Health Boutique Pty Ltd v Boom Ideas Pty Ltd - [2015] ATMO 104

TRADE MARKS ACT 1995

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

Re:Opposition by Health Boutique Pty Ltd to registration of trade mark application 1583086(5, 30) - SKINNY TEA TIME AND DEVICE - in the name of Boom Ideas Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Ian Drew of Davies Collison Cave patent and trade mark attorneys Applicant: Edwina Whitby of Counsel, instructed by Giulia Fimmano of AJ Park patent and trade mark attorneys
Decision:	2015 ATMO 104 Section 52 opposition – grounds of opposition pursued under ss 44, 60 and 42(b) – no grounds established – registration may proceed.

Background

This decision is pursuant to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Health Boutique Pty Ltd (‘the Opponent’) to registration of the trade mark subject of application number 1583086, detailed below, in the name of Boom Ideas Pty Ltd (‘the Applicant’).
Trade mark: (‘the Trade Mark’)
Filing date: 27 September 2013 (also referred to as ‘the priority date’)
Goods:Class 5: Tea for medicinal purposes; aromatic teas (for medicinal use); artificial tea (for medicinal use); fruit-flavoured tea for medicinal use; fruit tea for medicinal use and purposes; herbal tea for medicinal use and purposes; medicinal tea for slimming purposes.
Class 30: Tea; artificial tea (other than for medicinal use); beverages made with tea; beverages with tea base; chai tea; fruit and fruit-flavoured tea (other than for medicinal purposes); herb tea and herb tea-based beverages not for medicinal purposes; iced tea; non-medicated tea extracts; non-medicated tea bags.
The application was originally filed in the name of “A.C.N. 164 712 538 Pty Ltd”. It also originally claimed additional goods in classes 5 and 30 as well as services in class 35. However the specification of goods and services was amended to that above in order to overcome a ground for rejection raised during examination (in relation to prior conflicting marks that are not at issue here).
The application was accepted in due course and advertised as such on 20 February 2014. On 22 April 2014 the Opponent filed a Notice of Intention to Oppose the application and on 22 May 2014 it filed a Statement of Grounds and Particulars. The grounds particularised were those under ss 42(b), 44 and 60, as well as a general statement that registration ought to be refused in the exercise of the Registrar’s discretion.
The Opponent filed evidence in support of its case on 7 October 2014, described in more detail below. The Applicant was refused an extension of time to file evidence in answer, and so has not filed said evidence.
Thereafter the parties requested to be heard and the matter came before me, a delegate of the Registrar of Trade Marks, at a hearing in Canberra on 16 July 2015. The Opponent was represented by Ian Drew of Davies Collison Cave patent and trade mark attorneys. The Applicant was represented by Edwina Whitby of Counsel, instructed by Giulia Fimmano of AJ Park patent and trade mark attorneys.

