Deanna Campese v JJ&Co Tech Trust

[2019] ATMO 168

TRADE MARKS ACT 1995

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

Re:      Opposition by Deanna Campese to registration of trade mark application 1870376 –

LASHD - in the name of JJ&Co Tech Pty Ltd as trustee for JJ&Co Tech Trust.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Written submissions by Mark My Words Trade Mark Services Pty Ltd

Applicant: O’Sullivans Patent and Trade Mark Attorneys Pty Ltd

DECISION:

2019 ATMO 168

Trade Marks Act 1995 - Section 52 opposition: section 58 ground of opposition established for some services – section 44 not established - amendment to services completed by applicant – trade mark accepted for

  possible registration.  

Background

1. JJ&Co Tech Pty Ltd as trustee for JJ&Co Tech Trust (‘the applicant’), filed trade mark application number 1870376 on 1 August 2014 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

Data processing for the collection of data for business purposes; Management advisory services for businesses; Management assistance in business affairs; Management of business (for others); Organisational services for business purposes; Providing business information via a web site; Providing information, including online, about advertising, business management and administration and office functions; Provision of business information; Provision of  commercial and business contact information; Provision of information relating to business; Business surveys; Processing of business survey results; Surveys (opinion polling); Surveys for business purposes; Business management and administration services supporting utilisation of a global computer network; Business networking services; Online advertising on a computer network; Online promotion on a computer network; Advertising services provided over the internet; Compilation of advertisements for use as web pages on the internet; Compilation of directories for publishing on the  Internet; Rental of advertising space on the internet; Business promotion services; Promotion (advertising) of business; Promotional marketing; Promotional services; Sales promotion (for others); Provision of an on-line marketplace for buyers and sellers of goods and services; Organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes; Organisation and management of incentive and sales promotion programmes (frequent buyer programmes); Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Advocacy (promoting, publicising or otherwise representing the interests or concerns of others); Arranging price quotations (for others); Data collection (for others); Data compilation for others; Ordering services (for others); Collection of commercial information; Collection of data; Collection of information relating to advertising; Collection of information relating to market analysis; Collection of information relating to market research; Collection of market research information; Collection of statistics for business; Commercial information agencies; Commercial information services provided by access to a computer database; Commercial intermediation services; Compilation of commercial information; Compiling indexes of information for commercial or advertising purposes; Dissemination of commercial information; Compilation of information into computer databases; Computerised compilation of customer indexes; Computerised compilation of order lists; Computerised database management; Updating and maintenance of data in computer databases; Database management; Maintaining data in databases; Updating data in databases; Advertising services provided via a data base; Data

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 1 February 2018. Subsequently Deanna Campese (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

2. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. The opposition was referred to me as a delegate of the Registrar of Trade Marks on 18 June 2019. The opponent provided written submissions for consideration by way of its legal representation, Mark My Words Trade Mark Services Pty Ltd

Grounds of Opposition

1. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Only those grounds being under sections 44 and 58 were pursued when it came time to decide the substantive matter. The Opponent bears the onus of establishing at least one of the grounds of opposition.1 The standard of proof is the ordinary civil standard of the balance of probabilities.2 Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following declarations being:

Evidence in Support

·Declaration of Deanna Campese (the ‘Campese declaration’) dated 13 August 2018 with annexures DC-01 to

Evidence in Answer

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

2 Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

·Declaration of Martin Peter O’Sullivan (the ‘O’Sullivan’ declaration’) dated 8 November 2018

Opponent’s Evidence

1. The Campese declaration states the opponent is the owner of her own business which provides beauty goods and services including eyelash extensions and related services, tanning and make-up since 20113. Ms Campese avers that she established her business in January 2011 as an independent contractor operating out of third party beauty salons. She promoted her services under the word trade mark LASH’D via her business Facebook® page at as well as through the beauty salon that she was affiliated with while her business continued to grow4. The opponent also adopted the following logo which it has also been using on its goods and services:

