L'Oreal v Provendex Pty Ltd
[2023] ATMO 81
•22 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by L'Oreal to registration of trade mark application number 2077385 (classes 3, 5) – ÉLIVE – in the name of Provendex Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Megan Evetts of counsel instructed by Spruson & Ferguson Applicant: Lucy Davis of counsel instructed by By George Legal |
| Decision: | 2023 ATMO 81 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pursued – s 44 partially established – opportunity to amend – application amended – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by L'Oreal (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: ÉLIVE (‘Trade Mark’)
Application no.: 2077385
Owner: Provendex Pty Ltd (‘Applicant’)
Priority Date: 23 March 2020
Specification: Class 3: perfumes; toilet waters; bath bombs; bath gels, not medicated; bath salts, not for medical purposes; toilet soap; body deodorants; body creams (cosmetics); cosmetics; facial creams (cosmetic); hand cream; skin creams (cosmetic); gels for use on the body; gels for use on the hair; shower gels; make-up; body scrubs; facial scrubs (cosmetic); hair shampoo; shampoos (non-medicated); aerosol hairspray; hair bleaching preparations; hair care preparations; hair conditioner; hair gel; hair grooming preparations; hair spray; hair styling preparations; hair waving preparations; essential oils; essential oils for personal use; cleaning oils; cleaning preparations impregnated into cloth; cleaning preparations impregnated into tissues
Class 5: antibacterial skin sanitiser gels; sanitiser preparations for hospital use; sanitiser preparations for household use; hand sanitising preparations; sanitising preparations for household use; sanitising wipes; cleaning cloths impregnated with disinfectant for hygiene purposes; cleaning preparations containing bactericides; detergents for cleaning use (medical); impregnated tissues for cleaning (medicated); liquid preparations (medicated) for cleaning the hands; medicated cleaning preparations; medicated creams for cleaning the skin; medicated gel for cleaning the skin
(‘Goods’)
The acceptance of the Trade Mark for possible registration was advertised on 24 August 2020. The Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 November 2020. The Applicant filed a notice of intention to defend on 19 March 2021.
Evidence in Support (‘EIS’) was filed by the Opponent. In turn, the Applicant filed Evidence in Answer (‘EIA’) and an oral hearing was requested. Submissions were filed by the Opponent on 10 February 2023 (‘Opponent Submissions’) and by the Applicant on 17 February 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 24 February 2023. Megan Evetts of counsel presented submissions on the Opponent’s behalf and Lucy Davis of counsel presented submissions on the Applicant’s behalf.
This matter was heard concurrently with oppositions to the removal of Australian trade mark registrations 746761 and 1730428, both involving the same parties (‘Other Oppositions’). For clarity, a separate decision has been issued for each matter.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The Opponent’s Submissions state that the opposition is not pressed in respect of ‘sanitiser preparations for hospital use’ and ‘detergents for cleaning use (medical)’.[2] As such, the opposition is only being pursued against (together ‘Opposed Goods’):
Class 3: perfumes; toilet waters; bath bombs; bath gels, not medicated; bath salts, not for medical purposes; toilet soap; body deodorants; body creams (cosmetics); cosmetics; facial creams (cosmetic); hand cream; skin creams (cosmetic); gels for use on the body; gels for use on the hair; shower gels; make-up; body scrubs; facial scrubs (cosmetic); hair shampoo; shampoos (non-medicated); aerosol hairspray; hair bleaching preparations; hair care preparations; hair conditioner; hair gel; hair grooming preparations; hair spray; hair styling preparations; hair waving preparations; essential oils; essential oils for personal use; cleaning oils; cleaning preparations impregnated into cloth; cleaning preparations impregnated into tissues (‘Opposed Class 3 Goods’)
Class 5: antibacterial skin sanitiser gels; sanitiser preparations for household use; hand sanitising preparations; sanitising preparations for household use; sanitising wipes; cleaning cloths impregnated with disinfectant for hygiene purposes; cleaning preparations containing bactericides; impregnated tissues for cleaning (medicated); liquid preparations (medicated) for cleaning the hands; medicated cleaning preparations; medicated creams for cleaning the skin; medicated gel for cleaning the skin (‘Opposed Class 5 Goods’)
[2] Opponent’s Submissions, [5].
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 23 March 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
|
| EIA |
|
EIS
10. According to the Chalvron Declaration, the Opponent is ‘the world's largest cosmetics company’ which sells a broad range of cosmetic products in over 150 countries.[4] The Opponent ‘has over 40 manufacturing plants situated throughout the world and 150 international distribution centers for its products’.[5] The Opponent is the owner of numerous trade mark registrations which incorporate the word ‘ELVIVE’ across multiple jurisdictions. Relevantly, its Australian registrations include (collectively ‘Opponent’s Marks’):
[4] Chalvron Declaration, [4].
