Opposition by Active Skin Pty Ltd to registration of trade mark application 1786296 (35, 44) - ACTIVESKIN - in the name of Yey Pty Ltd

[2018] ATMO 194

TRADEMARKSACT 1995

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

Re:Opposition by Active Skin Pty Ltd to registration of trade mark application 1786296 (35, 44) - ACTIVESKIN - in the name of Yey Pty Ltd.

DELEGATE:

M. Cooper

REPRESENTATION:

Opponent: Written submissions from Hazan Hollander Applicant: A. Sykes of Counsel instructed by IP Actuate

DECISION:

2018 ATMO 194

Trade Marks Act 1995

Opposition to registration under s.52: ss.42, 44, 58, 58A and 60 considered – no opposition grounds established.

Background

1. This matter concerns an opposition by Active Skin Pty. Ltd. (“the Opponent”), under

   s.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the name of Yey. Pty. Ltd. (“the Applicant”):

   Application Number: 1786296

Trade Mark: ACTIVESKIN (“the Trade Mark”) Filing Date: 28 July 2016

Goods and Services

Class 35:

Online retailing of goods namely, haircare products, skincare products, Cosmetics, make up and perfumes; online discount services being the retailing of goods namely haircare products, Skincare products, cosmetics, make up and perfumes; online retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies namely haircare products, skincare products, cosmetics, make up and perfumes

Class 44:

Beauty salons; Beauty services; consultancy services relating to personal appearance (hair, beauty, cosmetics) being beauty and skin services; Medical services for treatment of the skin; Services for the care of the skin; Massage

(“the Services”)

Endorsement: Provisions of paragraph s 44(3)(b) and/or Reg 4.15A(3)(b) applied.

1. The Trade Mark was examined and advertised as accepted for possible registration on 22 December 2016 in the Australian Official Journal of Trade Marks.

1. On 20 February 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 20 March 2017, a Statement of Grounds and Particulars (“the SGP”) was filed which cited opposition grounds under sections 42, 44, 58, 58A and 60 of the Act.

1. The Applicant filed a Notice of Intention to Defend on 28 April 2017.

1. On 22 February 2018 the Applicant requested a hearing. I heard the matter in Canberra on 7 August 2018 as a delegate of the Registrar of Trade Marks. Andrew Sykes of Counsel, instructed by Actuate IP, appeared for the Applicant. The Opponent did not appear.

Evidence

1. Evidence in Support was filed by the Opponent on 7 August 2017. It comprised  the statutory declaration of Stephen Smith, the director of the Opponent’s holding company, with Exhibit SS-1 (“the first Smith declaration”).

1. The Applicant’s Evidence in Answer was filed on 10 November 2017 and comprised the following statutory declarations, all dated 10 November 2017:

·     Nicola Gleeson, General Manager of Skinstitut Pty. Ltd. (“the Gleeson declaration”).

·     Benjamin Peter Freeman, a lawyer with Actuate IP (the Applicant’s representative) with Annexures BF-1- BF-10 (“the Freeman declaration”)

·     Ben  Wyeth  director  of  Hollvette  Pty  Ltd.,  the  Applicant’s  holding  company,  with Annexures BW-1 to BW-19 (“the Wyeth declaration”).

1. The Opponent’s Evidence in Reply comprises a further declaration by Stephen Smith dated 17 January 2018 (“the second Smith declaration”) with Exhibit SS-2.

1. In accordance with directions, the Opponent and Applicant filed written submissions on 24 July 2018 and 31 July 2018 respectively. On the evening prior to the hearing, the Opponent, who then advised it would not be appearing at the hearing, filed the “Opponent’s Submissions in Reply”. It did not seek leave to do so. On the face of it, filing such a document was contrary to the requirement in r.21.20E(3)(b) of the Trade Mark Regulations 1995 (“the Regulations”) that, where the Registrar decides on an oral hearing, an Opponent must file a summary of submissions at least 10 business days before a hearing). At the hearing, the Applicant did not object to the acceptance of these late-filed submissions and indicated that it would address them. In the circumstances, where there is no clear or claimed prejudice to the Applicant, and the submissions are relevant to the issues under consideration, they were admitted under r.21.15(4) of the Regulations.

The Opponent’s evidence

1. In his first declaration, Mr. Smith outlined the Opponent’s history. He claimed that between March 2004 and August 2006 he and his wife had traded under the business name Active Skin and continued to do so after the incorporation of the Opponent in August 2006, transferring the goodwill in the Activeskin trade marks to the Opponent at this time.