1. On 10 June 2016, the opponent filed trade mark a pplication no. 1776400 for the word trade mark LASH’D in respect of class 3 beauty products and related implements in class 8. Details of the registration are as follows:

3 Annexure DC-06 accompanying the Campese declaration

4 Annexure DC-06 accompanying the Campese declaration.

1. On 14 June 2016 the opponent registered the domain name and since August 2016 the opponent has used the domain name to operate a website promoting its beauty products and services as well as third party goods and services in a reciprocal relationship. Ms Campese states that in or around June 2016, she commenced  offering eyelash products for sale to clients and salons and that since March 2017 she had  continuously promoted and sold a range of eyelash products under and by reference to the above LASH’D trade mark5.

10.The opponent advertised its products and services sold under the LASH’D trade mark  through its business webpage6 and social media pages7, third party social media posts (particularly by social media ‘influencers’)8, third party print publications9, online trade directories and apps10, online promotional deal via this party advertisers11, trade events12 and printed materials13.

11.The sales revenue generated by the opponent under its LASH’D trade mark is not broken down into sales for goods or services but the sales are fairly considerable given the relatively low cost of the goods and services offered by the opponent. I also note that the figures are growing as the business has grown and expanded14.

12.The opponent has also provided evidence of the services that the applicant provides. The Campese declaration stated that the applicant’s website context states that the applicant provides a ‘one stop shop’ for beauty services provider and clients to connect with each other, arrange bookings and take payments. According to Ms Campese, the applicant’s website includes the following statement:

“Unlike other beauty apps and mobile beauty services in the market, the Lashd service offering expands beyond just hair, face and nails. Lashd offers services such as eyelash extensions, facial treatment, personal training and health and wellness such as massage, life coaching and even hypnotherapy…”

5 Annexure DC-04 and Confidential Annexure DC-05 accompanying the Campese declaration.

6 Annexure DC-10 accompanying the Campese declaration.

7 Annexures DC-06 to DC-08 and DC-16 accompanying the Campese declaration.

8 Annexure DC-09 accompanying the Campese declaration. 9 Annexure DC-11 accompanying the Campese declaration. 10 Annexure DC-12 accompanying the Campese declaration.

11 Confidential Annexure DC-14 accompanying the Campese declaration.

12 Annexure DC-13 accompanying the Campese declaration. 13 Annexure DC-15 accompanying the Campese declaration. 14 Annexure DC-17 accompanying the Campese declaration.

13.Ms Campese states that the applicant’s app is used to promote and arrange bookings for beauty services (including mobile beauty services, retail services and eyelash extensions) to potential customers under its LASHD trade mark and allow customers to also book beauty treatments with those service providers. Ms Campese points out that her customer do use a number of online and mobile methods to review her business’ offerings and prices, and to arrange and pay for booking. Confidential Annexure DC-19 comprises of a message the opponent received from a confused customer that believed the applicant’s services were a new look for the opponent’s services.

Applicant’s Evidence

14.The declaration by the applicant’s representative, Martin O’Sullivan, contains a search of the ASIC organizations and business names database conducted on 8 November 2018 using the key word ‘LASHD’ and identified 29 results. Mr Sullivan goes on to summarise details of several Australian businesses, apart from the opponent, that provide beauty services with reference to trade marks including the word LASH’D.

15.Mr O’Sullivan has included extracts from several Australian businesses’ Facebook pages from early November 2018. These screenshots contain a number of posts which predate the applicant’s Trade Mark priority date and commencing to demonstrated use of trade marks incorporating the word LASH’D since as early as 2013. Examples of the trade marks put forward by the applicant include the following:

LASH’D OUT ON BEAUTY         Lash’d on Fairways      GET LASH’D

16.It is clear from Mr O’Sullivan’s evidence that the traders have all used their various LASH’D trade marks on various beauty and booking services prior to the applicant’s priority date and after the first use demonstrated by the opponent in 2011.

