Cheryl Stewart as Trustee for Mis Chicos Trust v Pro Bio Skin Pty Ltd

[2022] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Cheryl Stewart as trustee for the Mis Chicos Trust to registration of trade mark application number 2026782 (class 5) – ALKALISE GREEN & GO - in the name of Pro Bio Skin Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Karla Holzberger, IP Wealth Pty Ltd Applicant: Ben Fitzpatrick of Counsel, instructed by The TradeMark Co
Decision:	2022 ATMO 106 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under s42(b), 44, 58, 60 and 62A nominated - section 44 established - registration refused

Background

1.   This is a decision on the opposition by Cheryl Stewart as trustee for the Mis Chicos Trust (‘Opponent’) to trade mark number 2026782 (‘Application’) filed on 31 July 2019 (‘Relevant Date’) for the trade mark ALKALISE GREEN & GO (‘Trade Mark’) in the name of Pro Bio Skin Pty Ltd (‘Applicant’) in class 5 for the following goods:

Nutritional food supplements in powdered form; nutritional supplements in this class, made from fruits, vegetables, herbs, vitamins, minerals and trace elements including for use in foodstuffs and beverages, all the foregoing for use in foods and beverages, as part of foods and beverages or provided in capsule, solid, powdered or tablet form; powdered dietary food concentrates; fermented probiotic powders; fermented food powders with lactobacillus bacteria and symbiotic yeast; vitamins, minerals, health supplements; chinese medicinal herbs; ayurvedic medicinal herbs; naturopathic preparations; medicinal herbs and herbal preparations; food supplements and additives; herbal teas and tisanes, for therapeutic or medicinal purpose; protein dietary supplements

(‘Goods’)

1. The Application was examined, accepted and advertised for opposition on 1 January 2020.  The Opponent filed a Notice of Intention to Oppose on 6 February 2020 and a Statement of Grounds and Particulars (‘SGP’) on 3 March 2020.  The Applicant filed a Notice of Intention to Defend the Application from opposition on 13 May 2020.

2. The parties had the opportunity to file evidence in accordance with reg 5.14.[1]  The Opponent filed Evidence in Support (‘EIS’) on 16 November 2020, followed by the Applicant’s Evidence in Answer (‘EIA’) filed on 19 May 2021 and concluding with the Opponent’s Evidence in Reply (‘EIR’) lodged on 21 July 2021.

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

3. Following the conclusion of the evidence, the parties were given the opportunity to request a hearing.  Both parties requested a hearing by written submissions and paid the requisite fees.  The Opponent filed written submissions on 12 April 2022 and the Applicant filed written submissions on 19 April 2022.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.

   Grounds and Onus

4. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A.

5. The Opponent bears the burden of establishing a ground of opposition on the balance of probabilities[2].  The rights of the parties are to be assessed at the Relevant Date.

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Evidence

6. The Opponent’s EIS consists of a declaration of Cheryl Stewart made on 16 November 2020 with Exhibits CS-1 to CS-19.

7. Ms Stewart declares that she is the Exports and Business Development Manager and founding member of Morlife Pty Ltd and that the assets of this company are held by the Opponent.  Any reference to the Opponent in this decision includes a reference to Ms Stewart, Morlife Pty Ltd and/or Mis Chicos Trust.

8. The Opponent was established in 2000 and is a manufacturer, retailer, wholesaler and importer specialising in health foods sold online and from physical stores. Ms Stewart avers that the Opponent is an industry leader in greens and functional foods.

9. The Opponent adopted the mark ALKALISING GREENS (‘Opponent’s Mark’) in October 2007 for a new health supplement which was launched in May 2008.  The Opponent’s Mark has been continuously used since that time.  The goods bearing the Opponent’s Mark are the second highest selling product in its range of 300 products.