1. He listed the Opponent’s trade marks as follows:

Opponent’s Trade Marks	No.	Priority date	Goods/Services
1127968	5 August 2006	Class 3:Cosmetics
Active Skin	1137007	22 September 2006	Class 3: Cosmetics Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)
1307342	23 July 2009	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
1682979	24 Mar 2015 (under examination- opposed     by Applicant)	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 aforementioned 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
activeskin	1688858	22 Apr 2015 (under examination opposed by Applicant)	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

1. Mr. Smith referred to these collectively as “the activeskin trade marks”. To avoid confusion, given the close similarity between all the marks, I shall refer to the relevant marks, being the marks referred to above save 13073421, collectively as “the Opponent’s marks”.

2. Regarding the use of the Opponent’s marks, Mr. Smith asserted that since March 2004, the Opponent (and before 2006 its predecessors in title) had marketed, advertised, offered for sale and sold a wide range of third party cosmetic and skin care goods in Australia under and by reference to the Opponent’s marks. A number of documents were exhibited which were said to demonstrate such use of the Opponent’s marks from around May 2004.

1. Mr. Smith claimed that the Opponent’s marks also appeared in third-party advertisements for the goods and services in respect of which they were designated, and on its website “since around 2007”. He exhibited copies of some of the website pages between 2007 and 2016 which had been extracted using the Wayback machine. He claimed that customers could purchase the advertised goods from the online store by adding them to a “shopping cart.”

1. Selected, redacted tax invoices issued by the Opponent to its customers over the period 5 February 2005 to 14 May 2015 were also attached and which were claimed to “prominently feature the Activeskin trade marks.” Selected tax invoices from 3rd parties were also exhibited showing the delivery of various types of equipment and provision of services to the Opponent.

1. In addition to magazine, newspaper and radio advertising undertaken by the Opponent, it was also claimed that since March 2004 the Opponent had promoted its goods by reference to the Opponent’s marks in product brochures sent to its customers across Australia. Copies of its Yellow Pages advertisements for July 2004 and July 2005 were exhibited as were photographs of an “active skin” branded car, said to be from 2009, displaying one of the Opponent’s marks.

1. In his Evidence in Reply, in response to the Freeman statement that he was unable to locate the Opponent’s claimed advertising in the Yellow Pages in 2004 and 2005, Mr. Smith attached an email confirming the placement of a listing for Active Skin Pty Ltd in the 2005

1 As discussed in paragraph 52.

Liverpool edition of the Yellow Pages. Mr. Smith also attached a facsimile dated 4 May 2004 from an advertising consultant at Sensis, to Mr. Smith’s wife, advising of a new Yellow Pages online product and that she would call her to discuss it.

1. In response to the Applicant’s evidence distinguishing wholesale and retail services, Mr. Smith stated that, in his experience, it is “common for traders to offer both wholesale and retail services” in selling and distributing cosmetics. He attached copies of various trade mark registrations which indicated the provision of wholesaling and retailing of cosmetics by reference to the same trade mark.

The Applicant’s evidence

1. In her declaration, Ms. Gleeson outlined her experience in the skincare product industry and detailed the differences between the wholesale and retail trade in that industry. She noted the following differences:

·Wholesale services are not consumer facing, but by their nature are limited to business to business transactions.

·Wholesalers and retailers market and sell their product through different channels. Wholesalers market their brands through trade conferences and exhibitions, whereas retailers communicate directly to the public.

·Customers of each have different purposes for purchase, i.e. customers buy from wholesalers to generate revenue, whereas retail customers purchase for personal use.

·Purchasing methods and habits also differ. The general public cannot make wholesale purchases and when they buy they generally purchase smaller units of goods.

1. In his declaration, Mr. Freeman, a lawyer for the Applicant’s legal representatives, annexed copies of ASIC and ABN searches for the Opponent. In addition, he claimed to have undertaken several searches of various Yellow and White Page directories covering the 2004- 2005 period, none of which demonstrated any advertising as claimed by the Opponent.

1. Mr. Wyeth stated in his declaration that, as well as being a director of the Applicant’s holding company,  Hollvette  Pty.  Ltd.,  he  is  also  the  General  Manager  of  the  online  retailing

component of the Applicant’s Activeskin business. He claimed to have been “directly involved in the Australian cosmetics industry” since 1999 when he assisted his wife with her beauty treatment business.

