L'Oreal v Provendex Pty Ltd
[2023] ATMO 66
•26 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by L'Oreal to an application under section 92 of the Trade Marks Act 1995 (Cth) by Provendex Pty Ltd for removal of trade mark number 746761 (class 3) – ELVIVE – in the name of L'Oreal
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 66 Trade Marks Act 1995 (Cth) – application under section 92 – evidence does not show use of the trade mark during the relevant period for a subset of goods – discretion not exercised – registration to be partially removed. |
Background
L'Oreal (‘Opponent’) is the owner of the following Australian trade mark registration (‘Registration’):
Trade Mark: ELVIVE (‘Trade Mark’)
Registration no.: 746761
Filing Date: 20 October 1997
Specification: 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
(‘Registered Goods’)
On 20 November 2020, Provendex Pty Ltd (‘Applicant’) filed a non-use application based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’). The non-use application sought removal of all the Registered Goods.
The Opponent filed a notice of intention to oppose the non-use application followed by a statement of grounds and particulars. In response, the Applicant filed a notice of intention to defend the non-use application.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). An oral hearing was subsequently requested. Submissions were filed by the Opponent on 10 February 2023 (‘Opponent’s 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 registration 1730428 and the registration of Australian trade mark application 2077385, both involving the same parties.[1] In the interest of clarity, a separate decision has been issued for each matter.
[1] Relevant details of the Australian trade mark registration 1730428 and Australian trade mark application 2077385 are listed at [20] of this decision.
Legal framework
Section 92 of the Act relevantly provides:
Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non-use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
The non-use application was filed on 20 November 2020 and complies with s 93(2) of the Act.[2] Section 92(4)(a) and s 92(4)(b) provide alternative grounds for removal. However, given the way s 92(4)(a) is expressed, it has been accepted that this provision essentially merges with s 92(4)(b) once a trade mark has been registered for 5 years.[3] Accordingly, this matter will be considered under s 92(4)(b) of the Act.
[2] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. The amended s 93(2) applies to trade mark applications filed from 24 February 2019 onwards.
[3] See, eg, Michelle Herbert and Paul Staunton v Jo Schmid [2023] ATMO 18, [14]; Auswool Products Pty Ltd v Source Co International Pty Ltd [2022] ATMO 173, [9]; Orientis Gourmet v ABCDEX Pty Ltd and Burkhard Geiger [2020] ATMO 134, [17]; Sabeeca Marouf v Sonex International (Pvt) Ltd [2019] ATMO 130, [14]; Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22].
Relevant period and onus
Pursuant to s 92(4)(b) of the Act, the period in which the Opponent must establish use of the Trade Mark in Australia in good faith is the 3 year period ending on 20 October 2020 (‘Relevant Period’).
The burden lies with the Opponent to rebut the non-use allegation.[4] The Registrar retains the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods for which removal has been sought. If satisfied that it is reasonable to do so, the Registrar may decline to remove the Trade Mark from the Register even if the grounds on which the
non-use application was made have been established.[5][4] Act s 100(1)(c).
[5] Ibid s 101(3).
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[6]
[6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.
Evidence
The following declarations were filed:
| EIS |
|
| EIA |
|
EIS
According to Chalvron 1, the Opponent is ‘the world's largest cosmetics company’ which sells a broad range of cosmetic products in over 150 countries.[7] The Opponent ‘has over 40 manufacturing plants situated throughout the world and 150 international distribution centers for its products’.[8]
[7] Chalvron 1, [4].
[8] Ibid.
Ms Chalvron states that the Opponent ‘sells a range of hair care and styling products labelled with the mark ELVIVE in Australia’.[9] 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’[10] and it has appeared in publications such as Marie Claire, InStyle and Harper’s Bazaar.
[9] Ibid [10].
[10] Ibid [14].
Ms Chalvron declares that the ‘ELVIVE trade mark has been used contin[u]ously in Australia, by or under the control of L'Oreal, from 2007 to the present date’ in relation to hair care preparations and styling products.[11] These products were retailed through Coles and Woolworths as well as through 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.
