Marq Group Holdings B.V. v Sam O'Brien
[2025] ATMO 136
•11 July 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Marq Group Holdings B.V. to registration of trade mark application number 2331847 (classes 3, 7 and 35) - B.TAN (word) - in the name of Sam O’Brien
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick Applicant: Alize Shaffer of IP Partnership Lawyers Pty Ltd |
Decision: | 2025 ATMO 136 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62(b) and 62A pressed – deceptively similar trade mark in respect of similar goods – s 44(4) not applicable – s 44 ground established for all goods – no other grounds established for any services – amendment to specification – trade mark may proceed to registration. |
Background
On 2 February 2023 (‘Relevant Date’) Sam O’Brien (‘Applicant’) filed an application to register trade mark 2331847 under the Trade Marks Act 1995 (Cth),[1] details of which I extract below:
Priority date: 2 February 2023
Trade mark: B.TAN (‘Trade Mark’)
Specification: Classes 3, 7 and 35. See Schedule 1 to these written reasons (‘Applicant’s Goods and Services’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Trade Mark was examined under s 31 and acceptance was advertised on 4 August 2023.
On 2 October 2023, Marq Group Holdings B.V. (‘Opponent’) filed its Notice of Intention to Oppose registration of the Trade Mark and on 2 November 2023, the Opponent’s Statement of Grounds and Particulars (‘SGP’) followed. On 1 December 2023 the Applicant filed its Notice of Intention to Defend.
On 4 March 2024 the Opponent filed its Evidence in Support (‘EIS’) consisting of the following declarations:
declaration of William David Henard IV, Chief Financial Officer of the Marq Labs group of companies, dated 3 March 2024, with Annexures WDH-1 to WDH-21, including Confidential Annexures WDH-15 to 20 (‘Henard’); and
declaration by Cliff Smith, Creative Director of the Marq Labs group of companies, dated 3 March 2024 (‘Smith’).
On 11 June 2024, the Applicant filed Evidence in Answer (‘EIA’) consisting of the following ten documents:
statutory declaration of Alicia Kyrgios, dated 7 June 2024, with Annexures A and B (‘A-Kyrgios’);
statutory declaration of Blair McMahon, dated 6 June 2024, with Annexures A to J (‘McMahon’);
statutory declaration of Christos Kyrgios, dated 7 June 2024, with Annexures A and B (‘C-Kyrgios’);
statutory declaration by Helene Sheehan, dated 3 May 2024 (‘Sheehan’);
statutory declaration of Liam O’Brien, dated 9 May 2024, with Annexure A (‘O’Brien-2’);
statutory declaration of Lisa Feleppa, dated 18 April 2024, with Annexure A (‘Feleppa’);
statutory declaration of Paul Bannister, dated 4 June 2024, with Annexures A to C (‘Bannister’);
statutory declaration of Matthew Kearton, dated 3 May 2024 (‘Kearton’);
letter of Sharon Sewell, Owner of Varsity Graphics, dated 21 July 2022 (‘Sewell’); and
letter of Rhys Martin, Creative Director of Varsity Graphics, dated 15 April 2024 (‘Martin’).
The Opponent did not file Evidence in Reply.
The parties requested to be heard. On 19 February 2025, the Opponent filed its written outline of submissions. On 26 February 2025, the Applicant filed its written outline of submissions. I heard the matter by teleconference on 5 March 2025. Malcolm Bell of Phillips Ormonde Fitzpatrick appeared on behalf of the Opponent. Alize Shaffer and Samuel Rees of IP Partnership Lawyers Pty Ltd appeared on behalf of the Applicant. I am to decide the matter as a delegate of the Registrar.
Onus and grounds
The Opponent has the onus of establishing one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP pursued grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62(b) and 62A.
Evidence
The parties differ in these proceedings mainly on the narrative around the creation and use of the Trade Mark and other signs consisting of or containing the word ‘b.tan’, or ‘B.TAN’. There appears to be little dispute that the Trade Mark was created in 2013 but both parties claim to have created it. There also appears to have been a relationship between the parties of some kind at the time of creation and thereafter. I discuss these points further below. It will be seen that the evidence is this matter is incomplete in several respects across all of the EIS and EIA.
I should note that declarations in evidence variously make widespread claims of confidentiality as to the Annexures. There also appears to be various evidence of a without prejudice and possibly privileged nature. Plainly, the parties have interests in preserving their confidential information. However, delegates of the Registrar must provide reasons for their findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant where a party has relied upon such material in their submissions. I have made efforts to refer to information marked confidential only where necessary and at a high level of abstraction, where possible, in providing reasons throughout this decision.
Henard
Henard provides a background to the business of the Opponent. The Marq Labs group of companies is said to include the Opponent and Marque of Brands Pty Ltd (‘MoB’), the group’s Australian trading entity. Annexure WDH-1 is a chart setting out the Marq Labs group corporate structure. The Opponent is declared to be the Marq Labs’ IP holding company. Throughout Henard, the Opponent is described as ‘an importer and manufacturer/producer of beauty and tanning products’ as well as the owner and distributor for various brands of beauty and tanning products. Historical extracts of the Opponent’s website show it or its related entities promoting a number of third party beauty and tanning brands from 2013. At least by 2016, MoB also appears to have engaged in marketing services for new and existing brands, including website design, brand creation, logo design, new product development, packaging design as some examples.