1. He noted the Applicant’s existing registered trade marks, 1094748 and 1688828. These are listed below:

Applicant's Existing  Trade Marks	No.	Priority date	Services
1094648	17 January 2006	Class 35: Online retail and wholesale sale of goods namely haircare products, skincare products, cosmetics, make up and perfumes Class 44: Beauty and skin care services; beauty salons; skin treatments; massage
activeskin	1688828	22 April 2015	Class 35: Online discount services being the retailing and wholesaling of goods namely haircare products, skincare products, cosmetics, make up and perfumes; Online retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies namely haircare products, skincare products, cosmetics, make up and perfumes; online retailing of goods namely, haircare products, skincare products, cosmetics, make up and perfumes Class 44: Consultancy services relating to personal appearance (hair, beauty, cosmetics) being beauty and skin services

1. Mr. Wyeth stated that the Applicant initially began operation as “Escape Skin & Body”, then “Sensora” and then “Activeskin”. He did not provide dates for these name changes, only claiming that the company had been operating its beauty salon since 1999. Retailing of third party cosmetics was said to be a “substantial component of the salon operations”, comprising

up to 500 individual products. Early in 2004 he said the company recognised the growing demand for convenient online retailing and developed a business plan which showed the viability of launching online. He claimed he devised the name “ActiveSkin” for the online store and researched its availability in 2004. He said he located neither a business with that name nor a trade mark registration. He found the domain name was also available and on 25 February 2005 he registered “ He said the website was launched in

April 2006 and began, and has continued, online retailing of 3rd  party beauty and cosmetic

products. A current website extract, as well as extracts of the Applicant’s website since 20 July 2006 using the Wayback machine, were annexed which were said to demonstrate use of the Trade Mark in relation to the services claimed.

1. Mr. Wyeth further claimed that the Applicant had built a substantial reputation. He included confidential turnover figures which indicated strong sales, as well as significant advertising and marketing expenditure. Various invoices that contained references to the Trade Mark were also annexed. In addition, Google AdWord and Analytics results from 2007 to 2017 were provided which demonstrated several hundred thousand clicks and page views each year. Invoices from a search engine optimisation firm were also attached demonstrating their engagement by the Applicant from 2006, and a different firm from 2015. Activeskin flyers and information concerning its Facebook and Instagram account pages and activity were also annexed.

1. Mr. Wyeth claimed that the Applicant had received awards but no documentary evidence supporting this claim was provided.

1. Mr. Wyeth discussed the differences between wholesaling and retailing within the Australian beauty and cosmetics industry and stated that the key differences were the target market and the users. He claimed that because the Opponent is a wholesale supplier and the Applicant is a retailer “they cannot possibly compete with each other or interfere with each other’s market”. The method of purchase/sale was also claimed to be a “key differentiator” because of the size of orders, payment terms, purchase price, and relationship with the client.

1. Mr. Wyeth concluded by accepting that wholesalers and retailers relied on each other but he maintained that it was not the same kind of service and each required a different approach and skillset.

Submissions of the Opponent

1. The Opponent relied on grounds under sections 42, 44, 58, 58A and 60 of the Act to oppose the Trade Mark. Specifically it was claimed its evidence established that:

   ·it has used the Opponent’s marks since March 2004;

·it has a reputation in each of them; and

·the Trade Mark is substantially identical with or deceptively similar to each of its trade marks.

1. In relation to its s.44 grounds, the Opponent claimed that each of the Opponent’s marks has an earlier priority date to the Trade Mark, that the Trade Mark claims services “that are similar to the goods or closely related to the services claimed”2 by the Opponent’s marks, and it is substantially identical with or deceptively similar to each of the Opponent’s marks.

1. In the event that a finding for the Applicant was made under s.44(4) of the Act, the Opponent invoked s.58A on the basis that it had used the Opponent’s marks continuously since 2004, which predated the Applicant’s use, in respect of similar goods and closely related services or similar services and closely related goods to those of the Trade Mark.

1. Regarding s.60, the Opponent submitted that its evidence demonstrated it has used the Opponent’s marks as a badge of origin on its website, magazines, directories, quotations, invoices and receipts, stationery and office materials, newspaper and radio and had established its reputation among a significant section of the public. Given this reputation and the high degree of similarity between the Trade Mark and the Opponent’s marks, it was submitted that there could be no doubt as to the likelihood of deception or confusion arising from use of the Trade Mark.