10. The Opponent’s Mark has been registered since 30 June 2009 under trade mark number 1306984 (‘Opponent’s Registration’) for:

    Nutritional supplements; preparations consisting of mixtures of vitamins and minerals; dietary nutritional food supplements for medical use; mineral dietary supplements; fortifying foodstuffs of minerals or vitamins; mineral preparations for use as supplements to drinking water; medicated powders; preparations for the cleansing of the gastrointestinal tract; powdered dietary food concentrates for medical purposes; natural healthcare preparations (medicaments); herbal dietary supplements for persons special dietary requirements; enzyme supplements for medical purposes; mineral food-supplements; medicinal food supplements for nutritional purposes; vitamin preparations in the nature of food supplements; fibre supplements; edible plant fibres (fibres)(non-nutritive); amino acids for medical purposes; antioxidants; magnesium hydroxide for medicinal use; milk calcium concentrate; health food supplements for persons with special dietary requirements; anti-inflammatory preparations; herbal remedies; multivitamins; vitamin supplements; combinations of vitamins and minerals; including instructional materials sold together with the aforesaid goods, accessories, parts and fittings for all the aforesaid goods allowed in this class

    (‘Opponent’s Goods’)

11. The Opponent’s Goods bearing the Opponent’s Mark are sold throughout Australia and internationally including in New Zealand, Malaysia, United Kingdom, USA, China, Singapore, Thailand, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, UAE, Jordan, Lebanon, South Africa and New Caledonia.

12. The Opponent provides annual turnover for goods sold under the Opponent’s Mark since first use, a sample of invoices, numbers of customers, details and examples of advertising and promotion including on the Opponent’s websites at morlife.com and alkalizinggreens.com, on its social media and on the social media of influencers, in third party articles, at expos and events including those where the Opponent partnered with well-known celebrities such as Tony Robins and Ashy Bines, and details of the Opponent’s Australian Business Awards in 2012 and 2013 for the Opponent’s Goods bearing the Opponent’s Mark.

13. In addition, the Opponent has provided examples of the Applicant using ALKALISING GREEN & GO as opposed to the Trade Mark on its websites at probioskin.com and mayellaorganic.com and its social media accounts.

    EIA

14. The Applicant’s EIA consists of a declaration of Amanda Parker, CEO and director of the Applicant, made on 19 May 2021 with Exhibits AP-1 to AP-33 (‘Parker Declaration’).

15. The Applicant attests that the Trade Mark was honestly adopted by the Applicant in 2010 for a new Australian-made nutritional food supplement powder to alkalise the body with green food daily (‘Applicant’s Goods’).

16. From 2010, the Applicant’s Goods were sold as part of its Probio Skin range and from 2015, it was sold as part of its Mayella range.  The Applicant promoted its goods at its health and wellness hub at the Gold Coast (‘Wellness Hub’) from 2013-2016 and on social media.

17. The Applicant provides extracts from third parties’ websites using ‘alkalise’, ‘alkalising’ and ‘greens’ in combination to describe the benefits and function of using and to sell green powders for lowering the pH of the body.

18. The Applicant attests that until the Application was examined by IP Australia, the Applicant was unaware of the Opponent’s registration for the Opponent’s Mark and it is not aware of any confusion between its Goods offered under the Trade Mark and those provided under the Opponent’s Mark.

19. The Goods bearing the Trade Mark are sold online at 5 different websites (including the Applicant’s sites at proskin.com and mayellaorganic.com).  The Applicant also sold the Goods at its Wellness Hub until 2016 and various other outlets until at least 2019 such as beauty salons, alternative health care practitioner clinics, health food cafes and shops, and yoga and pilates studios.

20. The Applicant has provided an approximate annual spend on advertising and details of its promotion including social media accounts, social media posts, examples of promotion by the MAYELLA brand ambassador, actress and model, Jessica Green, advertisements in publications, articles about its award as winner of the 2019 THE BEAUTY SHORTLIST Wellbeing Award- Best Health Supplement and expos it has exhibited the Applicant’s Goods in Australia and overseas.

21. The Applicant explains that any use of the Opponent’s Mark in promoting the Applicant’s Goods would have been an error by the Applicant’s social media/marketing contractors.

    EIR

22. Ms Stewart disputes Ms Palmer’s claim to be unaware of the Opponent’s Mark until examination of the Application on the basis that the Opponent’s attorneys sent a letter of demand to the Applicant’s attorneys in June 2019, 6 weeks prior to the filing of the Application.  Further, Ms Stewart alleges that the particular attorney acting for the Applicant previously represented the Opponent and filed the application for the Opponent’s Mark.

23. In the EIA, Ms Parker provided a photograph from the UAE Health Convention in January 2012 of herself with an individual wearing a lanyard with the name tag ‘Cheryl Stewart’.  Ms Stewart states that she is not the person in this photograph.

