Federici Brands LLC v Shenzhen Falaisheng Consulting Management Co Ltd

[2022] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Federici Brands LLC to application under section 92(4)(b) of the Trade Marks Act 1995 (Cth) by Shenzhen Falaisheng Consulting Management Co Ltd for removal of trade mark number 1510096 (Class 3) – COLOR WOW – in the name of Federici Brands LLC.

Delegate:	Blake Knowles
Representation:	Opponent: King & Wood Mallesons.   Applicant: A.P.T. Patent and Trade Mark Attorneys.
Decision:	2022 ATMO 78 Trade Marks Act 1995 (Cth) – application for removal under s 92 – use of trade mark established for some goods – discretion exercised for remaining goods – trade mark to remain registered for all goods.

Background

1. Shenzhen Falaisheng Consulting Management Co Ltd (‘Removal Applicant’) filed an application on 1 May 2020 under s 92(4)(b) of the Trade Marks Act 1995 (Cth)[1] (‘Removal Application’) for the complete removal of registered trade mark number 1510096 (‘Registration’) for COLOR WOW (‘Trade Mark’), which is registered in the name of Federici Brands LLC (‘Removal Opponent’) for the following goods:

   Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; hair care preparations; hair coloring preparations; hair colorants; hair dyes; hair lotions; hairspray, conditioner, shampoo; color cosmetics; facial cosmetics; skin care products; body and foot care products; fragrances; bath salts, cosmetic preparations for baths; body and shower products; colognes; eau de toilettes; body firming gels and lotions; face creams; nail polishes; lipsticks; makeup; sun block and deodorants

   (‘Registered Goods’)

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

2. The Removal Opponent filed a notice of intention to oppose the Removal Application on 25 June 2020, followed by a statement of grounds and particulars (‘SGP’) on 24 July 2020. The Removal Applicant filed a notice of intention to defend the opposition to the Removal Application on 9 October 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 9.16. The Removal Opponent filed Evidence in Support (‘EIS’) on 8 January 2021. The Removal Applicant filed Evidence in Answer (‘EIA’) on 11 April 2021. The Removal Opponent filed Evidence in Reply (‘EIR’) on 1 June 2021.   

4. At the conclusion of the evidence stages of the opposition, the parties were given the opportunity to be heard by way of videoconference or written submissions. The Removal Opponent requested to be heard by written submissions only, and submissions were filed on its behalf by Cate Nagy and Melissa Anderson of King & Wood Mallesons. The Removal Applicant did not request to be heard. I have decided this matter based on the particulars in the SGP, the evidence, and written submissions of the Removal Opponent.

5. As the Removal Application was filed on 1 May 2020, for the purposes of deciding this opposition, the relevant period is the three-year period ending on 1 April 2020 (‘Relevant Period’).

   Evidence

6. The following evidence was filed:

   EIS

   Declaration of James Federici, Vice President of the Removal Opponent, made on 7 January 2021, with Annexures JF-1 to JF-19.

   Declaration of Melissa Anderson, lawyer of King & Wood Mallesons, made on 8 January 2021, with Annexures MSA-1 to MSA-4.

   EIA

   Declaration of Tang Wenshan, General Manager of the Removal Applicant, made on 7 April 2021, with Annexures TWS-1 to TWS-4.

   EIR

   Second declaration of Melissa Anderson, made on 31 May 2021.

   EIS & EIR

7. Mr Federici declares that the Removal Opponent first adopted the Trade Mark in 2012, and that use first commenced in the UK in 2012, with use commencing in the USA and Australia in the first half of 2013.

8. Mr Federici declares that the Removal Opponent uses the Trade Mark in relation to a range of hair care preparations and products, including hair colouring preparations and dyes, hair sprays and treatments, hair lotions, shampoo, and conditioner. Mr Federici states that hair products have been sold online at (‘Australian website’) since at least January 2020. The hair products have also been sold since 2013 by Hairhouse Warehouse (a retailer operating over 100 physical stores in Australia and a website at and Haircare Australia (a trade only store with multiple outlets and a website at In addition to Hairhouse Warehouse and Haircare Australia, Mr Federici states that products sold under the Trade Mark have also been available during the Relevant Period via Adore Beauty, Oz Hair & Beauty, The Beauty Club, Catwalk, Amazon, Cosmetics Now, and Dick Smith.

9. Mr Federici declares that the Removal Opponent maintains a strong social media presence under the Trade Mark, including on Facebook (80,000 followers since 2012), Instagram (207,000 followers), Twitter (4,800 followers since 2012), Pinterest (3,600 followers), and YouTube (10,000 subscribers). Each social media account has the same identifier, namely, /colorwowhair.

