Golden Cala Trading Est v Sky Optical LLC
[2023] ATMO 60
•15 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Golden Cala Trading Est to registration of trade mark application number 2136021 (classes 9, 35, 44) – LENS.ME (figurative) – in the name of Sky Optical LLC
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: AJ Park Applicant: Megan Evetts of counsel instructed by Gilbert + Tobin Lawyers |
| Decision: | 2023 ATMO 60 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 59, 60 and 62A pursued – s 44 partially established – opportunity to amend – application amended – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Golden Cala Trading Est (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application number: 2136021
Owner: Sky Optical LLC (‘Applicant’)
Filing date: 13 November 2020
Specification: Class 9: contact lenses; glasses, sunglasses and contact lenses; optical goods
Class 35: online retail store services relating to contact lenses, colour contact lenses, medical contact lenses, contact lens cases, contact lens solutions, glasses, sunglasses, optical goods, masks, cleansers, toiletries, cosmetic and beauty products
Class 44: optical services; fitting of contact lenses
(‘Claimed GS’)
Endorsement: Consent has been provided from Florian Mack for the use and registration of LENS.ME within the trade mark. Provisions of subsection 44(4) and/or reg 4.15A(5) applied.
The acceptance of the Trade Mark for possible registration was advertised on 14 April 2021. The Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 July 2021. A notice of intention to defend was filed by the Applicant on 6 October 2021.
The Opponent filed Evidence in Support (‘EIS’) and the Applicant filed Evidence in Answer (‘EIA’). The Opponent subsequently filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 31 January 2023 (‘Opponent’s Submissions’) and by the Applicant on 10 February 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 17 February 2023. Megan Evetts of counsel appeared on behalf of the Applicant. The Opponent relied on its written submissions and did not attend the hearing.
This matter was heard concurrently with an opposition to Australian trade mark application number 1865606 involving the same parties. For clarity, a separate decision has been issued for each matter.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 44, 58, 59, 60 and 62A of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 13 November 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
|
| EIA |
|
| EIR |
|
EIS
Mr Anzi declares that the Opponent was established in 2013 and, with the aid of a manufacturer, he developed a line of contact lenses. At this time, Mr Anzi ‘coined a new brand for contact lenses: “LENS ME”’[3] and subsequently developed this brand with the assistance of a designer. The Opponent is the owner of the following Australian trade mark application:
Trade Mark: (‘Opponent’s Mark’)
Application number: 1865606
Owner: Opponent
Priority Date: 12 August 2017
Specification: Class 9: contact lenses
[3] Anzi 1, [9].
10. According to Anzi 1, the ‘LENS ME trade mark was first used in Saudi Arabia in 2014 in relation to contact lenses’.[4] Products bearing the Opponent’s Mark have been sold globally including in Asia, Europe, North America and the United Kingdom. Mr Anzi states that, since 2016, the Opponent ‘has directly shipped orders of its LENS ME products to consumers in Australia’.[5]
[4] Ibid [11].
[5] Ibid [23].
11. Between June 2016 and March 2019, the Opponent filed applications for registration of the Opponent’s Mark (or iterations thereof) in various jurisdictions including Saudi Arabia, Brazil, India and France. Mr Anzi confirms that the Opponent and the Applicant are known to one another and that they are engaged in various trade mark disputes.
12. The Opponent’s contact lenses are sold online, through traditional storefronts and via the inflight shopping service of Saudi Arabian Airlines. It is declared that the Opponent’s contact lenses are ‘often mentioned in the media’ and reference is made to publications dated from 2019 to 2020 which cite the Opponent’s brand. The Opponent also promotes its contact lenses at various overseas exhibitions including the ‘2018 Dubai Vision X Exhibition’ which is ‘the Middle East's most established optical and ophthalmic exhibition and conference’.[6]
[6] Ibid [23(d)].
