Clarins v Megan Hess Pty Ltd

[2024] ATMO 226

TRADE MARKS ACT 1995

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

Re:Opposition by CLARINS to registration of trade mark application number 1910718 (class 3) – Claris THE CHICEST MOUSE IN PARIS (fig.) - in the name of Megan Hess Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Spruson & Ferguson Pty Ltd Applicant: Allens Patent & Trade Mark Attorneys
Decision:	2024 ATMO 226 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60 & 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This matter concerns an opposition by CLARINS (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark in the name of Megan Hess Pty Ltd (‘Applicant’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number:  1910718 (‘Application’)

Trade Mark:             (‘Trade Mark’)

Filing Date:               1 March 2018 (‘Relevant Date’)

Goods:Class 3: Non-medicated toilet preparations, perfumes and perfumery, cosmetics, soaps, shampoos, bubble bath, shower gels, toothpastes, cleaning preparations, cotton wool for cosmetic purposes, hair care preparations, toilet and cosmetic articles, non-medicated talcum powder; non-medicated hair lotions

(‘Applicant’s Goods’)

1. Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose the Application on 13 July 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 10 August 2022.  The Applicant filed a Notice of Intention to Defend on 16 September 2022.

2. The parties then had the opportunity to file evidence in accordance with the Regulations. On 15 December 2022, the Opponent filed its evidence in support of the opposition consisting of a declaration of Sophie Charpentier Giraud, Heritage & Counterfeiting Legal Manager of the Opponent, made on 14 December 2022 with Annexures 1 to 25 (including Confidential Annexures 4A and 25) (‘Giraud’). No other evidence was filed in the proceedings.

3. Following the conclusion of the evidence stage, the parties were able to request a hearing.  Both parties requested a hearing by written submissions.  The Opponent’s written submissions were prepared by Fabiola Dos Santos and Daniel Wilson of Spruson & Ferguson Pty Ltd and filed on 19 September 2024.  The Applicant’s written submissions were prepared and filed by Allens Patent & Trade Mark Attorneys on 26 September 2024.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and relevant date

1. In its SGP, the Opponent particularised grounds of opposition under ss 42(b), 44[2], 58, 58A, 60 and 62A.  As the Applicant has not sought to rely on s 44(4), the s 58A ground of opposition is not available.

   [2] As one of the marks that the Opponent relies on is an international trade mark registration which is protected in Australia as the basis for this ground of opposition, technically this ground of opposition is under both s 44 and reg 4.15A. However, as the terms are substantively identical for all relevant purposes and for ease, I have referred only to s 44 in this decision. References to s 44 in the present decision should be taken to read to both s 44 and reg 4.15A.

2. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] 

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 1 March 2018, being both the filing date and priority date of the Application (‘Relevant Date’).[5]

   [5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

Opponent’s evidence

1. The Opponent is a French family-owned multinational cosmetics company founded in Paris in 1954.  Giraud declares that the Opponent is also ‘a major player in the spa and well-being sector’.  According to Giraud, the Opponent provides skin care, cosmetics and beauty services under the mark CLARINS in approximately 150 countries including Australia since at least 2016.

2. The Opponent has registered its mark CLARINS throughout the world and in particular, owns the following Australian trade mark registrations (‘Opponent’s Marks’):

Number	Trade Mark	Filing Date	Specification
272254	CLARINS	13 Sept 1973	Class 3:  Perfumery preparations, including perfume; essential oils; cosmetics, hair lotions, preparations for coloring and bleaching the hair, hair dyes and tints, preparations for waving and setting the hair, shampoos, toilet soaps, dentifrices
1393707 (IR 1054839)	CLARINS (‘Opponent’s Mark’)	29 Sept 2010	Class 44:  Provision of sanitary, cosmetic and beauty care; services involving getting fit being services for the planning and supervision of weight reduction programmes, weight control evaluation and weight control treatment; services involving massage, tanning, salons and saunas; beauty salon services; hairdressing salons; services involving information, assistance and advice on beauty, health, cosmetic and beauty care, dieting

1. Giraud declares that the Opponent’s Mark is used in Australia for a range of cosmetics, perfumery preparations, skin care and hair care products (‘Opponent’s Goods’) as well as salon, spa and beauty services (‘Opponent’s Services’).  Examples of the Opponent’s Goods offered for sale through retailers such as the Opponent’s Australian website at (‘Opponent’s AU Website’), Adore Beauty, Amazon, Myer, Chemist Warehouse, Sephora, and David Jones, as well as examples of packaging are annexed to Giraud.  The Opponent’s Services are provided online via the Opponent’s AU Website and in store.  Details of the Opponent’s stores in Australia are annexed to Giraud.

