Mae Watson

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mae Watson to application under section 92 of the Trade Marks Act 1995 (Cth) by Whiplash’d Pty Ltd to remove trade mark number 2007748 (class 44) - Whiplash - in the name of Mae Watson

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: IP Wealth Pty Ltd

Decision:

2024 ATMO 168

Trade Marks Act 1995 (Cth) – section 96 opposition – s 92(4)(b) application for complete removal excluding Western Australia – use established – s 102 not invoked - trade mark not to be removed

Background

On 18 May 2023, Whiplash’d Pty Ltd (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for removal of the following registered trade mark in the name of Mae Watson (‘Opponent’) for all the services outside of the State of Western Australia:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Registration Number

Trade Mark

Services

Filing Date

2007748

Whiplash

(‘Trade Mark’)

Beauty salons; Beauty salon services; Beauty salons

(‘Registered Services’)

7 May 2019

The Opponent filed a Notice of Intention to Oppose removal of the Trade Mark on 27 July 2023 and a Statement of Grounds and Particulars (‘SGP’) on 22 August 2023. The Applicant filed a Notice of Intention to Defend on 26 September 2023.
The Opponent filed Evidence in Support (‘EIS’) on 21 December 2023. The Applicant did not file Evidence in Answer.
Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.
Evidence
The following EIS was filed:
·Declaration of Mae Usa Watson dated 21 December 2023 with Annexures MW-01 to MW-14 (‘Watson’).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92(4)(b) 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)…
(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.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Note 3:For when the registration of a trade mark is taken to have effect, see sections 72 and 239A.
I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the Trade Mark[2] and I confirm that five years since filing the Trade Mark has in fact passed.
[2] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
Under s 92(4)(b), the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 18 April 2023 (‘Relevant Period’).
The Opponent bears the onus of rebutting an allegation of non-use[3] by establishing, on the balance of probabilities,[4] that it has used the Trade Mark (or the trade mark with additions or alterations not substantially affecting its identity) in good faith in respect of any or all services identified in the Removal Application in the Relevant Period or that there were circumstances that were an obstacle to use in the Relevant Period.[5]
[3] s 100(1)(c).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.
[5] s 100(3)(c).
In Blount Inc v Registrar of Trade Marks, Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[6]
[6] [1998] FCA 440 (citation omitted).
It follows that unless the Opponent evidences convincing proof of use of the Trade Mark during the Relevant Period in relation to the Registered Services to the satisfaction of the Registrar, the opposition to removal will not be established.
In Woolly Bull Enterprises Pty Ltd v Reynolds,[7] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[8] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[9] Little weight is to be given to assertions of use which are not supported by documentary evidence[10] and the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[11]
[7] [2001] FCA 261, [16].
[8] Ibid [17].
[9] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).
[10] Great White Shark Enterprises Inc v Joosse Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).
[11] Nodoz (n 9); Re Trina Trade Mark [1977] RPC 131.
Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.
The ‘use’ in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of a sign as a badge of origin.[12]
[12] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
If a removal applicant seeks a territorial restriction, the removal applicant must rely on s 102. Section 102 provides the Registrar with a discretion to impose a territorial restriction on the registration of a trade mark where there has been no use of the trade mark in a particular place in Australia for the three-year period specified by s 92(4)(b) where certain conditions are met, namely:
·a non-use application under s 92(4)(b) has been made; and
·the non-use applicant has a registration in its name or a trade mark that may properly be registered in its name, in respect of a substantially identical or deceptively similar mark to the challenged mark, in respect of goods and/or services the subject of the non-use application, and subject to a limitation or condition that the use of the trade mark be restricted to goods and/or services to be dealt with or provided in a specified place in Australia.
Section 102 provides:
Determination of opposed application—localised use of trade mark
(1)This section applies if an application for the removal of a trade mark (challenged trade mark) from the Register is made on the ground referred to in paragraph 92(4)(b) and:
(a)the applicant is the registered owner of a trade mark that is substantially identical with, or deceptively similar to, the challenged trade mark and is registered in respect of the goods and/or services specified in the application subject to the condition or limitation that the use of the trade mark is to be restricted to:
(i)goods and/or services to be dealt with or provided in a particular place (specified place) in Australia (otherwise than for export from Australia); or