10. Mr Federici declares that the Removal Opponent has been the recipient of forty-seven international awards for hair products sold under the Trade Mark. A list of awards is annexed to the declaration, although I note that most of these awards appear to originate from the UK and USA.  

11. Mr Federici annexes to the declaration various examples of use of the Trade Mark in relation to hair care products, including Internet Archive Wayback Machine extracts from the Opponent’s Australian website and third party websites during the Relevant Period.  Also annexed are copies of invoices to Australian distributors for products sold during the Relevant Period. The invoices do not refer to the Trade Mark, however, Mr Federici declares that the products listed correspond to those shown on the website extracts and would have been sold in identical packaging (or packaging that is not materially different).

12. Mr Federici provides confidential international and Australian revenue figures. Total international revenue during the during the Relevant Period is significant, and Australian revenue is commercially appreciable. Promotional expenditure in Australia is also reasonable but not high.

13. Ms Anderson declares that on 17 December 2020, she conducted google.com.au searches for the terms “color wow” and “wow colour”. The searches for “color wow” returned over 509 million results, with at least the first 10 pages of results solely related to the Trade Mark. The searches for “wow colour” returned over 675 million results, with at least the first four pages of organic results solely relating to the Trade Mark. The search results are annexed.

14. Ms Anderson declares that the Trade Mark is mentioned in various media articles, and annexes copies of articles from Elle Australia, Popsugar.com.au, Marie Claire, InStyle, Beauty Crew, and Harpers Bazaar referring to the Trade Mark.  Ms Anderson also annexes a NewsRoom report which indicates that products sold under the Trade Mark have been advertised or referred to in numerous other Australian publications, including major newspapers.

15. Ms Anderson in the EIR clarifies a statement by Mr Federici in the EIS, wherein he states that the Removal Opponent’s website at was registered in 2020, whereas in fact it was registered in 2012.

    EIA

16. Mr Tang declares that the Removal Applicant was founded in 2019 and focuses on the wholesale, retail, and export of cosmetics under the brand WOW COLOUR. The Removal Applicant filed an application to register WOW COLOUR in Australia (trade mark number 2054561) which has been blocked by the Registration.

17. Mr Tang opines that the Removal Opponent uses the Trade Mark exclusively on hair products, and that the Removal Opponent uses another brand, TIME BOMB, for skin care products. Annexed to the declaration is an extract from the website which indicates that TIME BOMB is a brand used by the Removal Opponent for skin care. Mr Tang also annexes the results of a trade mark search showing other trade marks owned or filed by the Removal Opponent.

18. Mr Tang opines that the Trade Mark should only be retained for hair care products and provides a list of the Registered Goods with items struck out that he considers should be removed. Items not struck out are: hair lotions, hair care preparations, hair coloring preparations, hair colorants, hair dyes, hair lotions, hairspray, conditioner, and shampoo.  

    Grounds, onus and standard

19. The Removal Application nominates the ground under s 92(4)(b), which is reproduced below:

    92 Application for removal of trade mark from Register etc.

    (4)  An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

    (a)…

    (b)  that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

    (i)  used the trade mark in Australia; or

    (ii)  used the trade mark in good faith in Australia;

    in relation to the goods and/or services to which the application relates.

20. The allegation of non-use during the Relevant Period is for the Removal Opponent to rebut.[2] The Removal Opponent relies primarily on use of the Trade Mark for the rebuttal.[3]

    [2] Trade Marks Act 1995 (Cth) s 100(1)(c).

    [3] Ibid s 100(3)(a).

21. I also have a general discretion to allow the Trade Mark to remain registered even if there has been no use or limited use of the Trade Mark during the Relevant Period. The Removal Opponent argues that I should exercise this discretion in the Removal Opponent’s favour in relation to goods for which the Trade Mark has not been used during the Relevant Period.

22. Findings of fact in this decision are based on the civil standard of the balance of probabilities.

    Discussion

    Use of the trade marks during the Relevant Period

23. I must first decide whether there has been use of the Trade Mark by the Removal Opponent on or in relation to the Registered Goods during the Relevant Period. If I am satisfied there has been such use, the opposition will succeed. If I am not satisfied there has been use, or if there has only been use in relation to some of the Registered Goods, I must then decide whether to exercise discretion to allow the Trade Mark to remain registered for any of the Registered Goods for which use during the Relevant Period has not been established.

