Opposition by Active Skin Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Yey Pty Ltd for removal of trade mark number 1127968 (class 3) – ACTIVE SKIN with flower device – in the...

[2021] ATMO 139

TRADE MARKS ACT 1995

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

Re:Opposition by Active Skin Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Yey Pty Ltd for removal of trade mark number 1127968 (class 3) – ACTIVE SKIN with flower device – in the name Active Skin Pty Ltd.

Delegate:	Nicholas Barbey
Representation:	Opponent: Michael Hazan of counsel instructed by Hazan Hollander Applicant: Actuate IP
Decision:	2021 ATMO 139 Trade Marks Act 1995 (Cth) – application under section 92 – removal sought for entire registration – use demonstrated in relevant period for a subset of goods – Registrar’s discretion not exercised – registration to be partially removed

Background

1. Active Skin Pty Ltd (‘Opponent’) is the owner of the following Australian trade mark registration:

   Trade Mark:  (‘Trade Mark’)

   Registration Number:             1127968

   Filing Date:  5 August 2006

   Specification:  Class 3: cosmetics (‘Registered Goods’)

2. On 6 February 2020, Yey Pty Ltd (‘Applicant’) filed a non-use application based on s 92(4)(a) and s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking complete removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’).

3. The Opponent filed a notice of intention to oppose removal on 18 February 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 16 March 2020. In turn, the Applicant filed a notice of intention to defend on 6 July 2020.

4. The evidence stages followed and only the Opponent filed evidence. This consisted of a declaration made on 6 October 2020 by Kim Maree Smith, director and secretary of the Opponent, with Exhibit KMS-1 and Confidential Exhibit KMS-2 (‘Smith Declaration’).

5. The Opponent requested to be heard and filed submissions on 3 August 2021 (‘Submissions’). The Applicant did not file submissions and took no further part in this matter. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 17 August 2021.  Michael Hazan of counsel presented submissions on behalf of the Opponent.

   Legal framework

6. Section 92 of the Act relevantly provides:

   Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

   (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or

   (ii) to authorise the use of the trade mark in Australia; or

   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv) has not used the trade mark in Australia; or

   (v) has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i) used the trade mark in Australia; or
             (ii) used the trade mark in good faith in Australia;
   in relation to the goods and/or services to which the application relates.

7. The non-use application was filed on 6 February 2020 and complies with s 93(2) of the Act.[1] Section 92(4)(a) and s 92(4)(b) provide alternative grounds for removal. However, given the manner in which s 92(4)(a) is expressed, it has been accepted that this provision essentially merges with s 92(4)(b) once a trade mark has been registered for five years.[2] Accordingly, I will consider the matter under s 92(4)(b) of the Act.

   [1] See Act s 93(2) which, prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3), provided that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.

   [2] See, eg, Mark Davison and Ian Horak, Shanahan's Australian Law of Trade Marks & Passing Off (Thomson Reuters, 6^th ed, 2016) [70.510]. See also Bangkok Broadcasting & T.V. Co., Ltd v Seven Network (Operations) Limited [2021] ATMO 78, [21]; Orientis Gourmet v ABCDEX Pty Ltd and Burkhard Geiger [2020] ATMO 134, [17]; Live Entertainment Investments III Pty Ltd v The Education Group Pty Ltd [2018] ATMO 3, [22].

   Relevant period and onus

8. The period in which the Opponent must establish use of the Trade Mark in good faith is the three-year period ending on 6 January 2020 (‘Relevant Period’).

9. Pursuant to s 100(1)(c) of the Act, the onus rests with the Opponent to rebut the non-use allegation made under s 92(4)(b). Section 101 of the Act provides the Registrar with the discretion to remove the Trade Mark from the Register in respect of any, or all, of the Registered Goods. If satisfied that it is reasonable to do so, the Registrar may decline to remove the Trade Mark from the Register even if the grounds on which the non-use application was made have been established.[3]

   [3] Act s 101(3).

10. I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[4]

    [4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.

    Evidence

11. According to the Smith Declaration, the Opponent has used the Trade Mark for ‘many many years and continues to do so’.[5] The Trade Mark is described as being an integral part of the ‘Active Skin business’ and forms part of the Opponent’s Australian trade mark portfolio which includes the following trade marks (collectively ‘Active Skin Marks’):[6]

    [5] Smith Declaration, [6].