Evidence

The Opponent’s evidence in support comprises a declaration by Gretta Van Riel, Managing Director and Founder of the Opponent, with exhibits GVR-1 to GVR-11 including confidential exhibits GVR-4 and GVR-5, made 2 October 2014.
Ms Van Riel claims to have first used the trade mark “SkinnyMe Tea” in July 2012, initially as a sole trader, and then through the Opponent which was incorporated on 24 April 2013 and is now the main vehicle through which the business trades. She declares further that the Opponent uses “SkinnyMe Tea” under license from a company incorporated in Hong Kong, SkinnyMe Tea International Limited, of which she is also the sole shareholder and Director.
The Opponent uses the “SkinnyMe Tea” trade mark in relation to the sale of a range of tea products, including tea products for the purpose of slimming and detoxification. It is claimed that the Opponent has also developed downloadable application software which also uses the “SkinnyMe Tea” trade mark. The Opponent declares that it provides retail, wholesale and online selling services through the website “ and via various social media platforms including Instagram, Facebook, Pinterest, Twitter and Tumblr.[1]
[1] Although I note that it does not appear the Opponent provides these services to others, in the course of trade, but rather that its retail, wholesale and online selling services are directed at selling its own products.
Confidential monthly sales figures are provided, which are broken into Australian sales and international sales and dated from June 2013. They are substantial. Confidential promotional expenditure is also provided and it too is substantial, although the amount attributable to promotion in Australia is not indicated.
The majority of the Opponent’s promotional activities are declared to be conducted through social media platforms. The Opponent engages over 100 “brand ambassadors” internationally. The names, Instagram account names and numbers of followers are provided for twenty international “brand ambassadors”; those followers ranging in number from approximately six thousand to approximately 295,000. The Opponent declares also that it regularly emails customers on its database with promotional material. A selection of promotional material is exhibited at GVR-6 and is in relation to a range of topics including the goods of the Opponent, customers’ before-and-after transformations, recipes, fitness and “detox” information, and short videos. The material is largely undated, although what appears to be a print out of a Twitter page indicates that the user “SkinnyMe Tea” joined Twitter in May 2012. Where pages of the promotional material contain a copyright notice, it is dated 2014.
In relation to the Opponent’s “presence and promotion online” the Opponent exhibits a selection of extracts from its website. They show use of the “SkinnyMe Tea” trade mark, at times in a font somewhat similar to that of the Trade Mark, as well as the trade mark “SMT [in fancy lettering] TEATOX CO.” Their content relates to the products for sale by the Opponent and customer testimonials. All are dated post the filing date. Similarly, extracts from the Opponent’s “core” Instagram, Facebook, Pinterest, Twitter and Tumblr sites are provided. They too show use of the “SkinnyMe Tea” trade mark, as well as “SMT” and “SMT [in fancy lettering]”. Their content ranges from customers’ before-and-after transformations, the Opponent’s products, smoothie recipes, exercises, humorous pictures, motivational quotes and various imagery. They too are undated or dated after the priority date.
Within Ms Riel’s declaration are graphs illustrating the “reach” of the Opponent’s Facebook page. They show almost no activity until March 2013, slightly more activity until August 2013, then a jump to higher activity (both organic and paid) in the second half of 2013, after which time paid activity remains high whilst organic activity declines significantly.
In relation to Instagram accounts the Opponent initially used the Instagram account name “skinnymetea”, however this was shut down in early 2013. It is claimed that that account had 220,000 followers internationally. The Opponent then registered a new Instagram account with the name “skinnymeteaofficial”, which was shut down in July 2013 and which was claimed to have had 190,000 followers. The Opponent now operates several Instagram accounts upon which the “SkinnyMe Tea” trade mark is claimed to be used, under names including “skinnymetearesults”, “SMTOfficial” (which is claimed to have 401,000 followers), “skinnymeteatox”, “SMT_lifestyle” and “skinnyme_tea”. Growth in followers of the “SMTOfficial” account is shown between what appears to be late 2013 and June 2014.
A list of a further thirty Instagram account names operated by the Opponent is provided, the majority of which do not incorporate “skinnymetea” but rather names such as “befitbabes”, “befitguys”, “detoxtips”, “weightlosssecrets” and “workoutfacts”. The Opponent claims it promotes the “SkinnyMe Tea” trade mark through these accounts and that it has the capacity to reach over 10 million viewers by way of the social media it employs. It also declares that it uses variants of the “SkinnyMe Tea” trade mark including “skinnymeteatime”, as shown in pages from its Instragram accounts dated 2013.
Pages of the Applicant’s website are included in the Opponent’s exhibit GVR-10. It shows that the Applicant sells similar products under the Trade Mark. The Applicant also appears to use social media, as indicated by links to Instagram upon its website, and its content includes before-and-after transformations, customer testimonials (which date from 9 January 2012), recipes and eating plans, and exercise plans.
Five instances of confusion are documented in exhibit GVR-11. They comprise emails from purchasers who purchased the Applicant’s goods and subsequently made enquiries about those purchases with the Opponent.
Lastly, the Opponent identifies four trade marks that it relies upon for the purpose of its ground of opposition under section 44. They are detailed in the section of this decision titled “Section 44”.

Grounds and onus

The Opponent pursued all of the grounds particularised in the Statement of Grounds and Particulars.
The Opponent bears the onus of establishing at least one of its grounds of opposition. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities,[2] and that the relevant date at which the rights of the parties are to be determined is 22 March 2012, the filing date of the applications.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599, [6] to [26].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
I will address each ground in the same order that the Opponent discussed them.

Section 44

Section 44 of the Act relevantly provides:

Identical etc. trade marks

44.(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.

As will be seen it is not necessary for me to refer to either sub-ss (3) or (4).
In order to establish the ground the Opponent must establish that there is another trade mark (or trade marks) which has an earlier priority date; which is substantially identical or deceptively similar to the Trade Mark; and which is in respect of similar goods or closely related services to those of the Trade Mark. To do so the Opponent relies upon the following four registrations.