[5] Ibid.
| Number | Trade Mark | Class | Priority Date |
| 746761[6] | ELVIVE (‘61 Mark’) | Class 3: shampoos; gels, sprays, mousses and balms for the hair styling and care; hair lacquers; hair colouring and hair decolorant preparations; permanent waving and curling preparations (‘61 Goods’) | 20 October 1997 |
| 1969477 | ELVIVE HYALURON MOISTURE | Class 3: shampoos, conditioners, hair masks, hair treatments and hair care preparations | 19 November 2018 |
| 2038140 | ELVIVE WONDER WATER | Class 3: shampoos; hair conditioners; hair care preparations; hair preparations and treatments. | 20 March 2019 |
[6] The goods reproduced for Australian trade mark registration 746761 reflect the outcome of a non-use application filed by the Applicant which resulted in partial removal of this registration. See discussion commencing at [25] of this decision.
11. Ms Chalvron states that the Opponent ‘sells a range of hair care and styling products labelled with the mark ELVIVE in Australia’.[7] The Trade Mark was first launched in the United Kingdom in 1997 and it has been subsequently used in relation to hair care and styling products in various markets including the United States of America, Europe and South America. Additionally, the Trade Mark ‘has been advertised and promoted extensively throughout the world’[8] and it has appeared in publications such as Marie Claire, InStyle and Harper’s Bazaar.
[7] Chalvron Declaration, [10].
[8] Ibid [14].
12. Ms Chalvron declares that the ELVIVE trade mark has been continuously used in Australia since 2007 in relation to a wide range of hair care preparations and styling products. These products were retailed through Coles and Woolworths as well as through department stores such as Target and various pharmacies. The products were also sold on the Opponent’s Australian website, lorealparis.com.au, as well as via online retailers such as amazon.com.au and ebay.com.au.
13. The Chalvron Declaration discloses the Opponent’s average annual advertising expenditure and sales figures for ELVIVE branded products sold in Australia between 2015 to 2020. The confidential figures disclosed are considerable and the evidence shows that the ELVIVE branded products have been promoted in Australia through a diverse range of print and electronic media. Annexed to the Chalvron Declaration are results from market surveys and studies commissioned by the Opponent between 2015 to 2019. Broadly speaking, the results reveal an increasing ‘consumer awareness of the L’OREAL ELVIVE brand’ in the Australian market.[9]
[9] Ibid [28]–[30].
14. Ms Chalvron opines that ‘ELVIVE has no particular meaning in relation to hair care or other cosmetic products’ and, in her experience, ‘it is not common for businesses [in the Australian market] to use trade marks that contain accents’.[10] In this context, Mr Chalvron asserts that ‘that consumers are familiar with the use of an accent in the name L'ORÉAL, and the accent appearing in ÉLIVE is only likely to enhance the potential association with L'Oreal and confusion with that company's ELVIVE trade mark’.[11] Ms Chalvron also highlights that ‘there are many cosmetics companies which sell general cosmetics products, such as make up, skin care and body care products, together with a range of hair care and styling products under the one brand’.[12]
[10] Ibid [33].
[11] Ibid.
[12] Ibid [34].
15. The Howe Declaration details the results of various online searches of ‘terms such as “hair care products australia” and “hair and cosmetic brands australia”’.[13] Ms Howe notes that the search results ‘revealed that numerous companies market shampoos, conditioners and hair care and styling products, together with a range of cosmetics’ under the same brand in Australia.[14] Examples of such brands include Natio, Lush, Aveda and The Body Shop. The Howe Declaration also confirms that a wide range of ELVIVE branded hair care and styling products are sold through numerous retailers across Australia. Annexed to the Howe Declaration are website extracts from retailers such as Chemist Warehouse, Big W and Priceline Pharmacy demonstrating the availability of ELVIVE branded products.
EIA
[13] Howe Declaration, [3].
[14] Ibid [4].
16. According to the Dunbar Declaration, the Applicant ‘has been selling a range of skincare and cosmetic products under the brands “RÉVIVE” and “RÉVIVE THERAPEUTIC PAMPERING”’ since at least November 2014.[15] Mr Dunbar coined the Trade Mark in or around October 2015 and states that it ‘is intended to be pronounced “eh-live”, not “ee-live” with a hard “e” sound’.[16] The Applicant subsequently obtained registration in Australia for the following composite trade mark incorporating the word ‘ÉLIVE’:[17]
(‘Logo Mark’)
[15] Dunbar Declaration, [7]–[8].
