Chernae Noonan v Benefit Cosmetics LLC

[2015] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by Chernae Noonan to registration of trade mark applications 1423081(44) and 1423082(44) - BENEFIT BROWBAR and BENEFIT BROWBAR (stylised) - filed in the name of Benefit Cosmetics LLC.

Delegate:

Nicole Worth

Representation:

Opponent: Ben Gardiner of Counsel, instructed by Thomson Geer Lawyers.

Applicant: Chris Burgess of Counsel, instructed by Spruson & Ferguson Patent & Trade Mark Attorneys

Decision:

2015 ATMO 17

Opposition proceedings under s 52 – ss 44 and 60 pressed – s 60 established – applications refused.

Background

1. This is an opposition brought by Chernae Noonan (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subject of application numbers 1423081 and 1423082, filed in the name of Benefit Cosmetics LLC (‘the Applicant’).

2. The relevant details of the trade mark applications are as follows:

Application No. 1423081	Application No. 1423082
BENEFIT BROWBAR
Class 44: Hygienic and beauty services; beauty salon services	Class 44: Hygienic and beauty services; beauty salon services
Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied	Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied
Filing date: 2 May 2011	Filing date: 2 May 2011

Unless otherwise specified, I refer to the two trade marks collectively as ‘the Trade Marks’.

1. The applications were examined and grounds for rejection were raised under section 44 on the basis of the Opponent’s prior registration of the word mark THE BROW BAR, registered in respect of services similar to those of the Applicant. The Applicant provided evidence of use sufficient to satisfy the examiner that it was appropriate to apply the provisions of subsection 44(3)(a), and the applications were accordingly accepted for possible registration. Acceptance of the applications was advertised in the Australian Official Journal of Trade Marks on 22 November 2012.

2. On 12 April 2013 the Opponent filed notices of opposition to registration of the Trade Marks, nominating grounds of opposition under sections 60 and 44. After the filing of evidence, discussed below, the matter came for hearing before me, as a delegate of the Registrar of Trade Marks, on 26 November 2014. The Opponent was represented by Ben Gardiner of Counsel, instructed by Thomson Geer lawyers. The Applicant was represented by Chris Burgess of Counsel, instructed by Spruson & Ferguson patent and trade mark attorneys.

Evidence

1. The evidence filed in respect of this matter comprises:

Evidence in support

Declaration of Chernae Rachelle Noonan, Chief Executive Officer of the business The Brow Bar, and Director and Secretary of The Brow Bar Pty Ltd, with exhibits CRN-1 to CRN-62, dated 25 October 2013.

Supporting declarations:

·     Declaration of Elke Bell, National Media Manager of The Brow Bar, dated 25 October 2013;

·     Declaration of Michelle Hampson, client of Chernae Noonan, dated 24 October 2013;

·     Declaration of Briarna Mackie, Operations Manager of The Brow Bar, dated 25 October 2013;

·     Declaration of Ashleigh Mylchrest, employee of The Brow Bar, dated 25 October 2013;

·     Declaration of Verity Stone, employee of The Brow Bar, dated 25 October 2013;

·     Declaration of Paulette Silk, employee of The Brow Bar, dated 25 October 2013.

The Mylchrest, Stone and Silk declarations do not explicitly specify the relationship of the declarants with the Opponent - I have inferred that they are employees from the nature of the information given.

Evidence in answer

Statutory declaration of Christophe Le Boterff, Chief Financial Officer of the Applicant, with exhibits CLB-1 to CLB-10, dated 14 March 2014.

Statutory declaration of Francesca Giulia Colubriale, attorney with Spruson & Ferguson Patent and Trade Mark Attorneys, with exhibits FGC-1 to FGC-5, dated 18 March 2014.

Evidence in reply

Declaration of Ms Noonan with exhibits CRN-63 to CRN-70 dated 18 June 2014.

Declaration of Sara Dunn, employee of Blair Lifestyle Management who was engaged by the Opponent to make enquiries of Myer stores in relation to Benefit Brow Bars, with exhibit SD-1, dated 17 June 2014.

