Kevin Murphy Asia Pte Ltd v Lab Brands Limited
[2018] ATMO 58
•27 April 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kevin Murphy Asia Pte Ltd to registration of trade mark application 1733917 (3, 21, 35) LONDON LABS. SKINCARE FOR HAIR in the name of Lab Brands Limited (“the 173 Opposition”)
-and-
Opposition by Lab Brands Limited to registration of trade mark application 1760701 (3) SKINCARE FOR YOUR HAIR in the name of Kevin Murphy Asia Pte Ltd (“the 176 Opposition”)
Delegate: Michael Kirov Representation: Lab Brands Limited: Ian Horak of Counsel, instructed by Marie Wong and Grace Ng of Wrays
Kevin Murphy Asia Pte Ltd: Jürgen Bebber of Corrs Chambers WestgarthDecision: 2018 ATMO 58
Cross oppositions under s 52 of the Trade Marks Act 1995:
The 173 Opposition: s 60 considered – insufficient reputation shown to enliven s 60 ground – opposition not established
The 176 Opposition: s 41 considered – trade mark not sufficiently inherently adapted to distinguish – use insufficient to establish trade mark capable of distinguishing – registration refusedBackground
This matter involves “cross oppositions” under s 52 of the Trade Marks Act 1995 (“the Act”) to applications 1733917 LONDON LABS. SKINCARE FOR HAIR (“the 173 Mark”) and 1760701 SKINCARE FOR YOUR HAIR (“the 176 Mark”). The earlier of the opposed applications is owned by Lab Brands Limited (“Lab Brands”) and is detailed below:
Application Number: 1733917
Filing Date: 16 November 2015
Goods:Class 3: Hair care agents; Hair care preparations; Hair care products; Skincare cosmetics; Skincare preparations (cosmetic)
Class 21: Brushes; Cosmetic brushes; Eyebrow brushes; Hair brushes; Make-up brushes (“the 173 Goods”)
Services:Class 35: Retail services (“the 173 Services”)
Trade Mark: LONDON LABS. SKINCARE FOR HAIR
Acceptance of the 173 Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 7 April 2016. Kevin Murphy Asia Pte Ltd (“KM Asia”) filed a Notice of Intention to Oppose on 7 June 2016, followed by a Statement of Grounds and Particulars (“the 173 SGP”) on 7 July 2016. Lab Brands filed a Notice of Intention to Defend its application on 19 July 2016.
The later of the opposed applications was filed by KM Asia and is detailed below:
Application Number: 1760701
Filing Date: 23 March 2016
Goods:Class 3: Hair care preparations; Hair cleaning preparations; Hair styling preparations (“the 176 Goods”)
Trade Mark: SKINCARE FOR YOUR HAIR
Acceptance of the 176 Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 18 August 2016. Lab Brands filed a Notice of Intention to Oppose on 23 August 2016, followed by a Statement of Grounds and Particulars (“the 176 SGP”) on 20 September 2016. KM Asia filed a Notice of Intention to Defend its application on 19 October 2016.
I heard both oppositions together as a delegate of the Registrar of Trade Marks in Canberra on 5 February 2018. Jürgen Bebber of Corrs Chambers Westgarth appeared for KM Asia via videolink from Melbourne. Ian Horak of Counsel, instructed by Marie Wong and Grace Ng of Wrays appeared for Lab Brands. Each party’s representative also filed written submissions prior to the hearing.
Grounds of Opposition, Onus and Standard of Proof
The 173 SGP nominates a single ground of opposition corresponding to s 60 of the Act. For its part, the 176 SGP nominates grounds of opposition corresponding to ss 41 and 44 of the Act, although only the s 41 ground was pressed at the hearing and is discussed in this decision.
To succeed, the respective opponents bear the onus of establishing their nominated ground, the standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] The relevant dates for assessing the registrability of the opposed marks are their filing dates, being 16 November 2015 in the case of the 173 Mark (“the 173 Date”) and 23 March 2016 in the case of the 176 Mark (“the 176 Date”).[2]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
The Evidence
As evidence the parties rely on the declarations described below, all made pursuant to the Act and reg 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):
The 173 Opposition (s 60)
Evidence in Support
▪ Dawn Blackstone made 2 November 2016, with Exhibits 1-6, 6A to 6G and 7 to 16 (“Blackstone 173S”)
Evidence in Answer
▪ Steven Lorn Schapera made 8 February 2017, with Exhibits 1 to 19 (“Schapera 173A”)
Evidence in Reply
▪ Dawn Blackstone made 18 April 2017, with Exhibits 1 to 16 (“Blackstone 173R”)
The 176 Opposition (s 41)
Evidence in Support
▪ Steven Lorn Schapera made 21 January 2017, with Exhibits 1 to 21 (“Schapera 176S”)
Evidence in Answer
▪ Dawn Blackstone made 18 April 2017, with Exhibits 1-6, 6A to 6G and 7 to 16 (“Blackstone 176A”)
Evidence in Reply
▪ None filed.
KM Asia’s opposition to the 173 Mark under s 60 relies on the reputation of the 176 Mark as at the 173 Date as evidenced in Blackstone 173S. Lab Brands’ opposition to the 176 Mark being based on s 41, Schapera 176S principally concerns the 176 Mark’s lack of inherent adaptation to distinguish hair care products generally (and the 176 Goods in particular) and apparent use of the phrase “skincare for your hair” (or very similar phrases) in a descriptive manner by both KM Asia and third parties. As discussed in more detail later in this decision, the likelihood of the relevant public being confused or deceived by Lab Brands’ use of the 173 Mark (in the sense contemplated by s 60) is inevitably bound up not only with the extent to which the 176 Mark may have been known to consumers, but also with the 176 Mark’s inherent and/or acquired distinctiveness (if any) as at the 173 Date. For this reason, indeed, apart from some updating of the later declarations Blackstone 173S and Schapera 176S are in the main essentially identical to Blackstone 176A and Schapera 173A. Bearing this in mind and before considering the respective submissions before me, it is convenient at this point to describe the evidence of Ms Blackstone and Mr Schapera in some detail.
