Nyx, Los Angeles, Inc v Jack Gance and Mario Verrocchi

[2003] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by NYX, Los Angeles, Inc to registration of trade mark application 847589(3) - NYX - filed in the name of Jack Gance & Mario Verrocchi.

Date of Decision:	18 August 2003
Delegate:	Jock McDonagh
Representation:	Opponent - Mr Martin Pollock of Spruson & Ferguson Applicant - ( no appearance)
Decision:	1. Section 55(a) Registration refused 2. Costs awarded against Applicant

Background

1. The applicants, Jack Gance and Mario Verrocchi, filed trade mark application 832431 on 24 August 2000.  The application was for the word trade mark nyx. The application covered the following goods in Class 3:

   Class 3: Cosmetics, bodyspray, fragrance, perfumes, skin care preparations, toiletries, soap, colour cosmetics.

2. Following examination, the Registrar advertised the trade mark as accepted in the Australian Official Journal of Trade Marks on 22 March 2001.  The opponent, NYX, Los Angeles, Inc, filed notice of opposition to the trade mark's registration on 13 June 2001.  That notice listed 13 grounds of opposition, in effect all of the grounds of opposition to an application to register a trade mark provided in the Trade Marks Act 1995 ("the Act"). At the hearing only one ground was relied upon, that of ownership of the mark.

3. The opponent duly served and filed evidence in support.  No evidence has been filed by the applicants.

4. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 29 May 2003.

5. Mr Martin Pollock, of Spruson & Ferguson, Sydney, represented the opponent.  There was no appearance by the applicants.

   Ground 1 - s58, Applicant not Owner of Mark

6. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.  In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark.  To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

7. The opponent filed evidence, being a declaration by Mr Pollock that exhibits copies of the opponent’s invoices and a statutory declaration by Frank Smith, the principal of the company shown in two of the nine exhibited invoices as purchasing the opponent’s goods.  Eight of the nine invoices are dated between August 1999 and 20 August 2000, being prior to the application date of the applicant’s trade mark.

8. I am satisfied that the evidence establishes that the opponent’s goods bore the mark nyx and such goods were sold to Australian purchasers prior to 24 August 2000.  I am further satisfied that the opponent’s goods are lipsticks, lip pencils and lip liners, such goods being cosmetics.

9. I am satisfied that the competing marks are substantially identical. I am satisfied that the goods are the “same kind of thing”.  I am also satisfied that the opponent has used the nyx mark prior to the filing date of the applied for mark.  Therefore, I am satisfied that this ground of opposition has been established.

   Decision

10. Pursuant to s55 of the Act, I refuse to register trade mark application 847589.

    Costs

11. The opponent claims costs. Costs usually follow the event, and I see no reason why the opponent should not be entitled to its costs.  I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    18 August 2003