    [6] The full specification of each trade mark is set out in the annexure to this decision.

Number	Trade Mark	Class(es)	Priority date	Status
1137007	3, 35	22 September 2006	Registered
1307342	3	23 July 2009	Registered
1682979	3, 35	24 March 2015	Accepted: Opposed
1688858	3, 35	22 April 2015	Accepted: Opposed

1. The declarant states that the Opponent has ‘supplied cosmetics in Australia by reference to one or more of the Active Skin Marks since 2004’.[7] This includes supplying retailers (e.g., pharmacies, beauty salons) as well as supplying directly to consumers via pop-up stalls and various online retail channels. The cosmetics supplied by the Opponent consist of a range of third-party products as well as its own products bearing the Active Skin Marks.

   [7] Smith Declaration, [14].

2. The Smith Declaration provides a historical overview of the Opponent and its trading activities. Relevantly, first use of the Trade Mark occurred in 2004 in relation to the distribution of ‘Detoxi-pad’ branded foot pads. The declarant states that during 2004, the Trade Mark was also used in respect of soaps and bath salts which she had personally manufactured.[8] In 2005, the declarant engaged an overseas based manufacturer to manufacture various skin care products which were subsequently sold in Australia under the Trade Mark.

   [8] Ibid [25].

3. Cosmetic products bearing the Active Skin Marks have been advertised through various print, radio and online mediums since 2004. The Opponent has also utilised letterbox drops, cold calling and in-store visits to retailers to promote its products. Further, the declarant submits that since 2006, the Active Skin Marks have appeared on the Opponent’s website at (‘Opponent’s Website’) and, since 2013, they have also been displayed on the Opponent’s social media accounts.

4. The Opponent has been aware of the Applicant since 2006. Both parties have been supplying cosmetics in Australia by reference to various trade marks featuring the term ‘active skin’.[9] The declarant explains that the parties are engaged in an ongoing legal dispute and, as at 6 October 2020, no coexistence agreement has been reached despite each party continuing to use trade marks featuring the term ‘active skin’.[10] 

   [9] Ibid [15].

   [10] Ibid [72].

   Discussion

5. The central issue for determination is whether the Opponent has used the Trade Mark in Australia in relation to the Registered Goods during the Relevant Period. If the evidence establishes that it has, the non-use allegation is taken to have been rebutted and the Trade Mark will remain registered. If the evidence fails to establish use of the Trade Mark in respect of all the Registered Goods, consideration will turn to whether it is reasonable to invoke the Registrar’s discretion to preserve the registration for any goods that the Trade Mark has not been used in relation to.

   Use of the Trade Mark during the Relevant Period

6. The SGP was particularised as follows:

   1. The trade mark has been used by the registered owner since 2004.

   2. The use of the trade mark by the registered owner includes use on products, invoices, stationery (including letterhead, business cards, with compliments slips) and advertising and marketing material, including advertisements in magazines.

   3. Samples of use of the trade mark by the registered owner are enclosed.

   4. Based on the evidence of use that has been made of the trade mark registration since 2004 the trade mark owner opposes the removal application.

   5. The trade mark owner also intends to use the mark in the future. Accordingly, the Registrar of Trade Marks is requested to refuse to remove the registration given its long history and the trade mark owner’s intention to use the mark in the future.

7. The ‘samples of use’ mentioned in the SGP consist of a blank letterhead, three blank with compliments slips and a one page brochure of skincare products which appear to display the Trade Mark on their labels.[11] Each ‘sample of use’ is undated and lacks any form of contextualisation. For example, it is unclear whether the samples have actually been used in the course of trade. As such, they do not assist the Opponent in rebutting the non-use allegation.

   [11] The skincare product images are in low resolution. As such, it is difficult to accurately discern their content.

8. Turning to the evidence filed, the Opponent submits that the Trade Mark has been used in relation to hand masks, face masks and bath salts during the Relevant Period.[12] To support this, copies of advertisements and photographs of various products displaying the Trade Mark were provided.[13] Representative examples are reproduced below:

   [12] Submissions, [9]–[11].