Dawn Blackstone, who is based in the United States, had been employed by KM Asia for some two years when Blackstone 173S was made and had been its Chief Marketing Officer since January 2015. As will be apparent, much of her evidence refers to KM Asia’s hair care “products” generally and “the KEVIN.MURPHY brand” in particular, rather than to the 176 Mark as such and often does not relate specifically to Australia. However in evaluating the extent of use possibly enjoyed by the 176 Mark in Australia I note that Ms Blackstone says towards the end of her declaration:
37. In 2008, [KM Asia] adopted SKINCARE FOR YOUR HAIR as a unifying tagline for its KEVIN.MURPHY range of hair care products. Since that time, [KM Asia] has continuously used SKINCARE FOR YOUR HAIR around the world (including in Australia) as a tagline by which to promote its variously named hair care products. The tagline was born as a nod to the ethos of Kevin Murphy himself, who was inspired to create his initial product range adopting the same philosophy underpinning the skincare ritual.
38. [Here Ms Blackstone lists some 70 of KM Asia’s hair care products, identified by names such as TREAT.ME BOX, ANGEL KMX ANTI.GRAVITY.SPRAY, BEACH.BAG BLONDE KIT, FOREVER YOUNG & NEW KIT, HYDRATE-ME RINSE and the like.]
39. Attached and marked Exhibit 7 are examples of [KM Asia’s] use of the SKINCARE FOR YOUR HAIR tagline in connection with the above products before and after the [173] Date. To the extent that the examples contained within this exhibit post-date the [173] Date, they are representative of [KM Asia’s] manner of use of the tagline before the [173] Date. As the examples show, the SKINCARE FOR YOUR HAIR tagline is prominently displayed on product packaging.
[Exhibit 7 contains some 20 examples of KM Asia’s product packaging, on all of which the 176 Mark is displayed on the spine as in the example below:]
40. Attached and marked Exhibit 8 are examples (from before and after the [173] Date) of [KM Asia’s] use of the SKINCARE FOR YOUR HAIR tagline in marketing its KEVIN.MURPHY products and educational services to its distributors. The materials include treatment menus, posters, brochures, salon “leave behinds”, event invitations, issues of Free.Styler Digital Magazine, distributor rewards program materials, technical manuals and training information distributed by [KM Asia] to its network of partner salons throughout the world. To the extent that the examples contained within this exhibit do not predate the [173] Date, they are representative of [KM Asia’s] manner of use of the tagline before the [173] Date. To the extent that the examples contained within this exhibit refer to markets outside Australia, they are representative of the materials distributed by [KM Asia] to its distributors within Australia.
[Exhibit 8 contains many examples of the above described materials, although I observe that, even accepting some of them were distributed in Australia before the 173 Date, very few of them show use of the 176 Mark.]
41. [KM Asia’s] marketing team designs, creates and distributes salon merchandise including brochures, shelf talkers, posters, decals, t-shirts and business cards. It also encourages salons to create their own branded merchandise through the online “distributor dashboard” portal using the editable artwork found on [KM Asia’s] website. Those creating their own branded merchandise are required to follow [KM Asia’s] brand guidelines, examples of which are attached and marked Exhibit 9 CONFIDENTIAL. The SKINCARE FOR YOUR HAIR tagline is specifically noted in the 2016 brand guidelines and instructions provided therein for use of the tagline by distributors.
[The 2016 “brand guideline” for distributors’ use of the “logo tagline” (that is, the 176 Mark) Ms Blackstone refers to is shown below. Significantly, it indicates the 176 Mark may only be used “in conjunction with,” and in smaller point size than, the KEVIN.MURPHY trade mark:]
Exhibit 11 to Blackstone173S contains “examples of marketing materials featuring [KM Asia’s] SKINCARE FOR YOUR HAIR tagline that have been designed by [KM Asia] for distribution to end-consumers (individual clients) at salons. These materials include consumer brochures, salon posters, appointment rebooking cards and special offers cards.” I note that while some of these marketing materials incorporate the 176 Mark, the majority do not. Some of those that do not do nevertheless use the word “skincare” in copy such as, “The lack of products that performed as I needed them to perform on a shot forced me to go beyond conventional hair products and look into the advancements being made with skincare.”
Ms Blackstone concludes her declaration insofar as it specifically concerns use of the 176 Mark by noting it “appears in Google.com.au search results for [KM Asia’s] name” and that, “A Google.com.au search for ‘skincare for your hair’ in ‘.com.au’ websites yields search results associated exclusively with [KM Asia].”
That said, Ms Blackstone provides the following background to KM Asia generally:
7. [KM Asia] is a global market-leading manufacturer of haircare products and is the owner of the KEVIN.MURPHY brand of hair care products. [KM Asia] was founded by its namesake, Kevin Murphy. With a long career spanning fashion, runway, editorial and film, Kevin Murphy is one of the most respected and sought after hairstylists in the world. Kevin Murphy is widely regarded as the man who invented the iconic “beach hair” look. Recognised internationally for his celebrity clientele and countless pages of editorial work for high-end magazines around the globe, the Melbourne-born hair stylist began his styling days as an apprentice in a Queensland salon. He then went on to train at the famous Vidal Sassoon in London. Murphy’s impressive career spans more than two decades, during which he has established himself as an industry icon and a hair master.
She says that Mr Murphy has worked with a number of fashion photographers for magazines such as Marie Claire, Vogue and Vanity Fair, with Baz Luhrmann’s film Moulin Rouge and has “styled celebrities” including Cate Blanchett, Naomi Watts, Dannii and Kylie Minogue, Claudia Karvan, Enrique Inglesias, Miranda Kerr and others. She notes that, “In 2007 Mr Murphy was awarded the prestigious Australian Masters Award at the Australian Hair Fashion Awards…for his outstanding contributions to the profile of Australian Hairdressing worldwide” and continues:
9. [KM Asia’s] KEVIN.MURPHY brand was launched in Australia in 2004. In 2016, KEVIN.MURPHY branded products are sold in more than 43 countries around the world, including the US, Canada, Australia, Mexico, UK, Sweden, Germany, Netherlands, Italy, France, Russia, Poland, Spain, Greece, Cypress, Czech Republic, Hungary, Finland, New Zealand, Singapore, Hong Kong, Taiwan, Japan, India, Qatar, Dubai, Vietnam and Thailand.
10. A video tracing the accomplishments of Mr Murphy and the KEVIN.MURPHY brand can be viewed online at stylist/. At both 1:00 and 2:50 of that video, [KM Asia’s] SKINCARE FOR YOUR HAIR tagline is mentioned.