The Opponent is the registered owner of registered trade mark 1679144, the details of which I extract below:
Priority date: 5 March 2015
Trade mark:
(‘1679144’)
Goods: Class 3: Artificial tanning preparations; Cosmetic preparations adapted for sun-tanning; Cosmetic preparations for skin tanning; Cosmetic preparations for tanning the skin; Cosmetic preparations for use in giving a sun-tan effect; Cosmetics for skin tanning; Creams for tanning the skin; Self tanning creams (cosmetic); Self tanning lotions (cosmetic); Self tanning mists (cosmetic); Self tanning preparations (cosmetic); Sun-tanning preparations (cosmetics); Tan lotions (cosmetic); Tanning compositions (cosmetics); Tanning creams (cosmetics); Tanning oils (cosmetics); Tanning preparations (cosmetics); Tanning removing preparations (‘Opponent’s Goods’)
The Opponent’s narrative for creation of the Trade Mark as declared in Henard is that,
The B.TAN trade mark was created by MoB, in 2013. MoB was acquired by Marq Labs Inc, in December 2021. Ownership of Marq Labs Inc was acquired by Mibelle AG, in two tranches, the first in December 2021 and the second in June 2023.
Registration 1679144 was assigned from Aristan Pty Ltd as Trustee for the Pensky File Family Trust (Aristan) to the Opponent on 25 February 2020 as part of the subsequent purchase of the MoB business. Aristan was associated with MoB prior to the purchase of MoB in 2021.[4]
[4] Henard, [5]-[6].
Little information is provided in Henard about how exactly 1679144 was created by the Opponent. Henard does declare that:
In 2013 MoB developed the B.TAN brand. This was developed in house by MoB. It was part of the MoB offering at least as early as 2015. The product was manufactured for MoB by the Australian contract manufacturer Natural Beauty Care (NBC). Annexed hereto and marked Annexure WDH-13 are copies of an NBC invoice and NBC material safety data sheets for various B TAN products manufactured for MoB.[5]
[5] Henard, [28].
Henard also declares that the Opponent ‘disputes that [the Applicant’s] involvement was anything other than, at most, to assist MoB in peripheral aspects of the brand development’.[6] It adds that any use the Applicant made of 1679144 was in relation to MoB’s products on its behalf.
[6] Henard, [34].
Extracts of the website (‘Opponent’s Website’) show various brands in screen captures dated 2013 and 2014. The Opponent’s Website appears to have been controlled by the predecessor in title to the Opponent. The brands listed under ‘OUR BRANDS’ does not include 1679144, or any trade mark that includes the words ‘b.tan’ or ‘B.TAN’. A screen capture dated 21 March 2016 shows the ‘about us’ page with headings ‘OUR BRANDS’ and separately ‘BRANDS WE DISTRIBUTE’. 1679144 is displayed under the ‘OUR BRANDS’ heading as is another brand known as ‘FITNESS TAN’.
The Applicant apparently sought to register a stylised version of the trade mark ‘FITNESS TAN’ on 10 April 2014. The application lapsed on 28 July 2016. They also applied to register the word mark on 17 September 2015 in application 1722424. That application was accepted but lapsed upon failure to pay the registration fee. Subsequently, on 15 September 2016, Aristan applied to register mark application 1796925 for the words ‘FITNESS TAN’.
At Annexure WDH-13 to Henard are copies of an invoice and material safety data sheets for various goods manufactured for MoB. Henard states that MoB offered and sold products under 1679144 since as early as 2015. 1679144 is said to have been promoted on the Marque of Brands website. It is also said to have been promoted on its own dedicated website (‘Rocks Website’). Annexure WDH-14 are screen captures of the Rocks Website, at various dates from October 2016 to 2023. The screen captures show 1679144 in relation to tanning goods. No evidence of use of 1679144 in relation retail or other services appear there or in the EIS by the Opponent or a predecessor.
In as early as March 2016, the Opponent appears to have been holding itself out as the owner of both the trade mark FITNESS TAN and 1679144. Whilst there are little details, there appears to have been some differences between the parties regarding the FITNESS TAN trade mark. The FITNESS TAN trade mark was the subject of a 2016 agreement (‘Contractor Agreement’) between MoB and the Applicant, shown at Confidential Annexure WDH-17 to Henard. In the Contractor Agreement the Applicant agreed to transfer all rights to the FITNESS TAN brand to MoB. The Contractor Agreement was concluded on 29 November 2016 and signed by 29 December 2016. Under this agreement, the Applicant was engaged as a full-time consultant to MoB to undertake ‘certain projects as set out in the agreement’. These include consulting services. The recitals also include terms which state that Applicant would transfer all ownership rights to the FITNESS TAN brand, trade mark or other IP to MoB in 30 days. The Applicant was to receive an annual payment, travel allowance and royalty payments in relation to sales of FITNESS TAN products. Henard declares that at the time of the Contractor Agreement B.TAN was a major MoB brand and notes that there is no mention of it in the Contractor Agreement.[7] In August 2018 the arrangements between the parties are said to have been modified. At Confidential Annexure WDH-18 is a copy of a letter dated 15 Augst 2018, signed by both parties setting out the new structure. The Applicant’s role appears to have been in relation to sales with some changes to renumeration of the Applicant.[8] There appears to be no dispute that the contractual relationship ended on 19 September 2020.
[7] Henard, [39].
[8] Henard, [40].
Henard notes an email exchange at Confidential Annexure WDH-20 in December 2020 where the Applicant states amongst other things:
Furthermore. I’d highlight that I am a customer or Marq labs…
I have developed product with Marqlabs. I would also note my involvement in developing not only fitnesstan, btan and associated products. I only note these brands as a pattern of willingness to use my IP to start brand ideas as a clear conflict of interest Marq profit from[9]
[9] Henard, [43].
A dispute between the parties ensued.