[16] Ibid [9].
[17] See Australian trade mark registration 1730428.
17. The Applicant initially intended to use the Trade Mark and the Logo Mark alongside the ‘RÉVIVE’ brand. Mr Dunbar states that the Applicant commenced using the Trade Mark in Australia in around November 2019. It is declared that the Goods have been sold through various third-party retailers as well as via the Applicant’s e-commerce stores accessible at and Mr Dunbar estimates that there are approximately 400 to 500 third-party retailers which stock products branded with the Trade Mark throughout Australia.
18. The Dunbar Declaration states that the Applicant ‘is in the process of rebranding all if [sic] the products which it currently sells under the RÉVIVE Mark to the [Trade Mark], as it wishes to adopt a singular brand across its entire product range’.[18] In short, the Applicant has ‘moved to using the [Trade Mark] as its primary branding’ instead of the ‘RÉVIVE’ brand.[19] Mr Dunbar explains that the move to a singular branding means that ‘new stock of physical products which originally carried the RÉVIVE Mark on their packaging, now carry the [Trade Mark]’.[20]
[18] Dunbar Declaration, [21].
[19] Ibid.
[20] Ibid [22].
19. Mr Dunbar states that the Logo Mark was accepted without any of the Opponent’s Marks being raised as a ground for rejection and points out that the Opponent did not oppose its registration. Mr Dunbar believes that ÉLIVE and ELVIVE ‘look and sound very different’[21] and declares that he is not aware of any instances of consumer confusion occurring between the Trade Mark and the Opponent’s Marks.
[21] Ibid [32]–[33].
20. The Grujovski Declaration addresses various statements made in the EIS. Relevantly, it contests Ms Chalvron’s claim regarding the uncommonness of trade marks which contain accents in the Australian market. To this end, Mr Grujovski undertook searches of the Australian Trade Marks Register (‘Register’) and identified at least 211 pending or registered trade marks which included the letter ‘É’. His searches also returned 28 results for pending or registered trade marks which included the letter ‘Ó’.
21. The Grujovski Declaration also disputes the proposition that companies typically provide hair care products together with cosmetics under the one brand. Mr Grujovski declares that he ‘conducted various searches of the websites of leading supermarkets and chemist retailers’ to ascertain ‘prominent brands used in connection with the sale of hair care and hair styling products in Australia’.[22] The results returned brands such as Tresseme, Pantene, Schwarzkopf and Herbal Essences. Mr Grujovski undertook further searches of the official websites for these brands which revealed that each brand was ‘exclusively promoted and used in connection with the sale of hair care and hair styling products, and not in connection with the sale of any cosmetics, make-up, skin care products or body care products’.[23]
Discussion
[22] Grujovski Declaration, [13].
[23] Ibid [14].
Section 44
22. Section 44 of the Act relevantly provides:
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.
…
(3) If the Registrar in either case is satisfied:(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
23. To establish this ground, at least one trade mark which satisfies the following requirements must be identified:
it is in the name of a person other than the Applicant (‘First Requirement’);
it has a priority date which is earlier than the priority date of the Trade Mark (‘Second Requirement’);
it is substantially identical with, or deceptively similar to, the Trade Mark (‘Third Requirement’); and
it is in respect of goods and/or services which are either similar and/or closely related to the Opposed Goods (‘Fourth Requirement’).
24. The SGP identified the Opponent’s Marks as underpinning this ground of opposition. Each of the Opponent’s Marks are protected for essentially the same scope of goods in class 3. Thus, the Opponent stands in the same position irrespective of which of the Opponent’s Marks is relied on. As such, it is convenient to confine the following discussion to a comparison of the 61 Mark and the Trade Mark. The rationale being that if the 61 Mark is determined not to be at least deceptively similar to the Trade Mark, logic dictates that the same conclusion will apply to the remainder of the Opponent’s Marks given each has additional points of dissimilarity.