Discussion

Section 58 – Applicant not the owner of the trade mark

17.Section 58 of the Act provides:

58             Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

18.In order to make out a ground of opposition under section 58, the opponent must establish that:

·   the respective trade marks of the applicant and opponent are either identical or substantially identical,15

·   the respective services on which the trade marks have been or are to be used are the ‘same kind of thing’ 16

·   the opponent has the earlier claim to ownership based on authorship17 and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.18

19.In regards to the second point, it is clear that the opponent uses its LASH’D  trade mark on the retail of eyelashes and associated goods as well as beauty services, promoting other services and booking appointments. The applicant has used its Trade Mark on what appears to be an APP for locating and booking appointments for beauty services. Therefore, the opponent’s services are the same kind of thing to some of those services claimed by the Trade Mark. Now the opponent must demonstrate use of a substantially identical trade mark before 17 September 2017 which is the priority date of the Trade Mark.

20.In order for me to determine if the opponent has used an identical or substantially identical mark to the Trade Mark I turn to the test for substantial identity which is that the trade marks are to 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.”19

15 Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

16 Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

17 Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]

18 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413]

21.The respective trade marks to be compared are as follows:

Applicant’s trade mark	Opponent’s trade marks
LASHD	LASH’D

22.A comparison of the opponent’s trade marks and the applicant’s trade mark creates an impression of resemblance.20 The trade marks of the parties are comprised of the same essential features. Each trade mark contains the identical word LASHD. While  the opponent’s trade marks contain an apostrophe between the fourth and fifth letter, this apostrophe does not preclude a finding of substantial identity. The trade marks would all be pronounced and likely recalled by consumers as “LASHED”. The deletion of the letter ‘E’ from the commonly understood word in all the respective trade marks lends further emphasis to the trade marks being viewed by consumers as the same – the “lashd without an ‘e’ in it” trade mark.

23.I must now determine whether the opponent was the first user of the trade mark in Australia. The applicant has not provided any evidence of use so the date that the opponent needs to show use before is 7 September 2017 which is the priority date of the application. The opponent’s evidence makes it clear that the opponent commenced offering beauty services to Australian customers under its LASH’D trade mark in 2011 which predates the applicant’s priority date. The time line for use of the opponent’s trade mark on various goods and services as demonstrated in the opponent’s evidence is as follows:

·June 2011 – Beauty services including tanning, waxing, make-up and lash extensions offered for sale through an online and storefront platform.

19 The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414]

20 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

·January 2012 – Mobile beauty services, group services and nail beauty services offered through an online platform.

·April 2014 – Coupons and loyalty programs used for the business

·June 2016 – Training Program for Eyelash Extension Technicians offered

·Jun 2016 – Retailing and wholesaling of false eyelashes/extensions and associated goods for the care, application and cleaning of eyelashes

·September 2016 – Influencers promoted by the opponent and opponent promoted by Influencers

·January 2017 – Online booking systems for the opponent’s beauty services offered with deposits taken

·May 2017 – Services and goods of other traders promoted by the opponent via social media

·August 2017 – Expo/trade fairs directly promoted by the opponent via its social media accounts

24.In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the filing date of the Trade Mark or, arguably, any use by the applicant of its Trade Mark, in relation to services that are the ‘same kind of thing’. It follows that the opponent, and not the applicant, is the trade mark owner, and the section 58 ground of opposition is established with respect to the following services specified in trade mark application 1870376:

Class 35: The bringing together, for the be benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Hypermarket retailing; Retail services; Online advertising on a computer network; Online promotion on a computer network; Advertising services provided over the internet; Business promotion services; Promotion (advertising) of business; Promotional marketing; Promotional services; Sales promotion (for others); Organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes; Organisation and management of incentive and sales promotion programmes (frequent buyer programmes); Administration of consumer loyalty programs; Organisation and management of customer loyalty programmes; Advocacy (promoting, publicising or otherwise representing the interests or concerns of others)

25.The services to which the Trade Mark seeks registration and which the opponent has not demonstrated use of its trade mark in regard to are as follows:

