McPherson's Consumer Products Pty Limited v Perfectscents Hand Made Soaps Pty Ltd

McPherson's Consumer Products Pty Limited (the Applicant) sought to register a trade mark, which was opposed by Perfectscents Hand Made Soaps Pty Ltd (the Opponent). The Opponent, owner of the "Alchemy" trade marks for cosmetic products, alleged that the Applicant's proposed mark was deceptively similar to its own registered marks, relying on grounds under sections 42(b), 44, and 60 of the *Trade Marks Act 1995* (Cth). The matter came before a delegate of the Registrar of Trade Marks for decision based on the written record, as no hearing was requested and the Applicant filed no submissions in response to the Opponent's evidence and submissions.

The primary legal issue before the delegate was whether the Applicant's proposed trade mark was deceptively similar to the Opponent's registered "Alchemy" marks, thereby establishing a ground for opposition under section 44 of the Act. The Opponent provided evidence of its ownership of the "Alchemy" marks, its use of these marks in relation to cosmetics including shampoos, conditioners, and body washes since 1994 (with continuous use by the Opponent since 2014), and its significant market share in the natural haircare market. The Applicant filed evidence in answer, but the Opponent did not file evidence in reply.

The delegate considered the overall idea and impression conveyed by both the Applicant's proposed trade mark and the Opponent's "Alchemy" marks in the context of the Applicant's goods. The delegate found that the word "ALCHEMY" was a primary distinctive element in the Applicant's mark, indicating trade source. Consequently, the delegate concluded that consumers would likely be caused to wonder whether the trade source of the Opponent's goods and the Applicant's goods were the same, finding the trade marks to be deceptively similar.

Based on this finding, the delegate determined that the Opponent had established the ground of opposition under section 44 of the Act. Accordingly, the delegate refused to register the Applicant's trade mark and directed that the refusal be recorded one month from the date of the decision, unless an appeal was filed. The Opponent was awarded costs against the Applicant.