11. Attached and marked Exhibit 1 are extracts from providing further details about [KM Asia] and its KEVIN.MURPHY brand. It is noted that the SKINCARE FOR YOUR HAIR tagline features prominently across [KM Asia’s] homepage. This website garners over 100,000 page visits per month, and hosting [sic] over 1.1 million browser sessions from July 2015 to July 2016.
12. [KM Asia] actively promotes its KEVIN.MURPHY brand through digital channels including its website ( and social media. It operates a Facebook Page at a Vimeo page at a Twitter feed at a Pinterest page at and an Instagram account at [KM Asia] has approximately 42,000 Facebook “Likes” and its Facebook postings have reached over 10 million users. [KM Asia] has over 9,000 Twitter followers and has reached almost 1.5 million viewers. [KM Asia] also has almost 80,000 Instagram followers and its Pinterest account has had over 1.7 viewers. Extracts of [KM Asia’s] Instagram and Facebook accounts are attached and marked Exhibit 2.
13. [KM Asia] has a strong social media following on the trade site Bangstyle. [KM Asia] currently has 92,000 followers (“stalkers”) on Bangstyle.
14. [KM Asia] also uses technology such as QR Codes, Digimarc and podcasts to provide its network of hairdressers with up-to-date educational materials.
15. [KM Asia] has also sponsored Melbourne Fashion Week for the past 13 years, and Kevin Murphy himself has been the Official Hair Director. Additionally, [KM Asia] sponsors numerous fashion shows in Australia, including the Myers Fashion Show.
Ms Blackstone mentions that KM Asia “has a significant presence in London and the UK,” with “over 480 salons in the UK that are currently selling KEVIN.MURPHY products using the SKINCARE FOR YOUR HAIR tagline.” She says that KM Asia “offers a vast range of hair care products under its KEVIN.MURPHY brand” and that:
19. [KM Asia’s] product range is a “salon only” range which means that it is available for purchase exclusively through [KM Asia’s] authorised partner salons. [KM Asia] has an extremely vast global distribution network.
20. Currently, KEVIN.MURPHY products are distributed to and through 13,000 salons throughout the world, including 500 in Australia.
She lists 23 “[r]ecent product awards (and one packaging award)” KM Asia has received. Ten of these were on the face of it awarded overseas, but those possibly[3] awarded in Australia (although not all before the 173 Date in 2015) she identifies as:
[3] In that either Australia, or no country, is indicated.
REPAIR.ME WASH and RINSE; Best of Beauty Award, Allure, 2016;
Best Volumising shampoo and Best Anti Frizz Treatment, CLEO Beauty Hall of Fame, August and September 2016;
ANGEL.WASH: Best Luxury Shampoo, Glamour, 2015;
FRESH.HAIR: Best Dry Shampoo, Salon Magazine Reader’s Choice Awards, 2015;
PETG Range Graphite Pencil Award For Packaging, D&AD, 2015;
Beach Beauty Award For Haircare, Coastal Living, 2015;
Best New Professional Styling Product - 2016 Australian Hair Fashion Award (AHFA) Finalist;
Best New Professional Packaging and Design - 2016 AHFA Finalist;
Most Innovative Hair Tool - 2016 AHFA Finalist;
FULL.AGAIN, Best New Professional Hair Product - Australian Hair Fashion Awards 2013;
YOUNG.AGAIN, Best New Professional Hair Product - Australian Hair Fashion Awards 2012;
Best Shampoo & Conditioner, Australian Beauty Awards 2009; and
Best New Hair Styling Product FHM (Australia) 2007.
As to promotion and marketing of KM Asia’s products, Ms Blackstone says:
23. [KM Asia] markets its KEVIN.MURPHY products to two distinct consumer segments:
(1) its partner salons and their staff; and
(2) end-consumers who visit the salons.
24. The marketing materials exhibited to this declaration demonstrate the manner in which the Opponent successfully markets its product range to each of its very distinct consumer markets.
The marketing materials Ms Blackstone exhibits include:
25. …examples of artwork, marketing materials and editorial coverage relating to products within the Opponent's KEVIN.MURPHY line dating from 2012 to 2016;
26. …catalogues, brochures, communications, Free.Styler Digital Magazine (a publication of [KM Asia]), technical manuals, instruction sheets and training information distributed by [KM Asia] to its network of partner salons throughout the world, including in Australia, between 2012 and 2016;
27. …hairdresser educational program…EDUCATE.ME…incorporat[ing] in-person training sessions, printed educational materials…, “how to” videos (examples of which can be viewed online at and product videos (examples of which can be viewed online at .com.au/video types/product-videos/)…available to all hair professionals within [KM Asia’s] distribution network;
28. …a handful of examples of advertising and editorial coverage featured in well-known magazines; and
29. …[KM Asia’s] blog located at .com/.
While in the main produced after the 173 Date and not mentioning the 176 Mark, I note Ms Blackstone also exhibits:
30. …a Consumer PR Report for the period June-October 2016…list[ing] consumer press publications (including print, online and social media) in which [KM Asia’s] KEVIN.MURPHY brand or specific products have been promoted around the world either by way of product placement, stylist credit, stylist mention or product mention;
31. …a Trade PR Report for the period July-October 2016. The Report lists print and online trade press publications in which [KM Asia’s] KEVIN.MURPHY brand or specific products have been promoted to members of the trade;
32. …a Found Press Report for the period July-10 October 2016. The Report lists unsolicited print and online media coverage for [KM Asia’s] KEVIN.MURPHY brand or specific products. The Report relates to promotion to consumers and members of the trade by way of brand mention, product placement, stylist credit and brand mention [sic]. The media sources include The Sydney Morning Herald, Nine, Yahoo Movies, Miss Fox Melbourne (an lnstagram account) and the website styleicons.com.au;
33. a summary of global circulation and impression figures for KEVIN.MURPHY promotion (consumer and trade) for the period January to September 2016;
34. …a consumer press recap for the period January-July 2016 which provides placement details for products advertised in high-profile consumer publications around the world;
35. …a trade press recap for the period January-June 2016 which provides placement details for products advertised in high-profile trade publications around the world; and
36. …a summary of Australian circulation and impression figures for KEVIN.MURPHY promotion (consumer and trade) for years 2008 to 2016 (YTD).
Ms Blackstone concludes by providing confidential figures for KM Asia’s “annual Australian sales figures (expressed in USD) for KEVIN.MURPHY products sold between US fiscal year 2008/09 and 2016/17 (current to September 2016)” and “annual marketing spend on its KEVIN.MURPHY brand in Australia for the years 2015 and 2016 (YTD).”
