Luxelabel Pty Ltd v Victoria Osborne

[2023] ATMO 198

TRADE MARKS ACT 1995

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

Re:Opposition by Luxelabel Pty Ltd to registration of trade mark application number 2130216 (classes 3 and 26) – LUXABELLE - in the name of Victoria Osborne

Delegate:	Anne Makrigiorgos
Representation:	Opponent: OpenLegal Pty Ltd Applicant: Legalvision ILP Pty Ltd
Decision:	2023 ATMO 198 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 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 Luxelabel Pty Ltd (‘Opponent’) to registration of the following trade mark:

   [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).

   Trade mark number:    2130216 (‘Application’)

   Trade mark:                LUXABELLE (‘Trade Mark’)

   Applicant:                   Victoria Osborne (‘Applicant’)

   Filing Date:                21 October 2020 (‘Relevant Date’)

   Specification:              Class 3: Adhesive tapes for affixing false hair; Adhesives for affixing false hair; Hair fixers; Hair products

   Class 26: False hair; False hairpieces; Hair clips; Hair extensions; Hair grips; Hair pins; Human hair; Human hairpieces; Synthetic hair; Synthetic hairpieces; Tresses of hair

   (‘Applicant’s Goods’).

2. The Trade Mark was examined and advertised as accepted for possible registration on 22 March 2021.

3. On 4 May 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 11 May 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 24 September 2021. The Applicant filed a Notice of Intention to Defend the opposition on 22 October 2021.

4. The Opponent filed Evidence in Support (‘EIS’) on 12 January 2022. The Applicant filed Evidence in Answer (‘EIA’) on 13 April 2022. The Opponent filed Evidence in Reply (‘EIR’) on 1 June 2022.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard on the basis of written submissions and filed written submissions, which I note are silent on the s 62A ground. The Applicant has not requested to be heard and has therefore not filed any written submissions. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written submissions of the Opponent.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 60 and 62A.

7. The Opponent carries the burden of establishing one or more of the remaining grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date, being both the filing date and the priority date of the Application.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Evidence

8. The following evidence was filed:

   Evidence in Support (‘EIS’)

   Declaration of Krystal Donaldson, Director and Company Secretary of the Opponent, made on 12 January 2022 with Exhibits 1 to 10 (‘Donaldson 1 Declaration’).

   Evidence in Answer (‘EIA’)

   Declaration of Victoria Osborne made on 13 April 2022 with Annexure VO-1 to VO 4, VO-6 and VO-7 and Confidential Annexure VO-5 (‘Osborne Declaration’).

   Evidence in Reply (‘EIR’)

   Second declaration of Krystal Donaldson made on 1 June 2022 with Exhibits 1 and 2 (‘Donaldson 2 Declaration’).

   EIS

9. Ms Donaldson asserts that the Applicant was incorporated in July 2018 and uses the names Luxelabel and Luxelabel Hair Extensions (collectively ‘Opponent’s Trade Marks’). She also asserts that she coined the trade mark LUXELABEL and started using the Opponent’s Trade Marks in August 2016 in respect of providing hair extensions, colour corrections and other hairdressing goods and services (‘Opponent’s Goods and Services’). She claims to have provided the Opponent’s Goods and Services to over 5000 clients, including returning clients. I note that there is no supporting evidence for this claim and in particular when and which of the Opponent’s Goods and Services were provided to any clients.

10. Ms Donaldson asserts continued use of the Opponent’s Trade Marks for at least 5 years for the Opponent’s Goods and Services. She claims that the Opponent’s Trade Marks have a substantial reputation in Australia among a significant portion of consumers, primarily through word of mouth.

11. For the most part, Ms Donaldson shows examples of use of the Opponent’s Trade Marks by providing details of online examples on Facebook® and Instagram® dated between August 2016 and April 2021 including on social media tags.