13. Mr Anzi acknowledges that he interacted with Mr Mack at a dinner function in May 2016. However, Mr Anzi states that no business or sensitive brand information was discussed as he ‘did not know Mr Mack or his business’.[7] Mr Anzi further claims that he was not aware of the Applicant trading in Australia prior to the Opponent. In any event, he characterises the Applicant as being ‘simply a retailer of third party branded goods’ that ‘cannot be said to have any reputation or intention to use its mark for class 9 goods’.[8]
EIA
[7] Ibid [24].
[8] Ibid [25], [27].
14. Mr Mack explains that the Trade Mark was originally the subject of International Registration 1371582 (‘IR’) held by Mr Mack.[9] The IR was considered in Golden Cala Trading Est v Florian Mack (‘Earlier Decision’)[10] wherein the Opponent opposed the extension of protection to Australia of the Trade Mark in respect of classes 9, 35 and 44. The Earlier Decision found that, in the context of the s 58 ground of opposition, the Applicant was the first user in Australia of the Trade Mark for all the designated goods and services.[11] As such, the Applicant (instead of Mr Mack) was found to be the owner of the Trade Mark in Australia and the Opponent was successful in its opposition.
[9] See Australian trade mark application number 1882609.
[10] [2020] ATMO 173 (‘Earlier Decision’).
[11] Ibid [45].
15. Mr Mack ‘first created and decided to launch a business under the trade mark LENS.ME around 1 March 2006’.[12] It is declared that the Trade Mark is an original artistic work which Mr Mack created in or around March 2015 and that he has licensed use of the artistic work to the Applicant. According to Mack 3, the first sale of goods under the Trade Mark took place on 28 June 2015 to a customer based in the United Arab Emirates and sales of optical goods (including contact lenses) to Australian customers have occurred from at least 4 November 2015. To support this, various documents including invoices showing sales of optical goods to Australian addresses during November and December 2015 are exhibited to Mack 2.
[12] Mack 2, [5].
16. Mack 3 mentions that the Applicant and the Opponent are currently ‘embroiled in numerous opposition and cancellation actions around the world concerning the LENS.ME brand’.[13] Mack 4 disputes statements made in Anzi 1. Relevantly, Mr Mack questions the authenticity of documents exhibited to Anzi 1 as well as the purported dates that specific events are alleged to have occurred.[14] He also reiterates that the Applicant ‘is the owner of the LENS ME trade mark in Australia’[15] and provides an update on disputes that are taking place between the parties in foreign jurisdictions.
[13] Mack 3, [19].
[14] Mack 4, [7], [9], [11], [15].
[15] Ibid [6].
Additionally, Mr Mack stresses that Mr Anzi’s statement that the Opponent was unaware of the Applicant in 2016 is contradicted by concessions it made in the Earlier Decision. Further, he rejects Mr Anzi’s characterisation of the Applicant as a retailer of third party branded goods. To this end, Mr Mack declares that the Applicant ‘has intended to directly apply the [Trade Mark] to contact lenses, glasses and other optical goods, but has not to date due to the ongoing disputes with [the Opponent] around the world’.[16]
EIR
[16] Ibid [20].
18. Anzi 2 contests various statements made by Mr Mack. Relevantly, Mr Anzi asserts that Mr Mack is not qualified to authenticate documents and, in any event, affirms that the documents exhibited in the EIS are authentic. Anzi 2 also draws attention to the EIA which allegedly shows sales of optical goods under the Trade Mark. In Mr Anzi’s view, this material ‘did not include LENS ME branded contact lenses’[17] and thus the EIA fails to demonstrate use of the Trade Mark in relation to goods in class 9.
[17] Anzi 2, [9].
Discussion
19. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(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.
...
(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.
…
(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.
...
(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.
20. To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the priority date of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar and/or closely related to the Claimed GS.