   [13] Exhibit KMS-1 to the Smith Declaration, 1A–6A.

(a) Exhibit KMS-1, 2A	(b) Exhibit KMS-1, 2A	(c) Exhibit KMS-1, 3A	(d) Exhibit KMS-1, 3A
(e) Exhibit KMS-1, 2A	(f) Exhibit KMS-1, 6A	(g) Exhibit KMS-1, 6A	(h) Exhibit KMS-1, 6A

1. The Submissions pre-emptively raised, and then sought to answer, the question of whether bath salts, hand masks and face masks are encompassed by the Registered Goods. In asserting such goods were cosmetics, the Opponent referred to s 9 of the Industrial Chemicals Act 2019 (Cth) which defines a ‘cosmetic’ as being ‘a substance or preparation intended for placement in contact with any external part of the human body’ with a view to, amongst other things, perfuming, cleansing or maintaining it in good condition. Attention was also drawn to the Australian Department of Health’s website which specifically lists face masks and bath salts as being examples of cosmetics.[14] I note that cosmetics is a broad term and the Opponent’s characterisation is consistent with the definition of ‘cosmetic’ provided for in the Macquarie Dictionary.[15] For present purposes, I accept that bath salts together with face and hand masks for beautifying are cosmetic goods and thus form a subset of the Registered Goods.

   [14] Submissions, [29].

   [15] Macquarie Dictionary (online at 9 November 2021) ‘cosmetic’ (def 1) may be defined as ‘a preparation for beautifying the complexion, skin, etc’.

2. With the above in mind, the examples reproduced at [19(a)] to [19(e)] of this decision demonstrate use of the Trade Mark in relation to a subset of the Registered Goods. However, they are undated and do not form part of a catalogue, magazine or the like, from which it could be inferred that they were offered for sale during the Relevant Period. As such, these examples rise no higher than being simply photographs of goods which the Opponent alleges were sold during the Relevant Period. It follows that they do not support the Opponent’s rebuttal of the non-use allegation.

3. Meanwhile, the example reproduced at [19(f)] of this decision demonstrates use of the Trade Mark during the Relevant Period. However, the advertisement simply states, ‘Mother’s Day Sale’, ‘This Week Only!’ and ‘Sale ends 13/5/18’. It is unclear what goods and/or services the Trade Mark is being used in relation to because the advertisement does not explain what the sale pertains to. In other words, this advertisement fails to demonstrate use in relation to the Registered Goods. As such, it does not assist the Opponent’s case.

4. In relation to the examples reproduced at [19(g)] and [19(h)] of this decision, each advertisement falls within the Relevant Period and demonstrates use in relation to bath salts and, with respect to [19(g)], also bath bombs. However, due to the low resolution of the advertisements, it is unclear whether the Trade Mark appears on the packaging. Having magnified each advertisement, I am satisfied that it is the Trade Mark which appears in each advertisement and consider the labelling to be consistent with the examples reproduced at [19(a)], [19(c)] and [19(d)] of this decision. Considered in its entirety, I am therefore satisfied that the Opponent used the Trade Mark in relation to bath salts and bath bombs during the Relevant Period.

5. Additionally, the Opponent submits that use of the Active Skin Marks constitutes use of the Trade Mark with additions or alterations not substantially affecting its identity. This is relevant because the evidence filed demonstrates that the Active Skin Marks were used in relation to a broader range of cosmetics during the Relevant Period. Screenshots of the Opponent’s Website disclose that, during the Relevant Period, the Active Skin Marks were used in relation to cosmetic serums, creams and peels as well as the retailing of general cosmetics.[16] Likewise, screenshots of the Opponent’s social media accounts demonstrate use of the Active Skin Marks in relation to similar goods and services during the Relevant Period.[17]

   [16] See Exhibit KMS-1 to the Smith Declaration, 315–371.

   [17] Ibid 963–1000.

6. The test for substantial identity was explained by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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 [earlier] mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[18]

   [18] [1963] HCA 66, [12].