[11] Ibid [16].
Chalvron 1 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 Chalvron 1 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.[12]
[12] Ibid [28]–[30].
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’.[13] In this context, Mr Chalvron asserts 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’.[14] Finally, Ms Chalvron 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’.[15]
[13] Ibid [33].
[14] Ibid.
[15] Ibid [34].
The Howe Declaration details the results of various online searches of ‘terms such as “hair care products australia” and “hair and cosmetic brands australia”’.[16] Ms Howe believes that the results reveal ‘that numerous companies market shampoos, conditioners and hair care and styling products, together with a range of cosmetics’ under the same brand in Australia.[17] Examples of such brands include Aveda, Natio, Lush and the Body Shop. The Howe Declaration also confirms that a wide range of ELVIVE branded hair care and styling products are sold through retailers across Australia. Annexed to the Howe Declaration are website extracts from retailers such as Chemist Warehouse, Big W and Priceline Pharmacy that demonstrate the availability of ELVIVE branded products.
[16] Howe Declaration, [3].
[17] Ibid [4].
Chalvron 2 provides supplementary examples of ‘ELVIVE branded goods promoted on the website and sold in Australia’ during the Relevant Period.[18] It also reiterates that ‘ELVIVE branded goods have been sold in Australia through mass retailing channels’[19] and dated examples of this use are annexed to Chalvron 2.
EIA
[18] Chalvron 2, [7]–[8].
[19] Ibid [9].
Mr Dunbar declares that 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. The Applicant is also the owner of the following Australian trade mark registration and pending trade mark application (together ‘Élive Marks’):
Trade Mark:
Registration no.: 1730428
Filing Date: 26 October 2015
Specification:[20] Class 3: (including) cosmetics, particularly face, body and hand creams, milks, lotions, gels and powders; gels, foams, balms and aerosol products for hair care and hair styling; essential oils for personal use
Trade Mark: ÉLIVE (‘Word Mark’)
Application no.: 2077385
Filing Date: 23 March 2020
Specification:[21] Class 3: (including) perfumes; cosmetics; hair care preparations; essential oils; cleaning oils
Class 5: (including) hand sanitising preparations; sanitising wipes; detergents for cleaning use (medical); medicated cleaning preparations
[20] The full specification of trade mark registration 1730428 appears in Annexure A to this decision.
[21] The full specification of trade mark application 2077385 appears in Annexure A to this decision.
The Applicant initially intended to use the Élive Marks alongside its ‘RÉVIVE’ branding and Mr Dunbar declares that use of the Word Mark in Australia commenced in around November 2019. The Applicant has sold products by reference to the Word Mark in Australia through various third-party retailers as well as via its own 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 Word Mark throughout Australia.
According to the Dunbar Declaration, the Applicant ‘is in the process of rebranding all of the products which it currently sells under the [RÉVIVE branding] to the [Word Mark], as it wishes to adopt a singular brand across its entire product range’.[22] In short, the Applicant has ‘moved to using the [Word Mark] as its primary branding’ instead of the ‘RÉVIVE’ branding.[23] It is the Applicant’s intention that new products bearing the Élive Marks will be released for sale in the Australian market on a staggered basis.[24] However, the intended release schedule has been hampered by supply issues arising from the COVID-19 pandemic.
[22] Dunbar Declaration, [22].
[23] Ibid.
[24] Ibid [24], [26].
Mr Dunbar declares that the Registration, which is protected for a broad range of non-hair care goods, has been relied on by the Opponent to support its opposition to the registration of the Word Mark (‘Other Proceeding’). In Mr Dunbar’s opinion, the Applicant therefore has a ‘strong private commercial interest’ in having the Registration removed from the Register.[25]
[25] Ibid [36].
