Kiss Nail Products Inc v Wella Operations US, LLC

[2024] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by Kiss Nail Products, Inc to registration of trade mark application number 2328777 (class 3) - xPRESS/ON - in the name of Wella Operations US, LLC

Delegate:

Anne Makrigiorgos

Representation:

Opponent: F B Rice Pty Ltd

Applicant: Dennemeyer & Associates

Decision:

2024 ATMO 159

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Kiss Nail Products, Inc (‘Opponent’) to registration of the following trade mark:

Trade mark number:   2328777 (‘Application’)

Trade marks:              xPRESS/ON (‘Trade Mark’)

Applicant:                   Wella Operations US, LLC (‘Applicant’)

Filing Date:                 19 January 2023

Priority Date:              17 August 2022[2]

Specification:             Class 3: Nail polish, nail color gels, nail lacquers, artificial nails, artificial nail kits comprising nail polish, false nails, nail adhesive, preparations for removing gel nails, acrylic nails, nail polish, artificial nails. (‘Applicant’s Goods’)

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

[2] Convention priority claimed from US trade mark number 97552575.

2.     The Trade Mark was examined and advertised as accepted for possible registration on 13 February 2023.

3.     On 13 April 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 15 May 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 3 August 2023.

4.     The Opponent filed Evidence in Support (‘EIS’) on 13 November 2023. The Applicant filed Evidence in Answer (‘EIA’) on 15 February 2024. No Evidence in Reply was filed.

5.     Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the parties.

Grounds and onus

6.     The SGP nominates grounds of opposition under ss. 42(b), 44, 58, 60 and 62A.

7.     The Opponent carries the burden of establishing at least one ground of opposition on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Filing Date but as the Application claims priority, for the purposes of s 44 and s 60, the rights of the parties are assessed as at the Priority Date.[4]

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133].

Evidence

8.     The following evidence was filed:

EIS

Declaration of Beom Joon Kim, external legal counsel for the Opponent, dated 11 November 2023, with Annexures BJK-1 to BJK-13 including Confidential Annexure BJK-11 (‘Kim’).

EIA

Declaration of Rekishia Jessup, Senior Vice President, OPI Marketing of the Applicant, dated 14 February 2024 with Exhibits 1 to 7 (‘Jessup’).

Summary of evidence

EIS

9.     Kim claims the Opponent is the largest manufacturer and distributor of nail products in the world and has been designing, manufacturing, offering for sale and selling beauty products including, inter alia, artificial nails and nailcare products by reference to the KISS mark since 1989. Kim states that in Australia the KISS mark was launched in 2004.

10.     Kim states the Opponent released a new range of artificial nail products in the United States in 2012 under the IMPRESS trade mark (‘Opponent’s Mark’) which in use, appears as imPRESS (‘Used Mark’). Kim further states that the Opponent first used the Opponent’s Mark in Australia in 2016 and has sold artificial nail products branded with the Opponent’s Mark since that year through a distributor Key-Sun Laboratories Pty Ltd (‘Key-Sun’). Key-Sun sells the products to retailers which include Big W, Beauty Bliss, Direct Chemist Outlet, Priceline, Pharmacy Network and Woolworths. Kim states that the products are also available in Australia through eBay, Amazon and the Opponent’s websites at (‘Opponent's Website’) and (‘Opponent’s AU Website’). Kim annexes printouts from the Big W, Priceline, Pharmacy Network, My Deal and Beauty Bliss websites, the Opponent’s Website and the Opponent’s AU Website, all dated either 3, 8 or 18 November 2023. I note the websites provide examples of the Opponent’s false press on nails (‘Opponent’s Goods’) in packaging displaying the Used Mark.

11.     Kim provides details of the Opponent’s following Australian registration for the trade mark IMPRESS:

Registration number	Class and goods	Priority date
1795701	Artificial nails; nail polish kits comprising nail polish, nail files, nail art; fingernail art and designs, namely, decals, stickers, stones and appliques; nail glue; nail art kits comprising decals, stickers, stones, appliques, nail glue, top coat and implements for nail art application	12 September 2016

(‘Opponent’s Registration’)

12.     Kim states that Key-Sun features and sells the Opponent’s Goods on its website and annexes printouts from the website together with Wayback Machine[5] printouts dated between 20 August 2017 and 29 October 2022.