7. The Opponent contends that the Active Skin Marks are substantially identical to the Trade Mark. At the hearing, Mr Hazan characterised the poppies appearing in the Trade Mark as being mere ‘stylistic additions’ and asserted that a total impression of similarity emerges from a comparison of the Trade Mark with each of the Active Skin Marks because they all contain the words ‘active skin’. To this end, Mr Hazan pointed out that trade marks with purportedly greater differences have been accepted as use of the same mark with alterations and additions that do not affect its identity.[19]

   [19] See, eg, Liliana Forza v Jaimex Nominees Pty Ltd [2016] ATMO 5 (‘DREAMZ LINGERIE’ constituted use of ‘DREAMZ’ [stylised]); Boost Juice Holdings Pty Ltd v Boost Foods Pty Ltd [2010] ATMO 93 (‘BOOST’ constituted use of ‘BOOST FOOD’); Greg Buckley v South Cone Inc [2013] ATMO 29 (‘REEF CLOTHING COMPANY AUSTRALIA [logo] constituted use of ‘REEF CLOTHING COMPANY [logo]).

8. For reference, the Trade Mark and the Active Skin Marks are reproduced side by side:

Trade Mark Active Skin Marks

1. In my assessment, the Trade Mark is not substantially identical to any of the Active Skin Marks. When compared side by side, it is clear that each trade mark shares a commonality in the words ‘active’ and ‘skin’. However, the visual presentation of each trade mark differs markedly. In the Trade Mark, the word ‘active’ is stacked atop of the word ‘skin’ and demarcated by a solid line. In contrast, the words ‘active’ and ‘skin’ are run in a single continuous line in each of the Active Skin Marks. The Trade Mark also contains two poppies featured prominently on each side of the stacked words. The size and presentation of the poppies is such that they are likely to strike the eye. Tellingly, the poppies are not an illustration of the words ‘active skin’,[20] are not descriptive of the goods and thus form an essential feature of the Trade Mark. This use of imagery is completely absent in three of the Active Skin Marks and the poppies are plainly dissimilar to the fruit branch depicted in the remaining ‘Active Skin Stem Cell Serum’ mark.

   [20] Cf E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).

2. The significance of how the presentation of elements within a trade mark may affect a finding of substantial identity is illustrated by Optical 88 Limited v Optical 88 Pty Limited (No 2).[21] In that decision, the following trade marks were determined not to be substantially identical despite being comprised of the same word and image elements:

   [21] [2010] FCA 1380 (Yates J).

‘707 Mark Cleaning Cloth Mark (Cloth Mark)[22]

[22] Extracted from Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [38] (Cowdroy, Middleton, Jagot JJ).

1. In concluding that the ‘707 Mark was not substantially identical to the Cloth Mark, Yates J stated:

   … the impression created [by the Cloth Mark] is quite different because of the change in position of the applicant’s logo, which imparts a different orientation to the mark. This different orientation gives a sense of triangularity that also underscores the centrality and prominence of the name “OPTICAL 88” (in Chinese characters). When compared with the ‘707 mark, a substantial impression of identity does not arise. … Therefore, the supply of the cleaning cloth to Ms Sinclair does not instance a use of the ‘707 mark (with additions or alterations not substantially affecting its identity) ...[23]

   [23] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [261] (Yates J). This finding was not disturbed by the Full Court on appeal: see Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [35]–[39] (Cowdroy, Middleton, Jagot JJ).

2. The importance of a trade mark’s presentation is further highlighted by the recent decision in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[24] wherein the following trade marks were determined not to be substantially identical:

   [24] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

Wicked Tail Mark New Wicked Mark

1. In finding that the trade marks were not substantially identical, the Full Court of the Federal Court stated:

   Having regard to the presentation of the two marks, including the distinctive tail on the “D” of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical.[25]

   [25] Ibid [162].

1. Evidently, the presentation of a trade mark’s elements is an important consideration that cannot be ignored when determining if two trade marks are substantially identical. On a side by side comparison, having regard to the essential features of the Trade Mark and the Active Skin Marks including how they have been presented, I find that the total impression which emerges from each comparison is one of dissimilarity.[26] It follows that use of any of the Active Skin Marks does not constitute use of the Trade Mark with additions or alterations not substantially affecting its identity. As such, the Opponent is unable to rely on the use made in respect of the broader range of cosmetics under the Active Skin Marks to rebut the non-use allegation.