O’Brien-1
I note that at Annexure WDH-21 to Henard is a copy of a declaration of Sam O’Brien, dated 4 August 2023 (‘O’Brien-1’), which was filed in response to grounds of rejection raised under s 44 when the Trade Mark was examined. O’Brien-1. The text of O’Brien-1 is visible in full. However, the Annexures to O’Brien-1 are mostly redacted because of the operation of ss 41(1)(b) and 41G of the Freedom of Information Act 1982 (Cth). The only Annexures that can be viewed directly as part of O’Brien-1 appear to be Annexures A1, F, G. J and L. I should here note that some of the declarations which form part of the EIA provide what appear to be copies of at least some of the redacted Annexures to O’Brien-1 and I refer to these where relevant. Whilst there are redactions, I consider it appropriate to give some weight to what is said in O’Brien-1, though I note that it is not strictly in actual answer to Henard or the EIS as it was declared and filed with the Trade Marks Office well before the EIS and then filed again with the EIS.
O’Brien-1 declares that:
The Applicant came up with the idea to start a self-tanning brand in 2013, naming it B.Tan. In late 2013 after obtaining manufacturers for the products and finalising the branding for the new business, the Applicant began selling fake tanning products and self-tanning products under name ‘B.Tan’ (‘B.Tan Products’). The B.Tan Products were sold by the Applicant as a sole trader, under the business name being ‘Fitness Tan’, from on or about 24 March 2014.[10]
[10] O’Brien-1, [8].
Regarding emails which were sent by the Applicant to MoB in late 2013, O’Brien-1 further declares that:
The Applicant sent the Emails to [MoB] as a means of obtaining feedback from businesses in the industry, however, at no point did the Applicant authorise any other entity to lodge a Trade Mark application for the word ‘B.Tan’, or use the B.Tan Trade Mark and/or Second B.Tan Trade Mark. As shown in Annexure B1, the Applicant clearly states in email correspondence, ‘I’d love to hear feedback on the descriptions for these products’.[11]
[11] O’Brien-1, [10].
O’Brien-1 declares that the Applicant established a business called Bottle 4 Bottle Pty Ltd (‘Bottle 4 Bottle’) in November 2012. The Applicant declares that it was a director of Bottle 4 Bottle at the time and operated a website at (‘Bottle Website’). O’Brien-1 declares that the Applicant sold B.Tan Products to Bottle 4 Bottle and authorised it to further develop and expand the B.Tan brand in conjunction with the Applicant.[12] O’Brien-1 declares that Bottle 4 Bottle sold B.Tan Products from 2014. Bottle 4 Bottle is also said to have operated as a direct wholesaler.[13] Wholesale sales by Bottle 4 Bottle are said to have ranged in 2014 from $150.00 to over $5,000 for B.Tan Products. O-Brien-1 mentions that there are 19 invoices from Bottle 4 Bottle to various companies. None of the invoices referred to in Annexure D to O’Brien-1 are directly visible to me. There is little in evidence about the corporate structure of Bottle 4 Bottle, a full list of directors or otherwise who controlled it.
[12] O’Brien-1, [13].
[13] O’Brien-1, [14].
The Applicant also is said to have operated, as a sole trader, a makeup and tanning business called ‘Bliss Makeup & and Tan’ (‘Bliss’) from 2008. O’Brien-1 declares that the Applicant authorised Bliss to use trade marks consisting of the word b.tan or B.TAN. The Applicant sold its interest in Bliss on or about 30 June 2014 and O’Brien-1 states that, once it was sold, Bliss was no longer permitted to use such trade marks.
O’Brien-1 also refers to Annexure F to O’Brien-1 stating this Annexure shows three advertisements for ‘AFRICA’, ‘NOIR’ and ‘ENTERNITY’ B.Tan Products. Annexure F, according to O-Brien-1 apparently also states in the lower left hand corner of the advertisements that ‘b.tan is by Bliss make up & tan’.[14] Whilst it is annexed, I note that the words appearing in Annexure F is largely illegible and I cannot glean from the annexure the matters mentioned. However, I do note that 1679144 appears in this material.
[14] O’Brien-1, [18].
O’Brien-1 further states that:
…on or about 3 April 2016, as a result of a restructure, Bottle 4 Bottle began trading from a family trust structure, being The Trustee for B&B Trust ABN 20 368 710 560 (‘B4B’) but remained trading as ‘Bottle 4 Bottle’. The Applicant is a beneficiary of B4B. B4B continued with wholesale offerings of the B.Tan Products from April 2016, and continues to sell B.Tan Products today. For the absence of doubt, the Bottle 4 Bottle entity was deregistered, and the Applicant began to sell large quantities of B.Tan Products (previously sold to Bottle 4 Bottle) to B4B. As such the Applicant permitted the sale of such products, as well as the use of the [Trade Mark] and [1679144].[15]
[15] O’Brien-1, [20].
O’Brien-1 states then that ‘B.Tan Products were advertised on the Bottle Website as early as 16 February 2017’. Some screen captures of the Bottle Website are then shown at Annexure J to O’Brien-1.
On or around 18 August 2016 the Applicant and Liam O’Brien are said to have established a global distribution business called Glama Services Pty Ltd (‘Glama’). The purpose of Glama is said to have been to sell products to salons and wholesale customers at an international level. O’Brien-1 declares that Glama was permitted by the Applicant to ‘sell B.Tan Products on an international basis’. I am unable to view invoices mentioned as being at Annexure K. However, one undated eBay screen capture from Glama is at Annexure L to O-Brien-1.
O’Brien-1 concludes by stating that the Applicant has, ‘never sold, transmitted or permitted the use of the [Trade Mark] or [1679144] to any entities not listed in the Declaration and any assertion otherwise is false’.[16]
[16] O’Brien-1, [27].
