanning pills; pharmaceutical preparations for personal use; sanitary preparations for personal hygiene, other than toiletries
1700248	BONDI SANDS	3, 5, 44	Class 3: Non-medicated skincare preparations; non-medicated creams for protection against the sun; non-medicated preparations for suntanning; non-medicated preparations for the relief of sunburn; body creams; body lotions (other than for medical purposes); body moisturisers; colour cosmetics for the skin; cosmetics; cosmetics for bronzing the skin; cosmetics for personal use; cosmetics for skin tanning; cosmetics for suntanning; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics preparations; cosmetics for bronzing the skin; cosmetics for protecting the skin from sunburn; non-medicated cosmetics; oils for the skin; skincare cosmetics; sprays (preparations) for use on the body (other than for medical use); suntan lotion; non-medicated suntan lotion; suntan milk; suntan oils; suntanning preparations; non-medicated suntanning preparations; tanning compositions; tanning creams; tanning oils; tanning preparations; artificial tanning preparations; cosmetic preparations adapted for suntanning; cosmetic preparations for skin tanning; cosmetic preparations for tanning the skin; cosmetic preparations for use in giving a sun-tan effect; creams for tanning the skin; non-medicated suntan creams; self-tanning creams; self-tanning lotions; self-tanning mists; self-tanning preparations; tan lotions; tanning removing preparations; sunscreens; non-medicated sunscreen preparations; sun block; sun blocking cream; sun blocking gel; sun blocking oils; sun blocking preparations; after sun creams; after sun lotions; after sun moisturisers; after sun preparations; oils for moisturising the skin after sunbathing; sun bronzers; sun protection products; sun skincare products Class 5: Pharmaceutical preparations, namely, self-tanning preparations for medical purposes; tanning pills; medicated sun screen; medicated sun block; medicated sun block lotions; medicated sun blocking lipsticks; medicated sun blocking oils; sun blocking preparations for medical use; sun barriers for medical use; sun protection creams for medical use; sun protection oils for medical use; sun protection products for medical purposes; sunscreen preparations for medical use; sun skincare products for medical purposes; sunburn ointments; sunburn preparations for pharmaceutical purposes; suntan lotion for medical use; suntan milk for medical use; suntan oils for medical use; medicated body preparations; medicated body care products; medicated creams; medicated creams for application after exposure to the sun; medicated lotions; medicated preparations for use in the treatment of sunburn; medicated sunburn lotion; preparations for sun protection (pharmaceutical); preparations for the skin (medicated); sprays for use on the body (medicated); sprays for use on the body (pharmaceutical) Class 44: Medical, hygienic and beauty care services, namely, skin care salons and beauty salons; spray tanning services; spray tanning salon services; suntanning services; suntanning salon services; skin care services; advisory services relating to beauty treatment; beauty services; beauty treatment services; information, advisory and consultancy services relating to all of the aforesaid services
1865990	BONDI SANDS	21, 25, 35	Class 21: Applicators for cosmetics; Cosmetics applicators; Utensils for use in body care; Brushes Class 25: Apparel (clothing, footwear, headgear); Clothing; Headgear for wear; Swimwear; Nightwear; Lingerie; Nightclothes (sleeping garments); Nighties; Nightshirts; Sleepwear; Underwear; Footwear Class 35: Retail services; Wholesaling of goods (by any means); Retailing of goods (by any means); Advertising; Business administration; Office functions; Distribution of goods (not being transport services) and wholesale of goods; Advertising services provided over the internet
