Mae Watson v Whipl=?Iso-8859-1?Q?ash=92d_Pty_Ltd_?=

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 2094673 (class 44) - WHIPLASHED - in the name of Mae Watson

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self represented

Applicant: IP Wealth Pty Ltd

Decision:

2024 ATMO 169

Trade Marks Act 1995 (Cth) – section 96 opposition – s 92(4)(a) application for complete removal – intention to use and use established – trade mark not to be removed

Background

On 13 June 2023, Whiplash’d Pty Ltd (‘Applicant’) filed an application under s 92(4)(a) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for complete removal of the following registered trade mark in the name of Mae Watson (‘Opponent’):
[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

2094673

WHIPLASHED

(‘Trade Mark’)

Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultancy; Beauty consultation; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hygienic and beauty care for human beings; Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings or animals; Teeth whitening services

(‘Registered Services’)

10 June 2020

(‘Filing Date’)

The Opponent filed a Notice of Intention to Oppose removal of the Trade Mark on 16 August 2023 and a Statement of Grounds and Particulars (‘SGP’) on 26 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 filed Evidence in Answer (‘EIA’) on 4 April 2024. The Opponent filed Evidence in Reply (‘EIR’) on 13 May 2024.
Once time for filing evidence had ended, both parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I have decided this matter based on the particulars set out in the SGP and the evidence of the parties.
Evidence
The following evidence was filed:
EIS
Declaration of Mae Usa Watson dated 21 December 2023 with Annexures MW-1 to MW-14 (‘Watson’).
EIA
Declaration of Bianca Polinelli, director and secretary of the Applicant, dated 4 April 2024 with Exhibits BP-1 to BP-5 (‘Polinelli’).
EIR
Second Declaration of Mae Usa Watson dated 13 May 2024 with Annexures MW2-1 to MW2-10 (‘Watson 2’)
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)(a) relevantly provides (notes omitted):
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) ...
In the case of an allegation of non-use under s 92(4)(a), s 100(1)(a) provides that the Opponent bears the onus of rebutting any allegation on the balance of probabilities[2] that, on the Filing Date, the Opponent had no intention to use, authorise the use of or assign to a body corporate, the Trade Mark in relation to the Registered Services. Alternatively, the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Opponent, in good faith, in relation to the Registered Services, at any time in the period ending one month prior to the day on which the Removal Application was filed. As the Removal Application was filed on 13 June 2023, this date is prior to 13 May 2023 (‘Relevant Period’).
[2] 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.
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.[3]
[3] [1998] FCA 440 (citation omitted).
If the Opponent establishes either the requisite intention to use the Trade Mark at the Filing Date or relevant use of the Trade Mark in the Relevant Period, the opposition to removal will succeed.
The intention to use the Trade Mark in good faith and/or the actual use of the Trade Mark 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.[4]
[4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
Use in the course of trade means an actual dealing in the services, an offer to provide the services, or an intention to provide the services manifested through preparatory steps showing an objective commitment to use the trade mark.[5]
[5] Christou v Tonch [2008] ATMO 24; see also Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.
In Woolly Bull Enterprises Pty Ltd v Reynolds,[6] 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,[7] 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’.[8] Little weight is to be given to assertions of use which are not supported by documentary evidence[9] and the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[10]
[6] [2001] FCA 261, [16].
[7] Ibid [17].
[8] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J) (‘Nodoz’).
[9] 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).
[10] Nodoz (n 8); 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.
Further, I also have a general discretion under s 101(3) to allow the Trade Mark to remain registered even if the Opponent does not establish either the requisite intention to use or relevant use of the Trade Mark.
Summary of EIS
Watson states that since May 2020, the Opponent has operated a business under the Trade Mark providing advisory services for eyelash extensions, education and training services and beauty salon treatments and services in Perth.
Watson claims to have provided various beauty treatments including fat cavitation, skin tightening treatment, teeth whitening, makeup and eyelash extensions under the Trade Mark in Australia since 10 June 2020. Watson 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.