· Registration number: 1476455

· Priority date: 23 February 2012

· Owner: Coral Storm Pty Ltd

· Class 5: Aromatic teas (for medicinal use); fruit flavoured tea for medicinal use; fruit tea medicinal purposes; herbal tea for medicinal use; herbal teas for medicinal purposes; jasmine tea for medicinal purposes; medicinal tea; tea for medicinal purposes.

· Class 30: Apple flavoured tea; aromatic teas (other than for medicinal use); artificial tea (other than for medicinal use); beverages made of tea; beverages with tea base; chai tea; fruit flavoured tea (other than medicinal); fruit tea (other than for medical purposes); herb tea not for medical purposes; herb tea-based beverages not for medical purposes; herbal tea (other than for medicinal use); iced tea; instant tea (other than for medicinal purposes); jasmine tea, other than for medicinal purposes; non-medicated tea bags; non-medicated tea based beverages; non-medicated tea beverages; non-medicated tea extracts; non-medicated tea products; orange flavoured tea (other than for medicinal use); packaged tea (other than for medicinal use); preparations for making beverages (tea based); rooibos tea (not medicinal); tea (not medicinal); tea-based beverages; tisanes made of tea.

· Registration number 1581702

· Priority date: 20 September 2013

· Owner: SkinnyMe Tea International Limited

· Class 5: Pharmaceutical and veterinary preparations; dietetic substances adapted for medical use, foods and drink; tea for medicinal purposes; aromatic teas (for medicinal use); artificial tea (for medicinal use); asthmatic tea; fruit-flavoured tea for medicinal use; fruit tea for medicinal use and purposes; herbal tea for medicinal use and purposes; medicinal tea for slimming purposes.

· Class 30: Coffee, tea, cocoa and artificial coffee; tapioca and sago; confectionery; flour and preparations made from cereal; ices; sugar, honey, treacle; sauces (condiments); spices; aromatic teas (other than for medicinal use); artificial tea (other than for medicinal use); beverages made with tea; beverages with tea base; chai tea; fruit and fruit-flavoured tea (other than for medicinal purposes); herb tea and herb tea-based beverages not for medicinal purposes; iced tea; non-medicated tea extracts; non-medicated tea bags.

SkinnyMe Tea

· Registration number 1581713

· Priority date: 20 September 2013

· Owner: SkinnyMe Tea International Limited

· Class 9: Computer hardware and software; computer application software for use on mobile telecommunication and other electronic devices; application software in relation to fitness, dietary requirements and consumption of food and beverages; electronic calorie counters; electronic apparatus and instruments for use in the health industry.

· Class 35: Advertising; business management; business administration and office functions; retail, wholesale and online selling services; retail, wholesale and online selling services in relation to teas, coffees, beverages, preparations for beverages, tea bags, coffee beans, teapots, tea strainers, medicinal teas, medicinal coffees and loose-leaf tea; information, advisory and consultancy services in relation to the aforementioned.

· Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

· Registration number 1582983

· Priority date: 27 September 2013

· Owner: Coral Storm Pty Ltd

· Class 32: Cordials; Aloe vera drinks (non alcoholic); Non-medicated mineral drinks; Bottled fruit drinks; Energy drinks (not for medical purposes); Mineral water (beverages); Tisanes (non-medicated beverages and other than tea based).

I note that trade mark registrations 1476455 and 1582983, both comprising the words “Skinny TEA” in combination with a leaf and vine device, were formerly under the name Margherita Cartisano. They were both assigned to Coral Storm Pty Ltd, an entity also associated with Ms Van Riel, on 26 February 2015.
The priority date of the Trade Mark is 27 September 2013. With the exception of registration 1582983, the priority dates of the trade marks in the table above are all earlier than that of the Trade Mark. Registration 1582983 has the same priority date as that of the Trade Mark. It is therefore not a prior trade mark, however as will become clear it is not necessary to delve into that discussion further because I do not consider it to conflict with the Trade Mark.
Section 14 of the Act states that goods are similar to other goods if they are the same as the other goods, or of the same description as that of the other goods. The expression “goods of the same description” is a term of art describing the relationship between products such that they would be seen by purchasers as having the same trade origin if sold under similar trade marks.[4] I consider it relatively straight forward that all of the trade marks identified in the table above are in respect of the same goods, or goods of the same description, as the Trade Mark.[5]
[4] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (‘Polo Textile’) [1993] FCA 203.
[5] The Applicant made submissions that the goods of registration 1582983 are not of the same description as the Trade Mark. I am not persuaded by them, however the matter is inconsequential because the registration is not prior to the Trade Mark nor, as will become evident, a conflicting mark.
The remaining matter is whether the Trade Mark is substantially identical or deceptively similar to any of the above-identified registrations. The Opponent did not press that the marks were substantially identical, but rather that they were deceptively similar.
The expression “deceptively similar” is defined in s 10 of the Act as:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[6] Windeyer J discussed deceptive similarity in the following terms:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark]. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
[6] (1963) 109 CLR 407; [1963] HCA 66; [13].