Smith
Smith is made by the declarant in the capacity of an employee who commenced work with the Opponent in 2017 at which time, the Applicant was also employed by the Opponent. Before working with the Opponent, Smith was an employee of Varsity Graphics and in the course of that employment, Smith did work for the Applicant relating to the Bliss brand from 2010. Smith makes various general assertions about the ownership of the Trade Mark.
EIA
Much of the EIA seeks to provide further context and directly answers the EIS. However, the Applicant has elected not to provide a new declaration of their own which answers the EIS. The EIA also provides a number of Annexures to the declarations which provide the material which they state was variously at some of the Annexures to O’Brien-1. I discuss these where relevant below.
Feleppa
Feleppa declares that between February 2013 and August 2015, the declarant was employed by MoB as the marketing and brand manager. Feleppa refers directly to Henard. Firstly, Feleppa rejects the assertion that the Trade Mark was created by MoB and adds that MoB would regularly purchase products from other companies, rebrand the product and sell them as their own. Additionally, Feleppa adds that MoB acted as a label design service offering graphic design services for their white labelling clients.
Feleppa declares that the Applicant engaged MoB for white labelling and graphic design services for his brand, being B.TAN on or around December 2013. Specifically, Feleppa adds that the Applicant provided an overview of the brand, which included self-tanning lotions and preparations. Feleppa refers to correspondence at Annexure B1 and B2 to O’Brien-1, which is not directly available to me, and confirms its contents. It then attaches what it says are the contents of those Annexures to Feleppa, consisting of various email correspondence in 2013 and 2014.
Feleppa declares that, ‘I confirm MoB did not create the Trade Mark, and the Applicant engaged my professional services for the design of his brand in 2013, and it is my opinion that the statements made in [Henard] in this respect, are inaccurate. The Opponent is not the Owner of the Trade Mark’.[17]
[17] Feleppa, [11].
At the attachments to Feleppa is an email asking for feedback from persons with email addresses apparently from MoB regarding marketing language for a tanning products under the brand ‘B Tan’, dated 13 December 2013. An internal email dated 21 February 2014 is also attached where the Applicant communicates that he wishes to finish using Bliss and make use of B.Tan. These emails are addressed to a design business called spiderboxdesign. He notes that ‘Cam [an employee of MoB] is getting back to me, he’ll let me know if they can design the labels, if not I might see is Marde has time to do it…’. Planning is further discussed in another email dated in March 2014 to staff of MoB.
Bannister
Bannister declares that the declarant acted as the accountant for Applicant after 2016. A broad statement is made that the Applicant is the owner of the Trade Mark. Bannister sets out and declares that invoices at Annexure A to Bannister show those which appeared at Annexure E to O’Brien-1. Bannister declares that on or around March 2014 the Applicant sold tanning products bearing the Trade Mark. At Annexure B2 are invoices said to be set out at Annexure B to O’Brien-1.
The Annexures to Bannister include, for example, the following receipt:
There are additional such receipts in a similar format dated 24 April 2014, 1 May 2014, 7 May 2014, 29 May 2014, 5 June 2014, 20 June 2014 all referring to ‘b.tan 1L’. Annexure A2 to O’Brien-1 appears to have shown invoices, for example one with amounts payable to the Applicant dated 29 October 2014 which mentions ‘b.tan 14% 1LT Professional Tanning Solution’. Various other transaction receipts from a bank are shown and dated variously in 2014 which appear to match the extracted invoices. The receipt and payment confirmations are dated in 2014, 2015 and early 2016. The sales appear to generally relate to individuals and businesses.
Other declarations or letters
O’Brien-2 provides general assertions about the ownership of the Trade Mark, though this is mostly concerned with the FITNESS TAN trade mark. Much of O’Brien-2 makes assertions about the experience of the declarant as an investor in the FITNESS TAN brand and the involvement of MoB with white label services in that regard. The declarant mentions payments made to MoB in relation to the FITNESS TAN business and extracts bank records in that regard. O’Brien-2 declares that the Applicant is the Owner of the Trade Mark. O’Brien-2 admits that the declarant does not know the detail of the arrangements between MoB and the Applicant regarding the Trade Mark.
General assertions of ownership of the Trade Mark are made in in C-Kyrgios. C-Kyrgios declares that one of the invoices at Annexure E to O’Brien-1 refers to a transaction conducted by the declarant. They also confirm that Annexure F to O’Brien-1 concerned the appearance of the goods in question the subject of the documented sale. There are also assertions that FITNESS TAN and the Trade Mark are separate brands.
Blair McMahon is the owner and operator of a business named Nabu Bronzing Bar (‘Nabu’). McMahon shows examples of transactions to Nabu. McMahon also attaches at Annexures A to J, various invoices from O’Brien-1. These appear to relate to Annexure D to O’Brien-1. Various invoices from Bottle 4 Bottle are provided which mention tanning goods including ‘b.tan 1L Professional.’ One invoice is dated 7 November 2014 and others are dated in 2015. The amounts appear to have been paid to either the Applicant or FITNESS TAN.
Sheehan concerns the experience of another trader who had engaged MoB for label and design services. They state that the Opponent was not the owner of the trade mark which MoB was engaged to work on. They admit they have no first hand knowledge of the relationship between the parties.
Kearton declares that he was employed by MoB as the business unit manager between March 2015 and December 2016, responsible for oversees client relationships between MoB and two international brands. Kearton states that during the declarant’s employment he assisted Lisa Feleppa with graphic design services, namely in relation to graphic design of two products being St. Tropez and Heritage products. He confirms that MoB routinely provided graphic design services for various companies. The declarant admits not knowing the arrangements between the parties, although adds that MoB does not typically purport to own the brands of its clients.
