Niroshan Sivathasan vLinda Monshizadeh

[2023] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by Niroshan Sivathasan to registration of trade mark application number 2092371 (class 44) - Dr LINDAMONSHIZADEH (figurative) - in the name of Linda Monshizadeh

Delegate:

Tracey Berger

Representation:

Opponent: Kalde Legal

Applicant: NZ Law Online Limited

Decision:

2023 ATMO 94

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43, 44, 58A, 58, 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) by Niroshan Sivathasan (‘Opponent’) to registration of the following trade mark:

Trade Mark Number:     2092371  (‘Application’)

Trade Mark:  (‘Trade Mark’)

Applicant:  Linda Monshizadeh (‘Applicant’)

Filing Date:  29 May 2020

Services:  Medical services; plastic surgery (‘Services’)

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2.     The Trade Mark was examined and advertised as accepted for possible registration on 30 October 2020.

3.     The Opponent filed a Notice of Intention to Oppose on 17 December 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 January 2021.  A Notice of Intention to Defend was filed by the Applicant on 29 May 2021.

4.     On 1 September 2021, the Opponent filed his evidence in support of the opposition, consisting of a declaration of Dr Niroshan Sivathasan made on 1 September 2021 with Exhibits A to G.  This was followed by the filing of the Applicant’s evidence in answer on 2 December 2021 comprising a declaration of Dr Linda Monshizadeh made on 2 December 2021 with Exhibits A to D (‘EIA’).  The Opponent then filed a further declaration of Dr Sivathasan made on 17 March 2022 as evidence in reply.

5.     Following the evidence stages, the parties were given the opportunity to be heard.  Both parties requested a hearing by written submissions.  The Opponent filed his written submissions on 13 March 2023.  The Applicant did not file any written submissions.  This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks based on the aforementioned materials.

Grounds, Onus and Relevant Date

6.     In the SGP, the Opponent particularised grounds of opposition under ss 43, 44, 58A, 58, 60 and 62A. 

7.     The Opponent bears the onus of establishing at least 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).

8.     The date at which the rights of the parties are to be determined is 29 May 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Opponent’s Evidence

9.     The Opponent is a medical practitioner focused on cosmetic and restorative surgery.  The Opponent’s medical practice ‘Ignite Medispa’ is situated at Wollongong Private Hospital (‘Opponent’s Medical Practice’) although he claims to also practice in other areas of Australia including at 21 Hay Street, Subiaco, Western Australia.

10.   The Opponent is the owner of Australian trade mark registration number 1803279 (‘Opponent’s Registration’) for:

Trade Mark: (‘Opponent’s Mark’)

Filing Date:        21 October 2016

Goods:

Class 3: Cleaning preparations for the skin; Conditioning preparations for the skin;   Cosmetic goods for care of the skin; Cosmetic preparations for cleansing the skin; Cosmetic preparations for skin care; Cosmetic preparations for skin tanning; Cosmetic preparations for use on the skin; Cosmetic products for skin care; Cosmetics for the treatment of dry skin; Cosmetics for use on the skin; Cream for skin whitening; Creams for firming the skin; Creams for toning the skin; Exfoliants for the care of the skin; Grease removing preparations for use on the skin; Moisturising skin creams (cosmetic); Moisturising skin lotions (cosmetic); Non-medicated skin care beauty products; Powders for skin care (not for medical use)

(‘Opponent’s Goods’)

11.   Since 2016, the Opponent’s Goods have been sold online, at the Opponent’s Medical Practice and other medical clinics around Australia including in Western Australia.

12.    The Opponent attests that he created the device element of the Opponent’s Mark in 2016 using geometrical pieces for the left side of the face representing the ‘golden ratio’ symbolised by the Greek letter Phi.  The Opponent refers to this image in lectures to other doctors and patients when talking about the concepts of beauty, restoration of facial features and proportions.