   [26] Incidentally, this finding is consistent with the delegate’s decision in Active Skin P/L v Yey P/L [2018] ATMO 194, [60] wherein the word ‘ACTIVESKIN’ was found not to be substantially identical to the Trade Mark.

2. Accordingly, the evidence before me establishes that the Opponent has used the Trade Mark in relation to bath salts and bath bombs, being a subset of the Registered Goods, during the Relevant Period.

   Obstacles to use

3. The Opponent has not asserted that there was an obstacle to use of the Trade Mark during the Relevant Period.[27] For completeness, I confirm that there is nothing in the information before me to suggest that an obstacle prevented use of the Trade Mark in relation to the Registered Goods during the Relevant Period.

   [27] Act s 100(3)(c).

   Registrar’s discretion

4. Pursuant to s 101 of the Act, the Registrar has a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. This discretion ‘is limited only by the subject-matter, scope and purpose of Part 9 of the Act’.[28] In this regard, the Full Court of the Federal Court observed:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.[29]

   [28] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35]( Jacobson, Yates and Katzmann JJ).

   [29] Ibid [38].

5. It is incumbent upon the Opponent to show that the Registrar’s discretion should be exercised in its favour, however, exceptional circumstances are not required to be shown before the discretion may be invoked.[30]

   [30] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [273] (Yates J).

6. Here, consideration must be given to whether the demonstrated use of the Trade Mark in relation to a subset of cosmetics, being bath salts and bath bombs, justifies preserving the registration for ‘cosmetics’ in general. In this regard, I acknowledge that ‘it is not necessary to establish that the mark was used on every type of product which might come within that particular term or description of goods’ in order to maintain its registration.[31] However, if the registration is capable of being limited to reflect the use demonstrated, without resorting to drawing fine distinctions, then it should be so limited unless sufficient reasons to leave the registration unamended are established.[32]

   [31] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [138] (Bennett J).

   [32] See, eg, Murray Goulburn Co Operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269, 271–272 (Lockhart, Pincus and von Doussa JJ) wherein the registered goods of ‘dairy products’ was limited to a specific subset of those goods for which use had been demonstrated, namely, ‘cheese and flavoured milk’.

7. The Submissions contend that the Registrar’s discretion ought to be exercised in the Opponent’s favour because the Trade Mark and ‘active skin’ have been continuously used (i.e., before, during and after the Relevant Period) in respect of cosmetics for a genuine commercial purpose.[33] At the hearing, Mr Hazan also claimed that the Trade Mark has a reputation and it has not been abandoned.

   [33] Submissions, [36].

8. For the following reasons, I do not consider the Registrar’s discretion should be exercised to preserve the registration for ‘cosmetics’ in general. First, as touched on at [20] of this decision, ‘cosmetics’ is a broad term generally used to denote a substance or preparation that beautifies an external part of the human body. An extremely wide range of goods are thus capable of being characterised as cosmetics. This includes items such as make-up, depilatories, hair dyes, perfumes, tanning lotion and face washes. Given this broad ambit, it is plain that a subset of cosmetics is capable of being separately identified. In my view, the excision of bath salts and bath bombs does not require fine distinctions to be drawn. These goods are readily identifiable and can be separated from disparate goods such as make-up, tanning lotions or perfumes.

9. Second, the Opponent’s use of the Trade Mark appears to have been active between 2004 to 2013 but it significantly tapers off thereafter. Contrary to the contentions advanced in the Submissions, I am unable to locate any evidence of the Trade Mark being used after the Relevant Period. Meanwhile, as discussed at [19] of this decision, the use of the Trade Mark during the Relevant Period is confined to examples which indicate that the use was slight, sporadic and in relation a small subset of cosmetics being bath salts and bath bombs. In short, there is nothing in the evidence before me that indicates there would be any marketplace confusion if the Registered Goods were limited to the actual goods which the Opponent has used the Trade Mark on.