The Opponent’s evidence

1. In September 2003 the Opponent commenced providing beautician services under the name THE BROW BAR from a residential address in Springwood, Queensland. In 2004 the Opponent moved her operations and began providing her services from a studio within a hair salon in South Brisbane. In evidence are: a business card; a press release; an extract from the social pages of The Sunday Mail newspaper; a photograph of a T-shirt worn by the Opponent when providing her services; and an invoice for lettering upon a mirror used by the Opponent; all of which are from 2004 and feature THE BROW BAR trade mark.

2. On 10 February 2005 the Opponent applied to register the trade mark THE BROW BAR in classes 35 and 44. The application was accepted later that month and the trade mark entered onto the Register in September 2005. Also in 2005 the Opponent began to provide education and training services, and continues to do so (as at the date of the first Noonan declaration).

3. By January 2006 the Opponent maintained a website at the address ‘ and that address was also embroidered onto the T-shirt worn by the Opponent. On 31 March 2006 the Opponent made an application to register THE BROW BAR in classes 3, 8, 16, 21 and 41, which was accepted in August 2006 and entered onto the Register in December 2008.

4. Also in 2006 the Opponent opened a store in Paddington, Qld, under the name THE BROW BAR. The launch of that store was covered in the social pages of The Sunday Mail. Later in that year The Brow Bar Pty Ltd was incorporated, on 29 November 2006.

5. The Opponent has subsequently opened a number of additional stores: in Coolangatta, Qld, in 2007 (which has subsequently closed although it is not stated when); in New Farm, Qld, in 2008, which in 2009 moved to a different address in New Farm and then in 2013 to another address in Newstead, Qld; in Sydney in 2009; in South Yarra, Melbourne, in 2009; and in Bulimba, Qld, in 2012, which subsequently opened an express service salon in 2013. Launches have been held for each of these openings and relocations, and photographs from a number of them have been published in local press. Area managers have been employed for THE BROW BAR stores in Queensland, Victoria and New South Wales.

6. From early 2007 the Opponent’s business began selling beauty and grooming products in classes 8, 16 and 21 under THE BROW BAR trade mark, and then in late 2012 expanded into skin care products.

7. Confidential annual sales figures are provided for the years 2007 to 2013, including figures broken down by store, and they show steady and significant growth. Similarly, amounts for advertising and marketing are provided for the years 2008 to 2013 and they are significant.

8. Since beginning in 2003, the Opponent’s business under THE BROW BAR trade mark been advertised or appeared in commentary in numerous publications prior to the filing date - many of them being Queensland publications but also including national magazines such as Shop Til You Drop, Style, Shape and Girlfriend (although the Opponent does not recall the date of the appearance in Girlfriend magazine). The Opponent also appeared on the Channel Nine program Today Show in 2009 and gave an interview on Brisbane radio station 4BC in the same year.

9. Other promotion has taken place since the priority date, including appearance on third party websites, attendance and exhibition at expos and high profile events (such as the Melbourne Cup), further radio appearances and appearances in print media. A number of celebrities are declared to be clients of the Opponent’s business, and photographs of some of them endorsing THE BROW BAR are in evidence.

10. The Opponent declares she was not aware of the Applicant or its use of ‘Brow Bar’ in Australia or overseas at the time she adopted THE BROW BAR in 2003, and only became aware of a competing ‘Brow Bar’ in early 2009 at a stand-alone store in Paddington, Sydney, and at a counter in a Myer department store. In February 2009 the Applicant filed an application to register the trade mark BROWBAR, which has since lapsed. In March 2009 the Opponent sent letters of demand to the Applicant at its address in the USA and at the Myer store requesting that it cease use of BROW BAR. The Applicant filed a further application to register the trade mark BENEFIT BROWBAR in April 2009, which has also since lapsed.

11. The Opponent alleges that consumers have confused the businesses of the parties, and files evidence of such alleged confusion which includes discussion by members of the public in online forums, mistaken references by journalists and media writers, and declarations of employees stating that they regularly receive telephone calls from customers wishing to make bookings for the Opponent’s services at Myer store locations (it is the Applicant that provides services at Myer store counters).