24. The ‘use’ required to be demonstrated by the Removal Opponent is ‘use as a trade mark’. ‘Use as a trade mark’ is use of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person who applies the sign to or in relation to those goods.[4]

    [4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

25. Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[5] A trade mark may be used in relation to goods where it is included on an invoice or some other document (including a webpage) associated with the sale or promotion of goods.[6]

    [5] Trade Marks Act 1995 (Cth) ss 7(4), 92(4)(b).

    [6] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

26. I am satisfied that the Trade Mark has been used by the Removal Opponent during the Relevant Period in relation to:

    Class 3: Hair lotions; hair care preparations; hair coloring preparations; hair colorants; hair dyes; hair lotions; hairspray, conditioner, shampoo

    (‘Used Goods’)

27. The evidence of use of the Trade Mark on the Australian website, supported by other information such as invoices to distributors, is sufficient to establish use in relation to a range of hair products. I also note that the Removal Applicant has conceded in the EIA that the Trade Mark has been used for the Used Goods.

28. The Removal Opponent accepts that there has been no use of the Trade Mark during the Relevant Period in relation to the remaining goods, namely:

    Class 3: Soaps; perfumery, essential oils, cosmetics, color cosmetics; facial cosmetics; skin care products; body and foot care products; fragrances; bath salts, cosmetic preparations for baths; body and shower products; colognes; eau de toilettes; body firming gels and lotions; face creams; nail polishes; lipsticks; makeup; sun block and deodorants

    (‘Unused Goods’)   

29. I must now consider whether it is appropriate to exercise discretion not to remove the Trade Mark for the Unused Goods.

    Discretion

30. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[7] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[8] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

    There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[9]

    [7] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

    [8] Ibid [69].

    [9] [2002] FSR 51 (Ch) 790, [19].

31. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’), Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[10]

    [10] [2008] FCA 934, [210] (citations omitted).

32. The Removal Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Removal Applicant to establish that it should not.[11]

    [11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] (n 7) [44].

33. Justice Flick in Gallo also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

    ·     whether there has been abandonment of the trade mark;

    ·     whether the registered proprietor of the mark still had a residual reputation in the mark;

    ·     whether there had been sales by the registered proprietors of goods or services for which removal was sought since the relevant period ended; and

    ·     whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[12]

    [12] ‘Gallo’ (n 10) [202]–[203].

34. The Registrar may also take into account whether the trade mark has been used for similar goods or closely related services.[13]

    [13] Trade Marks Act 1995 (Cth) s 101(4).

35. The Removal Opponent submits that the Unused Goods are personal care products that when compared to the Used Goods have similar uses (being for cleaning, protection, or beautification of the body), similar natures (being formulations of liquid, cream, spray or powder, characterised by a pleasing scent or colour), and are sold through the same trade channels (retailers of beauty, cosmetic, and hair care products) to the same class of consumers (those interested in beauty and body care).  

36. I agree there are similarities in nature, purpose, and trade channels of varying degrees between the Used Goods sold by the Removal Opponent under the Trade Mark, and each of the Unused Goods. Further, I am also satisfied that the Trade Mark has acquired a reputation in Australia in relation to the Used Goods. Considering these two factors in combination, I am satisfied there is a likelihood of confusion if a trader other than the Removal Opponent used a substantially identical or deceptively similar trade mark in relation to the Unused Goods. In this regard, I give weight to the fact that the Removal Opponent’s google.com.au searches for the Removal Applicant’s trade mark WOW COLOUR revealed the Trade Mark as the first four pages of organic search results. Taking into account the distinctive nature of the Trade Mark and its reputation in Australia, I consider the use of a deceptively similar mark for the Unused Goods would likely be perceived as a form of brand extension by the Removal Opponent into non-hair related cosmetics and personal care goods.

37. On balance, and in the absence of any contrary submissions from the Removal Applicant, I am satisfied that it is appropriate to exercise discretion to not remove the Trade Mark for the Unused Goods. 

    Decision  

38. The Removal Opponent has established that the Trade Mark has been used in the Relevant Period in relation to the Used Goods, and that it is also appropriate to exercise discretion to not remove the Trade Mark for the Unused Goods. As such, the Trade Mark is to remain registered for all of the Registered Goods.

39. The Removal Applicant has the right to appeal this decision. If the Registrar is served with a notice of appeal, the disposition of the Removal Application shall be dealt with as the Court sees fit.

40. The Removal Opponent has requested costs. As costs generally follow the event, I award costs against the Removal Applicant.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    17 May 2022