Discussion
The primary issue for determination is whether the Opponent (or an authorised user) has used the Trade Mark in Australia in relation to the Registered Goods during the Relevant Period. If the evidence establishes that the Opponent (or an authorised user) has, then the non-use allegation is taken to have been rebutted and the Trade Mark will remain registered in respect of the Registered Goods. If the evidence fails to establish use of the Trade Mark for all of the Registered Goods, then consideration will turn to whether it is reasonable to invoke the Registrar’s discretion to preserve the Trade Mark for any goods for which it has not been used.
The evidence of use required to be demonstrated is ‘use as a trade mark’. That is, the Trade Mark must have been used as a badge of origin.[26] The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut a non-use application.[27] Potentially, a single bona fide use of a trade mark during the relevant period may suffice to prevent removal.[28] However, if reliance is placed on a solitary example of use, it should be established by ‘overwhelmingly convincing proof’.[29]
Use of the Trade Mark during the Relevant Period
[26] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.
[27] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).
[28] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[29] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
At the hearing, the Applicant clarified that it did not press the non-use allegation against all the Registered Goods.[30] Rather, the non-use allegation was only pressed in respect of the following goods (‘Challenged Goods’):
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; essential oils for personal use; dentifrices
[30] Applicant’s Submissions, [5(b)].
For its part, the Opponent accepted that the Trade Mark has only been used in relation to ‘hair related goods’.[31] As such, it was common ground that the Trade Mark had not been used during the Relevant Period in relation to the following goods (‘Unused Goods’):
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; dentifrices
[31] Opponent’s Submissions, [106]–[109].
In my assessment, the evidence filed accurately reflects this common ground. Put simply, there is no evidence before me that the Trade Mark has been used in relation to the Unused Goods. This holds true irrespective of whether consideration is given to evidence dated before, during or after the Relevant Period.
However, the parties differed as to whether the Trade Mark had been used in relation to ‘essential oils for personal use’. The Applicant maintained that no such use had been evidenced whereas the Opponent claimed that the EIS demonstrated use of the Trade Mark in relation to ‘hair oils’. In its opinion, goods of this nature fall within the ambit of ‘essential oils for personal use’ and thus relevant use had been established during the Relevant Period.[32]
[32] Opponent’s Submissions, [50], [106].
I consider that the Applicant’s position is preferable. An essential oil may be defined as ‘any of a class of volatile oils obtained from plants, possessing the smell and other properties of the plant, and used in making perfumes, flavours, etc’.[33] Essential oils are offered as standalone products but are also commonly used as ingredients in the formulation of other products. The EIS contains dated examples of a product advertised as ‘L’Oréal Elvive Extraordinary Oil 100ml’ (‘Product’) for sale during the Relevant Period.[34] Based on the dated examples, I am not satisfied that this product is properly characterised as ‘essential oils for personal use’. The primary difficulty faced by the Opponent is that the text accompanying the Product states that it is ‘Enriched with 6 precious flower oils’. By definition, ‘enriched’ indicates that flower oils are added to the Product and thus form an additive ingredient of same.[35] This construction is consistent with the other dated examples of the ‘L’Oréal Elvive Extraordinary Oil’ range which are also promoted as being ‘enriched with 6 precious flower oils’ yet clearly are shampoo or conditioner products.
[33] Macquarie Dictionary (online at 1 May 2023) ‘essential oil’ (def 1).
[34] Chalvron 2, Annexure L4A.
[35] Macquarie Dictionary (online at 1 May 2023) ‘enrich’ (defs 4 and 5) which may be defined as ‘to make finer in quality as by supplying desirable elements or ingredients: to enrich bread; to enrich soil’ and ‘to enhance; make finer in flavour, colour, or significance’.