The Opponent’s Mark was identified in the SGP as the basis for this ground of opposition. The Opponent’s Mark is registered by another person and has a priority date of 12 August 2017 which is earlier than the Relevant Date. Plainly, the Opponent’s Mark is at least deceptively similar to the Trade Mark given each is wholly constituted by the word ‘LENS’ followed by the word ‘ME’ depicted on a disc. Requirements (i), (ii) and (iii) above are satisfied and the Applicant did not contest this.[18]
[18] Applicant’s Submissions, [33].
22. Both parties proceeded on the assumption that the Claimed GS are similar and closely related to contact lenses.[19] In the main, I agree. The Opponent’s Mark claims ‘contact lenses’ which are evidently similar to the class 9 goods of the Claimed GS. Meanwhile, the services in classes 35 and 44 of the Claimed GS include claims for the retail of contact lenses and the fitting of contact lenses. Contact lens providers frequently retail their products directly to consumers as well as provide optical services. Specsavers, OPSM and Bailey Nelson are examples of traders who provide contact lenses together with retail and optical services under the same trade mark in Australia. In these circumstances, it is likely that consumers will draw an association between such particularised goods and services. As such, I consider ‘contact lenses’ are closely related to the contact lens and optical specific services identified in the Claimed GS. Requirement (iv) detailed at [20] is therefore satisfied.
[19] Opponent’s Submissions, [114.2]; Applicant’s Submissions, [33].
23. Consequently, the Opponent has in principle established the s 44 ground of opposition in relation to all the goods as well as the contact lens and optical specific services identified in the Claimed GS. However, the s 44 ground of opposition may be overcome if the Applicant is able to demonstrate that it has continuously used the Trade Mark in respect of the conflicting goods and services for a period beginning before 12 August 2017, being the priority date of the Opponent’s Mark, and ending on the Relevant Date.[20]
[20] Act s 44(4).
24. The Applicant contends that it first used the Trade Mark ‘in Australia in relation to optical goods and retail thereof in November 2015’.[21] Since this date, the Applicant asserts that it ‘has also continuously used the [Trade Mark] in relation to optical goods and the retail thereof in Australia’.[22] The Applicant’s Submissions emphasised the findings made in the Earlier Decision as well as the use demonstrated in the EIA as establishing the Applicant’s prior continuous use of the Trade Mark in relation to all of the Claimed GS.
[21] Applicant’s Submissions, [36].
[22] Ibid.
25. The EIA in the current matter includes Mack 2. This declaration was before the delegate in the Earlier Decision[23] who made the following observation:
[Mr Mack] does not dispute the assertion that [the Applicant] used the Trade Mark in Australia from at least 4 November 2015, and the evidence supports this assertion. There is also agreement between the parties that [the Applicant] used the Trade Mark in connection with [contact lenses; glasses, sunglasses and contact lenses; optical goods; online retail store services relating to cosmetic and beauty products; optical services]; the evidence supports this assertion also.[24]
[23] The Applicant’s evidence in the Earlier Decision was comprised of Mack 2 together with a declaration made by Natalia Josephine Blecher.
[24] Earlier Decision (n 10) [28] (emphasis added).
26. Predictably, reliance was placed on the examples of use contained in Exhibits FM-8 and
[25] Applicant’s Submissions, [37].
Exhibit FM-8 to Mack 2 contains a document which lists Australian orders from the Applicant’s sales register between 4 November 2015 and 26 August 2018. By itself, this document does not assist the Applicant because each listed entry only provides the order number, purchase date, sale price, order status, shipping details and product number. The Trade Mark (or iterations thereof) does not appear anywhere in this document and it is unclear what was purchased given only the product number is provided. At its highest, this document merely demonstrates that the Applicant supplied unknown products and some of these were delivered to Australia before and after the priority date of the Opponent’s Mark.