Sewell is the owner of Varsity Graphics and provides a letter stating their recollection that the Bliss Spray Tan concept changed to B.Tan branding.
Martin provides a letter as Creative Director of Varsity Graphics stating that labels supplied by the Applicant have been with Varsity Graphics for printing since the beginning of 2014 for the B.Tan.
Consideration
Section 44
The Opponent relies on s 44 which relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In respect of its ground of opposition under s 44, the Opponent relies on 1679144 which is in the name of a person other than the Applicant and has a priority date which is earlier than that of the Trade Mark.
I now consider whether the Opponent’s Goods are closely related to any of the Applicant’s Services. The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths Ltd, French J noted that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[18] The nature, function and circumstances of the particular trades, including the trade channels, are also relevant as is the likelihood of consumer association of the services with the goods because they are generally offered by the same people.[19] I should also consider whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[20]
[18] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38].
[19] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
[20] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
There is nothing which satisfies me that traders of the Opponent’s Goods and the Applicant’s Services would necessarily be the same source. The services specified are of a general nature such as ‘business’, ‘retail’ and ‘wholesale’ services. The Opponent’s Goods are the types of goods sold in a variety of grocery, pharmacy, beauty retailers and other retailers. The Opponent’s Goods are limited to those being various types of skin tanning goods. The business, wholesale and various marketing services are plainly not necessarily closely related to the Opponent’s Goods. Just because tanning goods may be sold by various retailers does not make those services closely related to the Opponent’s Goods. I am not satisfied that the Opponent’s Goods are closely related to any of the Applicant’s Services. Accordingly, the ground of opposition under s 44 fails in respect of the Applicant’s Services.
I note that all of the Applicant’s Goods in class 3 are clearly the same as at least some of the Opponent’s Goods in class 3, as they both concern various kinds of tanning products.
The Applicant’s Goods in class 7 are of a different fundamental nature to the Opponent’s Goods. However, the sprayer goods in class 7 would all include sprayers specifically for tanning which are likely to be sold alongside tanning goods and together in kits. These goods are likely to be supplied by the same traders. There is also a likely consumer expectation that these may come from the same trade source. Sprayers for tanning generally operate by working with tanning products in class 3 specially designed for the sprayer. The respective uses of the goods are also fundamentally the same from the perspective of the consumer. When I consider the nature, use and trade channels, I consider the Opponent’s Goods in class 3 to be of the same description as the Applicant’s Goods in class 7.
Accordingly, I consider the Applicant’s Goods to be similar to the Opponent’s Goods.
I note that 1679144 and the Trade Mark both consist of mainly the word ‘B.TAN’ or ‘b.tan’ and differ only in minor stylisation and the lower case letters in 1679144. These are additions and alterations which do not substantially affect the identity of the Trade Mark. Accordingly, I consider the Trade Mark to be substantially identical with 1679144.
Section 44(4)
Although 1679144 is a substantially identical trade mark for similar goods, the Applicant asserts that it is entitled to registration of the Trade Mark under s 44(4). In particular, the Applicant submits that it has used the Trade Mark since before 1679144’s priority date and continuously until the Relevant Date in relation to the Relevant Goods. It is useful to note at this point that for these purposes it is the Applicant who has the onus to demonstrate use prior to the priority date of 1679144 and continuously until the Relevant Date and that the use has been by the Applicant, or an authorised user.
The comments of the delegate in Challenge Cancer Support Network Inc v Leukaemia Foundation of Queensland appear relevant:
…I note that the provisions of s 44(4) were applied in the examination stages...I think that, if the application of that provision is challenged in the opposition forum, the alleged triggering facts should be required to be clearly demonstrated, and this requires a correspondently high evidentiary threshold. If the Applicant, once opposed, intends to rely on this provision, it needs to establish the date of first use positively, by way of facts...[21]
[21] [2002] ATMO 29 (Delegate Williams).
The Trade Mark appears to have been possibly created by some consensus between the parties in 2013. The evidence goes as far as showing that both parties had some involvement in the conceptualisation and design of the Trade Mark. When the Applicant sought feedback in the emails mentioned in Henard and Feleppa, it appears that they were formulating marketing language for a product. What is not clear is whether MoB was engaged solely as the graphic designer to provide input, as suggested by Feleppa, for the Applicant’s product or whether the Applicant was consulting the Opponent for the Opponent’s product. A contractor relationship appears to have been formalised in late 2016, which is after apparent dealings by the Applicant in goods which have carried the Trade Mark. There is no formalised agreement dated prior to 2016 and in evidence which might explain the terms of any engagement between the parties.
Whilst I have no clear example of the product that was sold, the material referred to in Feleppa and in A-Krygios suggests that the packaging may have drawn a link to the Applicant by reference to Bliss. However, Bliss is said to have been phased out by 2014. A number of transactions are noted in the declarations in the EIA in 2014, 2015 and 2015 for goods which contained 1679144 or otherwise trade marks containing the words ‘b.tan’ or ‘B.TAN’.