(ii)goods and/or services to be exported to a particular market (specified market); or
(b)the Registrar or the court is of the opinion that such a trade mark may properly be registered in the name of the applicant with that condition or limitation.
Note 1:For registered owner see section 6.
Note 2:For deceptively similar see section 10.
(2)If the Registrar or the court is satisfied:
(a)that the challenged trade mark has remained registered for the period referred to in paragraph 92(4)(b); and
(b)that during that period there has been no use, or no use in good faith, of the challenged trade mark in relation to:
(i)goods or services dealt with or provided in the specified place; or
(ii)goods or services to be exported to the specified market;
the Registrar may decide, or the court may order, that the challenged trade mark should not be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar or the court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to:
(c)goods or services dealt with or provided in the specified place; or
(d)goods or services to be exported to the specified market.
Note: For limitations see section 6.
The definition of limitations in s 6 states:
limitations means limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:
(a)mode of use; or
(b)use within a territorial area within Australia; or
(c)use in relation to goods or services to be exported.
Finally, if relevant use cannot be shown for some or any of the Registered Services, s 101 provides the Registrar with the discretion to remove a Trade Mark from the Register in respect of any, or all, of the goods and services for which it is registered.
Summary of EIS
Watson states that in 2015 the Opponent started providing eyelash extension services in Perth under the Trade Mark from a home salon and in July 2020, the Opponent opened a beauty salon in Como, Perth. Watson annexes a copy of a post from the Whiplash Perth Facebook® page at (‘Whiplash Facebook’) dated 18 July 2020 referring to the salon opening where I note the following appears on the internal wall of the salon:
Watson claims the Opponent provides beauty salon services and beauty products under the Trade Mark including eyelash extensions, lash lifts, brow tinting, cosmetic tattooing, training courses and related products and that these services and products have been consistently provided in Australia since the date of registration of the Trade Mark including on the Opponent’s website at (‘Opponent’s Website’). No printout from the website is provided.
Watson annexes documents and printouts regarding advertisements on Whiplash Facebook dated 5 October, likely to be from 2023, given the dates on the ad preview below:
Watson provides follower numbers for Whiplash Facebook and follower and post numbers for the Whiplash Perth Instagram® page at (‘Whiplash Instagram’), with the first post claimed to be on 9 February 2016. No dates are provided for these numbers.
Watson provides copies of invoices to customers in states other than Western Australia dated between 13 November 2020 and 1 July 2021 for a product called ‘The Whip Lens’, a camera lens which can be fitted onto a smart phone, and an invoice to a customer in Tasmania dated 11 May 2023 for eyelash extensions. I note the references to the Trade Mark at the base of the invoices. A snip of The Whip Lens packaging from November 2020 appears below:
Watson states that while the majority of the beauty services are provided in Western Australia, the Opponent offers and has provided mobile beauty services across Australia. Watson annexes details of records of bookings for services to be provided in Victoria and New South Wales including lash extensions, facials, teeth whitening and ombre brow tattoo, which are all dated after the Relevant Period.
Watson states that since registration of the Trade Mark, the Opponent intended to expand the Registered Services beyond Western Australia taking proactive steps, including establishing connections with lash artists in Melbourne and Sydney and advertising in wider markets. Watson annexes undated social media extracts and an advertising preview for a Melbourne event dated after the Relevant Period.
Watson annexes a copy of a letter dated 1 October 2023 from Sera Love, the owner of Eyelash Extension Technicians Australia forum confirming the ‘Australia wide status of the brand Whiplash’ and referring to the Opponent being part of her industry forum for over 5 years. The letter also states that Whiplash is a ‘well-known brand/salon and educator’.
Watson provides evidence in respect of another business in Perth which is claimed to have been in operation since May 2020 by the Opponent under the trade mark Whiplashed (‘Whiplashed Mark’), providing advisory services for eyelash extensions, education and training services and beauty salon treatments and services.
Watson claims to have provided various beauty treatments including fat cavitation, skin tightening treatment, teeth whitening, makeup and eyelash extensions under the Whiplashed Mark in Australia since 10 June 2020 and annexes a creation information page from the Whiplashed Facebook® site at (‘Whiplashed Facebook’) showing it was created on 10 June 2020.
Watson provides follower and posts numbers for the Whiplashed Instagram® page at (‘Whiplashed Instagram’), created in May 2020. Watson annexes Whiplashed Instagram posts dated May 2020 referring to teeth whitening services and posts from a random selection of potential customers asking for information about fat cavitation and teeth whitening services dated between May and November 2020.
Discussion and Reasons