25. As a preliminary point, the Applicant filed a non-use application against the 61 Mark as part of the Other Oppositions. I have since decided the non-use application and the Applicant was partially successful in having the 61 Mark removed for some goods in class 3.[24] The question thus arises as to how the 61 Mark should be treated for the purposes of this decision. That is, should the 61 Mark be conceptualised as it existed at the Relevant Date (i.e., being registered for a broader range of class 3 goods) or should the 61 Mark be considered in its current form which reflects the outcome of the non-use application.[25] The Opponent asserted that ‘in non-use proceedings the rights cease as and from the date the trade mark (or any registered goods thereof) is removed from the Register’.[26] On this basis, it claimed that ‘the Delegate must assess the s 44 opposition with respect to all of the goods for which the [61 Mark is] registered, regardless of the outcome of [the Applicant’s] non-use application’.[27] In contrast, the Applicant submitted that the 61 Mark should be considered in its current form because the removed goods cease ‘to be any impediment to registration given s 44 is expressed in the present tense’.[28] The Applicant drew attention to previous decisions of the Registrar which supported this approach.[29]
[24] L’Oreal v Provendex Pty Ltd [2023] ATMO 66.
[25] The registered specification of the 61 Mark, as it existed at the Relevant Date, is reproduced at Annexure A to this decision.
[26] Opponent’s Submissions, [72].
[27] Ibid.
[28] Applicant’s Submissions, [31].
[29] Ibid which footnoted: Pacific Incubator of Intellectual Property Ltd v Wentworth Annexe Ltd [2016] ATMO 58 at [17], citing the earlier decisions of Roll International Corp v Teleflore (Aust) Inc (1997) 40 IPR 318; Takata Corp v Britax Child-Care Products Pty Ltd (1999) 44 IPR 425.
26. Whilst I acknowledge that this question is not conclusively settled,[30] I consider the Applicant’s position is preferable. To this end, the delegate’s observations in 1872 Holdings VOF v Havana Club Holding SA are instructive:
[I]n my consideration, subsections 44(1) and 44(2) must be read in conjunction with other provisions of the Act and Regulations (such as sections 63, regulation 4.13, and sections 63 to 65), which look to the operation of subsections 44(1) and 44(2) at the present time and in relation to the situation as it now pertains; As Hearing Officer Lyons more succinctly put it in Omega SA v Robinson, when considering this issue:
The facts are to be examined as they now stand. For the purposes of section 44(1) “a trade mark registered” means a trade mark presently registered. The [ceased] registrations no longer form a basis for objection under that section. In Gallo ... the Full Court’s finding was linked to the submission that Lion Nathan’s use infringed the trade mark whilst it remained registered. That finding has no bearing on the operation of section 44 as a ground for refusal of registration.
As subsections 44(1) and 44(2) are to be read in the present tense, and because the Opponent does not have a registered trade mark or a trade mark whose registration is being sought on which to base this ground, the ground under subsections 44(1) and (2) is not established.[31]
[30] See, eg, Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1) [2012] FCA 1184, [84]–[86][31] [2017] ATMO 12, [30]–[31] (citation omitted). See also iGuard Pty Ltd v iGuard Australia Pty Ltd [2018] ATMO 91, [29]–[31].
27. I further note the obiter dicta of the Full Federal Court in Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44:
In the course of oral submissions in this appeal, EB accepted that, if it failed on the question of the trade mark use of MOTHERLAND in the non-use period, then that mark would not fall for consideration for s 44(1) purposes in relation to the MOTHERSKY application. In our view, this concession was properly made. Even though at the time of the Registrar’s decision in relation to EB’s opposition to the MOTHERSKY application, the MOTHERLAND mark remained on the Register, there would be something perverse in considering the registrability of MOTHERSKY against the registration of MOTHERLAND when it is now known that the MOTHERLAND registration will be removed from the Register. This fact was, in substance, acknowledged by EB’s concession.
If at the time the opposition to the MOTHERSKY application was heard it was known that the MOTHERLAND mark would be removed from the Register, and had the Registrar’s delegate been persuaded that MOTHERSKY was deceptively similar to MOTHERLAND, it would have been appropriate for the delegate to have exercised the discretion conferred by s 44(3)(b) of the Act favourably to Cantarella to permit the MOTHERSKY application to proceed to registration, absent any other ground of opposition being established. In practical effect, the registration of MOTHERLAND would have been put to one side—and should have been put to one side—given its impending removal from the Register. EB’s concession in the present appeal conforms to that outcome.[32]
[32] [2023] FCAFC 44, [176]–[177] (Yates, Stewart and Rofe JJ) (emphasis added).
28. Bearing the above in mind, it is appropriate to consider the 61 Mark in its current form because this is how it stands at the present time. As such, for the purposes of this decision, regard will only be given to the class 3 goods that have been retained on the Register following the Applicant’s partially successful non-use application.
29. Turning to the requirements outlined at [23] of this decision, the 61 Mark is registered by a person other than the Applicant and has a priority date which is earlier than 23 March 2020. The First and Second Requirements are satisfied. With respect to the Third Requirement, the test for ‘substantial identity’ was explained by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[33]
[33] [1963] HCA 66, [12] (‘Shell’).
