International Registration Designating Australia number 2251594 (International Registration number 1646661) (class 3) – IRL FILTER- in the name of Revolution Beauty Holdings Ltd - [2024] ATMO 111

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 2251594 (International Registration number 1646661) (class 3) – IRL FILTER- in the name of Revolution Beauty Holdings Ltd

Delegate:

Anne Makrigiorgos

Representation:

Applicant: Wrays Pty Ltd

Decision:

2024 ATMO 111

Trade Marks Act 1995 (Cth) – ex parte hearing – examination of an International Registration Designating Australia – whether grounds for rejection under section 41 are established – ordinary meaning considered – mark inherently adapted to distinguish – International Registration Designating Australia accepted for possible extension of protection to Australia

Background

On 6 January 2022, Revolution Beauty Holdings Ltd (‘Holder’) applied to extend protection to Australia of International Registration number 1689749 designating Australia under number 2251594 (‘IRDA’) pursuant to the provisions of the Trade Marks Act1995 (Cth) and Trade Marks Regulations1995 (Cth).[1] The details of the IRDA appear below:

Filing Date: 6 January 2022

Trade Mark: IRL FILTER (‘Trade Mark’)

Specification: Class 3 Cosmetics; make-up; lipsticks; lip gloss; make-up foundation; eye-shadow; cosmetic pencils; make-up powder; nail care preparations; nail varnishes; nail varnish removing preparations; nail polish remover; toiletries; skincare preparations; sun care preparations; face powder; body powder, hand powder, foot powder; skin moisturisers; skin conditioners; moisturizing facial masks; anti-wrinkle facial masks, facial beauty masks; facial cream, body cream, hand cream, cosmetic cream; moisturizing oil, anti-wrinkle oil, facial oil, hand oil, body oil, foot oil, perfumed oil, body shimmer oil; body shimmer lotion; body cleaning and beauty care preparations; preparations and products for removing make-up; toning lotion, for the face, body and hands; facial scrubs, foot scrubs, hand scrubs, body scrubs; bath preparations; facial wipes impregnated with cosmetics; hair care preparations; hair shampoos; hair dyes; hair colour removers; hair conditioners; perfumes; colognes; eau de cologne; eau de toilette; scented body spray; aftershave preparations; shaving preparations; anti-perspirants for personal use; body deodorants; eyelash extensions; false eyelashes; eyelash dye (‘Holder’s Goods’).

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).

The IRDA was examined as required under reg 17A.12. On 21 March 2022, IP Australia issued a Notification of Provisional Refusal of the IRDA identifying a ground for rejection pursuant to s 41(4). The examiner stated that the Trade Mark was not capable of distinguishing all the Holder’s Goods other than ‘nail care preparations, nail varnishes, nail varnish removing preparations, nail polish remover, perfumes, colognes, eau de cologne, eau de toilette, scented body spray, anti-perspirants for personal use and body deodorants’[2] as IRL is a common abbreviation for IN REAL LIFE and research shows that this term was being used within the cosmetic/beauty care industry to describe products that gave the appearance or effect of an in real life filter/IRL FILTER. The examiner therefore claimed that it was likely other traders would desire to use the Trade Mark to indicate the benefits of using their own products.
[2] I will refer to the Holder’s Goods which have been objected to in this decision as ‘Cosmetic Goods’.
In response to the objection, the Holder filed submissions that IRL had no intelligible meaning in respect of the Cosmetic Goods, was simply a portion of the Trade Mark and was not suggestive nor commonly used, nor commonly combined with FILTER, in relation to the Cosmetic Goods. The Trade Mark as a whole was therefore fanciful and inventive.
A further adverse report was issued by the examiner on 30 June 2023 maintaining the ground for rejection under s 41(4). The examiner stated that IRL is a common abbreviation/initialism for IN REAL LIFE, and FILTER is simply an applied effect, be it physical or virtual. The Trade Mark indicates that the goods in question will allow the user to achieve a FILTER-like appearance or effect IN REAL LIFE.
In response to the objection, on 16 January 2024, the Holder filed submissions together with and a declaration of Jessie Ross, Head of Sales for the Australia and New Zealand region of Revolution Beauty Group PLC (‘Revolution PLC’), the parent company of the Holder, made on 11 January 2024 with Annexures JR-1 to JR-25 (‘Ross Declaration’), attesting to use of the Trade Mark since March 2022.
A third adverse examination report was issued by the examiner on 13 February 2024 maintaining the ground for rejection under s 41(4) on the basis that the evidence of use of the Trade Mark before the Relevant Date was insufficient to overcome the objection firstly because the use was not trade mark use, secondly the revenue in Australia was not so overwhelming in the somewhat limited time of approximately 2 years and thirdly the declared use is not use by the Holder per se as it is use by a third party retailer.
In response to the objection, on 12 March 2024, the Holder filed submissions that the evidence shows that the trade mark IRL FILTER is used as a trade mark in its own right and the examiner was incorrect in the determination that the Applicant has not used the trade mark per se as in all instances, the Holder has applied the Trade Mark to the goods and had delivered the goods to the retailer for sale and distribution to consumers in Australia.
A fourth adverse examination report was issued by the examiner on 21 March 2024 maintaining the ground for rejection under s 41(4) on the basis that the evidence of use was not sufficient or persuasive.
Following this fourth adverse report, the Holder requested a hearing by written submissions. The Holder relied on the Ross Declaration and also a declaration of Ellen Seungwon Cha, an employee of Wrays Pty Ltd dated 17 April 2024 with Annexure EC-1 to Annexure EC-5. In light of the decision I have reached below, it is unnecessary to summarise the Holder’s evidence.
As a preliminary matter, I note that the IRDA is subject to a presumption of registrability under reg 17A.24. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the IRDA. I must also consider afresh the ground for rejection under s 41 identified by the examiner and I am not bound by the examiner’s findings. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately I must make a decision based on my interpretation of the facts and law.