28. Exhibit FM-9 to Mack 2 is comprised of ‘sample invoices for Australian sales of LENS.ME products bearing the [Trade Mark]’.[26] A total of 17 invoices dated between 4 November 2015 and 31 December 2015 are provided. Each invoice header displays the Trade Mark together with Australian billing and shipping details. On its face, this use of the Trade Mark is capable of being characterised as use in relation to the goods itemised in each invoice.[27] However, upon closer inspection, the exhibited invoices suffer the same underlying issue – namely, the product description of each invoice reveals that the goods sold were Solotica or Bella branded lenses. Specifically, the goods are described as being from Solotica’s ‘Hidrocor’, ‘Solflex’ or ‘Natural Colors’ collections or Bella’s ‘Diamond Collection’. Tellingly, each product description is accompanied by an image of the relevant Solotica or Bella packaging.
[26] Mack 2, [12(c)].
[27] Act ss 7(4), 9(1)(c)(ii).
29. To attenuate this issue, the Applicant highlighted Exhibit FM-7 to Mack 4 which it says shows that the lenses were delivered in packaging bearing the Trade Mark. Relevantly,[28]
[28] The majority of examples contained in Exhibit FM-7 to Mack 4 are irrelevant given the material pertains to use clearly outside of Australia or, at best, is ambiguous as to whether such use occurred in Australia.
[29] See, eg, Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51, [16] (Jacobs J).
[30] [2010] FCA 1380 (Yates J) (‘Optical’).
30. In Optical, Yates J was required to determine whether the evidence showed use of the trade marks in ‘other relation’ to the optical goods which were the subject of non-use applications.[31] As a preliminary consideration, Yates J remarked that:
There is a suggestion in the literature that use of a mark in relation to retail services for goods is use equally in relation to the goods themselves. In my view that simply does not follow. Whether it be the case or not is a question of mixed fact and law having regard to the particular circumstances of the case. … It is perhaps sufficient for me to say that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.[32]
[31] Act s 7(4) provides that ‘use of a trade mark in relation to goods’ includes use of the trade mark in other relation to the goods (emphasis added).
[32] Optical (n 30) [221] (emphasis added).
31. In finding that the evidence did not demonstrate use of the trade marks in relation to the goods themselves, Yates J explained that the evidence showed:
[T]hat use was in relation to the provision of the applicant’s services as a retail supplier of optical goods and of repair services for optical goods. The use was not a use of the modified ‘707 mark on or in physical or other relation to goods: see s 7(4). There is no evidence that any of the relevant transactions involved goods branded with the modified ‘707 mark ... More generally, there is no evidence that the applicant itself supplies or has supplied goods branded with the modified ‘707 mark, the ‘707 mark or the ‘966 mark. The business records tendered in relation to the transactions on which the applicant relied make clear that many of the goods supplied by the applicant were projected into the course of trade by others using trade marks applied by others. Some of these trade marks are identifiable as very well-known fashion and luxury brands. It was those marks that functioned as the badge of origin for those goods. Those goods passed through the hands of the applicant in the course of trade, but in no true sense was the applicant the source or origin of those goods. The applicant was no more than the source or origin of particular retail services involved in the down-stream supply of those goods. The business records also show the use by the applicant of its separate “house” brands in relation to goods. In those instances it was those house brands that functioned as the badge of origin of those goods. In each case the use of the modified ‘707 mark was in physical or other relation to its retail services, but nothing more.[33]
[33] Ibid [254] (emphasis added). Justice Yates’ finding that the evidence was properly characterised as use in relation to services and not goods was affirmed in Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [16]–[22] (Cowdroy, Middleton and Jagot JJ).
32. Parallels may be drawn between Optical and the current matter. First, there is no evidence that the goods listed in the exhibited invoices bore the Trade Mark. Even when the Screenshot is considered in its most favourable light, it goes no further than showing that Solotica packaged contact lenses were delivered in a transport box bearing the Trade Mark. It is no different to retailers such as Amazon or Woolworths who deliver third party branded goods in transport packaging bearing their own trade marks. Consumers readily apprehend that such trade marks are being used to indicate the source of the retail services and not the goods themselves. For similar reasons, the Trade Mark on the transport box would operate as ‘no more than the source or origin of particular retail services involved in the down-stream supply’ of Solotica branded lenses.