12. Ms Donaldson declares that the Opponent’s Goods and Services are promoted via a number of online means namely a website at and an online booking system at I note that other than providing these web site addresses, no examples of the content of the web site or the online booking system have been provided.

13. Ms Donaldson claims that details and pictures of the Opponent’s Goods and Services are accessible online including via Instagram® at “luxelabel_haironline” and “luxelabel.hair” and Facebook® at “ She provides printouts from the Facebook® and Instagram® accounts showing that the Facebook® account has 113,909 followers and the Instagram® accounts have 12,300 and 18,400 followers respectively. I note however that these printouts are not dated.

14. Ms Donaldson states that there is consumer confusion between the Trade Mark and the Opponent’s Trade Marks. To support this statement, she provides 4 examples of messages received via her social media platforms and emails, which she claims appear to have been intended for the Applicant. I note that only one of these messages is dated and it is after the Relevant Date. Ms Donaldson also claims to have received messages from consumers informing her that they had trouble differentiating the Luxelabel trade mark and the Trade Mark and provides one dated example which, I note, is largely truncated.

15. Ms Donaldson claims that she has invested substantially in merchandise in the form of hair care products, tape extension removal, hair serums, clip-in extensions, hair extension protectors and hair capes and marketing materials namely signage for the hairdressing salon and a photography shoot. While Ms Donaldson provides examples of the merchandise, she does not provide any information about the extent of sale or promotion of any of the merchandise to her clients. Further, in respect of the marketing materials, only one invoice for a reception sign is dated before the Relevant Date.

    EIA

16. Ms Osborne asserts that she operates under the business name Luxabelle Hair Extensions and has done so since 27 July 2020.

17. Ms Osborne details her creation and adoption of the Trade Mark which included her conducting searches of social media and the marketplace and claims she only became aware of the Opponent when the NIO was filed.

18. Ms Osborne then details her use of the Trade Mark on the web site luxabellehairextensions.com.au/ and social media accounts on Facebook® and Instagram®. She provides the Facebook® likes and followers and Instagram® followers numbers in 2022 being 78,000 Facebook® followers, 79,000 Facebook® likes and over 50,000 Instagram® followers.

19. Ms Osborne states that she promotes the Trade Mark through online sponsored advertisements, such as Google ads and social media reach on Facebook® and Instagram® and provides evidence of such promotion including her spend between 27 July 2020 to December 2021.

20. Ms Osborne provides her total advertising and marketing expenditure since her first use of the Trade Mark and her accrued revenue in gross sales for the financial year 2020/2021.

21. Ms Osborne then asserts that marketplace research she has conducted has located many similar businesses in Australia that use “LUXE” or “LUX” in relation to hair or fashion, some of which combine “LUXE” / “LUX” with “LABEL”. She provides examples of this research.

22. Ms Osborne asserts she has never experienced a single instance of confusion with the Opponent’s business.

    EIR

23. Ms Donaldson reiterates her claim that confusion exists in the marketplace.

24. Ms Donaldson counters the Applicant’s claim that she only became aware of the Opponent when the opposition was filed. She states that on 21 October 2020, she sent a message to the Applicant from the Luxelabel Instagram® account suggesting a name change. She provides evidence of this message at Exhibit 1. Ms Donaldson claims that it was clear that she was referring to the similarity in the names of the Applicant and Opponent’s businesses. Ms Donaldson also provides copies of subsequent messages between the Opponent (stating concerns regarding confusion) and the Applicant (responding to those concerns by stating that there is no confusion) on December 2020. The Applicant’s message refers to having to change her trading name previously ‘due to a trade mark issue’ and as a consequence the Applicant ‘made sure to undertake a thorough search of all registered trade marks,’ before choosing LUXABELLE. Reference is also made to a more general search by the Applicant which showed that there were actually hundreds of companies with some variation of LUX or LUXE in their name.