    Discussion

    Section 44

24. The relevant provisions are reproduced below:

    44  Identical etc. trade marks

    …

    (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)  it is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

    (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

    Note 1:       For deceptively similar see section 10.

    Note 2:       For similar services see subsection 14(2).

    Note 3:       For priority date see section 12.

    Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

    (3)  If the Registrar in either case is satisfied:

    (a)  that there has been honest concurrent use of the 2 trade marks; or

    (b)  that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    Note:          For limitations see section 6.

    (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)  beginning before the priority date for the registration of the other trade mark in respect of:

    (i)  the similar goods or closely related services; or

    (ii)  the similar services or closely related goods; and

    (b)  ending on the priority date for the registration of the applicant’s trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

    Note 2:       For predecessor in title see section 6.

    Note 3:       For priority date see section 12.

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is in respect of goods and/or services which are similar or closely related to the Applicant’s Goods (‘the second requirement’); and

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).

2. The Opponent relies on the Opponent’s Registration which has a priority date of 30 June 2009 which satisfies the first requirement.

3. In terms of the second requirement, the Applicant does not argue that this requirement is not met and I am satisfied that the Goods and the Opponent’s Goods are essentially the same or at least of the same description.  Both sets of goods are nutritional, dietary or health supplements and additives that have the same nature and purpose and will be sold through the same trade channels to the same class of consumers.

4. The final requirement is that the Opponent’s Mark is substantially identical or deceptively similar to the Trade Mark. 

   Substantially Identical

5. The test for whether two marks are substantially identical requires that they be compared:

   side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [3] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) (1963) 109 CLR 407, 414 (Windeyer J).

6. The comparison in the present case is between:

   ALKALISING GREENS            ALKALISE GREEN & GO

7. When the marks are compared side by side as set out above, there are clear differences, most notably the inclusion of the element “& GO” in the Trade Mark as well as the different forms of the verb ‘alkalise’ v ‘alkalising’.  Whilst there are obvious similarities in the two marks, the differences are such that there is not a ‘total impression of resemblance’.[4]

   [4] Ibid.

   Deceptive Similarity

8. The test for deceptive similarity is broader and requires that one trade mark so nearly resembles the other mark that it is likely to deceive or cause confusion.[5]

   [5] Act s 10.

9. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore, the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[6]

   [6] n3, [13].

10. In determining deceptive similarity, I am guided by the following principles:

    ·There must be a real, tangible danger of confusion, not just a mere possibility.[7]  Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[8]

    ·The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[9]  However, deceptive similarity can also be found where one mark uses an essential feature of the other.[10]

    ·Consumers may retain an imperfect recollection of a mark or its essential features.[11]

    ·It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[12]

    ·The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[13] 

    ·It must be considered how the goods or services are ordinarily sold or provided.[14]

    [7] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [8] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [10] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [13] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [14] Ibid.

11. In assessing the deceptive similarity of the marks in question, I am cognisant that there is a degree of descriptiveness in the combination of some form of the word ‘alkaline’ and ‘green/s’.  However, this does not mean that any descriptive element can be dismissed in its entirety.[15]  It has been noted that:

    [W]hen one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished … [H]e is entitled to look at his neighbour's goods for the purpose of seeing what is the most attractive form, what is the best form likely to attract customers, so long as he takes care to distinguish his goods from the prior goods.[16]

    [15] Re Broadhead's Application (1950) 67 RPC 209 at 215; see also R & C Products Pty Ltd v Bathox Bathsalts Pty Ltd (1991) 21 IPR 547 (Reg); Re Sartek Pty Ltd (1991) 22 IPR 317, [1991] AIPC 90-834 (Reg); Cole v Australian Char Pty Ltd (1994) 30 IPR 51 (Reg); Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd [2016] ATMO 62, [22] (Hearing Officer H. Wilson).

    [16] Payton Co v Snelling Lampard & Co Pty Ltd (1900) 17 RPC 48, 56 (Romer LJ).

12. The EIA shows use of various phrases such as “ALKALISING SUPER GREENS”, “ORGANIC ALKALINE GREENS”, “ALKALINE GREEN SUPERFOODS”, “ALKALISING GREENS”, “ALKALIZING FARM FRESH GREENS”, “ALKALISING GREEN VEGETABLES” and “ALKALISING BLEND”.  A term may be used by one trader descriptively and by another as a trade mark[17] and a number of the uses relied upon by the Applicant are clearly descriptive uses.  Whilst I consider that the words “ALKALISING/ALKALISE” and “GREENS” have some descriptiveness in both the Trade Mark and the Opponent’s Mark, they should not be disregarded and the words must be given due weight as a memorable and essential feature of each of the marks.

