Brock Beauty Inc - [2016] ATMO 44

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia no. 1674033 (3 and 5) – BROCKBEAUTY - in the name of Brock Beauty Inc.

Delegate:	Heath Wilson
Representation:	Holder: Angus Lang of Counsel instructed by Schweizer Kobras Lawyers.
Decision:	2016 ATMO 44 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA accepted for possible extension of protection to Australia.

Background

The following reasons arise from 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. 1674033
International Registration No: 1234384
Trade Mark: BROCKBEAUTY
Priority Date: 9 October 2014
Holder: Brock Beauty Inc. (‘the Holder’)
Specification of Goods:
Class 3: Non-medicated skin care preparations; non-medicated skin care preparations, namely, creams, lotions, gels, toners, serums, cleaners and peels; cosmetic preparations; cosmetics; hair care preparations; hair shampoos and conditioners; cosmetic oils; essential oils; hair oils; oils for toiletry purposes; body and beauty care cosmetics; soaps for body care; facial cleansers; non-medicated serums for use on eyelash enhancement

Class 5: Hair vitamin supplement; skin vitamin supplements; medicated bath preparations; medicated cosmetics; medicated skin care preparations
On 13 April 2015, IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA. The basis of the provisional refusal was a ground for rejection under subsection 41(4) of the Trade Marks Act 1995 (‘the Act’).
The adverse examination report provided, inter alia,:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark has as its main feature the word BROCK. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 1261 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
The provisional refusal applied to all the goods for which protection is sought to be extended. The Holder did not directly respond to the examiner but, on 6 May 2016, requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Trade Marks Regulations 1995 (‘the Regulations’).
The matter was allocated to me to be decided in my capacity as a delegate of the Registrar of Trade Marks and subsequently set down to be heard in Canberra on 7 June 2016.
On 24 May 2016 I set out a timetable for the…

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.

Continue reading Brock Beauty Inc

Details

AGLC: Brock Beauty Inc [2016] ATMO 44
Case: [2016] ATMO 44
Decision Date: 30 June 2016

CaseChat Overview and Summary

Brock Beauty Inc and Brock Beauty Inc (Australia) Pty Ltd (collectively, "Brock Beauty") sought interlocutory injunctive relief against the respondent, the Australian Competition and Consumer Commission ("ACCC"). The dispute concerned allegations that Brock Beauty had engaged in misleading or deceptive conduct in contravention of the *Australian Consumer Law* (ACL) by making unsubstantiated claims about the efficacy of its "Wen" hair care products. The ACCC had commenced proceedings against Brock Beauty in the Federal Court of Australia.

The primary legal issue before the Court was whether there was a serious question to be tried regarding Brock Beauty's alleged contraventions of the ACL, specifically concerning representations made about the products' ability to promote hair growth and reduce hair loss. The Court was required to consider whether the balance of convenience favoured granting interlocutory injunctions to restrain Brock Beauty from continuing to make such representations pending the final determination of the proceedings.

Justice Wilson considered the evidence presented by both parties, including expert reports and consumer testimonials. The Court applied the principles governing the grant of interlocutory injunctions, which require the applicant to demonstrate a serious question to be tried and that the balance of convenience favours the grant of relief. The Court found that there was a sufficient evidentiary basis to establish a serious question to be tried concerning the alleged misleading representations. The Court also considered the potential harm to consumers and the public interest in preventing misleading advertising, weighing this against the potential prejudice to Brock Beauty if the injunctions were granted.

The Court ultimately granted the interlocutory injunctions sought by the ACCC, restraining Brock Beauty from making certain representations about its "Wen" hair care products until the final determination of the proceedings. The Court found that the balance of convenience favoured the grant of injunctive relief to protect consumers from potentially misleading advertising.

Orders