Steven Schapera, who is based in the United Kingdom, is a founder and Director of Lab Brands (a UK company), which he says in Schapera 173A is:
8. …in the business of manufacturing and selling hair care and cosmetic products. [Lab Brands] is in the start-up phase of its business operations.
He says that:
11. [Lab Brands] adopted the term “SKINCARE FOR HAIR” to describe its hair care and skin care products in 2015, around [June]. Adoption of the term “SKINCARE FOR HAIR” was a natural progression in the rebranding of the company because it perfectly describes the company’s focus on scalp health and the necessity for healthy skin on the scalp to achieve healthy hair and it referenced [Lab Brands’] value placed on contemporary research pointing to the tenet that healthy skin on the scalp produces healthy hair. [Lab Brands] had no knowledge at all that [KM Asia] was using the phrase “skincare for your hair” to describe its own hair care and styling products.
12. [Lab Brands’] incorporation of the term “SKINCARE FOR HAIR” after the words “LONDON LABS” in the [173 Mark] describes aptly the philosophy behind [Lab Brands’] “LONDON LABS” brand which is the concept of applying the principles and rigour of a skincare product formulation to a hair care product formulation. The terms “SKINCARE FOR HAIR” and “SKINCARE FOR YOUR HAIR” that describe this principle are general descriptive terms used for a concept that is widely understood and used across the hair care industry (examples of which are set out below).
…
17. The “SKINCARE FOR HAIR” component of the [173 Mark] and the term “SKINCARE FOR YOUR HAIR” are terms used extensively by others, including manufacturers, traders, journalists, bloggers and beauty writers, to describe hair care goods in the ordinary course of trade.
Mr Schapera then lists 15 third-party websites (and exhibits pages downloaded from these websites) said to be “examples of such use, where the terms ‘SKINCARE FOR HAIR’ or ‘SKINCARE FOR YOUR HAIR’ are used to describe the quality, nature and function of hair care products” (“the third-party websites”). He adds that:
19. The tagline “THE SCIENCE OF SKINCARE FOR HAIR” has also been used by Altema Holdings Corporation, using the “SKINCARE FOR HAIR” component to describe that company’s hair care products. Attached and marked Exhibit 19 is an example of Altema Holdings Corporation’s packaging.
20. As the evidence referenced at paragraphs 18 and 19 above demonstrates, the “SKINCARE FOR HAIR” component of the [173 Mark] and “SKINCARE FOR YOUR HAIR” are merely descriptive of the goods to which they relate, providing information as to the kind, quality and intended purpose of those goods. It follows that [KM Asia] has not acquired reputation in the mark “SKINCARE FOR YOUR HAIR” but merely uses the term to describe its goods, as other traders and commentators use the term. Consequently, [Lab Brands’] use of the [173 Mark], including the “SKINCARE FOR HAIR” component of the [173 Mark], is not likely to cause confusion.
In Blackstone 173R Ms Blackstone “disagree[s] with Mr Schapera’s contention that SKINCARE FOR HAIR and SKINCARE FOR YOUR HAIR are merely descriptive” and adds that in any event:
5. Regardless of the position adopted with respect to inherent distinctiveness, I believe that [KM Asia] has used SKINCARE FOR YOUR HAIR as a trade mark in Australia to such an extent that the mark is now undoubtedly perceived by consumers as possessing trade mark significance.
She notes that several of the third-party websites are undated and/or do “not appear to relate to Australia.” She otherwise only specifically mentions two of the 15 third-party websites. One of these she confirms as one of KM Asia’s authorized distributors in Brisbane which is using the 176 Mark under its licence. Of the other she says:
9. [KM Asia] is aware of the use of SKINCARE FOR HAIR in relation to hair regrowth products marketed under the QILIB brand. [KM Asia] is not aware of any use of SKINCARE FOR HAIR in connection with the QILIB brand in the Australian market, but notes that the QILIB product as marketed overseas is a medicated scalp product containing Minoxidil, a vasodilator medication designed to stimulate hair regrowth.
As mentioned, the declarations by Ms Blackstone and Mr Schapera filed in the 176 Opposition largely include the identical information and exhibits as did their earlier counterparts in the 173 Opposition. Nevertheless, Schapera 176S does add
20. The lack of distinctive characteristics derive from the fact that the traders referenced [earlier] use the term “SKINCARE FOR YOUR HAIR” or “SKINCARE FOR HAIR” to describe a product, the concept of which is to apply the principles and rigour of a skincare regime to a hair care regime. This concept is not exclusive to [KM Asia], but has been adopted by companies and product developers the world over.
21. Indeed, as stated [earlier], [Lab Brands] adopted the mark “skincare for hair” to describe its own hair care products with a focus on scalp health in 2015, prior to [KM Asia’s] filing of the Opposed Application, and without any knowledge that [KM Asia] was using the mark “skincare for your hair” to describe its own hair care and styling products.
22. [Lab Brands’] focus on scalp health and “skincare for hair” is based on research that supports the tenet that healthy hair is the result of a healthy scalp.
23. Examples of articles about such research can be seen at:
bnq:// (Attached and marked Exhibit 19 is a printed extract of the link);
(Attached and marked Exhibit 20 is a printed extract of the link); and
httphttp:// (Attached and marked Exhibit 21 is a printed extract of the link).
24. The tenet that scalp health produces hair health, and hair products providing “skincare for hair”, is a general concept and its description is not capable of exclusive ownership by [KM Asia].
While otherwise essentially identical to Blackstone 173S, I note that Blackstone 176A also supplements this with information in essentially identical terms to that in Blackstone 173R described in paragraphs 24-25 above.
Discussion
As mentioned, KM Asia’s chances of success in its opposition to the 173 Mark under s 60 depends not only upon the 176 Mark’s reputation as at the 173 Date, but also upon the mark’s inherent adaptation to distinguish KM Asia’s hair care products in particular and/or any distinctiveness the mark had acquired in this regard by that date. It is accordingly convenient to commence with discussion of the 176 Opposition.
The 176 Opposition
Section 41 generally
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”) repealed s 41 of the Act as it then stood and substituted new wording. The opposed application was filed after this date and thus s 41 as amended is applicable in this case. Unless otherwise indicated, accordingly, all references to s 41 in this decision are to the amended section set out below:
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 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)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a “presumption of registrability.” As was explained by Branson J in Blount Inc v Registrar of Trade Marks[4] (“Oregon”), however, prior to the Amending Act ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (“the EM”) stating at page 146:
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.