30. The Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd commented that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[34]
[34] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
31. The trade marks are reproduced below:
| Trade Mark | 61 Mark |
| ÉLIVE | ELVIVE |
32. The Opponent asserted that the Trade Mark is substantially identical with the 61 Mark because the only differences are ‘the omission of the letter V and the accent above the E’.[35] In its view, these differences are unlikely to be discerned. Conversely, the Applicant contended that the additional letter ‘V’ and the accented ‘E’ served to distinguish the trade marks due to the cumulative effect they have on the sound and appearance of the respective marks. The Applicant opined that ‘it is clear that there is no substantial identity between the two marks’.[36]
[35] Opponent’s Submissions, [73].
[36] Applicant’s Submissions, [37(e)].
33. In my assessment, the Trade Mark and the 61 Mark are not substantially identical. It is true that the trade marks differ by a single letter which appears in the middle of the 61 Mark. However, this would not be overlooked on a studied comparison nor would the presence of the diacritical element above the ‘E’ given it forms the first letter of Trade Mark. Both these variations import obvious differences between the trade marks such that a total impression of dissimilarity emerges when they are compared side by side. It follows that the Trade Mark is not substantially identical with the 61 Mark.
34. Section 10 of the Act provides 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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who observed:
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].[37]
[37] Shell (n 33) [13].
35. The Opponent submitted that the trade marks are deceptively similar because they are invented words that share the prefix ‘EL’ and suffix ‘IVE’. In its opinion, this gives rise to significant visual and aural similarities between the trade marks. The Applicant disagreed and argued that the trade marks are visually distinct, have dissimilar meanings and would be pronounced quite differently. For the reasons detailed below, I consider that the Trade Mark is deceptively similar to the 61 Mark.
36. A visual comparison of each trade mark reveals significant similarities. The trade marks share a similar length and, notably, both commence with the letters ‘EL’ and terminate with the letters ‘IVE’. This commonality gives rise to a potent visual symmetry between the respective trade marks. The impact of the additional letter ‘V’ present in the 61 Mark is largely diminished by the fact that it is sandwiched between the shared prefix and suffix. Its inclusion in the middle of the 61 Mark is such that it may not even be noticed or recalled by ordinary consumers when consideration is given to the doctrine of imperfect recollection. As such, the trade marks are visually similar.
37. Aurally, the trade marks possess natural similarities given each is a two-syllable word that share the same prefix and suffix. The Applicant submits that the 61 Mark would be pronounced as ‘EL-VEEV’ (rhyming with ‘leave’) whereas the Trade Mark would be pronounced as
[38] Applicant’s Submissions, [37].
38. Conceptually, I consider that each trade mark would be perceived as an invented word. The Applicant concedes that the 61 Mark has no meaning. However, it contends that consumers are likely to understand the Trade Mark as having similar connotations to the word ‘alive’ and this serves to differentiate the trade marks. This is not persuasive. While consumers may draw upon the linguistic structure of the word ‘alive’ to assist in enunciation, it is improbable that consumers would do likewise to discern its meaning. Rather, I agree with the Opponent that it is more plausible that the Trade Mark would present as a made-up word to ordinary consumers. The absence of any dictionary definition or commonly understood meaning for either trade mark thus heightens the potential for consumer confusion.
39. In light of the above, when considered as wholes, I am satisfied that the Trade Mark so nearly resembles the 61 Mark that it is likely to deceive or cause confusion. Consequently, the Third Requirement as set out at [23] of this decision is satisfied.
40. I now turn to consider the Fourth Requirement, being whether the Opposed Goods are similar to the 61 Goods. Section 14 of the Act relevantly provides:
Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
41. The guiding factors for determining if goods are similar are well settled and require a holistic consideration of:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[39]
[39] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
42. The Applicant conceded that the Opposed Class 3 Goods are similar ‘to the goods covered by [the 61 Mark], whether the registration is limited to Hair Related Goods (as [the Applicant] contends it should pursuant to the non-use application) or not’.[40] I agree with this concession. Evidently, the various claims for hair care specific goods made in the Opposed Class 3 Goods are the same as the hair care goods claimed by the 61 Goods. Likewise, the broad claims in the Opposed Class 3 Goods such as ‘perfumes’, ‘essential oils’ and ‘cleaning preparations impregnated into cloths’ would notionally include goods such as hair perfumes, essential oils for hair and hair cleansing wipes. Finally, with respect to ostensibly dissimilar items such as facial creams, bath salts and toilet soap, I accept that the evidence indicates that other traders commonly provide such goods together with hair care products under the one brand such that there may be a degree of consumer expectation in the marketplace. The Opponent’s evidence of brands such as The Body Shop, Natio, Lush and Aveda are illustrative of this.[41] Given goods for personal care and hair care are typically sold through the same trade channels, are generally offered in close proximity to one another and are used in personal hygiene, I am satisfied that all of the Opposed Class 3 Goods are either the same or goods of the same description to those contained in the 61 Goods.