[5] Kim claims that the Opponent operates a number of social media sites and provides followers, views, subscribers and likes as at November 2023 as follows:

Sites	Views	Likes	Subscribers	Followers
	851,000
	594,000
	45,400
	30,700
	659,000
	374.000
	17 million since 24 July 2009	16,300
	22 million since 6 May 2010	5,250
	10 million per month	11,500
	28,300 per month	4,000
Tik Tok®	856,600	260,600

and annexes print-outs from each of these social media sites dated 3 and 8 November 2023.

14.     Kim annexes a Macquarie Dictionary Online definition of the word ‘impress’ which includes ‘to press (a thing) into or on something, so as to leave a mark’ and a definition of the word ‘expression’ which includes ‘the act of expressing or pressing out’.

15.     Kim claims the Applicant produces and sells, inter alia, nail polish, nail color gels, nail lacquers, artificial nails and artificial nail kits under its OPI brand. Kim states that the Applicant is the parent company of OPI Products, Inc, a manufacturer of nail polish.

16.     Kim claims that the Opponent entered into a license agreement (‘Licence Agreement’) with OPI Products, Inc. to use the Applicant’s OPI mark in January 2021 and annexes a confidential redacted copy of the Licence Agreement. Kim claims the license granted to the Opponent expired on 1 April 2022. In January 2021, the Opponent released a range of colour press on nails offering the Applicant’s top 10 OPI branded nail polish shades as ‘OPI x imPRESS Color Press-On Manicures’. Kim claims the products were advertised as shown below.

17.     The remainder of Kim provides comment and opinion on aspects of the grounds of opposition which I do not need to summarise as it is not evidence and more properly belongs in submissions.

EIA

18.     Jessup claims the Applicant is a part of the Wella Company, which owns a portfolio of iconic brands in respect of hair, beauty and nail products including OPI. Jessup claims the Trade Mark was adopted for use in connection with the Applicant’s OPI brand.

19.     Jessup states that the Applicant advertises and sells the Applicant’s Goods under the Trade Mark online and exhibits undated copies of pages from the OPI website and the Ulta website at

20.     Jessup refers to the Licence Agreement and explains that the use of an ‘x’ on the collaboration nail product was as a connector term to signal the collaboration between the two companies and had no trade mark significance. Jessup provides examples of other parties using an x to indicate their collaboration such as ‘adidas X Stella McCartney’, Luis Vuitton X Supreme’ and ‘Lee X H&M’. Jessup further states that in collaborations the ‘x’ is not read as the letter x namely as ‘ex’ but rather it is verbalised as ‘and, for or by’, if verbalised at all.

21.     Jessup claims the terms PRESS and PRESS ON are in common use by other traders in the same field to refer to the character and method of application of the Applicant’s Goods, namely artificial nails that are applied to the customer’s existing nails with a gel-like substance and annexes copies of two online examples namely the use of Best Press-On Nails Sets and Kits (Tested & Reviewed for 2024) from the website dated 12 December 2023 and The 9 Best Press-On Nails of 2024 from the website in February 2024.

Discussion and Reasons

Section 44

22.     The relevant provisions of s 44 are reproduced below (notes omitted)::

Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

23.     The Opponent relies on the Opponent’s Registration for the s 44 ground.

24.     As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·the Opponent’s Registration has a priority date which is earlier than the Priority Date and is held in a name other than that of the Applicant (‘the first requirement’);

·the Applicant’s Goods are similar to the goods claimed in the Opponent’s Registration (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the third requirement’).

25.     I am satisfied that the Opponent’s Registration has a priority date earlier than the Priority Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.

26.     The Opponent’s Registration clearly covers goods that are the same or similar to the goods of the Application. They both cover products for the nails. Therefore, the second requirement is satisfied.