[4] (1998) 40 IPR 498 at 505.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [176 Mark] is inherently adapted to distinguish the [176 Goods] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [176 Goods]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [176 Mark] is not to any extent inherently adapted to distinguish the [176 Goods] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [176 Mark] is to some extent inherently adapted to distinguish the [176 Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [176 Goods]. [that is, s 41(4) applies]
Particulars of the Section 41 ground and the relevant issues in this case
The ground based on s 41 is particularized in the 176 SGP as follows:
Trade mark not capable of distinguishing the applicant’s goods and/or services - Section 41
The [176 Mark] designates goods in class 3, being “Hair care preparations; Hair cleaning preparations; Hair styling preparations” (Hair Care Goods). The [176 Mark] is a term already used by other traders to describe their Hair Care Goods in the ordinary course of trade. See the following links for some examples of such use:
· and
· [176 Mark] is merely descriptive of the goods, providing information as to the kind, quality and intended purpose of the goods. The [176 Mark] therefore has no distinctive characteristics that distinguish the Hair Care Goods sold by [KM Asia] from the same or similar goods.
Referring to these particulars, Mr Horak confirmed that Lab Brands relies upon both ss 41(3) and (4) in this case and he summarized its position in his written submissions as follows:
[KM Asia] has applied for the [176] Mark in a broad form unconnected to the Kevin Murphy brand. [Lab Brands] therefore opposes on the basis of section 41; the registration of the [176] Mark would provide [KM Asia] with a broad monopoly extending simply to the descriptive words “SKIN CARE FOR YOUR HAIR”. In reality; [KM Asia] uses the [176] Mark as a descriptor and it is the brand “KEVIN MURPHY” which distinguishes [KM Asia].
In response, Mr Bebber provided the following overview of KM Asia’s position:
(a) [The 176 Goods] are not aptly described as skincare. They are hair care products. Hair is not skin. Accordingly, contrary to [Lab Brands’] claims, the [176 Mark] is inherently distinctive.
(b) In the event that the Delegate is minded to find that the [176 Mark] is not inherently distinctive, we submit that, as a result of [KM Asia’s] extensive use of [the 176 Mark], it has acquired a secondary meaning, in particular in Australia, associated exclusively with [KM Asia].
(c) Adopted in 2008, the tagline SKINCARE FOR YOUR HAIR is an ever present element of [KM Asia’s] branding across its entire hair care range. Defining [KM Asia’s] philosophy, it is the very essence of [KM Asia’s] brand. Whilst the [176 Mark] is used in conjunction with other brands including the KEVIN MURPHY brand, the tagline retains its own distinctive character in use.
I agree, and neither did Mr Bebber take issue, with Mr Horak’s formulation of the applicable matters I must consider for s 41 purposes, set out by Mr Horak as follows:
13. In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555 (“Barrier Cream Case”), Kitto J summarised the appropriate inquiry as follows:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.[[5]]
[5] Being, I note, the words used by Lord Parker in Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624 at pp 634-635 and also cited by Kitto J in Clark EquipmentCo v Registrar of Trade Marks (1964) 111 CLR 511 (“Michigan”) at 514.
14. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (“Cantarella”) endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Michigan. In doing so, the majority discussed the meaning of Kitto J’s words:
[The] question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it” [Mr Horak’s emphasis retained];
15. The test as aptly summarized in the Trade Mark Examiner’s manual at Part 22.3 is:
In summary, the Cantarella decision makes clear that when considering the inherent distinctiveness of a trade mark, consideration should first be given to the “ordinary signification” (or “ordinary meaning”) of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services. Consideration should then be given as to the likelihood of other persons desiring to use the words for the sake of their ordinary signification, in keeping with the principles espoused in the Michigan case.
16. Once the level of inherent adaptability is assessed; the question then turns to the evidence provided by [KM Asia] and an assessment of whether the trade mark applied for (namely that without the words “Kevin Murphy”) does or will distinguish. As stated by Bennett J in Unilever Australia Ltd v Société Des Produits Nestlé S.A. [2006] FCA 782 at [35]:
[35] Evidence of use does not assist in the consideration of inherent capacity or adaptability of the expression to distinguish or become distinctive (Samuel Taylor Pty Ltd v Registrar of Trade Marks [1959] HCA 69; (1959) 102 CLR 650 at 658). Evidence of use is relevant only to the question of whether the mark possessed the required capability at the priority date (Austereo2[[6]] at [33]). Evidence that a particular expression has assumed a secondary and distinctive meaning after registration may afford some indication that, initially, the expression had a capacity to become distinctive but as the High Court noted in Samuel Taylor at 657, use in combination with another trade mark makes it “difficult to see how the critical words could have acquired a distinctiveness of their own.” [Mr Horak’s underlining retained]
…
19. Finally, the Opposed Application is to be assessed at the [176 Date] and on the state of knowledge in Australia. Notwithstanding this, actions outside Australia (and after the [176 Date]) can inform the delegate as to how the relevant slogan would have been relevantly understood. See Unilever Plc v Beiersdorf AG [2017] ATMO 25 (27 March 2017) at [67] and [68] where the delegate considered evidence in both Australia and overseas as relevant where the goods are fast moving consumer items in a global market.
[6] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968; (2004) 209 ALR 93.
Inherent adaptation to distinguish
Section s 41(1) indicates that the 176 Mark must be rejected for registration if it is “not capable of distinguishing” the 176 Goods from the similar goods of others, which s 41(2) specifies would be the case “only if either subsection (3) or (4) applies.” Whether either subsection applies depends in turn on whether, and if so to what extent, the 176 Mark is “inherently adapted to distinguish” the 176 Goods.
As mentioned, the EM states that the 2013 amendments to s 41 “are not meant to alter the key concept of ‘inherently adapted to distinguish’.” In this regard, then, it is well to bear in mind that Note 1(a) following ss 41(3) and (4), (which is identically worded to Note 1(a) which followed the former s 41(6) prior to the Amending Act), states:
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.