13.   The Opponent attests that since 2016, the Opponent’s Goods have been promoted under the Opponent’s Mark on his Facebook and Instagram accounts and that the Opponent’s Mark is also used in paperwork to patients and as part of his email signature.  The Opponent has provided copies of Vogue Australia and GQ magazines featuring the Opponent’s Mark in 2017. 

14.   In addition, the Opponent alleges that the Opponent’s Mark is used on his websites at and The Opponent has not provided extracts from these websites but only links to the sites.  Any evidence on which a party intends to rely should be printed or scanned to PDF and filed as evidence. If that is not possible due to technical issues, some other evidence substantiating the claim should be filed.  Weblinks should not be used as weblinks can break and the information on them can change over time.  I was unable to access the websites referred to by the Opponent and therefore, there is no evidence of use of the Opponent’s Mark on these sites.

15.   The Opponent declares that in May 2020 he became aware of the Applicant using the Trade Mark to promote her plastic surgery practice in Western Australia which the Opponent claims is situated in close proximity to his Western Australian surgery.  The Opponent called the Applicant on 25 May 2020 and then emailed the Applicant on 25 and 28 May 2020 placing her on notice of the Opponent’s Registration and requiring the Applicant to cease use of the Trade Mark.  Copies of those emails are provided. The Applicant did not reply but filed the Application the next day.

16.   The Opponent claims that the Applicant has been aware of him since 30 August 2015 when the Applicant sent him a message to connect on LinkedIn.

Applicant’s Evidence

17.   The Applicant is an accredited specialist Plastic, Reconstructive and Craniomaxillofacial surgeon who is a consultant at the Perth Children’s Hospital and Sir Charles Gardiner Hospital and who also has a private practice in West Perth.

18.   The Applicant attests that she had the Trade Mark designed in June 2019 through the 99 Designs website which allows customers to explain their business and then select a logo from various proposals submitted by different designers.  The Applicant chose the Trade Mark because she was aware of the ‘golden ratio’ mask and considered the geometric shapes to be suggestive of her facial reconstructive work.  The Applicant claims she was not aware of the Opponent, the Opponent’s Mark or any similar mark at the time of adopting the Trade Mark.

19.   Further, the Applicant claims that the Opponent’s Mark is an exact copy of the Phi mask created in 2001 by Dr Stephen R. Marquardt, a Californian surgeon, in attempting to scientifically analyse the mathematics of perfect facial beauty.  The EIA annexes various other examples of the use of geometric shapes for portions of a human or animal face for tattoos and stock images.

20.   The Applicant claims that the Opponent’s Medical Practice is promoted at which uses the logo and not the Opponent’s Mark.  Further, the Opponent’s practice in Western Australia operates under the marks  which is promoted at Links were provided to these websites, but again the sites were not accessible and extracts of the sites should have been provided as part of the EIA if the Applicant wished to rely on this.

Discussion

Section 44

21.   Section 44 relevantly provides:

44  Identical etc. trade marks

(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.

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);

   ·     is in respect of services and/or goods which are similar or closely related to the Services (‘the second requirement’); and

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).

   23.   In the SGP, the Opponent relies on the Opponent’s Mark and application number 2097321 (‘Opponent’s Application’) in classes 5 and 44 for  (‘Opponent’s Device Mark’).

   24.   The Opponent’s Mark has an earlier priority date and therefore, satisfies the first requirement.  However, the priority date of the Opponent’s Device Mark is later than the Relevant Date and cannot support this ground of opposition.  Accordingly, I will only consider whether the Opponent’s Mark satisfies the other requirements.

   25. In relation to the second requirement, the test for whether goods and services are closely related is not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. ... Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.[4]

   [4] [1999] FCA 1020, [40].

   26.   Some of the factors to consider in determining the closeness of the relationship between the goods and services include whether customers expect that the particular goods and services typically originate from the same source, the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold, and the character of the consumers of the goods and services.