10. Third, I am not satisfied that the evidence before me demonstrates that the Trade Mark has acquired any discernible reputation in respect of cosmetics. The evidence filed indicates that the Trade Mark was primarily used in relation to cosmetic products and the retailing of third-party cosmetic products prior to 2013. However, the majority of invoices and advertisements provided demonstrate that the Trade Mark was overwhelmingly used in relation to the retail and distribution of products either branded under a different name[34] or third-party products.[35] Further, annual revenue figures derived from use of the Trade Mark in relation to the Registered Goods or the related advertising expenditure have not been disclosed by the Opponent.

    [34] Such as ‘Detoxi-pad’ [stylised] (Australian trade mark registration number 1346207), ‘RegenaCol’ [stylised] (Australian trade mark registration number 1284345), ‘Hyaluron8’ [stylised] (Australian trade mark registration number 1307585), ‘SwissApple Serum’ [stylised] (Australian trade mark registration number 1309367) or ‘Col Regen’ [stylised] (Australian trade mark registration number 1284352).

    [35] See, eg, Exhibit KMS-1 to the Smith Declaration, 124–135, 192–203, 225–266 and 481–633.

11. Fourth, the evidence shows that the Active Skin Marks were adopted in or around 2013[36] as being the primary trade marks utilised by the Opponent. Notably, the Trade Mark does not appear in any of the examples of the Opponent’s Website provided despite the screen captures being dated from as early as November 2013.[37] Similarly, the Trade Mark is conspicuously absent from the numerous examples of the Opponent’s online stores on eBay, Amazon and Etsy.[38] Further, the social media examples demonstrate one isolated instance of use of the Trade Mark in October 2013.[39] The Active Skin Marks appear exclusively on the social media examples post 2013.[40] While I agree that the evidence does not provide a sufficient basis to infer that Trade Mark has been abandoned, I am equally satisfied that the Trade Mark is not being prominently used, if at all, by the Opponent after the Relevant Period.

    [36] See, eg, Confidential Exhibit KMS-2 to the Smith Declaration, 220–265.

    [37] See Exhibit KMS-1 to the Smith Declaration, 291–391.

    [38] Ibid 740–945.

    [39] Ibid 947.

    [40] Ibid 948–1000.

12. Fifth, the contemporaneous use of ‘active skin’ (which is taken to be a reference to the Active Skins Marks) during the Relevant Period does not, of itself, provide a sufficient basis to exercise the discretion in the Opponent’s favour. I acknowledge the Registrar’s discretion is broad and that the Opponent’s use of a similar trade mark has on some occasions been considered a relevant discretionary consideration.[41] However, I am unpersuaded that consumers would be adversely affected by the Registered Goods being limited to reflect the actual use made of the Trade Mark and, pertinently, the Opponent has not adduced any evidence that would lead me to conclude otherwise. Similarly, I note that the limitation of the Registered Goods would not impair the Opponent’s capacity to continue to use its Active Skin Marks.

    [41] Soncini v Registrar of Trade Marks [2001] FCA 333, [18]–[19] (Sackville J).

13. Ultimately, the overarching purpose of s 92 of the Act is to enable the removal of unused trade marks. The public interest in the integrity of the Register will therefore generally demand the removal of an unused trade mark unless the opponent to a non-use allegation provides sufficient and cogent reasons to warrant the retention of an unused trade mark. In this instance, the evidence establishes that use of the Trade Mark has only occurred in relation to a discrete subset of cosmetics and its use appears to have been gradually phased out in favour of the Active Skin Marks approximately four years prior to the commencement of the Relevant Period.

14. Accordingly, I am not satisfied that it is reasonable to exercise the discretion in the Opponent’s favour to allow the Trade Mark to remain on the Register in respect of ‘cosmetics’ in general. As such, I decline to exercise the discretion in this manner.

    Decision

15. The Opponent has rebutted the allegation of non-use in respect of a subset of the Registered Goods, namely bath salts and bath bombs. I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Registered Goods to remain unamended. Accordingly, I direct that, one month from the date of this decision, trade mark registration number 1127968 be amended as follows:

    Class 3: cosmetics bath salts; bath bombs

16. If the Registrar is served with a notice of appeal within the relevant timeframe, trade mark registration number 1127968 shall not be amended until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.