In an earlier case, adopting the submissions of Counsel then before me on how best to apply s 41, I set out the following “statements of principle,” which I reproduce now both because they accord with the submissions of Mr Horak and Mr Bebber and because they reflect the approach I will take here:[7]
(a) The question whether a mark is adapted to distinguish 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[8]
(b) It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable).[9]
(c) [T]he consideration of the “ordinary signification” of any word or words … which constitute a trade mark is crucial, whether … a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[10]
(d) In deciding whether a word is inherently descriptive, the Court may consider evidence of the use of the word in the particular trade.[11]
(e) If a word mark is taken as an example, the ordinary signification of the mark, and the question of “whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods” … are closely related questions. Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods.[12]
[7] Unilever Plc v Beiersdorf AG [2017] ATMO 25 at [47].
[8] Michigan at 514.
[9] Cantarella at [59].
[10] Cantarella at [71].
[11] FH Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537 at 555 (“Barrier Cream”), cited in Telstra Corporation Ltd and Another v Phone Directories Company Australia Pty Ltd and Others (2015) 237 FCR 388 (“Yellow”) at [119]. The majority in Cantarella made the same point, citing Barrier Cream with approval at [56].
[12] [Yellow] at [126].
In relation to the “ordinary signification” of the words of the 176 Mark and the likelihood of other traders needing to use them, or similar words, for their ordinary meaning, Mr Horak submitted (with footnotes omitted):
21. The [176 Mark] encompasses an idea commonly conveyed to consumers that the hair care products being sold apply the same qualities and principles in formulating those hair care products that are applied in respect of the area of skin care.
22. The attributes of hair care and styling products which apply skincare routines, ingredients or techniques to hair care products to promote healthy hair are commonly referred to by the traders using the phrase “SKINCARE FOR HAIR” or “SKINCARE FOR YOUR HAIR” which is a ‘”natural and ordinary way” to describe this concept of applying skin care research, principles or ingredients to the [176] Goods.
23. Mr Schapera explains that the words “SKINCARE FOR HAIR” are commonly used to focus on scalp health and the tenant [sic] that healthy hair is the result of a healthy scalp. He concludes at Schapera [176S] [24]:
The tenet that scalp health produces hair health, and hair products providing “skincare for hair”, is a general concept and its description is not capable of exclusive ownership by [KM Asia].
24. The evidence led by Mr Schapera as to the meaning, or ordinary signification, of the phrase “SKINCARE FOR HAIR” or “SKINCARE FOR YOUR HAIR” is reinforced by the exhibits to his declaration that demonstrate use by other traders in the manner explained by Mr Schapera.
25. Applying the relevant test in the Barrier Cream Case the delegate can be satisfied that the [176] Mark lacks any inherent adaptability to distinguish or, as a secondary submission, at least has insufficient inherent adaptability. The following further support this conclusion.
26. First, Lab Brands itself, without improper motive, adopted the phrase “SKINCARE FOR HAIR” to describe a characteristic of its products as applying the principles of a skincare regime to hair care products (giving a similar hair care regime). See Schapera [176S] [21].
27. Secondly, other traders have themselves adopted the same or a similar phrase to convey the same message. See, for example, Schapera [176S] Paragraphs 11, 16, 17 and 19 and Exhibits 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16 and 17. These exhibits demonstrate that the traders and consumers commonly use the phrase “SKINCARE FOR HAIR” or “SKINCARE FOR YOUR HAIR” to describe the relevant idea. A table summarizing the content of those exhibits is included in Annexure A.
28. Thirdly, the use by [KM Asia] itself reinforces the fact that “SKINCARE FOR YOUR HAIR” has a descriptive meaning born from a common idea that skin care ingredients can be used to treat the hair and scalp. See, for example, Blackstone [176A]:
(a) Pages 2 and 3 of Exhibit 1 of Blackstone [176A], where the [176] Goods are described by Kevin Murphy as “born from the same philosophy as skincare;
(b) Page 15 of Exhibit 4 (Part 1) of Blackstone [176A], where the [176] Goods are described by Kevin Murphy as “following the routine of skin care”;
(c) Page 17 of Exhibit 4 (Part 1) of Blackstone [176A], where the [176] Goods are described by Kevin Murphy as “the KEVIN.MURPHY TREAT.ME range is skincare inspired ingredients that deliver deep conditioning, shine and nourishment”;
(d) Page 15 of Exhibit 5 (Part 7) of Blackstone [176A], where the [176] Goods are described by Kevin Murphy as “a new 3-part system using skincare for your hair”.
29. This is further reinforced by Blackstone [176A] at [37] which refers to the [176] Mark as a “tagline” for its “KEVIN.MURPHY” range of hair care products. The genesis of this phrase is explained in the following terms.
…The tagline was born as a nod to the ethos of Kevin Murphy himself, who was inspired to create his initial product range adopting the same philosophy underpinning the skincare ritual.
30. So, in summary, the evidence shows the components of the [176] Mark, comprising the words, “SKINCARE FOR YOUR HAIR”, are descriptive and not special in character when considered in the context of hair care, cleaning or styling; they merely describe the quality, nature or character of the [176] Goods, as being products which apply skin care principles in connection with, or for the purposes of, hair care, cleaning and styling.
In arguing that the 176 Mark was indeed inherently adapted to distinguish the 176 Goods, Mr Bebber submitted in response (with footnotes omitted):
19. The distinctiveness of the trade mark ultimately lies in the fact that HAIR is not skin, and SKINCARE FOR YOUR HAIR is a novel way of conveying the message that [KM Asia’s] goods are nourishing for hair. Skincare products are not applied to hair.
20. In its submissions, [Lab Brands] references [Schapera 176S] which states:
The tenet that scalp health produces hair health, and hair products providing “skincare for hair”, is a general concept and its description is not capable of exclusive ownership by [KM Asia].
21. [KM Asia’s] trade mark is not SKINCARE FOR YOUR SCALP. Whilst it may be a tenant [sic] that scalp health produces hair health, and products exist to assist scalp health, this is simply not an issue for consideration in relation to the [176 Mark], which is SKINCARE FOR YOUR HAIR.
22. With the aim of convincing the Delegate that the [176 Mark] is descriptive, [Lab Brands] relies on evidence of use of the phrase “SKINCARE FOR HAIR” and “SKINCARE FOR YOUR HAIR”.
23. As addressed in [Blackstone 176A], much of the evidence adduced by [Lab Brands] is either undated or not relating to the Australian market. Also, the reference to use of the mark by Tonique is in fact use under license from the Applicant. As such, the evidence adduced by [Lab Brands] does not assist in informing the Delegate of the state of the marketplace in Australia as at the [176 Date].