2. In addition, the Opponent’s AU Website also features live streams on demand providing makeup and skin care advice by way of live streams on demand, tutorial videos about the Opponent’s Goods, diagnosis quizzes for customers to determine appropriate products and a ‘Virtual Try On’ service where consumers can virtually try different shades of products.

3. The Opponent’s Goods are promoted on the Opponent’s AU Website, the Opponent’s social media accounts, the websites of authorised retailers, printed promotional materials, in store displays, media coverage, influencer content on social media, and public transport advertisements.  Examples of this advertising and promotion are provided.

4. Giraud also details various awards and accolades the Opponent has received between 2018 to 2022 and its annual sales and advertising expenditure for financial years 2016- 2021.

Discussion

Section 44

1. Pursuant to s 44, the Application for the Trade Mark must be rejected if the Trade Mark is substantially identical with or deceptively similar to a trade mark registered or applied for by a person other than the Applicant and that trade mark:

   i.has an earlier priority date that the Application (‘first requirement’);

   ii.is substantially identical with or deceptively similar to the Trade Mark (‘second requirement’); and

   iii.is in respect of similar goods and/or services that are closely related to the Applicant’s Goods (‘third requirement’).

2. In its SGP, the Opponent relies on the Opponent’s Marks in support of this ground and I confirm that these marks satisfy the first requirement.

3. Turning to the second requirement, the Opponent argues that the Trade Mark is substantially identical with the Opponent’s Mark.  In the Opponent’s submission, the essential element of the Opponent’s Mark CLA-RINS as compared to that of the Trade Mark CLA-RIS, creates a total impression of similarity.

4. The test for substantial identity was set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd as:

   [the marks] should, I think, 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.[6]

   [6] [1963] HCA 66, [12] (Windeyer J).

5. The Full Federal Court has suggested more recently in cases such as Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[7] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[8] that the test requires that the trade marks are considered side by side while having regard to the essential features or dominant cognitive cues of the marks. 

   [7] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

   [8] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

6. The side by side comparison to be made in this case is between:

Trade Mark	Opponent’s Mark
CLARINS

1. The Applicant is critical of the Opponent comparing ‘Claris’ with CLARINS to conclude that the ‘overall impression is of the same word’.  The Applicant disputes the Opponent’s contention that the comparison is similar to that in Pham Global because in that case, the shared element ‘inSight/insight’ was essentially identical, both marks had a semi-circular device located to the left of ‘inSight/insight’ and the only additional words CLINICAL IMAGING and RADIOLOGY were discounted because they were descriptive of the services.[9]  I agree with the Applicant that Pham Global can be distinguished from the present situation.  Unlike the words ‘clinical imaging’ and ‘radiology, the phrase ‘THE CHICEST MOUSE IN PARIS’ is meaningless in relation to the Applicant’s Goods.  Moreover, whilst not as prominent as the element CLARIS, this five word phrase forms a significant, and in my view, memorable part of the Trade Mark.  I am not persuaded that a total impression of resemblance emerges from a comparison of the Trade Mark to the Opponent’s Mark and find that the marks are not substantially identical.

   [9] [2017] FCAFC 83, [51] (Greenwood, Jagot, and Beach JJ).

2. Turning to the question of deceptive similarity, s 10 provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

3. The comparison is now between the respective trade marks as wholes,[10] with regard to essential or distinguishing features,[11] considering the marks both visually and aurally, and in the context of the relevant surrounding circumstances.[12] However, the actual reputation of a trade mark or an owner is not relevant, rather, what is of importance is the effect and meaning of the spoken trade marks,[13] especially their effect or impression produced on the mind of ordinary consumers.[14]  Allowing for the imperfect recollection of those ordinary consumers, the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[15] Ultimately, what is required is a real tangible danger of confusion.[16] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[17]

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J) (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [12] New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [14] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (‘Australian Woollen Mills’).

   [15] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

   [16] Southern Cross (n 4) 595 (Kitto J); Woolworths (n 9) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [17] Woolworths (n 9) [50] (French J); Southern Cross (n 4) 594-595. See also, Australian Woollen Mills (n 13) 658.