   27.   Broadly speaking, the Opponent’s Mark covers skin preparations in class 3 whereas the Trade Mark covers medical services and plastic surgery services in class 44.  In my view, skin care preparations are not generally manufactured and sold by doctors or plastic surgeons.  Further, skin care preparations are mostly sold through supermarkets, department stores and beauty retailers.  Although a doctor or plastic surgeon may provide skin care preparations for treatment or post-operative care, I do not believe that consumers would expect those preparations to have been made by their doctor or surgeon. Rather, it is likely that consumers would perceive these preparations to be a third party product.  Consumers of skin care preparations are generally discerning purchasers who take care before buying products.

   28.   I do not consider the Opponent’s Goods to be closely related to the Services.  Accordingly, the s 44 ground of opposition is unsuccessful.

   Section 58

   29.   Section 58 provides that a trade mark may be opposed on the grounds that the Applicant is not the owner of the Trade Mark.

   30.   The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is well established that to succeed in this ground of opposition, the Opponent must establish the following:

   ·     The Trade Mark is identical, or substantially identical, to an earlier trade mark;[5]

   ·     The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Services;[6]  and

   ·     Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[7]

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [6] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

   [7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

   31.   The Opponent particularised this ground of opposition in his SGP as follows:

   The image used in each of the Opponent's marks 1803279, 2097321 has been used in the opponent's surgery practice and in licenced goods sold by the opponent, namely Amarante Skincare. The logo featured in each of the marks 1803279, 2097321 features prominently on the Amarante Skincare range of products in its packaging, advertising and online presence.

   32.   From the SGP, it appears that the Opponent relies on his use of the Opponent’s Device Mark which the Opponent claims to have used in his surgery practice and Amarante skincare range.  The first consideration is whether the Opponent’s Device Mark is substantially identical to the Trade Mark.

   33.   The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

   [8] [1963] HCA 66; (1963) 109 CLR 407, 415.

   34.   In the present case, the marks to be compared are:

Opponent’s Device Mark Trade Mark

35.   On a side by side comparison of the marks, there are striking differences.  The Trade Mark includes the words DR LINDAMONSHIZADEH, a border, the person’s hair provides a black background and there are differences in both the facial features of each person and the arrangement of the geographic shapes.  As a result of the differences in the two marks, there is not a total impression of resemblance and the Opponent’s Device Mark is not substantially identical to the Trade Mark.

36.   The s 58 ground of opposition is unsuccessful.

Section 58A

37.   Section 58A is reproduced below:

58A  Opponent’s earlier use of similar trade mark

(1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)  subsection 44(4); or

(b)  a similar provision of the regulations made for the purposes of Part 17A.

Note:          Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)  The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)  first used the similar trade mark in respect of:

(i)  similar goods or closely related services; or

(ii)  similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

38.   For s 58A to apply, the opposed trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4).  In this matter, the Trade Mark was not accepted by the examiner under the provisions of s 44(4).  Furthermore, given my finding that the Trade Mark is not sought to be registered for services closely related to the goods for which the Opponent's Mark is registered, the provisions of s 44(4) are not available to be applied in this opposition proceeding.  As such this ground of opposition is not available to the Opponent.

Section 60

39.   Section 60 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.

40.   To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

41.   In support of this ground of opposition, the Opponent relies on use of the Opponent’s Device Mark which it claims is associated with the Opponent’s surgery practice and range of skincare products.

42.   The reputation must be established as a matter of fact by the Opponent[9] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[10] although this is tempered by the nature of the relevant market.  In the present case, the relevant market is large as a significant proportion of the Australian population are potential consumers of skincare preparations.

[9] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[10] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

43.   The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[11] or inferred from a high volume of sales,[12]  advertising expenditure or other promotion.[13]

[11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

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

[13] Ibid.

44.   The Opponent has not provided any details of revenue derived from use of the Opponent’s Device Mark or the Opponent’s Mark.  Further, no details of the Opponent’s advertising expenditure to promote his skincare products or surgery have been provided.  The only examples of use of the Opponent’s Device Mark are two small articles in Vogue Australia and GQ magazines in 2017 from which it is barely possible to discern that the Opponent’s Device Mark appears on the products featured.  The Opponent also refers to use of the marks on his social media but provides no examples or details of the number of followers of these accounts. 