Watson states that since registration of the Trade Mark, the Opponent intended to expand the Whiplashed branded business more nationally and provides undated audience location statistics for Whiplashed Instagram.
Watson provides evidence in respect of another business in Perth providing eyelash extension services under the Whiplash trade mark (‘Whiplash Mark’) from a home salon in 2015 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 Whiplash 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 7 May 2019 including on the Opponent’s web site at No printout from the website is provided.
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 Whiplash Mark at the base of the invoices. A snip of The Whip Lens packaging from November 2020 appears below:
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 details the impact that the Covid-19 pandemic had on the Opponent’s national expansion plans for the businesses under both the Trade Mark and the Whiplash Mark.
Watson claims that the Opponent’s ongoing use of both the Trade Mark and the Whiplash Mark in Australia evidences there has always been a good faith intention to use these trade marks in Australia.
Summary of EIA
Polinelli comments on the EIS and claims the Opponent’s teeth whitening services are not provided under Trade Mark but are provided under the Puresmile trade mark, exhibiting screenshots from Whiplashed Facebook dated June 2020 which refer to PureSmile Cosmetic Teeth Whitening. I note that the screenshots state ‘our experienced Puresmile teeth whitening technicians’. I also note the reference to PureSmile appears to be a reference to a teeth whitening product used to cosmetically whiten teeth as follows:
Polinelli refers to the Opponent’s screenshots from Whiplashed Instagram and claims that the username has been changed three times. Polinelli exhibits undated screenshots from Whiplashed Instagram which states ‘whiplashed.aus has changed their username 3 times’.
Polinelli claims the Opponent has been providing teeth whitening services under the Whiplash Mark exhibiting Wayback Machine[11] screenshots from the Opponent’s website at dated 5 November 2022, a Whiplash Facebook post dated 19 June 2020 showing a photo with the tag and a Whiplashed Instagram post dated around 27 March 2022 as follows .
[11] >
Polinelli refers to an additional website of the Opponent at created on 23 June 2023 and exhibits a Wayback Machine screenshot of this website showing the earliest recorded activity around July 2023.
The remainder of Polinelli provides comments and opinions on the EIS which I need not summarise as they have no probative value concerning the grounds of opposition and therefore have no bearing on my decision.
Summary of EIR
Watson 2 states that Puresmile supplies the Whiplash business with various teeth whitening products including teeth whitening kits used to provide teeth whitening treatment and claims the teeth whitening services are provided by technicians under the Trade Mark and not by PureSmile technicians. Watson 2 annexes an undated photograph of a teeth whitening kit branded with the Puresmile trade mark together with a Whiplashed Facebook photograph dated 20 June 2020 of an employee conducting teeth whitening services using Puresmile branded equipment.
Watson 2 claims that the text ‘with one of our experienced PureSmile teeth whitening technicians’ on Whiplashed Facebook and the Opponent’s website referred to in Polinelli[12] is a reference to the fact that Whiplashed’s technicians are experienced with using PureSmile’s teeth whitening products. Watson 2 states there is no subcontractor, agency or employment relationship with Puresmile.
[12] Polinelli [13] and [18] Exhibit BP-01 and BP-03.
Watson 2 annexes screenshots of Whiplashed Instagram messages sent or received during the period 10 June 2020 to 13 May 2023. I note that all but two refer to teeth whitening. The other two refer to eyelash services dated 31 October 2021 and 2 March 2023.
Watson 2 claims that services have been advertised and promoted on Whiplashed Instagram since 23 May 2020 and annexes copies of posts dated between 23 May 2020 and 6 May 2023 and stories dated between May and June 2020.
Watson 2 states that the Opponent has also used the Trade Mark on Whiplashed Facebook from as early as 19 June 2020 and annexes copies of posts dated between 10 June 2020 and 3 May 2023.
Watson 2 states that the prior names of Whiplashed Instagram were whiplashed_australia and whiplashed_salon and annexes the Instagram® account username history page.
Watson 2 states that services offered under the Trade Mark complement those provided under the Whiplash Mark and the Opponent utilised the Whiplash website to market and promote services under the Trade Mark to obtain a broader audience reach. Watson 2 also claims that the Opponent used Whiplash Instagram to promote services under the Trade Mark.