The Opponent submits that each of the trade marks comprise the same essential elements, formed around the conjunction of the words SKINNY and TEA. It is the Opponent’s contention that the matter turns on whether the heart device and the word TIME in Trade Mark, comprising elements which are submitted to be of weaker distinctive character, are sufficient to differentiate it from the prior registrations. The Opponent submits that they are not, noting the instances of documented confusion and noting the on-line nature of the parties’ businesses (wherein the word element in a trade mark is submitted to become the more important distinguishing element; and wherein the predictive text functionality of search engines may lead a consumer to the other party’s site). In verbal submissions the Opponent also disputed that the words SKINNY TEA were descriptive, in that SKINNY did not describe a character or quality of TEA and tea was not a beverage for which a “skinny” version might be required (unlike milk, to which the expression “skinny milk” is applied to low or no fat versions).
For its part the Applicant submits that the words SKINNY TEA are descriptive of teas used for weight loss; that Google search results indicate a number of websites using phrases that include SKINNY TEA (including SKINNY YOU TEA, SKINNY TEATOX, TEAMI SKINNY TEA, SKINNYMINT TEA as well as SKINNY TEA, SKINNYME TEA and SKINNY TEA TIME); that the visual appearance and heart device of the Trade Mark differentiate it from the registrations identified by the Opponent; and that the documented instances of confusion are isolated instances arising from consumer inattention as opposed to deception or confusion.
I am not satisfied that the Trade Mark is deceptively similar to any of the registrations identified in the table. Firstly, whilst it is the impressions of the trade marks which are to be considered (and which may be imperfectly recalled) the effect of descriptiveness must also be taken into account. It was noted in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (‘Hornsby’)[7] (albeit in the context of proceedings under the now repealed Trade Practices Act 1974) that:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action: Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 at 42, per Lord Simmonds. As his Lordship said at 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words:
So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.
The risk of confusion must be accepted; to do otherwise is to give one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
[7] [1978] HCA 11; (1978) 1b IPR 818, 825.
This has been applied in a number of cases including REA Group Ltd v Real Estate 1 Ltd,[8] Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2),[9] Watches of Switzerland Pty Ltd v Mappin & Webb Limited,[10] and Cars on Demand IP Pty Ltd v Cars on Demand Limited,[11] each of which found that the trade marks and trade names involved were not misleading, deceptive, or likely to cause confusion (as relevant), even though they contained the same descriptive material.
[8] [2013] FCA 559; (2013) 102 IPR a.
[9] [2012] FCA 862 (with which conclusion the Full Court agreed).
[10] [2015] ATMO 23.
[11] [2014] ATMO 87.
The word “skinny” has a relatively wide range of applications and it is not necessary to institute a search for meaning to understand its ordinary signification in various contexts. It may refer to low calorie versions of products (such as “skinny milk” or “skinny cocktails”), to goods which are slender or narrow (“skinny jeans” or “skinny fit” clothing), or to goods which have the intended purpose of making the user “skinny” (“skinny tea” or “skinny pill”). Accordingly I consider the expression “skinny tea” merely indicates tea products which have the intended purpose of rendering the consumer “skinny”. This is shown to be the case by the Opponent’s evidence, which demonstrates that its goods and the Applicant’s goods are tea products that are intended, amongst other claims relating to detoxification and boosting energy, to make the drinker lose weight.
Given that “skinny tea” merely describes the parties’ goods, then, as found in the cases above, material other than the descriptive words in common distinguish the trade marks from each other.