    Preliminary Matter

25. Prior to considering the substantive issues under ss 60 and 62A, a procedural matter needs to be addressed. The Opponent has sought to include in their written submissions late evidence in the form of a Supplementary Declaration of Krystal Donaldson dated 20 September 2023 with Exhibits 1 to 5 (‘Supplementary Declaration’).

26. Ms Donaldson states in the Supplementary Declaration that she is filing additional evidence at this stage because:

    • she has recently engaged a barrister who advised her solicitors that this additional evidence may assist in having a holistic view of all relevant facts to fairly assess the outcome of this dispute.
    • filing this additional evidence will not cause any prejudice to the Applicant since this additional evidence comprises indisputable internal company documents, invoices from third parties and social media posts.
    • the solicitor who had carriage of the opposition is no longer working at the firm retained in this matter (as of July 2022).
    • there has been difficulty in obtaining records from her accountant, bookkeeper and other external consultants that has added to the delay in filing the evidence.

27. The Supplementary Declaration provides an ASIC extract of the Opponent, screenshots of “Luxelabel Hair” Instagram® and Facebook® posts prior to 20 October 2020 including screenshots of the number of followers of these accounts (which I note are not dissimilar from those in the EIS), non redacted expenditure for signage (which has already been provided in the EIS in redacted form), 8 Shopify reviews dated from 23 August 2018 to 25 October 2018, some unsupported claims that a significant volume of sales have been transacted under the Luxelabel Mark prior to 12 October 2020, and unsupported claims that Ms Donaldson has spent considerable time, energy and money marketing the Luxelabel Mark and advertising and promoting the Opponent.

28. It is for the Opponent to establish each ground of the opposition. The Opponent raised the s 60 ground of opposition so it should not have been any surprise that the Opponent would need to prove a reputation in at least one of the Opponent’s Trade Marks. The material in the Supplementary Declaration would do little to establish that reputation, particularly since it does not (nor does the EIS or EIR) offer up anything concrete in terms of historical sales in relation to goods or services in relation to any of the Opponent’s Trade Marks. My discussion of the s 60 ground of opposition below explains why this type of information would have been crucial to demonstrating a reputation in any of the Opponent’s Trade Marks. This is determinative of the issue. There is no purpose exploring any further what weight might in all the circumstances be attached to any of the material introduced by the Supplementary Declaration, when all of it together could not materially affect the outcome of these proceedings. As such it is not necessary for me to consider in detail any of the other factors that can be weighed when deciding these issues (such as the length of the delay, the reasons offered for that delay, prejudice and the public interest).

    Discussion and Reasons

    Section 60

29. 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.

30. The word ‘reputation’ in s 60 refers to recognition in the relevant market. Reputation is commonly established by reference to sales and advertising figures, and other promotions. It is also possible to show that a reputation existed by offering direct evidence of consumer appreciation of the mark.[4] The reputation must have been acquired in a trade mark and exist in Australia as at the Relevant Date, namely 21 October 2020.

    [4] McCormick & Co Inc v McCormick [2000] FCA 1335 [86] (Kenny J).

31. The level of reputation required is that a ‘significant’ or ‘substantial’ number of consumers within the relevant trade/market must be aware of the trade mark.[5] The assessment of what is ‘significant’ or ‘substantial’ must be properly and sensibly applied[6] and may depend on the specialised nature of the relevant market.[7]

    [5] Renaud Cointreau & Cie v Cordon Bleu International LTEE [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

    [6] “Bali” Trade Mark [1969] RPC 472, 496 (Lord Upjohn).

    [7] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [20] (Heerey J).

32. The SGP relevantly provides that LUXELABEL was first used by the Opponent in 2016 for the marketing and provision of hair services which includes hair extensions. As a result, according to the Opponent, LUXELABEL has now become a reputable hairdressing business that specialises in hair extensions and colour corrections and is well known within the industry.