Watson 2 claims that the Opponent has a clear intention to use and has actually used the Trade Mark in good faith, during the period 10 June 2020 and 13 May 2023.
Discussion and Reasons
The SGP in essence states that the Opponent has used the Trade Mark in all states of Australia, predominately in Perth, in connection with teeth whitening and eyelash services through a beauty salon in 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 burden on the Opponent of establishing that it had the requisite intention to use the Trade Mark at the Filing Date is not high. The filing of the Trade Mark is prima facie evidence of its intention to use the Trade Mark in respect of all of the Registered Services claimed.[13] Once the Opponent has satisfied the initial onus, the onus then shifts to the Applicant to establish the Opponent’s lack of intention.[14]
[13] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J) (‘Aston’); Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[14] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [118] (Burley J).
In Secondment Pty Ltd v MCI Group Holdings SA,[15] the Hearing Officer Wilson observed:
The act of applying for a trade mark is prima facie evidence of an intention to use it, or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Ltd: “[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark.
[15] [2013] ATMO 71, [9] (citations omitted).
In Structureco Inc v Starite Distributors Pty Ltd[16], Hearing Officer Forno said:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case — perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.
[16] [2000] ATMO 31.
Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst to state:
I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.[17]
[17] [2003] FCA 816, [59].
The SGP and the Opponent’s evidence contain statements which satisfy the burden on the Opponent to show it had an intention to use the Trade Mark at the Filing Date, namely:
·SGP – ‘On 10/06/20,[18] I registered ‘Whiplashed’ as a Trademark further solidifying my commitment to its use’.
·SGP – ‘I have proactively taken steps to expand my services beyond Western Australia … demonstrating my intention to provide services under the ‘Whiplashed’ brand throughout Australia’.
·SGP – ‘I respectfully urge the Registrar to acknowledge the genuine and sustained use and intended use of the trademark ‘Whiplashed’…’.
·Watson 2 – ‘…I have a clear intention to use and/or actually used the trade mark in good faith, during the period 10 June 2020 and 13 May 2023.
[18] Filing Date.
The Opponent has provided a number of statements regarding the Opponent’s intention to use the Trade Mark in good faith at the Filing Date. While these statements do not refer specifically to the Registered Services, taken together, with the onus as such, I am satisfied that they indicate the Opponent’s intention to use the Trade Mark in respect of the Registered Services and the onus shifts to the Applicant.
The Applicant has filed Polinelli in answer to the Opponent’s evidence use of the Trade Mark in Watson, however the Applicant has not responded to or referred to the Opponent’s evidence that the Opponent’s intention to use has been manufactured or is anything other than a genuine intention to use the Trade Mark. Therefore, the Applicant has cast no doubt on the Opponent’s intention to use the Trade Mark at the Filing Date.

Moreover, I am satisfied both that:
·the Opponent has provided evidence of use of the Trade Mark in the Relevant Period for a portion of the Registered Services namely teeth whitening, fat cavitation and eyelash extension services, all of which I consider to be types of beauty services.
·the Opponent has also provided evidence of use of the Whiplash Mark in the Relevant Period in respect of beauty salon services, which is use of the Trade Mark with additions or alterations not substantially affecting its identity.
Under s 100(2)(a), an opponent can rebut an allegation of non-use by establishing use of the mark with additions or alterations not substantially affecting its identity. Whether Whiplash 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.[19]
[19] 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),[20] 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.
[20] [2010] FCA 1380.
I consider that the difference between Whiplash and Whiplashed 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 Whiplash 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.
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.
As the Opponent has established its intention to use on the Filing Date and use of the Trade Mark during the Relevant Period, the Opponent has also established its opposition to the removal of the Trade Mark from the Register. Registration 2094673 may accordingly remain on the Register.
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 169

10 September 2024