    [17] Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) FCR 326 (Lockhart, Burchett and Gummow JJ).

1. Visually and aurally, there is resemblance between the Trade Mark and Opponent’s Mark due to the almost identical first two elements ALKALISE/ALKALISING and GREEN/S.  It is well-established that the beginning of a mark is generally “the most important for the purpose of distinction” and there is a tendency for consumers to slur the termination of words.[18]     

   [18] London Lubricants (1920) Limited’s Application (1924) 42 RPC 264, 279.

2. The Trade Mark and Opponent’s Mark convey a congruent idea and impression.  The different forms of the verb ALKALISE/ALKALISING are easily confused as demonstrated by the Applicant’s own marketing and social media consultants.  Both marks convey the idea of plant based or ‘green’ ingredients which lower the pH of the consumer with the Trade Mark suggesting the goods are for taking ‘on the go’ or giving the consumer extra energy/function to ‘go’.  The net impression consumers will take away from each of the marks is almost the same and this is one relevant factor in considering the deceptive similarity of the marks once it has been determined that the marks look and sound alike.[19] As Lord Radcliffe noted in De Cordova v Vick Chemical Co,[20] marks are remembered by the general impression created rather than an accurate recording of the visual details.

   [19] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (French, Branson and Tamberlin JJ) .

   [20] (19510 68 RPC 103

3. The nature of the Goods and Opponent’s Goods is the same and they will be sold through the same trade channels.  Whilst consumers can be expected to take care in choosing products that they will ingest, taking into account the doctrine of imperfect recollection and similarity of the marks and ideas conveyed by them, I consider that a significant number of persons will be caused to wonder whether the Opponent’s Goods are those of the Applicant or vice versa.

4. I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark and covers the same and/or similar goods and hence a ground for rejection exists under s 44.

5. Given that I have found that a prima facie ground of opposition exists under s 44, I must now consider whether the Applicant is entitled to registration under s 44(3) on the basis of honest concurrent use or other circumstances.

   Honest Concurrent Use

6. The Applicant bears the onus of showing that there has been honest concurrent use of the Trade Mark and that there is a case for the exercise of the discretion under s44(3).[21]  Honesty in the context of honest concurrent use means “commercial honesty”.[22]

   [21] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Insight’) [2016] FCA 1406, [120] (Davies J).

   [22] McCormick & Company Inc v McCormick[2000] FCA 1335, [32] (Kenny J).

7. The principal factors to be considered in determining if there has been honest concurrent use of a mark are:

   ·The degree of confusion likely between the trade marks in question;

   ·Whether there have been instances of actual confusion

   ·The honesty or otherwise of the concurrent use;

   ·The extent of use in duration, area and volume; and

   ·The relative inconvenience that would be caused to the respective parties if the Applicant’s trade mark should or should not be registered.[23]

   [23] John Fitton & Company Limited’s Application (1949) 66 RPC 10; McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J).

8. As noted above, I regard the Trade Mark and the Opponent’s Mark as being deceptively similar and consider that there is a likelihood of confusion as demonstrated by the Applicant’s own consultants using ALKALISING GREEN & GO on more than one occasion.  Whilst there is an element of descriptiveness to each of the marks, the similarity between the marks is such that confusion may well occur.  Given the potential for confusion between the first two words of the marks, the additional elements “& GO” in the Trade Mark suggest a brand extension of the Opponent’s Mark (if imperfectly recollected) or that the marks are related.

9. Although neither party attests to any instances of confusion and the Applicant alleges that there has been none, a brief denial of knowledge of any instances of confusion is not determinative and only one factor to take into consideration.  The lack of confusion may be due to the limited use and promotion by the Applicant of the Trade Mark until more recently.

10. The Applicant claims to have honestly adopted the Trade Mark in 2010 because as a health and wellness practitioner, she often recommended alkalizing foods to clients as high pH causes poor health and disease.  Ms Parker attests that at the time, the mark was “a very distinctive, strong and unique brand at the time”[24] and contends that she was unaware of the Opponent or the Opponent’s Mark.  Whilst the Applicant attests that in 2010, “there were hundreds of products on the market (mostly green powders) used to alkalise the body”[25], this is not supported by documentary evidence and I am not convinced that this was in fact the case but rather believe that an alkaline diet became somewhat popular years later.[26]    

    [24] Parker Declaration, [6]

    [25] Ibid.