33. The Opponent claims to have a substantial reputation in the trade mark LUXELABEL in Australia among a significant portion of consumers, primarily through word of mouth. Further the Opponent claims in the Donaldson 1 Declaration and the written submissions that the Opponent has returning clients. There is no corroborating evidence to support these claims.

34. The majority of evidence provided to support the Opponent’s claim that it has a reputation in the trade mark LUXELABEL is a selection of likes and posts from the Opponent’s social media accounts. Taken at its absolute highest, this might arguably be direct evidence of appreciation of one or more of the Opponent’s Trade Marks by some consumers, but there is no evidence as to whether the numbers of likes are significant in the hairdressing industry. Therefore I cannot judge whether the numbers are or are not significant and as a result, am not satisfied that the number of the Opponent’s Facebook® and Instagram® followers, and ‘likes’ received, is significant.

35. There is also no evidence of revenue for the Opponent’s Goods and Services nor is there sufficient evidence of advertising and promotional spend before the Relevant Date.

36. In light of the evidence filed, I am not satisfied that it accomplishes the task of establishing that the trade mark LUXELABEL had acquired a reputation in a trade mark in Australia before that Relevant Date to enliven s 60. In the circumstances it is unnecessary to consider s 60(b).

37. Therefore, on the balance of probabilities, s 60 of the Act has not been established.

    Section 62A

38. 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.

39. For this ground of opposition, I am required to decide what the Applicant knew at the time of making the Application and then, in the light of that knowledge, whether the act of filing this Application fell short of acceptable commercial behaviour.[8]

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

40. As mentioned earlier, the Opponent has elected not to make submissions in relation to this ground of opposition, but the SGP alleges the following:

    As the [Applicant] has used a similar company name and provided similar/same services to the Opponent, this can be deemed as an act of unfair competition. This demonstrates that the [Application] was made in bad faith as [the Applicant] attempted to apply for the [Trade Mark] to continue to maintain the confusion amongst the industry and the common group of consumers. Furthermore, it has been found that this company has acted in a similar fashion with another business prior to setting themselves up under this new name. The [Applicant] has previously represented itself in bad faith by previously using a similar name of a competitor [Catwalk Hair Extensions] until they were told to cease and desist using this name.

41. The Applicant’s evidence is that she chose the Trade Mark in July 2020 to represent luxury and beauty.[9] The Applicant claims that she conducted searches of social media and the marketplace to confirm that she was not adopting a brand that another business had already established.

    [9] Osborne Declaration, [6].

42. There is very little in the Opponent’s evidence that might support an argument that the Applicant filed the Application in bad faith. There is a screenshot showing that the Opponent contacted the Applicant on the Relevant Date, with the message ‘hi, i would suggest a name change.’ There is no evidence as to whether the Application was filed before or after that message. If the Application was filed before the message, the Applicant would almost certainly have been oblivious to the issue yet to be raised by the Opponent. Even if the Application was filed after the message, the evidence filed by both parties makes clear that the Applicant considers the Trade Mark to be sufficiently different to the Opponent’s Trade Marks such that no confusion is likely. The Applicant knowing that another person had challenged the validity of the Applicant’s use of the Trade Mark, filing the Application in that context appears prudent. At any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.’[10]

    [10] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

43. Similarly, the Opponent’s evidence that the Applicant had previously chosen a name that was too near a competitor does not amount to something nefarious in filing the Application. Rather, it supports a view that the Applicant, having chosen a name that was similar to a competitor in the past, learned from that wasteful experience and took steps to try to avoid it happening again.[11]

    [11] Donaldson 2 Declaration, Exhibit 2.

44. 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 ground of opposition under s 62A is not successful.

    Decision

45. 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.

1. The Opponent has failed to establish either of the grounds of opposition it nominated in the SGP. Trade mark application number 2130216 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

2. 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 section 221 in the relevant amounts under Schedule 8 of the Regulations.

   Anne Makrigiorgos
   Hearing Officer
   Delegate of the Registrar of Trade Marks

   30 November 2023