Brock Beauty Inc. - [2016] ATMO 57

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia no. 1662393 (3 and 5) – DERMERA - in the name of Brock Beauty Inc.

Delegate:	Heath Wilson
Representation:	Holder: Angus Lang of Counsel instructed by Schweizer Kobras Lawyers.
Decision:	2016 ATMO 57 Reg 17A.24: Final decision on examination – subsection 44(1) of the Trade Marks Act 1995 – trade marks deceptively similar – application of 44(3) considered – IRDA rejected.

Background

This is an application to be heard on the examination of an International Registration Designating Australia (‘IRDA’) , the current details of which are extracted below:
IRDA No. 1662393
International Registration No: 1195620
Trade Mark: DERMERA (‘the Trade Mark’)
Priority Date: 3 November 2014
Holder: Brock Beauty, Inc.
Specification of Goods:
Class 3: Body and Beauty Care Cosmetics
Class 5: Dietary and Nutritional Supplements; Food Supplements
On 27 March 2015, IP Australia issued a first examination report and a Notification of Provisional Refusal of the IRDA. The basis of the provisional refusal was a ground for rejection under subsection 44(1) of the Trade Marks Act 1995 (‘the Act’).
The adverse examination report provided (amongst other things):
Your trade mark is substantially identical with, or deceptively similar to, the following trade mark(s), and is for similar or closely related goods and/or services:
1472107
The refusal applies to the following goods/services:
All of the goods claimed
I have enclosed details of the trade mark(s) mentioned above.
As can be seen above, the provisional refusal applied to all the goods for which extension of protection is sought. The Holder did not respond to the examiner but, on 6 May 2016, requested a hearing from the Registrar under reg 17A.17 of the Trade Marks Regulations 1995 (‘the Regulations’).
The decision was allocated to me to be made in my capacity as a delegate of the Registrar of Trade Marks and the matter was set down to be heard in Canberra on 7 June 2016.
On 24 May 2016 I set out a timetable for the Holder’s written submissions and any evidence it sought to rely upon. In accordance with the timetable, IP Australia received the following material from the Holder before the hearing:

Statutory Declaration of Tymeka Lawrence (President of the Holder) made 31 May 2016 with exhibits TL-1 to TL-14.
Statutory Declaration of Fiona Henderson (Solicitor for the Holder) made 26 May 2016 with exhibits FH-1 to FH-14.
Statutory Declaration of Fiona Henderson made 1 June 2016 with exhibits FH-1 and FH-2.
Written summary of argument dated 3 June 2016.

As delegate, I conducted the hearing on the scheduled date and Angus Lang of Counsel (instructed and accompanied by Fiona Henderson of Schweizer Kobras Lawyers) made oral submissions via teleconference.

Discussion

Section 44 of the Act relevantly provides:

44Identical 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)…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] ATMO 57
Decision Date: 29 July 2016

CaseChat Overview and Summary

This decision concerns an opposition to the registration of a trade mark, brought by Hills Industries Limited against Bitek Pty Ltd. The dispute centres on the interpretation of section 44(3)(a) of the Trade Marks Act 1995 (Cth), which deals with the defence of honest concurrent use. The court was required to determine the relevant date for assessing honest concurrent use in trade mark oppositions.

The legal issue before the court was whether evidence of concurrent use of a trade mark occurring *after* the priority date of an application is relevant to the exercise of discretion under section 44(3)(a) of the Trade Marks Act 1995. This section allows for the registration of a trade mark even if it is deceptively similar to an earlier registered mark, provided there has been honest concurrent use.

The court, referencing previous decisions including *PB Foods v Malanda* and *Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd*, reasoned that the relevant date for assessing honest concurrent use is the priority date of the application for registration. The court held that section 44(3)(a) is only engaged if a finding under section 44(1) has been made, and the evidence relevant to section 44(1) is that which existed prior to the priority date. It would be inconsistent to allow discretion based on use occurring at a different time than that which establishes the ground for opposition. This approach was also supported by an older decision under the repealed Trade Marks Act 1955, *Trussardi SpA v Rundles Pty Ltd*, which confirmed that the relevant date for honest concurrent use is the date of application. Therefore, use of the mark after the priority date of 3 November 2014 was not relevant to the application of honest concurrent use in this matter.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

In Hills Industries Limited v Bitek Pty Ltd, Lander J considered comments made in relation to section 34(1) of the (now repealed) Trade Marks Act 1955 in the case of PB Foods v Malanda[12] and ultimately found with regard to s44(3)(a):In my opinion, evidence of concurrent use after the priority date is not relevant in regard to an application under s 44(3)(a). Section 44(3)(a) is only engaged if a finding has been made under s 44(1). It is agreed that the evidence relevant to an opposition under s 44(1) for the registration of a trade mark is evidence prior to the priority date. It would be most unusual if, having determined that the applicant’s trade mark was deceptively similar to the trade mark registered by another person in respect of similar goods at a particular time, the Registrar or the Court, as in this case, is entitled to exercise its discretion in favour of the applicant having regard to use of that mark at a different time.It seems to me that s 44(3)(a), which allows the exercise of discretion if there has been an honest concurrent use of the two trade marks, is speaking of the same time as s 44(1), ie., before the priority date. Such a conclusion is consistent with Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 and the assumption made by Kenny J in McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102 at 111 who when addressing s 44(3)(a) and citing decisions of the Registrar said that the rights of the parties are to be determined as at the date of the application for registration. (Emphasis added) [13][12] [1999] FCA 1602; (1999) 47 IPR 47.[13] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [163-164]. The submissions from the Holder’s representative referred to an older decision of this office made under the provisions of the Trade Marks Act 1955 (Cth) as authority for the proposition that events after the application date may be considered in the exercise of the discretion. The decision, Trussardi SpA v Rundles Pty Ltd, considered section 34(1) of that Act (‘honest concurrent use or other special circumstances’) and found therein:It is well settled that in matters concerning honest concurrent use the relevant date before which that use must have occurred is the date of application for registration made by the party seeking to avail itself of those provisions: “Granada” Trade Mark [1979] RPC 303 at 312; Gloy and Empire Adhesives Ltd’s Application (1934) 51 RPC 63 at 69. The relevant date here, then, is 22 March 1988. According to the Rundle declaration the applicant did not commence to use its mark until April 1988, some weeks after the date of application. It follows that the provisions relating to honest concurrent use cannot be applied to this application. [14] [14] [1993] ATMO 7; (1993) 25 IPR 502. The delegate subsequently went on to apply the then ‘special circumstances’ exception also under section 34(1), the equivalent of which is now section 44(3)(b) under the Act. Nevertheless, the relevant date in the current matter is 3 November 2014 and in accordance with the above cases, use after that date is not relevant for the application of honest concurrent use.

Ratio Decidendi

Legal Principle Established

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