33. Second, the Applicant’s evidence is entirely congruent with it being a retailer of third party branded contact lenses. The evidence is devoid of any material that the Applicant supplies (or has supplied) optical goods bearing the Trade Mark and it provides no foundation to infer that any of the contact lenses offered were manufactured by or originated from the Applicant. Indeed, the evidence reveals that the Applicant consistently describes itself as being ‘an online based optical store offering different brands of medical and colored contact lenses like Anesthesia and Solotica with free shipping’ or an ‘online optical shop for the Middle East – All contact lens brands including Acuvue, Solotica and Bella on stock’.[34]
[34] Mack 2, Exhibit FM-4 (emphasis added).
34. Finally, Mr Mack declares that the Applicant ‘has intended to directly apply the [Trade Mark] to contact lenses, glasses and other optical goods, but has not to date due to the ongoing disputes with [the Opponent] around the world’.[35] This statement encapsulates the Applicant’s evidence. Put simply, there is no evidence that the Trade Mark has been used upon, or in physical or other relation to, optical goods or optical services. Each invoice exhibited shows use of the Trade Mark in relation to the supply of contact lenses bearing third party trade marks. This constitutes use of the Trade Mark in relation to ‘retail services, but nothing more’. Given all the relevant circumstances, the use of the Trade Mark in the exhibited invoices and the Screenshot are properly characterised as uses in ‘other relation’ to the retail of contact lenses. It follows that the Applicant has established prior continuous use of the Trade Mark in relation to the retail of contact lenses. However, the EIA provides no basis to apply the provisions of s 44(4) of the Act with respect to the goods and services particularised in classes 9 and 44 of the Claimed GS.
[35] Mack 3, [20] (emphasis added).
35. Alternatively, the Applicant claimed that the application should be accepted under s 44(3) of the Act.[36] This section provides that the application to register the Trade Mark may be accepted based on honest concurrent use[37] or that, because of other circumstances, it is proper to do so.[38] As regards to honest concurrent use, a prerequisite to enabling the application of this provision is that actual concurrent use of the Trade Mark in relation to the relevant goods and services before the Relevant Date must be established. Here, there is no evidence that the Trade Mark has been used in relation to the goods and services outside of the services for which the provisions of s 44(4) of the Act may be applied. Meanwhile, the other circumstance relied on is that the Applicant has purportedly achieved more Australian sales than the Opponent has under their respective trade marks.[39] At face value, this isolated circumstance is not one which would make it proper to accept the application. Consequently, it is not appropriate to apply the provisions of s 44(3) of the Act to any of the remaining goods and services particularised in the Claimed GS.
[36] Applicant’s Submissions, [35], [38].
[37] Act s 44(3)(a).
[38] Ibid s 44(3)(b).
[39] Applicant’s Submissions, [35].
36. Accordingly, the provisions of s 44(4) of the Act may be applied in relation to the class 35 services of the Claimed GS. As such, the ground of opposition under s 44 of the Act has been established in relation to the following:
Class 9: contact lenses; glasses, sunglasses and contact lenses; optical goods
Class 44: optical services; fitting of contact lenses
37. I now turn to consider the remaining grounds of opposition, as nominated in the SGP, in relation to the class 35 services of the Claimed GS. For convenience, these services will be referred to as the ‘Retail Services’ for the remainder of the decision.
Section 58
38. Section 58 of the Act relevantly provides:
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.
39. A prerequisite to establishing this ground is that the trade mark relied upon by the Opponent must have been used in Australia prior to the Relevant Date and prior to any actual use of the Trade Mark in Australia by the Applicant.[40] For the reasons stated,[41] I am satisfied that the Applicant’s first use of the Trade Mark in Australia in relation to the Retail Services occurred in November 2015. The Opponent’s alleged first use of any trade mark in Australia is declared as being ‘since 2016’.[42] This date is refined in the Opponent’s Submissions as being since ‘at least August 2016’.[43] Given each date is after the Applicant’s first use of the Trade Mark in Australia, this ground of opposition fails at the threshold.