The Trade Mark is represented in fancy lettering akin to graffiti, or as though the letters have been formed by brush strokes or crayon. The heart device is represented in a similar manner and also contains a cross or letter “x” element. It is a relatively distinctive font, and in combination with the device the Trade Mark has a unique visual impact. Additionally, the words contained within the Trade Mark are “SKINNY TEA TIME”. These features give the Trade Mark a visual and conceptual impression which is distinct from the trade marks identified by the Opponent, each of which is distinguished by their own additional elements.
Registrations 1476455 and 1582983 are differentiated by virtue of the stylised leaf and vine device along with the (albeit comparatively commonplace) stylised lettering. Registration 1581713 is differentiated by the inclusion of “me” in “SkinnyMe Tea”. The word “skinny” applies to “me” rather than “tea”, and as such “SkinnyMe Tea” has a somewhat different connotation to “skinny tea”. This is likely why registrations 1476455 and 1581713 were considered able to coexist: because they each contained material sufficient to differentiate from each other, albeit both contained the words “skinny” and “tea”. The same applies to registration 1581702, although this trade mark is further differentiated by a stalk and berry device and circular background (and I note that rather than simply “tea” it is “AÇAI TEA” that is in this registration).
The Opponent makes submissions that heart devices are a common element in trade marks, and demonstrates that there are 3898 entries upon the Australian database of trade marks (‘ATMOSS’) which contain the device descriptor “heart”. Whilst I accept that there are many heart devices upon the ATMOSS database, of itself this says very little. There are likewise many devices of stars, people, animals, shields, suns and so on. Where the type of device is not unusual or where there are many ways to represent its subject matter, it is the particular style of depiction which is of primary concern and which differentiates. This is evident in the list of heart devices provided by the Opponent, which indicates the coexistence of approximately 100 heart devices rendered in different manners.
In respect of the documented instances of confusion, I consider firstly that the observation in Hornsby applies: namely that the risk of confusion must be accepted because to do otherwise is to give one who appropriates to him or herself descriptive words an unfair monopoly. Secondly it is possible that consumers are more susceptible to confusion where the visual features of the trade marks are absent, such as in the context of email addresses, here being “[email protected]” and “[email protected]”. Although a person may find the email address of either party via its website (upon which the visual elements of the marks may be apparent), a person could alternatively use the “contact” links in Google® search results or “click-through” links in web pages, both of which contain only text. Irrespective, it is the trade marks as applied for and registered that are to be compared, not forms of them falling outside the bounds of what might be considered to be use them with additions or alterations not substantially affecting their identity.
The Opponent submits also that the Trade Mark presents as being linked to “the same family of trade marks as the marketing of the products”. It is not clear what family of trade marks the Opponent refers to. I do not consider the registered trade marks already discussed constitute a family of trade marks: firstly the material in common in merely descriptive, secondly they are owned by different entities and the two assigned to Ms Riel’s Hong Kong business were assigned only relatively recently, and thirdly they contain other material which differentiate them significantly. If, however, the reference is to the various names used upon the Opponent’s social media pages, they are not so well known that “judicial notice”, in so many words, may be taken of them such that are a relevant consideration for the purposes of s 44.[12]
[12] I note further that if the reference is to the Opponent’s use of “skinnymeteatime”, as referred to in Ms Riel’s declaration and described as a variant of “SkinnyMe Tea”, then (a) an unregistered trade mark that is not notorious or ubiquitous is not a relevant consideration for the purposes of section 44, and (b) the Opponent’s use of that phrase appears to have occurred after the Applicant first used “skinny tea time”.
In summary, I do not consider that the Trade Mark is similar to any of the registered trade marks identified by the Opponent. Nor do I consider that the Opponent has established that any family of trade marks exists, such that the Trade Mark would be perceived to be an extension of it. Accordingly the ground under section 44 fails.