O’Brien-1 states that the Bottle 4 Bottle was established by the Applicant in 2012 and that it ‘sold B. Tan Products’ from 2014. Whilst invoices are referred as being at Annexure C to O’Brien-1 they are not visible to me. McMahon attaches what it states is the material at Annexure D to O’Brien-1. This material includes invoices from Bottle 4 Bottle to a business for products which mention the Trade Mark and which are dated in 2015. Those dated in 2014 appear to involve payment to ‘Fitness Tan’. There is little information about Bottle 4 Bottle other than that it was established by the Applicant and that the Applicant was ‘a director’.[22] The control of the Bottle Website is particularly vague, including where the Applicant mentions the establishment of a trust and the deregistration of Bottle 4 Bottle. O’Brien-1 appears to suggest that an unnamed trustee, or perhaps the Applicant, continued to operate the Bottle Website. There is no trust documentation nor is there any kind of commercial documents which make clear the terms of the trust. The Applicant is said to be a beneficiary of the trust, yet the identity of the trustee is completely unclear. Whilst Annexure G to O’Brien-1 contains screen captures taken from the Australian Business Register showing the historical details and establishment of the trust, as well as the trading name being ‘Bottle 4 Bottle’, this information does not show the identity of the user of the Trade Mark.
[22] O’Brien-1, [14] (emphasis added).
After 2016, there are five screen captures of the Bottle Website which the Applicant relies upon as evidence of continuous use of the Trade Mark by the Applicant. In particular, Annexure J to O’Brien-1 shows use of ‘B.Tan’ in screen captures of the Bottle Website dated on 10 February 2017, 9 August 2019, 25 September 2020, 24 May 2022 and 23 May 2023. Bottle 4 Bottle is declared to have been deregistered before these dates. It is not clear to be me who was using the Trade Mark on the Bottle Website, or otherwise operating the Bottle Website, at these dates. Furthermore, it is difficult for me to glean the identity of the person using the Trade Mark after around 2016. Whilst O’Brien-1 states that there were sales of goods by the Applicant to the trustee, there is no documentation at all in this regard and the Applicant has elected not to provide the evidence on this point annexed to O’Brien-1. Whilst O’Brien-1 also asserts that the trustee was authorised to use the Trade Mark, there is no evidence of the level of any control that would establish authorised use in that regard.[23]
[23] Section 8.
Another issue is that the original source of the goods bearing the Trade Mark is not clear. The use of 1679144 for example at Annexure WHD-14 to Henard in the screen captures of the Rocks Website display products to which there is marked resemblance with those in screen captures shown at Annexure J to O’Brien-1. I note that the Opponent has shown use of the Trade Mark on the Rocks Website from 2016 to 2023. There is also mention of 1679144 on the Opponent’s Website dated in 2016. Whilst O’Brien-1 declares that a manufacturer was found in 2013, there is no detail about the manufacture of any tanning goods under the Trade Mark by the Applicant or an authorised person. Much of the EIA may be interpreted in way which is consistent with the Opponent’s narrative. I note that the declarations in EIA, provide snapshots of particular facts and the source the goods mentioned is unclear. Feleppa at its highest suggests the parties engaged on the issue of marketing language and branding, it does not settle the issue of origination of goods, ownership or the ultimate identity of the trade source or user of the Trade Mark. Furthermore, despite being a person with direct knowledge of the relevant matters, the Applicant has elected not to provide any direct contradiction in answer of their own and has relied on declarations of other persons and O’Brien-1. O’Brien-1 was not formulated as an answer to the evidence in Henard and Smith. In light of the EIS, I cannot be sure that much of the material there noted refers to the Applicant’s own goods rather than the Opponent’s goods. I also note that there is little evidence beyond 2014 of how any of the goods reportedly sold by the Applicant were labelled.
I must also consider all of the evidence together. One of the most glaring issues at hand is how there could have been a relationship between the parties over several years and yet both parties allegedly made use of substantially identical trade marks (if not the same trade mark) in relation to the same goods, tanning products. None of the parties have evidenced, for example, the sale of goods to the other. And yet, the parties had various dealing from 2013 until 2020, without mention of the apparently concurrent use of trade marks containing or consisting of the word ‘b.tan’ or ‘B.TAN’. Whilst the Applicant might have sold goods which carried the Trade Mark prior to 1679144’s priority date in Australia, there are serious issues with attributing such use of the Trade Mark to the Applicant. This is especially so after the deregistration of Bottle 4 Bottle and for the screen captures of the Bottle Website as supporting continuous use by the Applicant until the Relevant Date in relation to the Applicant’s Goods. There is no corroborating evidence of sales of goods to Bottle 4 Bottle by the Applicant, other than by a bald statement in O’Brien-1. The Applicant fails to establish the identity of the trustee or who exactly controlled the Bottle Website. The activities on the Bottle Website may have been confined to the sale of another trader’s goods as, for example, a wholesaler or a retailer. One of the screen captures, dated 25 September 2020, for example, shows numerous brands for sale which were clearly not those of the Applicant alongside some with the word B.TAN. A retailer of products does not necessarily use a trade mark as its own where it sells the products of another manufacturer under that manufacturer’s trade mark.[24] As to the evidence especially dated from mid-2016, I am not satisfied that I can there attribute use of the Trade Mark, to the extent it is shown, to the Applicant, even if I assume that it was the Applicant using the Trade Mark from 2013 to 2016, or thereafter selling goods to the trustee.
[24] Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd [1967] HCA 51, [5] (Barwick CJ, McTiernan, Taylor and Owen JJ). See also, Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15, [61] (Perram, Nicholas, Burley, Rofe and Downes JJ).
Having regard to all of the above, I am not satisfied that the Applicant has established prior continuous use of the Trade Mark in respect of the Applicant’s Goods in classes 3 and 7 so as to justify registration of the Trade Mark under s 44(4).
For completeness, I also note that the evidence is insufficient to establish the application either of ss 44(3)(a) or 44(3)(b).
Accordingly, I am satisfied that there is a ground of opposition under s 44 established in respect of all the Applicant’s Goods in classes 3 and 7.