    Costs

17. Both parties have sought an award of costs. The general rule is that costs follow the event. However, as each party has been partially successful, I believe it is appropriate in this case that each party bears its own costs.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    17 November 2021

    
    

    Annexure

Number	Trade Mark	Class(es)	Priority date
1137007	Class 3: cosmetics Class 35: distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)	22 September 2006
1307342	Class 3: cosmetics; cosmetics for personal use; cosmetics for the treatment of dry skin; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics preparations; skincare cosmetics	23 July 2009
1682979	Class 3: skincare cosmetics; Skincare preparations (cosmetic); Beauty care preparations; Beauty care products; Beauty creams; Beauty face packs; Beauty gels; Beauty masks; Beauty milks; Beauty preparations; Beauty products; Distilled oils for beauty care; Non-medicated beauty preparations; Non-medicated skin care beauty products; Products for beauty care; the aformentioned goods being cosmetics Class 35: distribution of advertising material; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of prospectus; Distribution of prospectuses; Distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins	24 March 2015
1688858	Class 3: anti-sun preparations (cosmetics); body creams (cosmetics); colour cosmetics for the eyes; colour cosmetics for the skin; cosmetics; cosmetics for animals; cosmetics for bronzing the skin; cosmetics for eyebrows; cosmetics for eyelashes; cosmetics for personal use; cosmetics for protecting the skin from sunburn; cosmetics for skin tanning; cosmetics for suntanning; cosmetics for the treatment of dry skin; cosmetics for the use on the hair; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of eye shadow; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics in the form of mascara; cosmetics in the form of milks; cosmetics in the form of nail polish; cosmetics in the form of oils; cosmetics in the form of powders; cosmetics in the form of rouge; cosmetics preparations; cosmetics to remove pigmentation marks; essential oils for use in cosmetics; eyebrow cosmetics; facial wipes impregnated with cosmetics; hair cosmetics; liners (cosmetics) for the eyes; milks (cosmetics); moisturisers (cosmetics); nail base coat (cosmetics); nail enamel (cosmetics); nail enamel remover (cosmetics); nail gloss (cosmetics); nail hardeners (cosmetics); nail polish removers (cosmetics); nail preparations (cosmetics); nail revitalising lotions (cosmetics); nail tips (cosmetics); nail treatment creams (cosmetics); nail treatment gels (cosmetics); nail treatment lotions (cosmetics); nail varnish remover (cosmetics); nail varnish removing preparations (cosmetics); night creams (cosmetics); non-medicated cosmetics; nourishing creams (cosmetics); oils for the body (cosmetics); oils for the breasts (cosmetics); oils for the skin (cosmetics); paper hand towels impregnated with cosmetics; preparations for removing cosmetics; skincare cosmetics; sprays for use on the body (cosmetics); sun barriers (cosmetics); sun blocking cream (cosmetics); sun blocking gel (cosmetics); sun blocking lipsticks (cosmetics); sun blocking lotions (cosmetics); sun blocking oils (cosmetics); sun blocking preparations (cosmetics); sun creams (cosmetics); sun gel (cosmetics); sun lotions (cosmetics); sun milk (cosmetics); sun protecting creams (cosmetics); sun protection oils (cosmetics); sun protection products (cosmetics); sun protectors for lips (cosmetics); sun screen preparations (cosmetics); sun screening preparations (cosmetics); sun skin care products (cosmetics); sun-tanning preparations (cosmetics); suntan lotion (cosmetics); suntan milk (cosmetics); suntan oils (cosmetics); suntan preparations (cosmetics); tanning compositions (cosmetics); tanning creams (cosmetics); tanning oils (cosmetics); tanning preparations (cosmetics); textile pads impregnated with cosmetics; tints (cosmetics); tissues impregnated with cosmetics; toilet napkins of cellulose impregnated with cosmetics; toilet napkins of cellulose wadding impregnated with cosmetics; toilet napkins of paper impregnated with cosmetics; toy cosmetics (usable); varnishes (cosmetics); skincare preparations (cosmetic) Class 35: distribution of advertising material; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); distribution of prospectus; distribution of prospectuses; distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins	22 April 2015