45.   In the absence of any metrics about the nature and extent of the Opponent’s revenue and advertising, it is not possible to conclude that the Opponent has developed a reputation in the Opponent’s Device Mark or Opponent’s Mark.  Accordingly, the s 60 ground fails.

Section 62A

46.   Section 62A provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith.

47. Bad faith is not defined in the Act. The Explanatory Memorandum to the Bill that inserted this ground of opposition into the Act stated that this ground was introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith’.[14]  The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[15] and DC Comics v Cheqout Pty Ltd.[16]  The following propositions emerge from these decisions which are relevant to the present opposition:

·     Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject of that application.[17]

·     Bad faith is a serious allegation that “impugns the character of an individual or collective character of a business” and requires correspondingly cogent evidence.  The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[18]

·     Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[19]

·     The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[20]

·     All the circumstances surrounding the application to register the mark are relevant.[21]

·     A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[22]

·     Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion.[23]

[14] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) [4.12].

[15] (2012) 201 FCR 565 (Dodds-Streeton J) (‘Fry Consulting’).

[16] (2013) 212 FCR 194 (Bennett J) (‘DC Comics’).

[17] Fry Consulting (n 15) 593-4 [145].

[18] Ibid.

[19] Ibid 594-5 [147]-[148], 597 [165].

[20] DC Comics (n 16) 206 [62].

[21] Ibid.

[22] Fry Consulting (n 15) 596-7 [156].

[23] DC Comics (n 16) 209 [76].

48.   The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

49.   The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[24]

[24] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [20] (Hearing Officer D. Nancarrow).

50.   The Opponent claims that because the Applicant filed the Application immediately after the Opponent contacted the Applicant about the Opponent’s Mark, the Applicant has acted in bad faith.  However, it is not apparent from the evidence what the Applicant knew about the Opponent’s use of the Opponent’s Mark or Opponent’s Device Mark at the time of filing the Application.  Mere knowledge of the existence of another trade mark is not sufficient to support a finding of bad faith. 

51.   Whilst the Opponent claims to use the Opponent’s Mark and Opponent’s Device Mark in relation to his surgical practice, there is no supporting evidence of this claim and only very limited evidence that the marks are used in relation to skincare preparations.  In my opinion, even with an awareness of the existence of these marks, it was reasonable for the Applicant to conclude that she was entitled to file an application for the Trade Mark.

52.   Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision made in bad faith.  The s 62A ground of opposition is unsuccessful.

Section 43

53.   This section requires the Opponent to demonstrate that there is a connotation in the Trade Mark (or a part of it) and that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.

54.   The ‘connotation’ must be inherent in the trade mark itself. The connotation must arise from the Trade Mark[25] and not from any comparison with another trade mark.[26]  As Spender J noted in Winton Shire Council v Lomas:

Section 43 is directed to the mark itself.  It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark.  That aspect of the matter is dealt with under s 60.[27]

[25] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

[26] Ibid; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmman J).

[27] [2002] FCA 288, [19].

55.   The Opponent particularises this ground in the SGP as follows:

The image used in the mark being opposed is similar to the image used in each of the opponent's marks 1803279, 2097321. Applicant is a fellow surgeon who seeks to create the impression her practice has an association with that of Dr Niro when she does not in fact such an association. It seeks to create the impression by use of the symbol that her practice has the endorsement of Dr Niro when it in fact does not.

56.   The existence of the Opponent’s Mark and the Opponent’s Device Mark have no relevance under s 43.  The first step in establishing this ground of opposition requires the Opponent to identify some connotation inherent in the Trade Mark.  The Opponent has provided no evidence to suggest any such connotation exists.

57.   I am not satisfied that the Trade Mark has a connotation within it which is likely to result in deception or confusion.  The s 43 ground has not been established.

Decision

58.   I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP and direct that application number 2092371 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  The disposition of the Application shall otherwise be in accordance with the court’s order or direction.

59.   The Applicant has requested an award of costs.  As costs generally follow the event, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

12 July 2023