Ordinarily, use of a trade mark should be construed as being in relation to the product itself and does not, by extension, constitute independent use in relation to each ingredient in the product’s composition.[36] For instance, it has been held that use of a trade mark in relation to bread does not also constitute use in relation to the flour that was used to make that bread.[37] As such, the mere presence of flower oils as an ingredient of the Product is not sufficient to establish that the Trade Mark has been independently used in relation to same. Here, the label identifies the name of the Product as being an ‘extraordinary oil’. In the absence of further information, there is no compelling basis to read this as being a reference to an ‘essential oil’ as opposed to simply describing the general viscosity of the Product. I accept that ‘hair oils’ and ‘essential oils for personal use’ are unlikely to be mutually exclusive. That being so, the dated examples do not provide any additional product information and the Opponent’s Submissions are silent as to the Product’s composition of ingredients. To this end, the wording of the Act makes it plain that a non-use allegation will only be rebutted if use of the trade mark is demonstrated in relation to the registered goods.[38] Thus, even if the Product and ‘essential oils for personal use’ are goods of the same description, this would not assist the Opponent’s case. The onus lies with the Opponent to establish that relevant use occurred and no cogent submissions were advanced on this point. Therefore, I am not satisfied that the dated examples filed constitute use of the Trade Mark in relation to ‘essential oils for personal use’.
[36] See, eg, PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078 (Markovic J); Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 (Gleeson J).
[37] Re Spillers Ltd’s Application (1953) 70 RPC.
[38] McHattan v Australian Specialised Vehicle Systems Pty Ltd [1996] FCA 481 (Drummond J).
For the above reasons, the Opponent has not established that the Trade Mark was used in relation to the Challenged Goods during the Relevant Period.
Obstacles to use
The Opponent did not assert that there were any obstacles to the use of the Trade Mark during the Relevant Period.[39] For completeness, I confirm that there is nothing in the material before me to suggest that an obstacle prevented use of the Trade Mark in relation to the Challenged Goods during the Relevant Period.
[39] Act s 100(3)(c).
Accordingly, the Opponent has not rebutted the s 92(4)(b) ground for removal in respect of the Challenged Goods.
Registrar’s discretion
Pursuant to s 101 of the Act, the Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court made the following comments regarding the discretion under s 101(3) of the Act:
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[40]
[40] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
The Opponent advanced several reasons which it said favoured the discretion being exercised to maintain the registration of the Challenged Goods. The Opponent pointed out that during the Relevant Period the Trade Mark had been promoted in Australia and it had made significant annual retail sales from hair related goods bearing same. Reliance was also placed on the alleged reputation enjoyed by the Trade Mark in Australia which purportedly extends to ‘a very wide range hair products’.[41] In the Opponent’s view, this reputation in combination with the fact that the Challenged Goods are similar to the ‘hair related goods’ bearing the Trade Mark, supported the discretion being exercised favourably.
[41] Opponent’s Submissions, [111].
Conversely, the Applicant asserted that the Opponent had failed to establish that the discretion should be exercised. It drew attention to the EIS which shows that the Trade Mark has never been used in relation to the Challenged Goods and indicates that the Opponent has abandoned the Trade Mark in respect of the Challenged Goods. To the extent that the Trade Mark has any reputation, the Applicant submitted that it would be limited to products for hair care and styling.[42] Likewise, the Applicant emphasised that even if the Challenged Goods are similar to hair care products, this is but one factor that may be taken into account when deciding if the Trade Mark should be partially removed. The Applicant also reiterated its private commercial interests in the removal of the Challenged Goods given the Other Proceeding and opined that the Opponent would retain enforceable rights because the Registration would be partially preserved. In its view, these factors tended against exercising the discretion.
[42] Applicant’s Submissions, [80].
In my view, it is not reasonable to exercise the discretion to maintain the Registration in respect of the Challenged Goods. I accept that the Trade Mark has been used in Australia for various hair care products. The extent and continuity of use disclosed lends credence to the Opponent’s contention that the Trade Mark may enjoy some degree of reputation in Australia. However, this reputation would be confined to hair care and hair styling products given the Trade Mark has never been used in relation to the Challenged Goods. I also accept that similarities exist in the nature, purpose and trade channels between hair care products and goods such as toilet soaps, body deodorants and various cosmetics. The Opponent’s evidence of different traders providing such goods under a single brand illustrates this. Naturally, these circumstances support the Opponent’s position.