From here I consider the remaining grounds of opposition in respect of the Applicant’s Services.
Section 58A
I note my findings that s 44(4) is not applicable. Therefore, s 58A is not enlivened.
Accordingly, the ground of opposition under s 58A has not been established.
Section 58
Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files an application to register the trade mark in Australia, whichever is the earlier.
To establish this ground the Opponent must show all of the following:
- a person other than the Applicant used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[25] in the course of trade in Australia; and
- the use was before the filing date of the Trade Mark, or before use of the Trade Mark by the Applicant, whichever is the earlier; and
- the use was in relation to the Applicant’s Goods and Services or in relation to goods and services considered to be the same kind of thing as the Applicant’s Goods and Services.[26]
[25] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J). See also, s 7(1).
[26] Re Hicks Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 (Holroyd J).
Whilst the Opponent provides purported evidence of use of 1679144 before the application for the Trade Mark, there is no evidence filed in these proceedings which demonstrates the Opponent had used the Trade Mark before the filing of the Trade Mark in respect of any of the Applicant’s Services. The activities on the Rocks Website, or otherwise shown throughout the EIS, does not appear to be in relation the retailing or wholesaling services. The EIS does not show an instance of a particular sale, with nothing shown, for example, which displays a price. A ‘buy now’ label appears alongside some products on the Rocks Website. However, the evidence does not show where or how any purchase is to take place. Whilst there are descriptions which sometimes refer to K-Mart, such language does not refer to activities of the Opponent. Overall, I am not satisfied that the use of relevant trade marks on the Rocks Website amounts to anything more than promotion of the Opponent’s goods as goods. Accordingly, to the extent that the Opponent shows any use of a relevant trade mark, it does not establish use in relation to the same kind of thing as any of the Applicant’s Services.
I am not satisfied that a person other than the Applicant was the owner of the Trade Mark. Accordingly, the ground of opposition under s 58 has not been established.
Section 60
The Opponent also relies upon s 60, which provides:
60 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.
A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[27] It is the Opponent who must establish that a reputation exists as a matter of fact.[28] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[29] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[30] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[31] Direct evidence of consumer appreciation of the other trade mark, while often harder to produce, is another avenue for showing that a reputation exists.[32]
[27] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[28] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[29] McCormick & Co Inc v McCormick [2000] FCA 1335, [127] (Kenny J) (‘McCormick’).
[30] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[31] McCormick (n 29) [80].
[32] Ibid.
The Opponent relies on the use of 1679144 as shown in the EIS for the s 60 ground of opposition. It also generally asserts that the Applicant’s own use should be attributed to it. The sales figures presented by the Opponent relate only to the period after the dispute arose between the Opponent and Applicant about ownership in the Trade Mark. The worldwide sales figures are significant. I also recognise these figures have some size at first glance for Australia. The only sales figures provided are dated from most relevantly 2022 and 2023. There is no context for these figures and those sales occurring in 2023 have no indication of sales which occurred prior to the priority date of the Trade Mark. I also note that the EIS provides little in the way of use in relation to anything like the Applicant’s Services. The most that the EIS suggests use of 1679144 for is use in relation to tanning goods.
There is also no industry contextualisation for the sales figures provided by the Opponent and I cannot decide whether the amounts mentioned for those two years are sizeable for tanning products. I also note that the screen captures of the Rocks Website, whilst having examples of use directed at Australia, also include various examples directed at the United States of America, indicated by the country selector shown in the screen capture. Whilst there is advertising of tanning goods showing the Trade Mark, the Opponent has not presented evidence of any individual sale and has relied solely on total sales figures. Overall, I am not satisfied that because of any reputation extant in another trade mark, the use of the Trade Mark would be likely to deceive or cause confusion in relation to the Applicant’s Services.
Accordingly, I am not satisfied that s 60 ground of opposition has been established.
Section 42(b)
Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[33]
[33] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGP identifies misleading and deceptive conduct mentioned in the Australian Consumer Law, which is contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth) (‘CCA).
I note my findings in relation to s 60. I observe that it would also likely follow that on the stricter test posited by the ACL, compared to s 60, I am not satisfied that use of the Trade Mark is likely to mislead or deceive under s 18, or amount to a false or misleading impression, for example under s 29 of the ACL.
The Opponent has not established that use of the Trade Mark would be contrary to law. Accordingly, the ground of opposition under s 42(b) has not been established.
Section 62A
Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. For this, I must determine whether, ‘in all the particular circumstances, the [Applicant’s] knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[34] This question is determined as at the Relevant Date.
[34] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).
In DC Comics v Cheqout Pty Ltd, Bennett J noted that:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[35]
[35] [2013] FCA 478, [62].
The Opponent submits that the Applicant ought to have known it was not entitled to seek registration of the Trade Mark noting the past dealings between the parties.
The Opponent and the Applicant have both been vague about the relationship between the parties and the evidence is unclear. There is enough doubt brought to bear on my mind by the evidence such that I am not satisfied there has been underhanded commercial conduct. It is likely that both parties were aware of their respective use of the Trade Mark. The nature of that use in the evidence and for that matter the past dealings of the parties in respect of the Trade Mark are not clear to me. The Opponent has not otherwise provided any evidence to support its assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith.
Accordingly, the ground of opposition under s 62A has not been established in relation to the Applicant’s Services.