    [26] >

    Although the Applicant claims to have first used the Trade Mark in 2010 on its website at which promoted health services and general health advice, there is no evidence of the manner on which the Trade Mark was used on this site or evidence that the Trade Mark was used to promote the Goods under the Trade Mark. The earliest documented use of the Trade Mark before me is an extract of the website at from the Wayback Machine from November 2011[27] and earliest proof of sale is an invoice from 7 October 2013.[28]  Other evidence and subsequent invoices show the use has been continuous. 

    [27] Parker Declaration Exhibit AP-9

    [28] Parker Declaration Exhibit AP-5.

11. Whilst the Applicant may not have been aware of the Opponent’s Mark at the time of adopting the Trade Mark, this is not sufficient to establish that the adoption of the Trade Mark was ‘commercially honest’.  It has been found that there was not honest concurrent use where the applicant failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to the adoption of its trade mark[29] or undertake a Google search which would disclose a prior mark.[30]  There is an obligation to undertake reasonable care and diligence to ascertain the ability to use a mark.[31]  The Opponent and Applicant are both situated at the Gold Coast, operating in directly competing businesses.  The Opponent claims to have used the Opponent’s Mark on its website at since May 2008, promoted its goods bearing the Opponent’s Mark to 900 wholesalers (health food stores, delis, independent grocers, practitioners and chemists) in 2009, had a Twitter account since January 2010, promoted the goods on its Morlife Facebook account since January 2010, and had a YouTube channel since January 2011.  In October 2011, an article about the Opponent featuring the Opponent’s Mark appeared in the Gold Coast Bulletin.  It seems probable that given the close proximity of the parties’ respective businesses and high degree of overlap, some basic level of research would have disclosed use of the Opponent’s Mark at the time of adoption of the Trade Mark or shortly thereafter. 

    [29] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [293] (Dodds-Streeton J).

    [30] Insight n21, [125].

    [31] Ibid.  See also Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (Beach J).

12. Although the period of concurrent use spans a number of years, the Applicant’s use of the Trade Mark appears minimal for some time.  There is a lack of specificity in terms of the nature and extent of the Applicant’s use of the Trade Mark but it seems that at best there is about 3 years use on a reasonable scale prior to the Relevant Date.  In the financial year 2020/2021, the Applicant was selling less than 10,000 units annually in Australia.  From the sample of invoices provided, all of the customers appear to be individuals or businesses situated in the Gold Coast.[32]  The Applicant’s advertising expenditure is insignificant and it appears to have placed two print advertisements before the Relevant Date one in Australian Yoga Journal and one in a Gold Coast local business and lifestyle magazine.  The Applicant has featured the Goods bearing the Trade Mark at two Gold Coast seminars and two Australian trade expos before the Relevant Date. 

    [32] Parker Declaration, Exhibit AP-7.

13. In terms of the relevant inconvenience to the parties, the Applicant has been using the Trade Mark for a number of years and will be inconvenienced by being denied registration of the Trade Mark.  However, the use in Australia does not appear to have been widespread in terms of sales or promotion of the Trade Mark and almost half of the use is overseas.  If the Applicant was to obtain registration of the Trade Mark and expand its use and promotion of the Trade Mark in Australia, it seems likely that the Opponent will suffer a diversion of trade through confusion in the marketplace.   The relative inconvenience to the parties is, in my view, finely balanced.

14. Having regard to the above factors, I am not satisfied that there has been honest concurrent use of the Trade Mark sufficient to justify the exercise of my discretion under s 44(3) nor are there “other circumstances” that would make it proper for me to accept the registration of the Trade Mark.

15. The ground of opposition under s 44 has been established and hence it is not necessary to consider the other grounds of opposition pressed.

    Decision

16. I have found that the Opponent has met its onus in terms of the ground of opposition under s44.  Therefore, I refuse to register trade mark application 2026782.  If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued.  Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

17. It is usual for costs to follow the event and I see no reason to depart from that principle. I award costs against the Applicant under s 221 of the Act in line with Schedule 8 of the Regulations.

    Tracey Berger
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    28 June 2022