4. In support of its contention that the Trade Mark is deceptively similar to the Opponent’s Mark, the Opponent relies on the decision of Evee Pty Ltd v Evie Mobility Pty Ltd[18] (‘Evee v Evie Mobility’) which found the marks EVEE and .to be deceptively similar.  The Opponent contends that the present case is similar as it involves a composite mark with a tagline that is secondary in is positioning, size and prominence to CLARIS.  Further, CLA-RINS and CLA-RIS have the same prefix and differ by one letter which does not ‘alter the identical aural comparison of the marks’.  The Opponent claims that the Opponent’s Mark, when pronounced quickly, will be said as ‘CLA-REES’.  The Opponent further notes that visually the marks are similar and neither CLARINS nor CLARIS has a meaning.

   [18] [2024] ATMO 145 (Hearing Officer L. Tuohy).

5. The Applicant notes Jackman J’s comments in The Agency Group Australia Limited v H.A.S. Real Estate that ‘[i]n the case of a composite mark, the whole of the marks and devices, which may consist of a number of elements, must be considered in their context including the size, prominence and stylisation of words and device elements used in the mark and their relationship to each other, and any essential feature’[19] and moreover, ‘if words in a complex composite registered trade mark are too readily characterised as an “essential feature” of that mark in assessing the question of deceptive similarity, that may effectively convert a composite mark into something quite different’.[20]  The Applicant argues that by discounting the stylisation of the Trade Mark and the phrase ‘THE CHICEST MOUSE IN PARIS’, the Opponent has converted the Trade Mark into the word CLARIS.  In the Applicant’s submission, the Trade Mark is visually, phonetically and connotatively different when compared as a whole.  The Opponent’s Mark is part of a French surname as indicated in Giraud whereas the Trade Mark conveys the idea of a ‘chic mouse named Claris in Paris’.  The significantly longer Trade Mark is memorable in that the first word CLARIS rhymes with the sixth word PARIS. 

   [19] [2023] FCA 482, [62].

   [20] Ibid.

6. In my opinion, the Trade Mark is not deceptively similar to the Opponent’s Mark.  I consider the comparison of marks to be different to that in Evee v Evie Mobility where the dominant elements EVEE and EVIE were aurally identical.  I do not accept the Opponent’s submission that CLARINS would be pronounced quickly as ‘CLA-REES’.  Further, the tagline in Evee v Evie Mobility is not particularly distinctive whereas THE CHICEST MOUSE IN PARIS is meaningless in relation to the Applicant’s Goods.  In my view, even consumers with an imperfect recollection are likely to recall the phrase as a significant and memorable part of the Trade Mark particularly given the rhyming of CLARIS and PARIS.  I agree with the Applicant that the addition of this phrase creates the impression of ‘a chic mouse named Claris in Paris’ resulting in a different meaning to the Opponent’s Mark.  Visually, the two marks are distinguishable and in my experience, the sorts of goods of interest to the parties are generally purchased by perusing the products in store or at a counter or online.  I am not satisfied that there is a real tangible danger that consumers will consider that the Applicant’s Goods offered under the Trade Mark come from the same source as goods provided under the Opponent’s Mark.

7. The s 44 ground of opposition is unsuccessful.

Section 60

1. Section 60 provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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.

1. In its SGP, the Opponent relies on the Opponent’s Marks.  The Opponent claims that there is a valuable and significant reputation in the Opponent’s Mark in Australia and internationally as a result of the ‘extensive and widespread use’ of the Opponent’s Mark overseas since at least as early as 1954 and in Australia, since at least 2016.  As a result of that reputation, the Opponent claims that use of the Trade Mark is likely to deceive or cause confusion.

Reputation

1. To succeed on the s 60 ground of opposition, the Opponent must first demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date.

2. In McCormick & Co Inc v McCormick (‘McCormick’), Kenny J considered what is intended by the word ‘reputation’ as used in s60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[21] 

   [21] [2000] FCA 1335, [81].

3. The reputation in the other trade mark must be amongst a significant or substantial number of people.[22]  What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[23]  The reputation cannot be assumed and must be established as a matter of fact by the Opponent.[24]

   [22] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Tamberlin J).

   [23] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

   [24] ConAgra Inc. v McCain Foods (Aust) Pty Ltd[1992] FCA 159, [75] (Lockhart J).

4. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[25] or providing evidence of high volume of sales,[26] advertising expenditure or other promotion of goods or services to which the trade mark applies.[27]  There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[28]

   [25] Ibid [118].

   [26] McCormick (n 20), [86].

   [27] Ibid.

   [28] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J) ('Rodney Jane’).