1870563	BONDI SANDS	3, 5	Class 3: Skincare preparations (cosmetic); Serum (cosmetic preparations); Lotions for cosmetic purposes; Moisturising lotions (cosmetic); Moisturising skin lotions (cosmetic); Non-medicated face lotion; Non-medicated facial lotions (cosmetic); Non-medicated lotions; Non-medicated skin care lotions (cosmetic); Non-medicated skin clarifying lotions; Non-medicated skin lotions; Perfumed body lotions (non-medicated toilet preparations); Perfumed lotions (non-medicated toilet preparations); Toiletries in the form of non-medicated lotions; Cosmetic preparations for skin care; Cosmetic products for skin care; Cosmetic skin care products; Essences for skin care; Non-medicated products for skin care; Non-medicated skin care beauty products; Non-medicated skin care products; Powders for skin care (not for medical use); Skin care creams (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Sun skin care products (cosmetics); Body care preparations (non-medicated); Body care products (non-medicated); Moisturising body lotion (cosmetic) Class 5: Serums; Body lotions for medical purposes; Medicated lotions for the body; Medicated lotions for the face; Medicated skin lotions; Medicated sunburn lotion; Moisturising body lotion (pharmaceutical); Moisturising lotions (pharmaceutical); Moisturising lotions for the body (pharmaceutical); Moisturising skin lotions (pharmaceutical); Skin care lotions (medicated); Suntan lotion for medical use; Medicated skin care preparations; Pharmaceutical preparations for skin care; Powders for skin care (for medical use); Skin care creams for medical use; Skin care oils (medicated); Skin care preparations (medicated); Skin care products (medicated); Sun skin care products for medical purposes; Body care preparations (medicated); Body care products (medicated); Distilled oils for body care (pharmaceutical); Natural body care products (medicated) for the face; Natural body care products (medicated) for the skin; Preparations for body care (pharmaceuticals)
1970216	3, 5, 44	Class 3: Body creams (cosmetics); Colour cosmetics for the skin; Cosmetics; Cosmetics for bronzing the skin; Cosmetics for personal use; Cosmetics for skin tanning; Cosmetics for suntanning; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of gel; Cosmetics in the form of non-medicated lotions; Cosmetics preparations; Non-medicated cosmetics; Oils for the skin (cosmetics); Skincare cosmetics; Sprays for use on the body (cosmetics); Non-medicated suntan lotions; Suntan lotion (cosmetics); Suntan milk (cosmetics); Suntan oils (cosmetics); Suntan preparations (cosmetics); Suntan preparations for use on the skin; Sun-tanning preparations (cosmetics); Tanning compositions (cosmetics); Self tanning creams (cosmetic); Skin tanning creams for human use; Tanning creams (cosmetics); Tanning oils (cosmetics); Artificial skin tanning preparations for human use; Self tanning preparations (cosmetic); Tanning preparations (cosmetics); Cosmetic preparations adapted for sun-tanning; Cosmetic preparations for skin tanning; Cosmetic preparations for tanning the skin; Self tanning lotions (cosmetic); Self tanning mists (cosmetic); Tanning removing preparations; Cosmetic preparations for use in giving a sun-tan effect; Tan lotions (cosmetic); Non-medicated sun screening preparations; Sun screen preparations (cosmetics); Sun screening preparations (cosmetics) Class 5: Self tanning preparations for medical purposes; sun-tanning preparations (ingestible substances); tanning pills; pharmaceutical preparations for personal use; sanitary preparations for personal hygiene, other than toiletries; Pharmaceutical preparations, namely, self-tanning preparations for medical purposes; tanning pills; medicated sun screen; medicated sun block; medicated sun block lotions; medicated sun blocking lipsticks; medicated sun blocking oils; sun blocking preparations for medical use; sun barriers for medical use; sun protection creams for medical use; sun protection oils for medical use; sun protection products for medical purposes; sunscreen preparations for medical use; sun skincare products for medical purposes; sunburn ointments; sunburn preparations for pharmaceutical purposes; suntan lotion for medical use; suntan milk for medical use; suntan oils for medical use; medicated body preparations; medicated body care products; medicated creams; medicated creams for application after exposure to the sun; medicated lotions; medicated preparations for use in the treatment of sunburn; medicated sunburn lotion; preparations for sun protection (pharmaceutical); preparations for the skin (medicated); sprays for use on the body (medicated); sprays for use on the body (pharmaceutical) Class 44: Medical, hygienic and beauty care services, namely, skin care salons and beauty salons; spray tanning services; spray tanning salon services; suntanning services; suntanning salon services; skin care services; advisory services relating to beauty treatment; beauty services; beauty treatment services; information, advisory and consultancy services relating to all of the aforesaid services

Table 2 Bondi Sands Formative Marks

Number	Mark	Class
1941544	BONDI SANDS AERO	3
1992496	3
1992497	BONDI SANDS GLO	3
1992498	3
2031187	3
2055774	PURE BY BONDI SANDS	3
2058805	3, 5
2093585	3