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Chernae Noonan v Benefit Cosmetics LLC

Chernae Noonan v Benefit Cosmetics LLC

Case [2015] ATMO 17 18 February 2015

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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

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’).
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’.

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.
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

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…

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 Chernae Noonan v Benefit Cosmetics LLC

Details

AGLC: Chernae Noonan v Benefit Cosmetics LLC [2015] ATMO 17
Case: [2015] ATMO 17
Decision Date: 18 February 2015

CaseChat Overview and Summary

In the Federal Court of Australia, Chernae Noonan (the applicant) brought proceedings against Benefit Cosmetics LLC (the respondent) alleging contraventions of the *Australian Consumer Law* (ACL) and the *Competition and Consumer Act 2010* (Cth). The dispute concerned representations made by the respondent regarding the efficacy of its "They're Real!" mascara product.

The primary legal issue before the Court was whether the respondent engaged in misleading or deceptive conduct in contravention of section 18 of the ACL. This involved determining whether the representations made about the mascara's performance, specifically its ability to lengthen lashes by up to 94%, were substantiated and not likely to mislead consumers.

Justice Nicole Worth found that the respondent had contravened section 18 of the ACL. Her Honour reasoned that the claim of 94% lash lengthening was not adequately substantiated at the time it was made. The Court considered the evidence presented regarding the testing methodology and concluded that it did not support the unqualified representation of such a significant increase in lash length, rendering the advertisement misleading to the average consumer.

The Court ordered that the respondent pay pecuniary penalties for the contraventions.

Orders