5. The Opponent submits that the Opponent’s Mark has a significant reputation around the world and in Australia before the Relevant Date for the same goods and closely related services to the Applicant’s Goods.  The Opponent alleges that the reputation in the Opponent’s Mark is evident from its first use of the CLARINS mark in 1954, use in Australia since 2016, a ‘substantial social media presence’ and various awards.

6. Most of the awards relied on by the Opponent relate to times after the Relevant Date with only 2 products receiving awards in 2018, at least one of which was announced after the Relevant Date.  Details of the popularity of the Opponent’s social media accounts are also provided after the Relevant Date but the number of followers of the Clarins Australia Facebook and Instagram accounts are not significant and few consumers appear to have viewed the Clarins Australia videos on YouTube.  Followers of the Opponent’s main Instagram and Facebook accounts are more numerous but still not substantial in the context of the global beauty market.  However, whilst the Opponent’s Goods and Services were only available for sale in Australia for 2 years before the Relevant Date, the Opponent invested millions in advertising its goods in Australia and achieved very impressive sales in those years selling tens of millions of dollars’ worth of products annually.  Global sales of goods under the Opponent’s Mark are extremely impressive. 

1. Despite the relatively short time that the Opponent’s Mark was used in Australia before the Relevant Date and although the potential market for the relevant goods is large, I am satisfied that the Opponent’s Mark had acquired a reputation in Australia at the Relevant Date for skincare, body care and makeup preparations amongst a significant proportion of Australian consumers of beauty products.  Most of the use of the Opponent’s Mark relates to skin care, body care and cosmetics with fragrances and hair care products seeming to form only a small part of the Opponent’s product range and I am not convinced that the reputation in the Opponent’s mark extends to perfumery or hair care products.  In relation to the Opponent’s Services, there is insufficient information about use of the Opponent’s Mark in relation to spa and salon services and whilst the Opponent’s Mark is used in relation to the provision of information about its beauty products mostly via the Opponent’s AU Website, no detail is provided about the number of Australians who visited that site and availed themselves of those services.  Accordingly, I am not satisfied that the Opponent’s Mark had a reputation in the Opponent’s Services in Australia at the Relevant Date.

Likelihood of Deception or Confusion

1. It is not sufficient that the Opponent merely establishes a reputation in the Opponent’s Mark, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

2. Whilst s 60 no longer requires that the trade mark applied for be substantially identical or deceptively similar to that identified by the Opponent, a number of decision provide relevant comments in relation to a consideration of the questions of deception or confusion. In Australian Woollen Mills, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. ... The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[29]

   [29] Australian Woollen Mills (n 13) 658.

3. The question of whether use of the Trade Mark is likely to cause confusion or deception is to be assessed by considering whether a notional consumer of the Applicant’s Goods having an awareness of the Opponent’s Mark and having never encountered the Trade Mark is caused to wonder whether the Applicant’s Goods and Services are associated with the Opponent.[30]  The likelihood of confusion must be real and tangible.[31]

   [30] Rodney Jane (n 27) [84(e)].

   [31] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47 (Hearing Officer T. Williams)

4. It was held in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd that:[32]

   Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

   [32] [2010] ATMO 5, [39] (Hearing Officer D. Lyons).

5. The Opponent’s arguments on this ground focus on the alleged similarity of the marks and goods.

6. Most of the Applicant’s Goods are the same or similar to those in which the Opponent’s Mark has a reputation.  Leaving aside ‘toothpaste’ and ‘cleaning preparations’ (other than personal cleaning preparations) claimed by the Applicant, both set of goods are cosmetics and beauty preparations which would be sold through the same trade channels for the same or similar purpose namely to enhance the appearance of the consumer.

7. However, I have found that the Trade Mark is not deceptively similar to the Opponent’s Mark.  Whilst I acknowledge the similarity in the spelling of CLARINS and CLARIS, in my opinion, this is where any similarity ends and despite these terms being made up of similar letters, the marks as wholes are different.  Given the overall differences in the marks, I believe that there is a low likelihood of confusion.  The visual, aural and connotative differences between the marks are such that it is improbable that consumers of beauty, skin and body preparations would think that such goods provided under the Trade Mark have any association with products offered under the Opponent’s Mark. 

8. Accordingly, the s 60 ground of opposition is not successful.

Section 42(b)

1. Pursuant to s 42(b), the Application must be rejected if use of the Trade Mark would be contrary to law.

2. In its SGP, the Opponent claims that given the reputation in the Opponent’s Mark, use of the Trade Mark would constitute passing off and/or misleading and deceptive conduct in breach of the Australian Consumer Law (‘ACL’). In its submissions, the Opponent argues that use of the Trade Mark would contravene ss 18, 29(1)(g) and/or 29(1)(h) of the ACL, being Schedule 2 of the Consumer and Competition Act (Cth). 

3. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[33]

   [33] See e.g.: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ), Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

4. The Opponent claims that because of the reputation in the Opponent’s Mark, and similarity of the Trade Mark to the Opponent’s Mark, use of the Trade Mark will indicate that the Applicant’s Goods originate from or are otherwise associated with or approved by the Opponent.

5. I have found that use of the Trade Mark is not likely to deceive or cause confusion because of the overall visual, phonetic and connotative differences in the marks. Hence on the more onerous tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation in breach of the ACL.

6. Furthermore, I do not consider that use of the Trade Mark will amount to passing off.  Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[34]

   [34] [1989] FCA 506 [40].

1. For similar reasons that I do not consider the Applicant’s use of the Trade Mark will contravene the ACL, I am not satisfied that the use of the Trade Mark would involve passing off.

2. As such, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 58

1. Section 58 provides that a trade mark may be opposed on the basis that the applicant is not the owner of the mark.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘first factor’);[35]

   ·     that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘second factor’); [36] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘third factor’).[37]

   [35] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375 (Gummow J).

   [36] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

   [37] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

3. The Opponent relies on the Opponent’s Mark in support of this ground.  I have already found at [20] that the Opponent’s Mark is not substantially identical to the Trade Mark and hence, this ground fails.

Section 62A

1. Pursuant to s 62A, registration of a trade mark may be opposed on the basis that the application was filed in bad faith.

2. Bad faith is not defined in the Act but two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[38] (Fry Consulting) and DC Comics v Cheqout Pty Ltd[39] (DC Comics). The following propositions emerge from each of these two decisions relevant to the present opposition:

   [38] [2012] FCA 81 (‘Dodds-Streeton J) (Fry Consulting).

   [39] [2013] FCA 478 (Bennett J) (DC Comics).

   (a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of each of the applications:[40]

   [40] Fry Consulting (n 36) [145].

   (b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[41]

   [41] DC Comics (n 37) [76].

   (c)       The onus of proving bad faith rests upon the opponent:[42]

   [42] Fry Consulting (n 36) [145].

   (d)All of the circumstances surrounding the application to register the mark are relevant:[43]

   (e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[44]

   (f)While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt:[45]

   (g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test:[46]

   (h)Circumstances where, following prolonged competition between the parties, there is a subsequent application to register a series of nearly identical trade marks can amount to conduct such that a reasonable person standing in the shoes of the applicant would have been aware that it ought not apply for trade mark registration:[47]

   (i)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A:[48]

   (j)A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith:[49]

   (k)An act of bad faith cannot be cured by an action after the date of the application[50].

   (l)Use of a trade mark together with other indicia associated with the trade mark owner may lead to an inference of bad faith:[51]

   [43] DC Comics (n 37) [62].

   [44] Ibid.

   [45] Fry Consulting (n 36) [145].

   [46] Ibid [147], [148] and [165].

   [47] Ibid [152].

   [48] Ibid [154] and [155].

   [49] Ibid [156].

   [50] DC Comics (n 37) [62].

   [51] Ibid [73].

3. In its SGP, the Opponent claims that the Application was filed in bad faith because the Opponent has a reputation in the Opponent’s Mark and the Applicant ought to have known that given the similarities between the Trade Mark and the Opponent’s Mark, use of the Trade Mark is likely to deceive or cause confusion.  Therefore, the filing of the Application falls short of reasonable business practices.

4. The Applicant argues that the Opponent has not produced any evidence of bad faith, intentional dishonesty on behalf of the Applicant, nor any conduct which is unscrupulous, underhand or unconscientious.

5. I am not satisfied that the Application was filed in bad faith.  The Opponent has not met its onus of establishing by way of evidence that the Applicant filed the Application in bad faith.  Given the overall differences in the Trade Mark and the Opponent’s Mark, I consider that it was a reasonable business decision to proceed with the filing of the Application and the Applicant has not acted in a manner which is inconsistent with persons adopting proper standards.

6. Accordingly, the s 62A ground of opposition is not successful.

Decision

1. The Opponent has failed to establish any of the nominated grounds of opposition.  Accordingly, application 1910718 may proceed to registrations not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

2. Both parties sought an award of costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Regulations.

Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
25 November 2024