27.     The final consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.

Substantial identity

28.     The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[6] where his Honour stated at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

[6] (1963) 109 CLR 407 (‘Shell’).

29.     Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’

30.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[7] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

[7] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

31.     Whether there is substantial identity is a question of fact.[8]

[8] Ibid [53].

32.     The respective marks appear below:

IMPRESS  xPRESS/ON

33.     On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Mark and the Trade Mark. While they each share the element PRESS, the presence of the x and /ON element in the Trade Mark and the lack of the letters IM provide a significantly different visual impression. I move then to consider whether the Trade Mark and Opponent’s Mark are deceptively similar.

Deceptive similarity

34.     Section 10 provides a definition of deceptively similar being that ‘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’.

35.     Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

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 [mark].[9]

[9] Shell (n 6), 416.

36.     The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which may be summarised as follows:

[10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

[11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

[12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

·the marks should not be compared side by side;[13]

·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[18]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

·any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

[13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[14] Ibid.

[15] Ibid.

[16] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[17] Shell (n 6), 415.

[18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[19] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) (‘Woolworths’) restating principles from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

[21] Australian Woollen Mills (n 13).

[22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 13), 657.

37.     Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[23] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[24]

[23] Woolworths (n 20),[39].

[24] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

38.     I also note the importance of the prefix in a comparison of the marks which was highlighted in the case of London Lubricants (1920) Ltd’s Appn in the following way:

[T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[25]

[25] (1925) 42 RPC 264, 279 (Sargant LJ).

39.     In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Opponent’s Registration. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Opponent’s Registration are used and the circumstances in which the goods are and will be sold.

40.     Prior to continuing my analysis, I make a preliminary comment regarding the Opponent’s definition of the word ‘impress’ which includes ‘to press (a thing) into or on something, so as to leave a mark’. I note that the Macquarie Dictionary Online has a further, and what I consider a more relevant, definition of IMPRESS, particularly in the beauty industry, namely ‘to affect deeply or strongly in mind or feelings, especially favourably; influence in opinion’.

41.     In my view, the Trade Mark is not deceptively similar to the Opponent’s Mark. While a degree of visual similarity naturally arises between the Trade Mark and the Opponent’s Mark given they both contain the element PRESS, the former commences with the letter x and ends with the letters ON following a slash, thereby providing the impression to the public of the words EXPRESS ON. This combination would suggest to the public that the false nails and other like products for nails can be quickly applied or expressly put on the nails. The latter, on the other hand, begins with the significantly different letters IM, followed by the word PRESS, forming a single word IMPRESS with a familiar and well understood English meaning. This word suggests that the wearer of the false nails and other like products for nails will make an impression on; have a strong, lasting, or favourable effect on others.

42.     There is little similarity in the pronunciation of the marks. IMPRESS has a well known pronunciation as two syllables IM and PRESS and xPRESS/ON has three syllables and is pronounced as X-PRESS-ON. Further, in my consideration, it is less likely that products for the nails will be requested by oral reference to a trade mark rather than by visual inspection. In my experience, products for the nails are generally selected by customers from shelves in stores or from photographs online with little or no intervention from sales staff other than to perhaps request if a certain colour of, for example, nail polish or false nails is in stock. Therefore, for products for the nails, visual differences carry the greater weight.

43.     A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective marks, taken together, and even allowing for imperfect recollection, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.

44.     I am not satisfied that consumers viewing or hearing the xPRESS/ON mark would be caused to wonder whether the Applicant’s Goods originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two. The s 44 ground is therefore not established.

Section 58

45.     The provisions of s 58 provide:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. The SGP relies on the Opponent’s use of the Opponent’s Mark in Australia since before the Filing Date in respect of artificial nails, nail art, and nail care products which are the same kind of goods as the Applicant’s Goods. The Opponent claims that the Trade Mark is substantially identical to the Opponent’s Mark.

2. The Act provides for registration of ownership and not ownership by registration.[26] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[27]

   [26]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

   [27] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

3. The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[28] which in this case is 19 January 2023.

   [28] Ibid [14].