[40] Applicant’s Submissions, [41].
[41] Howe Declaration, Annexures MH-1, MH-3 and MH-4. The Opponent’s Submissions also mention brands such as Dove who supply a diverse range of personal care goods.
43. In relation to the Opposed Class 5 Goods, the Opponent’s Submissions were drafted on the premise that the 61 Mark would be unaffected by the outcome in the non-use application given emphasis was primarily placed on broad items such as ‘cosmetics’. As mentioned earlier in this decision, this is not the appropriate approach given the Applicant’s success in partially removing the 61 Mark and the fact that s 44 of the Act is framed in the present tense. Having reviewed the Opponent’s evidence, it is not immediately apparent how any of the Opposed Class 5 Goods could be considered similar to the 61 Goods. Aside from one isolated example, the evidence does not provide any compelling basis to infer that consumers would expect a provider of hair care goods to also supply any of the Opposed Class 5 Goods. Whilst it is conceivable that such goods could be sold through the same trade channels, it is unlikely that they would be displayed in the same location and they do not have the same use or purpose as hair care goods. To this end, I agree with the Applicant insofar as it contends that ‘there is no evidence to support that these goods are sold through the same trade channels and in fact the specialised nature of the class 5 challenged goods would point away from any such inference’.[42] The onus falls squarely on the Opponent to establish this aspect of the ground and, in the absence of cogent submissions or evidence, I am not satisfied that the Opposed Class 5 Goods are similar to the 61 Goods.
[42] Applicant’s Submissions, [44].
44. The Fourth Requirement is therefore satisfied in relation to the Opposed Class 3 Goods. It follows that the Opponent has in principle established a ground of opposition under s 44(1) of the Act in relation to same. The Applicant has not sought to have the application accepted under the provisions of ss 44(3)(a) or 44(4) of the Act. It does, however, submit that the Trade Mark should be accepted pursuant to the discretion available under s 44(3)(b) of the Act.[43] This provision provides that the application to register the Trade Mark may be accepted if other circumstances exist which makes it proper to do so. Here, the other circumstances identified by the Applicant include the alleged differences between the Trade Mark and 61 Mark, the earlier registration of the Logo Mark and the absence of any consumer confusion in the evidence filed. No further submissions were developed in respect of these circumstances. As such, whether considered individually or collectively, I am not satisfied that any of the identified circumstances make it proper to accept the applications under s 44(3)(b) of the Act.
[43] Ibid [45].
45. Accordingly, the s 44 ground of opposition has been established in respect of the Opposed Class 3 Goods. I now turn to consider the remaining grounds of opposition, as nominated in the SGP, in relation to the Opposed Class 5 Goods.
Section 60
46. Section 60 of the Act relevantly 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.
47. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The 61 Mark was identified as supporting this ground of opposition. The SGP was particularised as follows:
The Opponent has been using the trade mark ELVIVE (“the ELVIVE Mark”) in Australia since at least as early as 1990 in relation to hair care preparations; shampoos; gels, sprays, mousses and balms for the hair styling and care; hair colouring preparations; conditioners, hair treatments, hair oils, masks for the hair, creams for the hair, hair serums, and anti-frizz serums for the hair and has a substantial reputation in that trade mark. Because of the reputation the ELVIVE Mark had in Australia, before the priority date for registration of the [Trade Mark], use of the [Trade Mark] as at that date, in relation to the range of goods for which registration is sought, was, and remains, likely to deceive or cause confusion.
Reputation
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’.[44] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[45]
[44] [2000] FCA 1335, [81] (‘McCormick’).
[45] [1992] FCA 159, [118] (‘ConAgra’).
50. 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.[46]
[46] McCormick (n 44) [86].
51. 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.[47] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[48]
[47] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[48] ConAgra (n 45) [77].
52. In the current matter, the relevant market is not specialised. Hair care products are fast moving consumer goods and the relevant market for such goods would include a diverse cross section of the Australian population. It would likely extend to ‘the entire Australian population from early teenage years onwards’.[49]
[49] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [95] (Heerey J).