Section 62(b)
Section 62(b) relevantly provides that:
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
…
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars
Section 62(b) requires that representations were false in material particulars and that there was a causal connection between those false representations and the acceptance of the application for the Trade Mark by the delegate of the Registrar. A representation must be false at the time that it was made in order to be relevant.[36] I note that s 62(b) can encompass all manner of falsehoods, be they deliberate or innocent.[37] It is not enough that evidence or a statement relied upon by a delegate during examination is imprecise or vague.[38] There are decisions of this office where reliance on inaccuracies about an applicant’s use, including as it relates to s 44, has resulted in s 62(b) being established.[39] However, this often involves verifiably false statements about specific events or dates.
[36] Levi Strauss & Co v Bon Levi (1999) 44 IPR 431, 434 (Hearing Officer Thompson).
[37] Analyses Conseils Informations ACI v Iguassu (No 16) Pty Ltd & Al Gray Nominees Pty Ltd [2001] ATMO 4 (Hearing Officer Nancarrow); Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80 (Hearing Officer Nancarrow).
[38] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [61]-[62] (Wilcox J); Inventions Marketing Pty Ltd v Aqualoc Pty Ltd (2002) 55 IPR 600, 615 (Hearing Officer Thompson); and GAP (ITM) Inc v General Pants Co Pty [2004] ATMO 12, [45]-[52] (Hearing Officer McDonagh).
[39] Arbormasters Pty Ltd v Arbormaster Training Inc [2007] ATMO 7 (Hearing Officer Thompson); Link Recruitment Pty Ltd v Link Employment and Training Inc [2006] ATMO 39 (Hearing Officer Nancarrow).
Section 44(4) offers circumstances in which an application for a trade mark may be registered in the face of another trade mark that has been raised as the basis for a ground of rejection under s 44. The Trade Mark was accepted applying s 44(4).
There is very little evidence before me upon which I can say there has been an error of any kind which has resulted in acceptance of the application for registration of the Trade Mark. I am unable to decide such a question, especially as the whole of the document upon which the decision was made, O’Brien-1, is not before me.
Furthermore, I note my finding that the Applicant’s Services are not closely related to Opponent’s Goods. Accordingly, s 44 may not have even been an issue in mind of the Examiner as the delegate for the purposes of s 44(4) for these services. Therefore, it does not necessarily follow that the Examiner accepted the application for registration of the Trade Mark in respect of the Applicant’s Services on the basis of evidence or representations that were false in material particulars.
Accordingly, I am not satisfied that a ground of opposition under s 62(b) has been established in relation to the Applicant’s Services.
Decision and costs
Section 55 relevantly provides:
55 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.
I am satisfied that a ground of opposition under s 44 has been established in respect of all of the Applicant’s Goods in classes 3 and 7.
On 3 July 2025, I wrote to the representative for the Applicant and confirmed that I would refuse the application unless the Applicant agreed to amend the Applicant’s Goods and Services as follows (deletion represented by strikethrough):
Class 3: Body lotions (other than for medical purposes); Body oil; Cosmetic moisturisers; Cosmetics for skin tanning; Self tanning mists (cosmetic); Skin bronzing creams; Self tanning lotions (cosmetic); Tan lotions (cosmetic); Self tanning creams (cosmetic); Skin tanning creams for human use; Tanning creams (cosmetics); Tanning oils (cosmetics); Artificial skin tanning preparations for human use; Cosmetic preparations for use in giving a sun-tan effect; Cosmetic preparations for skin tanning; Cosmetic preparations for tanning the skin; Self tanning preparations (cosmetic); Tanning preparations (cosmetics); Tanning removing preparations
Class 7: Power operated sprayers for liquids; Sprayers [apparatus] for applying UV-free tanning preparations; Sprayers [machines] for applying artificial sun tanning preparations; Air spray gunsClass 35: Advertising; Administration of business affairs; Business administration; Business management; Direct mail advertising; Development of advertising plans; Demonstration of goods for promotional purposes; Direct marketing; Development of marketing plans; Marketing; Product marketing; Product sampling; Production of advertising material; Promotion (advertising) of business; Online retail services; Retail services; Retail services provided by pharmacies; Retail services provided by supermarkets; Sales promotion services; Social media marketing; Wholesale services; Wholesaling of goods (by any means)
The Applicant’s representative confirmed that the Applicant had agreed to the amendment. Accordingly, the Trade Mark may proceed to registration subject to the amendments not less than one month from the date of this decision.
100.If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
101.The parties have requested costs. It is normal for costs to follow the event. However, there is an element of success for both parties. I refuse to make an award of costs.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
11 July 2025
Schedule 1
Class 3: Body lotions (other than for medical purposes); Body oil; Cosmetic moisturisers; Cosmetics for skin tanning; Self tanning mists (cosmetic); Skin bronzing creams; Self tanning lotions (cosmetic); Tan lotions (cosmetic); Self tanning creams (cosmetic); Skin tanning creams for human use; Tanning creams (cosmetics); Tanning oils (cosmetics); Artificial skin tanning preparations for human use; Cosmetic preparations for use in giving a sun-tan effect; Cosmetic preparations for skin tanning; Cosmetic preparations for tanning the skin; Self tanning preparations (cosmetic); Tanning preparations (cosmetics); Tanning removing preparations
Class 7: Power operated sprayers for liquids; Sprayers [apparatus] for applying UV-free tanning preparations; Sprayers [machines] for applying artificial sun tanning preparations; Air spray guns
Class 35: Advertising; Administration of business affairs; Business administration; Business management; Direct mail advertising; Development of advertising plans; Demonstration of goods for promotional purposes; Direct marketing; Development of marketing plans; Marketing; Product marketing; Product sampling; Production of advertising material; Promotion (advertising) of business; Online retail services; Retail services; Retail services provided by pharmacies; Retail services provided by supermarkets; Sales promotion services; Social media marketing; Wholesale services; Wholesaling of goods (by any means)
0
21
0