The Applicant’s evidence

1. The Applicant was founded in 1976 in the USA as a cosmetics boutique under the name “The Face Place”. In 1988 the Applicant adopted the trade mark BENEFIT for its cosmetic products and in 1994 re-named “The Face Place” as “Benefit Cosmetics”. In 1991 the Applicant opened a BENEFIT counter at the USA department store Henri Bendel, and in 1997 opened a counter at Harrods in London. A luxury goods conglomerate, Louis Vuitton Moet Hennessy, acquired the Applicant in 1999 and since then has expanded the Applicant’s business globally.

2. Goods under the BENEFIT trade mark were first offered for sale in Australia in 2001 at Myer department stores (and continue to be, as at the date of the Le Bortoff declaration). They are also sold from a stand-alone boutique in Sydney, which appears to have opened in 2008, and online via the Applicant’s and third parties’ websites. The Applicant’s website was launched in 1998 and is declared to have always been available to Australian residents, with sales to Australian customers declared to have taken place since 2006.

3. The Applicant declares that it has acquired a strong reputation and international fame in the BENEFIT trade mark. In support of that assertion it provides sales figures of goods and services sold under the BENEFIT trade mark in Australia and globally as well as marketing expenditure in respect of Australia. All of the figures are substantial. Goods under the BENEFIT trade mark have received many awards and accolades from international beauty publications including Allure, InStyle, Elle, Seventeen, Marie Claire and Cosmopolitan.

4. The BENEFIT trade mark is registered in many jurisdictions around the world (although BENEFIT BROWBAR has been registered only in Mexico and Hong Kong, and Australia appears to be the only jurisdiction for which there is a pending application for BENEFIT BROWBAR).

5. The Applicant first used the word “browbar” in connection with beauty services in the USA in September 2003. In April 2008 it commenced offering beauty services under the Trade Marks at its stand-alone boutique in Paddington, Sydney. It subsequently began offering beauty services under the Trade Marks at BENEFIT counters in Myer department stores in NSW, VIC, ACT and WA. The “approximate value of beauty services” under the Trade Marks are provided for the years 2009 to 2013. They are significant and show steady growth, although not in the same order of magnitude as sales of “goods and services” under the BENEFIT trade mark.

6. Since it first used the Trade Marks in 2008, the Applicant has promoted the services available under the Trade Marks by way of various printed advertising materials, via the Myer website and in-store magazine, in various publications including The Sunday Telegraph, The Sun Herald, MX Magazine and City Weekly, via “e-blasts” (being promotional offers sent by email to customers) and upon social media websites.

7. The Applicant declares it was not aware of the Opponent or the Opponent’s use of THE BROW BAR at the time it adopted the word “browbar” in the USA in September 2003. It likewise declares it was unaware of the Opponent, the Opponent’s registered trade marks or the Opponent’s use of THE BROW BAR in Australia or elsewhere at the time it commenced using the Trade Marks in Australia. Mr. Le Boterff, for the Applicant, declares that he would expect to be informed of any instances of confusion between the Applicant and its competitors, and that he was not aware of any instances of confusion (nor was the alleged confusion raised in the evidence brought to his attention).

8. In respect of the Opponent’s letter of demand sent in 2009, the Applicant declares that each of the allegations made in the letter were denied by the Applicant and that to date the Opponent has not taken any action against the Applicant.

9. The Applicant provides a list of business names and Australian Proprietary Companies registered (or previously registered) with the Australian Securities and Investments Commission (‘ASIC’), which incorporate the words ‘brow bar’ into their names. A majority of the listed entities were registered after the priority date, however there are at least six entities registered before the priority date which are not affiliated with the Opponent and which use the words ‘brow bar’ as part of their name.

10. The Applicant also provides a list of 17 pending and registered trade marks appearing on the Trade Marks Office database “ATMOSS” which incorporate the words “brow” and “bar”. Other than the parties’ marks, there are six trade marks which use the words in a similar sense to that of the Opponent and Applicant, and of them only three were applied for prior to the filing date (and none of them use the precise phrase “brow bar”).

11. The Applicant conducted internet searches using the search term “brow bar” and then conducted searches of the Internet Archive (being a digital archive of web pages appearing on the internet) for the websites which resulted from the original internet searches. The archived pages show examples of three entities that used the phrase “brow bar” in Australia prior to the filing date.