53. The Opponent asserts that the 61 Mark had acquired a reputation at the Relevant Date. Emphasis was placed on the ‘sales of the ELVIVE branded goods in Australia between 2015 and 2020’, the Opponent’s promotional expenditure and also the market studies undertaken on its behalf.[50] The Applicant rejects this assertion. It considers that the EIS primarily points to a reputation in ‘L’Oreal Elvive’ and not the 61 Mark by itself.[51] In the alternative, the Applicant claims that any reputation enjoyed by the 61 Mark must necessarily be limited to hair care and hair styling products given the Opponent ‘has only operated in that space’.[52]
[50] Opponent’s Submissions, [40].
[51] Applicant’s Submissions, [53].
[52] Ibid [56].
In my assessment, there is some merit in the Applicant’s criticisms. The EIS has limitations which, to a certain extent, dilute the nature and extent of reputation allegedly enjoyed by the 61 Mark. For example, it is declared that the Opponent commenced use of 61 Mark in Australia in 2007. However, most examples provided generally do not demonstrate use of the 61 Mark in Australia until approximately 2015 onwards. The examples of use provided also do not consistently demonstrate use of the 61 Mark in its own right. Rather, the use exhibited is invariably intermingled with examples that reveal use of ‘L’Oreal Elvive’ or ‘L’Oreal Paris Elvive’. Similarly, the EIS contains examples which are not clearly dated,[53] are insufficiently contextualised[54] or plainly show use in overseas markets such South Africa, Indonesia and Dubai.[55] As regards to the latter, the Opponent has not properly explained what, if any, exposure this overseas material has had to the Australian market.
[53] See, eg, Chalvron Declaration, Annexure L5.
[54] See, eg, Chalvron Declaration, Annexure L2B.
[55] See, eg, Chalvron Declaration, Annexures L2A, L2B.
55. With respect to the average annual sales and advertising expenditure figures disclosed, they are considerable. However, the figures are provided in a lump sum form without any breakdown regarding what the nature, type or quantity of products sold were. This diminishes the significance that may be attributed to same. Meanwhile, I agree with the Applicant that the market surveys and studies relied upon by the Opponent are not highly persuasive especially given, in some instances, the trade mark under consideration appears to be ‘L’Oreal Elvive’ and not the 61 Mark.[56]
[56] Chalvron Declaration, Annexures L9A, L9B and L9C.
56. Nevertheless, I am satisfied that the evidence filed provides a sufficient basis to conclude that the 61 Mark had, before the Relevant Date, acquired a reputation in Australia in relation to hair care and hair styling products. Critically, the sheer size of the annual sales and advertising figures disclosed in combination with the examples of the 61 Mark in use (which includes numerous television advertisements aired in Australia between 2015 to 2019) and the goods being sold via major Australian retailers offsets the above noted limitations. With that said, the existence of these limitations means that I am unable to conclude that the 61 Mark enjoyed a particularly strong reputation as advocated by the Opponent. This is especially the case given the relevant market is not specialised and the use of the 61 Mark has never ventured beyond hair care and hair styling products.
57. Accordingly, I am satisfied that the 61 Mark had acquired a reputation in relation to hair care and hair styling products in Australia before the Relevant Date. Pursuant to s 60(b) of the Act, consideration must now turn to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
58. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[57]
[57] [1979] RPC 410, 423 (citation omitted).
59. It has been recognised that ‘the test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade’.[58] To this end, it has been observed that ‘the threshold for confusion is not high’[59] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[60]
[58] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O’Bryan J).
[59] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[60] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
60. Section 60 of the Act does not require the goods upon which the 61 Mark are used to be similar to the Opposed Class 5 Goods within the meaning of the Act. Equally, there is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[61]
[61] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original).
61. I have found that the Trade Mark is deceptively similar to the 61 Mark for the purposes of the s 44 ground of opposition. However, by itself, this finding is not determinative of the Opponent’s prospects of establishing the ground under s 60 of the Act. In this regard, I am not satisfied that the extent of the reputation enjoyed by 61 Mark is such that it eclipses the differences between the fundamental nature, uses and trade channels of the goods to which they will be applied. The reputation enjoyed by the 61 Mark firmly resides in hair care and hair styling products. Goods of this nature plainly differ to items that fall within the ambit of the Opposed Class 5 Goods. The Opponent’s evidence does not provide any cogent basis to draw a connection between such goods and this reinforces the fact that the respective goods are quite unrelated. Whilst it is true that there is no threshold level of similarity required to exist between the relevant goods, the fact that the goods to which the 61 Mark’s reputation attaches are disparate to the Opposed Class 5 Goods sufficiently diminishes the risk for confusion.
