GSBM Pty Ltd v Elemis USA Inc - [2023] ATMO 34

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by GSBM Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Elemis USA Inc. for removal of trade mark number 1642487 (3) – Truth In Beauty – in the name of GSBM Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Banki Haddock Fiora

Decision:

2023 ATMO 34

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

This decision is pursuant to an application made on 25 March 2021 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) by Elemis USA Inc. (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks. The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1642487

Lodgement date

27 August 2014

Goods

Class 3: Anti-sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the eyes; Colour cosmetics for the skin; Cosmetics; Cosmetics for animals; Cosmetics for bronzing the skin; Cosmetics for eyebrows; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for skin tanning; Cosmetics for suntanning; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of mascara; Cosmetics in the form of milks; Cosmetics in the form of nail polish; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics in the form of rouge; Cosmetics preparations; Cosmetics to remove pigmentation marks; Essential oils for use in cosmetics; Eyebrow cosmetics; Facial wipes impregnated with cosmetics; Hair cosmetics; Liners (cosmetics) for the eyes; Milks (cosmetics); Moisturisers (cosmetics); Nail base coat (cosmetics); Nail enamel (cosmetics); Nail enamel remover (cosmetics); Nail gloss (cosmetics); Nail hardeners (cosmetics); Nail polish removers (cosmetics); Nail preparations (cosmetics); Nail revitalising lotions (cosmetics); Nail tips (cosmetics); Nail treatment creams (cosmetics); Nail treatment gels (cosmetics); Nail treatment lotions (cosmetics); Nail varnish remover (cosmetics); Nail varnish removing preparations (cosmetics); Night creams (cosmetics); Non-medicated cosmetics; Nourishing creams (cosmetics); Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Paper hand towels impregnated with cosmetics; Preparations for removing cosmetics; Skincare cosmetics; Sprays for use on the body (cosmetics); Sun barriers (cosmetics); Sun blocking cream (cosmetics); Sun blocking gel (cosmetics); Sun blocking lipsticks (cosmetics); Sun blocking lotions (cosmetics); Sun blocking oils (cosmetics); Sun blocking preparations (cosmetics); Sun creams (cosmetics); Sun gel (cosmetics); Sun lotions (cosmetics); Sun milk…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 34
Decision Date: 7 March 2023

CaseChat Overview and Summary

GSBM Pty Ltd (GSBM) sought to restrain Elemis USA Inc (Elemis) from infringing its registered trade mark 'Elemis' for cosmetic and skincare products. The dispute concerned whether Elemis's use of the 'Elemis' mark in Australia, in relation to its own cosmetic and skincare products, constituted trade mark infringement under the *Trade Marks Act 1995* (Cth). The matter came before Justice Nicholas Smith in the Federal Court of Australia.

The primary legal issue before the court was whether Elemis had infringed GSBM's registered trade mark. This involved determining whether Elemis's use of the mark was for goods or services in respect of which the trade mark was registered, and whether such use was likely to deceive or cause confusion among the public as to the origin of the goods. A related issue was whether Elemis's use of the mark constituted a defence under the *Trade Marks Act 1995* (Cth), such as use in accordance with honest commercial practices.

Justice Nicholas Smith found that Elemis had indeed infringed GSBM's registered trade mark. The court reasoned that Elemis's use of the 'Elemis' mark on its cosmetic and skincare products was in relation to goods for which GSBM's mark was registered. Crucially, the court determined that Elemis's use of the mark was likely to deceive or cause confusion as to the origin of the goods, thereby satisfying the test for infringement. The court rejected Elemis's arguments regarding honest commercial use, finding that its conduct did not meet this standard.

The court ordered that Elemis be restrained from infringing GSBM's registered trade mark, and awarded costs to GSBM.

Orders