12. Although not part of the Applicant’s evidence, I note here that the Opponent declares to have sent letters of demand (or be considering its position) in respect of the entities registered with ASIC and the entities using ‘brow bar’ upon web pages.

Grounds and onus

1. The Opponent pressed both of the grounds listed in its notices of opposition, being those under sections 44 and 60. It bears the onus of establishing at least one of them.

2. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[1], and that the relevant date at which the rights of the parties are to be determined is 2 May 2011, the filing date of the applications[2].

   [1] See for example Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [27]; or Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [30] to [37].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 2 May 2011 the use of the Trade Marks in respect of the Applicant’s services would be likely to deceive or cause confusion.

3. Reputation in this context refers to the recognition of the Opponent’s mark by the public generally[3], although the size and nature of the relevant market must be taken into account.[4] I note further that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks,[5] and that confusion cannot arise solely from reputation but must always involve some degree of similarity between marks, whether it be called deceptive similarity or something less.[6]

   [3] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335; (2000) 51 IPR 102.

   [4] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

   [5] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

   [6] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

4. As at the priority date, the Opponent had operated under the trade mark THE BROW BAR for approximately 7.5 years. The operation and much of the publicity of the business had taken place in Queensland until 2009 when the Opponent expanded into Sydney and Melbourne. By the priority date the Opponent was operating two stores in Queensland (and for a period may have operated three stores), one store in Sydney and one store in Melbourne.

5. Launches of each of the stores that were opened prior to the filing date had been featured in social pages of local newspapers and in other print media, and magazines including national publications Style and Shop Til You Drop had discussed or advertised the services provided under THE BROW BAR trade mark. The Opponent’s television appearance on the Today Show took place prior to the filing date, as did one of her radio interviews (on the radio station 4BC).

6. The Opponent’s sales figures show that the business is steadily growing and it expends relatively significant amounts on marketing its services. I bear in mind that the market for the Opponent’s services is broad (being largely women of relatively high disposable income aged 25-55, and some male clientele). Nonetheless, in terms of the test proposed in McCormick[7] the reputation that may be inferred from the sales and marketing figures is, although relatively modest, still commercially significant. I am accordingly satisfied that the Opponent’s trade mark had acquired a reputation in respect of beauty and eyebrow grooming services as at the priority date.

   [7] Supra.

7. In respect of the causal link to confusion, required to establish the ground under section 60, a number of factors are raised by the parties. Firstly, the Applicant submits that the material common to both parties’ trade marks has a descriptive connotation (per Attic Ladders Pty Ltd v Kimberley Plastics Pty Ltd[8]). Secondly, it submits that BENEFIT has a significant reputation in its own right which differentiates the parties’ trade marks (per Registrar of Trade Marks v Woolworths (‘Woolworths’)[9]). It further submits that because its Trade Marks have the greater reputation, one cannot conclude it is the reputation of the Opponent’s (as opposed to the Applicant’s) trade mark that is the cause of confusion (per Bausch and Lomb Incorporated v Karl Storz & Ci KG[10]). It alleges that confusion was initiated by the Opponent’s expansion into NSW and Victoria rather than the Applicant’s entry into the market.

   [8] [2012] ATMO 36.

   [9] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 45 IPR 411.

   [10] [2008] ATMO 71.

8. For its part the Opponent submits that the test under section 60 is not a comparative exercise as to whose reputation is greater, and that such a submission seeks to find a way around Kenny J’s finding in McCormick that section 60 is not subject to section 44(3) (and would be relevant only where it is the Applicant alone that has a reputation). The Opponent submits that the addition of the word BENEFIT to BROWBAR does not reduce the risk of confusion because abbreviation of trade marks often occurs[11] and use of BROWBAR (without BENEFIT) in respect of the Applicant’s services can be seen in various instances in the evidence. Nor does the addition of BENEFIT alter the meaning of the BROWBAR (as was found to be the case in Health World Limited v Shin-Sun Australia Pty Ltd[12]). Rather, BENEFIT would likely be read and understood separately to BROWBAR (such as was considered in Sears Brands LLC v Trio Group Australia Pty Ltd[13]). Additionally, confusion that the Opponent’s business is a sub-brand of the Applicant’s business is an example of confusion that falls within section 60.