[40] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
[41] See discussion at [26]–[34] of this decision.
[42] Anzi 1, [23].
[43] Opponent’s Submissions, [57.3].
40. The s 58 ground of opposition has not been established.
Section 59
41. Section 59 of the Act provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
42. This ground was particularised in the SGP as follows:[44]
The application to register the [Trade Mark] relates to goods in class 9 which include “Contact lenses; glasses, sunglasses and contact lenses; optical goods”. The Applicant does not, and has never, manufactured or sold class 9 goods under or by reference to the [Trade Mark]. The Applicant’s business relates to services only. The Applicant has no intention to use the [Trade Mark] for any goods in class 9. The [Trade Mark] should be refused for ‘no intention to use’ in respect of class 9.
[44] SGP, [19]–[22] (emphasis in original).
43. Evidently, this ground of opposition is confined to class 9 of the Claimed GS. It is not directed at the Retail Services.[45] Given the Opponent has already established the s 44 ground of opposition in relation to the class 9 goods of the Claimed GS, consideration of the s 59 ground of opposition is not required.
[45] Opponent’s Submissions, [110].
Section 60
44. Section 60 of the Act relevantly provides:
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.
45. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent’s Mark as well as the plain words ‘LENS ME’ and ‘LENS.ME’ (together ‘Word Marks’) were identified as underpinning this ground of opposition.[46] The SGP was relevantly particularised as follows:
The Opponent has acquired a reputation in Australia in respect of the Opponent’s Marks for contact lenses and related goods and services. The Opponent’s use of the Opponent’s Marks pre-dates the priority date of the Applicant’s application to register [Trade Mark]. By reason of the Opponent’s reputation, use by the Applicant of the [Trade Mark] is likely to deceive or cause confusion.
[46] Opponent’s Submissions, [74].
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[47] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[48]
[47] [2000] FCA 1335, [81] (‘McCormick’).
[48] [1992] FCA 159, [118] (‘ConAgra’).
48. Further, Kenny J said in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[49]
[49] McCormick (n 47) [86].
49. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[50] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[51]
[50] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[51] ConAgra (n 48) [77].
50. The Opponent primarily relied on overseas use of the Opponent’s Mark and the Word Marks to establish this ground. Reference was made to the Opponent’s social media pages, its website and various commercial activities as demonstrating that the Opponent’s Mark and the Word Marks had ‘reached the necessary threshold of awareness, cognisance or knowledge among relevant Australian consumers as of 13 November 2020’.[52] The Applicant disagreed. It highlighted that the Opponent’s evidence is devoid of any sales figures and documentary material which would support the Opponent’s Mark or the Word Marks as having acquired the requisite reputation in Australia at the Relevant Date.[53]
[52] Opponent’s Submissions, [75].
[53] Applicant’s Submissions, [45]–[49].
51. In my assessment, the Opponent’s evidence falls markedly short of establishing that the Opponent’s Mark or either of the Word Marks had acquired any reputation in Australia at the Relevant Date. The evidence contains several limitations with the most glaring being that it does not contain any financial metrics such as revenue or marketing expenditure figures. There is also an absence of any examples of packaging or promotional material that may have been distributed and there is no evidence as to the quantity of sales achieved by the Opponent.
52. The evidence predominantly shows use of the Opponent’s Mark and the Word Marks overseas. However, the Opponent openly accepts that ‘there is no evidence of an Australian audience’ for its social media pages and further concedes that ‘there is no evidence of an Australia[n] audience or any orders having been placed’ from its website.[54] The various commercial agreements, publications and shipping receipts exhibited to Anzi 1 relate to use of ‘LENS ME’ in the Middle East and other overseas markets. However, the Opponent has not sought to address what, if any, exposure this evidence has to the Australian market and whether any of the alleged reputation arising from this use has spilled over into the Australian market.