24. In its submissions, [Lab Brands] claims that [KM Asia’s] evidence itself reinforces the fact that the [176 Mark] has a descriptive meaning born from a common idea that skincare ingredients can be used to treat the hair and scalp.
25. We strongly refute the notion that [KM Asia’s] evidence, which merely shows the honest and natural development of the [176 Mark], demonstrates a lack of distinctiveness.
26. In particular, the fact that [KM Asia] references the underlying guiding principle of its products that ultimately led to the tagline SKINCARE FOR YOUR HAIR (such as “born from the same philosophy of skincare”) does not mean that it is using the tagline descriptively. In fact, the evidence clearly shows the importance [KM Asia] is placing on its tagline as a trade mark to unify its varied product range.
As explained below, I am on balance persuaded by Mr Horak’s submissions and have concluded the 176 Mark is not sufficiently inherently adapted to distinguish the 176 Goods from the similar goods of others as to be registrable on that basis alone. I have accordingly decided that objection under s 41(4) is appropriate in this case and it will be necessary to consider whether the 176 Mark does or will distinguish the 176 Goods as being those of KM Asia, having regard to:
(a) the extent of its inherent adaptation to distinguish;
(b) the use it has had and its intended future use; and
(c) any other circumstances.
In my view the 176 Mark contains very little inherent adaptation to distinguish the 176 Goods. Mr Bebber’s submission to the contrary is effectively summarized in his statement that, “The distinctiveness of the trade mark ultimately lies in the fact that HAIR is not skin.” However this appears to be contradicted by KM Asia’s own marketing materials in the example exhibited with Blackstone 176A reproduced below. This is taken from KM Asia’s “EDUCATE.ME” hairdresser educational program said to be “available to all hair professionals within [KM Asia’s] distribution network.” It clearly identifies some of KM Asia’s hair care goods as being treatments for the scalp, with copy such as, “Because the scalp is actually living skin, and not dead hair, the implications of shifting the focus to the scalp are enormous. By utilizing specialized ingredients on the scalp, we can begin to tackle the problems of ageing hair at its origins and therefore enter the arena of prevention:”
Moreover, the evidence before me, both that contained in Schapera 176S and in Blackstone 176A, satisfies me that the words of the 176 Mark are otherwise apt for normal description of the kind, quality or some other characteristic of hair care products even if those products are not intended for use on the scalp. In this regard, as was said in Cantarella and earlier cases, in determining whether words are inherently descriptive (and thus lacking inherent adaptation to distinguish), one may consider evidence of the use of the words in the particular trade.[13] In the present case much of the use relied upon by KM Asia is apparently, or at least arguably, descriptive on the face of it, as highlighted by Mr Horak in his submissions set out at paragraph 40 above. There are in addition many examples before me of third party use of the words “skin care for your hair,” or very similar words, in an apparently descriptive manner in relation to hair care products, for the sake indeed of the words’ ordinary signification. Whereas KM Asia is right to question whether some of this usage would necessarily have been seen by Australian consumers before the 176 Date, I have nevertheless found it useful in illustrating how other traders are using, and are likely to use, the words “skin care for your hair” or similar for legitimate descriptive purposes and as an indication of how relevant consumers were and are likely to understand the words in question in the context of the 176 Goods.
[13]See footnote 11.
Quite apart from being descriptive in relation to some of the 176 Goods, or of some characteristic the goods are said to possess, the 176 Mark also lacks inherent distinctiveness in my estimation for the additional reason that its ordinary signification in the context of the 176 Goods is on the face of it laudatory. In this regard, as highlighted by Lindgren J in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[14] at [98]:
…while [Michigan] establishes that in … particular circumstances … a mark will not be inherently adapted to distinguish, the case does not purport to identify all the circumstances in which a mark will be (or, for that matter, will not be) inherently adapted to distinguish. [Michigan] establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.[15]
[14] (2002) 122 FCR 494; 56 IPR 30.
[15] See also Hearing Officer Thompson’s remarks in the same vein in Kraft Foods Australia Pty Ltd v Mars Australia Pty Ltd (2012) 97 IPR 52 at [21].
The majority in Cantarella at [71] identified some of the additional circumstances alluded to by Lindgren J which may affect a mark’s inherent distinctiveness, including its laudatory nature.[16] To my mind the words “skincare for your hair” are intended to carry with them a certain estimable quality in relation to the 176 Goods which relevant consumers or other traders would no doubt perceive as desirable. Essentially the 176 Goods provided by reference to the words in question are likely to be seen, perhaps subconsciously by many consumers, though not necessarily so, as being technically advanced and trustworthy in the manner that skincare products are perhaps perceived to be. In this regard the 176 Mark could I think reasonably be said to share that characteristic with the claimed trade mark MICHIGAN in relation to cranes, the matter with which Kitto J was concerned in Michigan. As his Honour put it at 516-517:
…it seems to me impossible to conclude that there is no likelihood of other traders, in the ordinary course of their businesses and without any desire to get for themselves a benefit from the [trade mark applicant’s] reputation, wishing in advertisements and otherwise to describe (e.g.) their power cranes from Michigan as Michigan power cranes. They may well wish by such means to take legitimate advantage of a reputation which they believe or hope that the State of Michigan possesses among Australians for the quality of its manufacturing products, and it would be contrary to fundamental principle to grant a registration which would have the effect of denying them the right to do so by using the name of the State. It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as “made in Michigan” or in some other way indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.
[16] I paraphrased the Court’s words in this regard at paragraph 39(c) above.
To conclude, the 176 Mark has very low inherent adaptation to distinguish the 176 Goods in my estimation. I turn now to the use or intended use attributable to the 176 Mark.
As mentioned, Ms Blackstone says that:
In 2008, [KM Asia] adopted SKINCARE FOR YOUR HAIR as a unifying tagline for its KEVIN.MURPHY range of hair care products. Since that time, [KM Asia] has continuously used SKINCARE FOR YOUR HAIR around the world (including in Australia) as a tagline by which to promote its variously named hair care products.
Nevertheless this is not the impression I am left with from Blackstone 176A as a whole. I mention that its exhibits are mostly undated and Ms Blackstone is rarely specific in her descriptions of when, how and to what extent the 176 Mark has been used in Australia. In my estimation none of its exhibits clearly shows use of the 176 Mark per se before relatively recently, say from around early 2015. Before that time, the word “skincare” alone is used in copy such as “KEVIN.MURPHY TREATMENTS use the best of nature and technology with skincare ingredients,”[17] where the word “skincare” is obviously being used with its ordinary meaning. There is, moreover, nothing in the material exhibited with Blackstone 176A that enables me to say when use of the 176 Mark on the spine of KM Asia’s products commenced although, again, my impression based on Ms Blackstone’s evidence as a whole is that this would have been some time during 2015.