   [11] As was discussed by Branson J in her dissenting judgement in Woolworths, at [101].

   [12] [2008] FCA 100; (2008) 75 IPR 478.

   [13] [2014] ATMO 46.

1. In respect of the descriptive connotation of BROWBAR or THE BROW BAR, notwithstanding the Opponent’s argument that those words are increasing being used for their descriptive connotation, this was not the case at the time the Opponent adopted her trade mark nor at the time the subject applications were filed. The Opponent’s trade mark was found by the Registrar to be sufficiently distinctive to qualify for registration at the time it was filed in respect of services in 2005, and again when it was filed in respect of various goods in 2006. Much of the third party use in evidence takes place after the filing of the subject applications in 2011. Although some of the instances of use by others are prior to the filing date, they are not numerous and I do not consider that the degree of such usage at that time indicates that the words had passed into common or generic terms. Additionally the Opponent is actively taking steps to protect her monopoly.

2. Of itself, I do not consider that the addition of the word BENEFIT to BROWBAR differentiates the Trade Marks from THE BROW BAR to such an extent that confusion or deception is unlikely. I consider that it is BROW BAR in the Opponent’s mark which is the primary identifying material. Although the definite article THE must be taken into account in estimating the impression left by the marks, it does not serve to greatly differentiate the Opponent’s trade mark from BENEFIT BROWBAR, particularly when viewed in light of contextual confusion wherein marks might not be mistaken for one another but nonetheless thought to originate from the same source.

3. I acknowledge that BENEFIT had a reputation as a cosmetics brand as at the priority date. Such is apparent from the Applicant’s evidence and I am aware of the brand from my own knowledge. The Applicant submits that even though the reputation of the master brand BENEFIT has not reached the level of notoriety discussed in Woolworths, it is still substantial and ought to be taken into account (as was done so in Sixty International SA v New Balance Athletic Shoe, Inc[14] wherein the delegate took the notoriety of the house brand into account when considering trade marks that had evolved out of the house brand).

   [14] [2012] ATMO 37.

4. In terms of considering whether it is the Applicant’s, as opposed to Opponent’s, reputation in their trade marks that causes confusion, notionally I do not think it can be concluded that the addition of a well known house brand to a trade mark necessarily alters the direction in which the confusion flows. Nor does the evidence before me shed real light on the situation as at the filing date: the instances of alleged confusion have taken place largely after the priority date.

5. Additionally, although I bear in mind that the Applicant bases the strength of its reputation on the BENEFIT brand in respect of cosmetics, I note that in respect of beauty services provided under the Trade Marks the Applicant’s trade (inferred from its sales figures) did not far outweigh that of the Opponent.

6. There is no simple answer as to the causality of confusion. It is possible that a degree of confusion may be caused by the reputation of the Applicant’s master brand. However, in the exercise of balancing probabilities and evaluating the circumstances as at the priority date, I consider that they weigh in favour of the Opponent. I therefore find that the Opponent’s trade mark had a reputation, as at the priority date, such that the use of the Trade Marks by the Applicant is likely to deceive or cause confusion. Accordingly, the ground of opposition under section 60 is established.

7. The Applicant makes additional submissions that no real purpose is served in refusing registration of the Trade Marks, given the expansion of the Applicant’s and third parties’ businesses that use the words “brow bar”. However, as stated previously most of the third party usage has occurred after the filing date and I do not consider there to be sufficient evidence to determine that the Opponent’s trade mark has become generic. Additionally, although Applicant did not know of the Opponent’s trade mark when it adopted the phrase “browbar” in the USA, it is reasonable to expect that it ought to have checked the Australian market for conflicting trade marks before entering it. It also continued to expand its business under the Trade Marks in the knowledge that a prior conflicting mark was registered and being used by the Opponent. That it did so is a risk it chose to bear.

Decision and costs

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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.

2. The Opponent has established a ground of opposition under the Act. I therefore refuse to register trade mark applications 1423081 and 1423082.

3. Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Applicant.

Nicole Worth

Hearing Officer

Trade Marks Hearings

18 February 2015