62. Accordingly, I am not satisfied that there is a real and tangible danger that use of the Trade Mark in relation to the Opposed Class 5 Goods would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers.
63. The s 60 ground of opposition has not been established.
Section 42
64. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:…
(b) its use would be contrary to law.
65. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[62] The Opponent’s Submissions identify ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and trade mark infringement under s 120 of the Act as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
[62] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[63] As discussed above, the Opponent has failed to establish the s 60 ground of opposition. It follows that the Opponent has also failed to establish that use of the Trade Mark in relation to the Opposed Class 5 Goods would be contrary to s 18 of the ACL. I reach the same finding regarding the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[64]
[63] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36].
[64] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
67. With respect to the alleged trade mark infringement, the Opponent contends that the Applicant’s use of the Trade Mark in relation to the Opposed Class 5 Goods would be contrary to law because it amounts to trade mark infringement. The Opponent simply relies on its submissions made in respect of its ground of opposition under s 44 of the Act.[65]
[65] Opponent’s Submissions, [91].
68. Pursuant to s 125 of the Act, an action for an infringement of a registered trade mark may be brought in a prescribed court or any other court that has jurisdiction to hear the action. An opposition proceeding before the Registrar is not a proceeding before a court. As such:
[I]t is unlikely that the Delegate has the jurisdiction to hear a section 120 action by virtue of section 42(b). In any event, the wording and effect of section 120 is similar to sections 44 and 60 of the Act. If it were appropriate for me to determine s120 (and I am of the view that it is not), the issues have already been adequately covered by the other grounds of opposition.[66]
[66] Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd [2011] ATMO 17, [38].
69. Accordingly, the s 42(b) ground of opposition has not been established.
Decision
70. Section 55 of the Act 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.
71. In Apple Inc v Registrar of Trade Marks, Yates J observed that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole.[67]
[67] [2014] FCA 1304, [232] (emphasis added).
72. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to refuse the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
73. On 26 May 2023, I notified the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the Goods were amended as follows:
Class 3: perfumes; toilet waters; bath bombs; bath gels, not medicated; bath salts, not for medical purposes; toilet soap; body deodorants; body creams (cosmetics); cosmetics; facial creams (cosmetic); hand cream; skin creams (cosmetic); gels for use on the body; gels for use on the hair; shower gels; make-up; body scrubs; facial scrubs (cosmetic); hair shampoo; shampoos (non-medicated); aerosol hairspray; hair bleaching preparations; hair care preparations; hair conditioner; hair gel; hair grooming preparations; hair spray; hair styling preparations; hair waving preparations; essential oils; essential oils for personal use; cleaning oils; cleaning preparations impregnated into cloth; cleaning preparations impregnated into tissuesClass 5: antibacterial skin sanitiser gels; sanitiser preparations for hospital use; sanitiser preparations for household use; hand sanitising preparations; sanitising preparations for household use; sanitising wipes; cleaning cloths impregnated with disinfectant for hygiene purposes; cleaning preparations containing bactericides; detergents for cleaning use (medical); impregnated tissues for cleaning (medicated); liquid preparations (medicated) for cleaning the hands; medicated cleaning preparations; medicated creams for cleaning the skin; medicated gel for cleaning the skin
74. On 8 June 2023, the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendment. The Applicant filed divisional trade mark application number 2363095 in respect of class 3. The divisional application was examined and the specification of the parent (being the present application) has been amended in the manner set out at [73] of this decision.
75. As such, trade mark application number 2077385 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
76. Both parties have sought an award of costs. Costs usually follow the event. However, as each party has been partially successful, it is appropriate in this case that each party bears its own costs.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
22 June 2023
Annexure A
Class 3: perfume, toilet water; gels, salts for the bath and the shower; toilet soaps; body deodorants; cosmetics namely creams, milks, lotions, gels and powders for the face, the body and the hands; sun care preparations; make-up preparations; shampoos; gels, sprays, mousses and balms for the hair styling and care; hair lacquers; hair colouring and hair decolorant preparations; permanent waving and curling preparations; essential oils for personal use; dentifrices
and Edelman JJ).
(Dodds-Streeton J). See generally Michael Handler and Robert Burrell, ‘Zombie Marks? Ceased Registrations, Failed Applications and Citation Objections under Section 44 of the Trade Marks Act’ (2013) 23(4) Australian Intellectual Property Journal 206.
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Jurisdiction
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Procedural Fairness
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