Class 35: Computerised business information services; Providing business information via a web site; Providing information, including online, about advertising, business management and administration and office functions; Provision of commercial and business contact information; Provision of information relating to business; Compilation and provision of online directories; Business administration advisory services; Business administration consultancy; Business advice; Business advisory services; Business data analysis; Business development services; Business evaluation services; Business information; Business information agency services; Collecting business information; Collecting business statistics; Compilation of business data; Compilation of business directories; Compilation of business information; Computer assisted business information; Computerised business information retrieval; Provision of business information; Computerised business records keeping; Data processing for the collection of data for business purposes; Management advisory services for businesses; Management assistance in business affairs; Management of business (for others); Organisational services for business purposes; Business surveys; Processing of business survey results; Surveys (opinion polling); Surveys for business purposes; Business management and administration services supporting utilisation of a global computer network; Business networking services; Compilation of advertisements for use as web pages on the internet; Compilation of directories for publishing on the Internet; Rental of advertising space on the internet; Provision of an on-line marketplace for buyers and sellers of goods and services; Arranging price quotations (for others); Data collection (for others); Data compilation for others; Ordering services (for others); Collection of commercial information; Collection of data; Collection of information relating to advertising; Collection of information relating to market analysis; Collection of information relating to market research; Collection of market research information; Collection of statistics for business; Commercial information agencies; Commercial information services provided by access to a computer database; Commercial intermediation services; Compilation of commercial information; Compiling indexes of information for commercial or advertising purposes; Dissemination of commercial information; Compilation of information into computer databases; Computerised compilation of customer indexes; Computerised compilation of order lists; Computerised database management; Updating and maintenance of data in computer databases; Database management; Maintaining data in databases; Updating data in databases; Advertising services provided via a data base; Data search in computer files (for others); Online data processing services; Provision of business data

26.Therefore, I turn to the next ground of opposition to determine if the opponent has established it in regards to the above remaining services.

Section 44 – Deceptive similarity

27.Subsection 44(1) of the Act is relevant in this case and reproduced below:

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

(a)   the applicant's trade mark is substantially identical with, or deceptively similar to:

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

(ii)  a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3: For priority date see section 12.

28.To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

Øthe trade mark in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark of the other person is earlier  than the priority date of the applicant’s trade mark.

29.The opponent has one trade mark registration which it has put forward in support of the section 44 ground of opposition. The details of this registration are as found in paragraph 8 of this decision but I reiterate them for ease as follows:

30.I note that the opponent’s trade mark has an earlier priority date than the Trade Mark. Turning to the respective goods and services of interest to the applicant and the opponent I note that those services which the opponent did not establish a section 58 ground of opposition against are listed in paragraph 23. These various business administration and data

collection services are not similar or closely related to the goods as seen above in the opponent’s trade mark registration.

31.While there is a possibility that a trader dealing in similar goods of the opponent may make use of the applicant’s business administration or data collection services, this is a tenuous link and akin to saying that anyone may seek out whatever services they so desire or need. There is not enough evidence before me to establish a nexus between the opponent’s eyelash goods and the remaining services of interest to the applicant.

32.Therefore, I am satisfied that the goods and services of interest to the respective parties are not similar or closely related. In this case, a finding of deceptive similar is not possible given that the opponent has failed to establish the second requirement of establishing a ground of opposition under section 44.

Decision

33.Section 55 of the Act provides:

55 Decision

(1)    Unless subsection (3) applies to the proceedings, 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.

34.I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 58 in regards to some of the services in class 35. Accordingly, I wrote to the applicant on 28 October 2019 advising them that I would provide them with two weeks in which to delete the conflicting services from the Trade Mark specification. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to Registration pending any appeal from the opponent. The applicant has responded and requested an amendment that deletes the services in conflict.

35.Accordingly I accept for possible registration trade mark application no. 1870376 in respect of the amendment specification for services in class 35.

Costs

36.The opponent has requested costs and having been successful in establishing the section 58 ground of opposition, it is so entitled. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Trade Marks Hearings 22 November 2019