[54] Opponent’s Submissions, [74.1]–[74.2].
53. Finally, the evidence alleged to support the Opponent’s direct shipping of ‘LENS ME products to consumers in Australia’[55] is problematic. This evidence consists of what appears to be two invoices[56] and five shipping receipts dated between August 2016 and May 2018. These documents do not indicate what the shipments contained, whether the items shipped bore the Opponent’s Mark or the Word Marks and what quantity of items were shipped. The documents simply describe the contents as ‘LENSME’ and the declared values, where stated, as ranging from US$3 to US$9. As such, these documents do not advance the Opponent’s case.
[55] Anzi 1, [23].
[56] An English translation of the exhibited documents have not been provided.
54. Accordingly, I am not satisfied that the Opponent’s Mark or either of the Word Marks had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Given s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not necessary.
55. The s 60 ground of opposition has not been established.
Section 62A
56. Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
57. A finding of bad faith will not be established easily given the ‘very serious’ nature of the allegation.[57] The notion of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2), who observed:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.
…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[58]
[57] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[58] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (emphasis added).
58. This ground was relevantly set out in the SGP as follows:
The Applicant has a history of attempting to disrupt the Opponent’s business.
The Opponent has successfully challenged and cancelled the registration of the [Trade Mark] in other territories.
Due to the Applicant’s awareness of the Opponent’s prior ownership, use and application to register the Opponent’s Marks, the application to register the [Trade Mark] was made in bad faith.
59. Surprisingly, the Opponent’s Submissions state that ‘it is unclear on the evidence that either party acted contrary to the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the trade’.[59] I agree. What is clear is that each party believes that it is entitled to the use of its respective trade marks containing the words ‘LENS ME’. Given the Earlier Decision, the Applicant was obviously aware of the Opponent and the Opponent’s Mark at the time of filing the current application. However, equating this mere awareness to bad faith would be unduly absolute. The Opponent has not filed any persuasive evidence to establish that the application was made in bad faith or that the Applicant has a history of trying to disrupt the Opponent’s business. To this end, the evidence filed indicates that each party has seemingly had a measure of success in challenging the other party’s trade mark in overseas jurisdictions. Consequently, I am not satisfied on the balance of probabilities that the application was made in bad faith.
[59] Opponent’s Submissions, [90].
60. The s 62A ground of opposition has not been established.
Decision
61. Section 55 of the Act relevantly provides:
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.
62. In Apple Inc v Registrar of Trade Marks, Yates J observed that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole.[60]
[60] [2014] FCA 1304, [232] (emphasis added).
63. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to refuse the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
64. On 26 April 2023, I notified the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the Claimed GS were amended as follows:
Class 9: contact lenses; glasses, sunglasses and contact lenses; optical goodsClass 35: online retail store services relating to contact lenses, colour contact lenses, medical contact lenses, contact lens cases, contact lens solutions, glasses, sunglasses, optical goods, masks, cleansers, toiletries, cosmetic and beauty products
Class 44: optical services; fitting of contact lenses
On 10 May 2023, the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendments. The Applicant filed divisional trade mark application number 2355282 in respect of classes 9 and 44. The divisional application was examined and the specification of the parent (being the present application) has been amended in the manner set out at [64] of this decision.
66. As such, trade mark application number 2136021 may proceed to registration one month from the date of this decision.[61] If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
[61] The application was originally accepted with the endorsement ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied’. As such, the addition of an endorsement is not required in the circumstances.
Costs
67. Both parties have sought an award of costs. Costs usually follow the event. However, as each party has been partially successful, it is appropriate in this case that each party bears its own costs.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
15 May 2023
and Edelman JJ).
Key Legal Topics
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Civil Procedure
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Commercial Law
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Appeal
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Res Judicata
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