However, the abovementioned circumstances must be weighed against the fact that the Opponent has had ample opportunity to use the Trade Mark in relation to the Challenged Goods. It has not done so. Nor has the Opponent provided any evidence that it ever intends to do so. In this respect, the observations of Heerey J in Conquip Holdings Pty Ltd v S & A Restaurant Corp (‘Conquip’) are relevant:
There is moreover a powerful factor against the exercise of any discretion in favour of S & A. I refer to the very long period, some eighteen years, in which the marks have remained on the register. Such a long period of non-use is destructive of the purpose of trade mark registration.[43]
[43] [2000] FCA 256, [90] (emphasis added).
At the date the non-use application was filed, the Registration had been on the Register for some 23 years. This is a prolonged period of non-use which surpasses the period contemplated in Conquip. As Ms Chalvron succinctly opined, the Opponent is ‘the world's largest cosmetics company’[44] and the EIS confirms that it is a well-resourced entity. As such, the Opponent undoubtedly possessed the capacity to use the Trade Mark in relation to at least some of the Challenged Goods. Yet, despite well over two decades passing since the Trade Mark was registered, it has not done so. As such, the contention that the Opponent has abandoned the Trade Mark in respect of the Challenged Goods has some merit. Furthermore, whilst use of the Trade Mark on similar goods to the Challenged Goods is relevant, the mere existence of same is not determinative. It is clear from the language of the Act that s 101(4) simply identifies a factor which may be considered when deciding if the discretion should be exercised.[45] Here, the Opponent’s use of the Trade Mark and alleged reputation stemming from same does not outweigh the exceedingly prolonged period of non-use.
[44] Chalvron 1, [4].
[45] See, eg, Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [171]–[173] (Bennett J).
The public interest is not served by allowing the Trade Mark to remain registered for the Challenged Goods. There is no evidence of actual use of the Trade Mark in relation to the Challenged Goods nor is there any evidence of a future intention to do so. Removal of the Challenged Goods would therefore maintain the integrity of the Register whilst also serving the Applicant’s private commercial interests in the Other Proceeding. To this end, I am not persuaded that the removal of the Challenged Goods would have an impact on the Opponent’s private commercial interests. The Registration will remain on the Register in respect of the goods for which actual use has been demonstrated and the Opponent can continue to use the Trade Mark in a manner entirely consistent with its history of use to date.
Accordingly, it is not reasonable to exercise the discretion available under s 101(3) of the Act in favour of the Opponent to allow the Trade Mark to remain on the Register in respect of the Challenged Goods. As such, I decline to exercise the discretion.
Decision
The ground for removal under s 92(4)(b) of the Act has been established in respect of the Challenged Goods. As such, I direct that trade mark registration 746761 be partially removed from the Register. The partial removal is to be effected by amending the Registered Goods to:
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; dentifricesGiven this decision may be appealed, the partial removal shall not take place until at least one month from the date of this decision. In the event of an appeal, the partial removal of trade mark registration 746761 shall not occur until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.
Costs
Both parties have sought an award of costs. Costs usually follow the event. Here, the
non-use application sought complete removal. It was only after the completion of the evidence stages that the Applicant clarified that partial removal was sought. Consequently, each party has been partially successful and it is appropriate in this case that each party bears its own costs.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
26 May 2023
Annexure A
Trade Mark:
Registration no.: 1730428
Specification: Class 3: perfumes, toilet waters; bath and shower gels and salts for non-medical use; toilet soaps; body deodorants; cosmetics, particularly face, body and hand creams, milks, lotions, gels and powders; tanning and after-sun milks, gels and oils (cosmetics); make-up products; Facial scrubs and/or body scrubs; shampoos; gels, foams, balms and aerosol products for hair care and hair styling; hair sprays; hair dyes and bleaching products; hair waving and setting products; essential oils for personal use; cloth or clothing impregnated with essential oils
Trade Mark: ÈLIVE (‘Word Mark’)
Application no.: 2077385
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
0
11
0