[17] Blackstone 176A, Exhibit 5, (10 August 2014).
I agree, moreover, with Mr Horak’s following critique of KM Asia’s evidence of use:
35. First, the use by Kevin Murphy of the [176] Mark appears to be predominantly, if not wholly, in conjunction with the trade mark “KEVIN MURPHY”. There is little, if any, evidence to support the conclusion that the [176] Mark does or would in the future designate [KM Asia] in the absence of the words “KEVIN MURPHY”.
36. The evidence as a whole provided by Kevin Murphy is focused on the Kevin Murphy brand. See for example, Blackstone [176A] at [47], [48], [49], [50]. It is impossible for the delegate to properly establish from that evidence what recognition “SKINCARE FOR YOUR HAIR” has amongst information that is directed not only to the brand “KEVIN MURPHY” but a range of other taglines (see, for example, those shown in Blackstone [176A] [38]).
37. Secondly, whilst a number of statements are made by Ms Blackstone asserts [sic] use both before and after the [176 Date], the documents which purport to corroborate such statements appear to have come into existence after the [176 Date]. If, as is claimed, the [176] Mark had been used by Kevin Murphy to such a degree that it does (or would) distinguish at the [176 Date] then one would expect a significant amount of material priority date material [sic] showing trade mark use of “SKINCARE FOR YOUR HAIR” to independently corroborate that contention.
38. Thirdly, where there is use then in many instances it is not established that the use is in Australia rather than elsewhere around the world. The delegate must be satisfied the [176] Mark does or would distinguish in Australia through use.
39. Fourthly, uses of the tagline “SKINCARE FOR YOUR HAIR” are highly descriptive and, in that context, that tagline alone could never signify the business of Kevin Murphy.
40. So, in summary, there is insufficient evidence when the evidence is considered with an eye to identifying documents in a corroborated form establishing (1) use of the [176] Mark (as opposed to use of “Kevin Murphy” as a trade mark); (2) prior to the [176 Date]; (3) in Australia; and (4) as a trade mark.
I note for the record that there is no evidence before me of KM Asia’s intended future use of the 176 Mark apart from the 2016 “brand guidelines” discussed in the quote from Blackstone 176A at paragraph 10 above. Nor is there evidence of any other relevant circumstances going to s 41(4) that need be discussed.
I consider, then, that the 176 Mark contains low inherent adaptation to distinguish the 176 Goods and, bearing this in mind, that the evidence of use, intended use or other circumstances before me which might in principle be relied upon under s 41(4) is insufficient to indicate the 176 Mark distinguished KM Asia’s hair care products as at the 176 Date or will do so in the foreseeable future. Lab Brands’ s 41 ground is accordingly made out and the 176 Opposition is successful. I turn now to the 173 Opposition, based on s 60 and the reputation of the 176 Mark as at the 173 Date.
The 173 Opposition
Section 60
Section 60 of the Act is reproduced below:
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.
Note: For priority date see section 12.
The ground based on s 60 is indicated in the SGP as follows:
Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60
[KM Asia] enjoys (and at the [173 Date] did enjoy) a reputation in [the 176 Mark] in Australia in relation to hair care, hair treatment and hair styling products. Given this reputation, use of the [173 Mark] in relation to the goods specified in the opposed application would be likely to cause confusion.
To successfully rely on s 60 KM Asia must, as a threshold issue, firstly establish through its evidence that the 176 Mark had acquired a “reputation” as at the 173 Date. In this regard, as the authors of Shanahan put it, s 60 “envisages some substantial likelihood of deception or confusion and thus more than a minimal reputation for the prior mark.”[18] The following observation by the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd is also pertinent here:[19]
The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193.
[18] Shanahan’s Australian Law of Trade Marks and Passing Off, 4th ed, at [50.2400].
[19] (2003) 59 IPR 619 at [25].
As far as establishing reputation is concerned, Kenny J said the following in McCormick & Co Inc v McCormick:[20]
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: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that 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, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[20] (2002) 51 IPR 102 at [86].
For the reasons discussed at paragraphs 37-47 above I have already concluded the 176 Mark contains little inherent adaptation to distinguish KM Asia’s hair care products from the similar goods of others. That being the case I would need to see evidence of very significant use of the 176 Mark in Australia, as a trade mark, for those goods, to be satisfied it had the kind of reputation as at the 173 Date contemplated by s 60. Ideally, I would want to see the 176 Mark being used to distinguish KM Asia’s goods in its own right, rather than almost invariably being used in conjunction with the presumably much better known KEVIN.MURPHY trade mark. At paragraph 50 above I set out Mr Horak’s further critique of KM Asia’s evidence in the context of the 176 Opposition. He in essence repeated those submissions in relation to the present opposition and I consider them to be just as pertinent. I mention that Mr Horak made many more detailed and reasonable criticisms of the evidence and exhibits of Blackstone 173S which it is unnecessary to discuss here. In short, I agree with Mr Horak that I do not:
…have sufficient information to be satisfied, on the balance of probabilities, that “SKINCARE FOR YOUR HAIR” has been exposed to the Australian consumers to any, much less any sufficient, degree such that it might be inferred to have developed a reputation as at November 2015.
To conclude, on the evidence before me I am not satisfied the 176 Mark had sufficient reputation in Australia as at the 173 Date to enliven KM Asia’s s 60 ground of opposition.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
Note: For limitations see section 6.
In the case of the 176 Opposition, I have found that Lab Brands has established its s 41 ground, KM Asia not having made out a case for application of s 41(4) in its favour. I accordingly refuse to register application 1760701.
In the case of the 173 Opposition, my finding is that KM Asia has not established its s 60 ground. Application 1733917 may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
In the event of success, Mr Horak sought costs on Lab Brands’ behalf. As the successful party, it is so entitled and I accordingly award costs against KM Asia as per Schedule 8 of the Regulations, with costs in relation to the second of the oppositions to be to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[21]
[21] (2001) 53 IPR 591.
Michael Kirov
Hearing Officer
Hearings and Oppositions
27 April 2018
Key Legal Topics
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Commercial Law
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Intellectual Property
Legal Concepts
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Appeal
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