   49.     The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:

   [O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[29]

   [29] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).

4. This ground of opposition will be established if it is found the Applicant is not the owner of the Trade Mark in respect of the Applicant’s Goods.

5. The Opponent must establish that the Opponent’s Mark was used before the Filing Date in relation to the same goods or goods of the same kind, as those of the Application and that this previously used trade mark is at least substantially identical to the Trade Mark.

6. Given I have already decided that the Trade Mark is not substantially identical with the Opponent’s Mark under the s 44 ground, the ground under s 58 is not established.

   Section 60

   53.     Section 60 provides:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

   54.     To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Priority Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

   55.     In summary, the SGP states that the Opponent has acquired a significant reputation in the Opponent’s Mark through the sustained and continuous use of the Opponent’s Mark in relation to artificial nails, nail art, and nail care products, being goods that are the same as, or similar to, the Applicant’s Goods from a date before the Priority Date of the Application.

   Reputation

   56.     The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[30]

   [30] [2000] FCA 1335, [81].

   57.     Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[31]

   [31] Ibid [86].

   58.     The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[32] Here, given the nature of the parties’ goods are products for the nails, it follows that the relevant market would include a great deal of the Australian population, particularly the female population. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[33]

   [32] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [33] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   59.     In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[34]

   [34] [2019] 142 IPR 275, [83] (O’Bryan J).

   60.     Having considered the totality of the Opponent’s evidence, I am not satisfied there is a reputation in the Opponent’s Mark. Much of the Opponent’s evidence is either undated or dated after the Priority Date. The Opponent has not provided annual sales revenue or promotional expenditure figures, and while the Opponent has provided social media metrics, these too are either after the Filing Date and /or provide no indication as to how many likes, views, subscribers and followers are from Australia and/or provide no indication of the date the sites were, liked, viewed, subscribed to or followed. Further, the Opponent has not provided Australian visitor numbers to the Opponent’s Website nor visitor numbers to the Opponent’s AU Website.

   61.     I find that I cannot objectively assess the exposure and recognition of the Opponent’s Mark in Australia. Therefore, the evidence is insufficient to allow me to determine the extent of the use and level of exposure of the Opponent’s Mark in Australia and as a consequence, I am not satisfied that a reputation exists in the Opponent’s Mark in Australia and the ground under s 60 is not established.

   Section 42(b)

   62.     Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

   63. In summary the SGP asserts that in the light of the Opponent’s reputation in the Opponent’s Mark, use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

   ACL and Passing Off

   64. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[35]

   [35] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   65. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

   66. The Opponent seeks to rely on the reputation I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will proceedings for passing off.[36]

   [36] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

   67.     The Opponent has accordingly not established its ground of opposition under s 42(b).

   Section 62A

   68.     Section 62A provides:

   Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith

   69.     In summary the SGP provides that by reason of the Opponent’s reputation in the Opponent’s Mark, the Applicant was, or should reasonably have been aware, that the Opponent enjoyed such a reputation and that it owned the Opponent’s Mark in Australia and the Applicant sought to take advantage of the Opponent’s reputation by filing the Application.

   70.     For this ground of opposition, I am required to decide what the Applicant knew at the time of filing the Application and then, in the light of that knowledge, whether the act of filing the Application fell short of acceptable commercial behaviour.[37]

   [37] See Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [143]-[167] (Dodds-Streeton J).

   71.    There is nothing in the Opponent’s evidence that might support an argument that the Applicant filed the Application in bad faith. While OPI Products, Inc provided a licence to use OPI Products, Inc’s trade mark OPI and as such it was likely that the Applicant was aware of the Opponent’s Mark, awareness or mere knowledge before the relevant date (here the Priority Date) of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[38]

   [38] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

   72.     As such, I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.

   Decision

   73.     Section 55 relevantly provides:

   Decision

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:       For limitations see section 6.

   74.    The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2328777 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

   Costs

7. The Opponent sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Anne Makrigiorgos

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   30 August 2024