Use During the Relevant Period
The SGP in essence states that the Opponent has used the Trade Mark in all states of Australia, predominately in Perth, in connection with lash extension services and training services before, after and throughout the Relevant Period and that from 2020 to 2021, the COVID-19 pandemic was an impediment to the broader use of the Trade Mark.
The Removal Application states:
Part 4 TYPE OF REMOVAL
 ONLY the following goods/services for which the trade mark is registered/protected:
Class 44: beauty salons; Beauty salon services; Beauty salons
For all services outside of the State of Western Australia
For clarification purposes (Please indicate the goods/services for which the trade mark will remain registered):
Class 44: beauty salons; Beauty salon services; Beauty salons
ENDORSEMENT: Registration is limited to the State of Western Australia.
There is no provision in s 92 for the Removal Application to be qualified in the manner sought by the Applicant. Section 92(4) requires that a removal applicant seek removal for all of any of the goods and/or services in respect of which the trade mark may be, or is, registered in Australia and not part of Australia. While the Applicant has claimed removal for all the Registered Services, the claim to removal is for part of Australia.
The Applicant has however filed a removal application so for present purposes, I will consider the filing of the Removal Application as covering all of Australia.
I consider that Watson evidences use of the Trade Mark in respect of beauty salon services in the Relevant Period such that I am satisfied that the Opponent has provided the Registered Services under and by reference to the Trade Mark in good faith during the Relevant Period in at least Western Australia. Given I am satisfied that there has been use in Western Australia, it is unnecessary for me to consider whether the Trade Mark has been used by the Opponent outside of Western Australia.
Further, under s 100(2)(a), an opponent can rebut the allegation of non-use by establishing use of the mark with additions or alterations not substantially affecting its identity. I am satisfied that the Opponent has evidenced use of the Whiplashed Mark in the Relevant Period for teeth whitening, fat cavitation and eyelash extension services at least in Western Australia. I consider these services to be beauty salon services.
Whether the Whiplashed Mark is use of the Trade Mark with additions or alterations not substantially affecting its identity requires a finding that a total impression of similarity emerges from a comparison between the two marks.[13]
[13] TheShell Company of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 414 (Windeyer J).
In Optical 88 Ltd v Optical 88 Pty Ltd (No 2),[14] Yates J treated the expression ‘with additions or alterations that do not substantially affect the identity of the trade mark’ under s 7(1) as being the same in essence as the test for substantial identity.
[14] [2010] FCA 1380.
I consider that the difference between Whiplashed and Whiplash is not a difference that affects what is conveyed in the marks in terms of distinctiveness. There is clearly a total impression of similarity when comparing the marks side by side. I am therefore satisfied that by using the Whiplashed Mark, the Opponent has used the Trade Mark with additions or alterations not substantially affecting its identity and the Opponent can thus additionally rely on this use to rebut the allegation of non-use.
Section 102
It is clear that the Applicant is not seeking that the Trade Mark be removed entirely for all the Registered Services in Australia. Rather the Applicant seeks a geographical restriction of the Trade Mark to Western Australia. The Applicant however has not requested the Registrar to invoke the provisions of s 102. The only document filed by the Applicant in this matter is the Removal Application which makes no reference to s 102.
Even if the Applicant had positively invoked the provisions of s 102, while the first ground under s 102 would be satisfied, namely the Removal Application was made on the ground referred to in paragraph 92(4)(b), the Applicant fails to satisfy the second ground, that the Applicant is the registered owner of a trade mark to which s 102(1)(a) applies or a trade mark may properly be registered in the Applicant’s name to which s 102(1)(b) applies.
The Applicant has not provided any evidence that the Applicant is the registered owner of any trade mark nor any evidence that it has an unregistered trade mark that may properly be registered in its name, or a pending trade mark application in its name, let alone one of these that is in respect of a substantially identical or deceptively similar mark and/or in respect of services the subject of the Removal Application and/or is subject to a limitation or condition that the use of the trade mark be restricted to goods and/or services to be dealt with or provided in a specified place in Australia.

In conclusion, s 102 is not in my view triggered at all in the present case.
Decision
Section 101 of the Act relevantly provides:
Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
I am satisfied that the Opponent used the Trade Mark in good faith in Australia during the Relevant Period for the Registered Services. Registration 2007748 may accordingly remain on the Register unamended.
Costs
The Opponent sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
10 September 2024

[2024] ATMO 168

10 September 2024

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Statutory Construction

Costs

Remedies