Section 60

Section 60 of the Act provides:
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.
Note: For priority date see section 12
To establish the ground of opposition under s 60 the Opponent must demonstrate that another trade mark had acquired a reputation in Australia such that by 27 September 2013 the use of the Trade Mark in respect of the Applicant’s goods would be likely to deceive or cause confusion.
Reputation in this context refers to the recognition of the Opponent’s mark by the public generally,[13] although the size and nature of the relevant market must be taken into account.[14] The parties’ trade marks need not be substantially identical or deceptively similar. However confusion cannot arise solely from reputation but will always involve some degree of similarity, whether it be called deceptive similarity or something less.[15]
[13] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335; (2000) 51 IPR 102.
[14] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.
[15] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.
With regard to establishing reputation Kenny J observed 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. [16]
[16] McCormick, [86].
Her Honour also cited Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[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... [17]
[17] [1992] FCA 159; (1992) 33 FCR 302, cited in McCormick, [83].
It is not clear precisely what trade mark the Opponent claims to have a reputation in, but it appears to be a combination of “SkinnyMe Tea” and what the Opponent claims to be variants of that trade mark including “skinny me tea time”, “skinnyme teatox”, “skinnyme tea results”, and other trade marks that appear in various points in its evidence. I will begin with a consideration of “SkinnyMe Tea”, the trade mark which appears to place the Opponent’s case at its highest.
As at the priority date, assuming that sales for June 2013 began on the first of that month, the Opponent had made almost four months’ worth of sales. The amount of sales is significant, but not overwhelming. Promotional expenditure also appears significant - almost equating to sales in the 2012/2013 financial year – although the 2013/2014 financial year is not broken into pre-and post-priority date figures.
Much of the material showing use of “SkinnyMe Tea” is either undated or dated after the priority date. There are isolated instances of what appears to be pre-priority date use (such as the Twitter page indicating that the user “SkinnyMe Tea” joined in May 2012 and two posts upon Instagram accounts showing the claimed variant “skinnymeteatime”), however they are few in number. The graphs of the Opponent’s Facebook page’s “reach” show minimal activity until June 2013. Additionally, there is no information regarding the content of the Facebook material that gave rise to the activity. The exhibits indicate that the content ranges from various health and well-being informational posts as well as images, motivational quotes or short videos. The number of followers of the various international “brand ambassadors” reveals little information as to the numbers of followers in Australia, the content and date of the ambassadors’ posts and how many posts they made involving the “SkinnyMe Tea” trade mark.
I consider that there is too little evidence of use upon which to infer that a reputation in the “SkinnyMe Tea” trade mark existed as at the priority date. Although sales and promotion are significant, they are not so overwhelming that their short (approximately four month) period is one from which reputation may be inferred. The “reach” of the Opponent’s Facebook page says little of the content causing the activity (and the exhibits indicate that the activity may have arisen by virtue of messages or “posts” that are altogether unrelated to the “SkinnyMe Tea” trade mark). The numbers of followers that existed before or at the priority date are not given for the various documented social media accounts. Additionally, most of the material is undated or dated after the priority date.
The other trade marks in which the Opponent might intend to establish a reputation suffer similarly. Claimed “variants” of the “SkinnyMe Tea” trade mark appear at various points in the evidence, however those dated before the priority date are very few and there is little information upon which to infer that they had garnered any reputation. I mention also that if the Opponent relies upon the registered trade marks identified in the table above as well, then other than registration 1581713 there is no evidence of use of any of them at all (nor use by the predecessor in title of registrations 1476455 and 1582983).
As indicated under the discussion of section 44, whilst instances of confusion have occurred I consider it is likely due to the descriptive nature of the material in common between the marks in contexts where their visual elements are not present, rather than to any reputation.
Accordingly, I am not satisfied that a reputation in either “SkinnyMe Tea” or variants of that trade mark existed as at the priority date, and the ground fails at that hurdle.

Section 42(b)

Section 42 of the Act relevantly provides:
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The Opponent submits that the Applicant’s use of the Trade Mark would constitute misleading or deceptive conduct contrary to s 18 of the Australian Consumer Law; would give rise to a false or misleading representation contrary to ss 29(1)(g) and (h) of the Australian Consumer Law; and would amount to passing off.
The full text of the Australian Consumer Law is set out in Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’) which relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
These provisions apply the higher standard of use which misleads or deceives, as opposed to use which may confuse or deceive. It generally follows that if an Opponent cannot meet the lower threshold under s 60 of the Act, it will be unable to establish the higher threshold required under Australian Consumer Law. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Parkdale’)[18], Gibbs CJ said with respect to s 52 of the now repealed Trade Practices Act 1974 (the predecessor to the CCA):
In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
[18] [1982] HCA 44; 1A IPR 684.
I note also the delegate in Qantas Airways Limited v Luke Edwards[19] commented with regard to the tort of passing off:
As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage (or a likelihood thereof) to that business.” [Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4th ed, 2008 at [95.1005].
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off ) than is the case with trade marks likely to deceive or cause confusion under s 60…[the delegate then cites Parkdale, as quoted above].
[19] [2014] ATMO 40.
Given that the Opponent has been unable to show that the Trade Mark is likely to deceive or cause confusion (other than by virtue of descriptive material in common between the trade marks), I am not satisfied that consumers are likely to be misled or deceived.
Accordingly the ground under section 42(b) is not established.

Decision

Section 55 relevantly provides that:
…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.
The Opponent has not established a ground of opposition.
Accordingly, I direct that trade mark application 1583086 may proceed to registration after one month from the date of the decision. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent per Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth
Hearings Officer
Trade Marks Hearings
27 October 2015