Legislative Framework

Regulation 17A.24 states:

Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.

(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.

The only unresolved ground for rejection to the IRDA is under s 41 which relevantly provides:
Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)…

The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):
[The] ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]
[3] (1964) 111 CLR 511, 514.
In Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’),[4] the majority of the High Court indicated that the test for distinctiveness under s 41 involves a two-step process. The first step requires consideration of the ‘ordinary signification’ of the words proposed as a trade mark to any person in Australia concerned with the goods or services to which the proposed trade mark is to be applied.[5] The second step involves the application of the test in Clark Equipment in deciding whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods.[6]
[4] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).
[5] Ibid [70].
[6] Ibid [71].
What is crucial is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. It is not a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable. As Wilcox J acknowledged (despite finding that the trade mark there in question did describe the goods), in Ocean Spray Cranberries Inc v Registrar of Trade Marks:
In reaching the above conclusion, I have not overlooked two matters relied on by Ms Baird. First, she says, a mark need not be "absolutely unsuggestive of qualities" of the goods for which registration is sought, provided it does not amount to a normal description.[7]
[7] [2000] FCA 177, [34] (citations omitted).
The Holder submits that IRL FILTER has no intelligible meaning in respect of the Cosmetic Goods. IRL is submitted to have no particular relationship with the Cosmetic Goods and while the Holder agrees that a virtual filter is an applied effect in the digital world, the Holder submits that a physical (or ‘in real life’) filter refers to a porous device for removing impurities.
While the Holder’s description of a filter is correct, there are other definitions for filter in the physical world. A filter is also used in the photography and video world.[8] I am aware that before software applications for image editing and photo retouching existed, which could be used to enhance a person’s facial features including on mobile phones, camera lens filters were used to get some desired effects such as colour correction.
[8] The Macquarie Dictionary online also defines a filter as ‘a screen of dyed gelatine or glass used to control the rendering of colour or to diminish the intensity of light’ and the Australian Oxford Dictionary 2^nd edition online also defines filter as ‘a screen or attachment for absorbing or modifying light, X-rays, etc.
The Holder submits that the Trade Mark is a fanciful (IRL requires speculation and assumption to be directly referenced to cosmetics) and inventive, whilst grammatically incorrect combination of words not usually combined.
I consider the words/acronyms in the Trade Mark namely IRL and FILTER to have well known meanings to the general Australian population. Without any reference of these words to the Cosmetic Goods, the words could be seen as descriptive of a filter in the physical world. Thus, were the Holder’s Goods filters, the Trade Mark would be directly descriptive. However, the Holder’s Goods are not filters.
As stated by Bennett J in Unilever Australia Ltd v Societe Des Produits Nestlé SA:
… A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category.[9]
[9] [2006] FCA 782 [34].
In respect of the Trade Mark and the Cosmetic Goods, what do the words IRL FILTER convey to Australian purchasers, traders and consumers of the Cosmetic Goods?
A critical distinction must be drawn between the Cosmetic Goods and the perceived attributes of those goods as may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the goods themselves.[10] Further, to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods.[11]
[10] Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190, 194 per Dixon CJ; Australian Postal Corp v Sendle Pty Ltd (2017) 128 IPR 130, 137 [26] (Hearing Officer Lyons).
[11] Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190, 194 (Dixon J).
I do not consider that the words IRL FILTER convey any immediately obvious meaning in respect of Cosmetic Goods. Rather I consider that nothing sufficiently definite is conveyed by the words IRL FILTER. The Trade Mark at most, after instituting a search for a meaning, suggests or alludes to Cosmetic Goods which the user hopes will achieve a magical visual filtering effect such as is achieved with software application filters. I therefore consider that the Trade Mark is one where the relevant persons would need to do much more than just stop and reflect what the words comprising the Trade Mark could possibly mean with respect to the Cosmetic Goods. I am of the view that the Trade Mark has no ordinary signification to persons who will purchase, consume, or trade in any of the Holder’s Goods. In this circumstance the Trade Mark is taken to be inherently adapted to distinguish the Holder’s Goods from the goods or services of other persons. Accordingly, there is no ground for rejecting the IRDA under s 41.

Decision

As the Trade Mark is inherently distinctive, I am not satisfied that a ground for rejection under s 41 applies to the Holder’s Goods and therefore I accept the IRDA for possible extension of protection in Australia in respect of the Holder’s Goods.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

19 June 2024