1. Relying on s.18 of the Australian Consumer Law (“the ACL”) and the tort of passing off for its s.42(b) opposition ground, the Opponent submitted that the Trade Mark is substantially identical with or deceptively similar to its marks such that consumers would assume a connection between the Opponent and the Applicant. Referring to its s.44 submissions, it contended that the Opponent had used its marks prior to the relevant date, it is the first user of the marks and it was therefore “inevitable” that any use of the Trade Mark would draw on the

2 I note the Opponent cited the incorrect comparison under s.44(2).

Opponent’s reputation in its marks and would therefore be misleading or deceptive or likely to mislead or deceive.

1. In relation to passing off, the Opponent reiterated its claim that the Opponent’s marks have been used extensively as badges of origin in respect of the goods and services since 2004. It was submitted that misrepresentation “will no doubt take place” because the Trade Mark is substantially identical with or deceptively similar to each of the Opponent’s marks and therefore, it was submitted, that any use of the Trade Mark other than by the Opponent “has a high potential to injure the reputation of the Opponent and goodwill in the [Opponent’s marks]”.

1. In its submissions in reply, the Opponent noted the failure of the Applicant to address the relationship between the goods designated in the Opponent’s marks and the Trade Mark’s services, as required by s.44(2). The Opponent listed those services and asserted that “at the very least the above services are similar or closely related to the goods and services claimed by the [Opponent’s marks]”.

Applicant’s submissions

1. The Applicant claimed that it had been conducting salon services and retailing of beauty and cosmetic products since 1999, creating and selecting the name “Activeskin” in mid-2004, registering the domain name, “activeskin.com.au” on 25 February 2005 and launching a website from that address in April 2006. Since then it was claimed to have “continuously provided retail services from the Applicant’s website in relation to a wide range of third party beauty and cosmetic products.”

1. In relation to s.44, the Applicant noted the addition of the Opponent’s registered trade mark 1307342 which had not been included in the SGP and, in absence of a request to amend, it did not consider it necessary to address this trade mark in its submissions.3

2. It was acknowledged that the Trade Mark is substantially identical to the Opponent’s mark “activeskin” (1688858) and at least deceptively similar to the other Opponent’s marks.

3 Discussed further at paragraph 52.

1. It was submitted however that the s.44 ground was not made out for the following summarised reason/s:

   i.The Opponent had failed to establish its services are similar services to the Services or that any of the goods are closely related to the Services.

   ii.In the alternative, the Applicant had established “other circumstances” for the purposes of s.44(3)(b), including that the Applicant has had registration for a stylised version of the Trade Mark for over 11 years.

   iii.In the further alternative, the Applicant had established honest concurrent use under s.44(3)(a) as at the relevant date.

1. In relation to (i), the Applicant contended that the entirety of the Services were dissimilar to those of Opponent. Specifically, that its “Online retail and discount” services were dissimilar to the “Distribution of goods” as designated in the Opponent’s marks. The Gleeson declaration, in its discussion of the differences between wholesale and retail services, was said to support this submission.

1. In reference to (ii), reliance was placed on the Richard James Pty Ltd v Grant Olver Investments Pty Ltd case (“Richard James”) which referred to, as a relevant factor in determining whether s44(3)(b) should be applied, “any aspect of the the applicant’s use tending to minimize the risk of confusion or showing particular hardship”4. Reliance was also placed on the Registrar’s decision to initially accept the application under s.44(3)(b). Reference was made to the Applicant’s ownership of registered trade mark 1094648 for the stylised version of “activeskin”, with a priority date of 17 January 2006, before any of the Opponent’s registrations. A situation in which the Applicant has a similar trade mark which predates any of the registrations on which the Opponent relies, was said to be a circumstance that meant it was “proper” not to apply s.44(2). The Applicant noted the Opponent’s failure to address s.44(3)(b) and/or the examiner’s findings in its submissions.

1. In the alternative the Applicant submitted that the mark should be accepted by reason of honest concurrent use pursuant to s.44(3)(a). The Applicant submitted that the evidence demonstrated continuous use and substantial investment and extensive promotion of the Trade Mark and that the Applicant adopted and used it honestly and in good faith. It was claimed that the Applicant conducted thorough searches and was not able to locate use by any other traders.

4 [2005] ATMO 18 at [36].

1. With regard to s.58A, because the application has not been accepted on basis of s.44(4), this section was said not to apply.

1. The Applicant rejected the Opponent’s s.58 submission, that is, that the Opponent is the owner of “activeskin” at common law because it has used it in relation to the same or similar services as those claimed in the Trade Mark. While acknowledging the Opponent’s use of its trade marks in some capacity prior to the relevant date, the Applicant submitted that the Opponent had provided no evidence that it engaged in retail sales and its evidence indicated that it only carried out wholesale activities which, it contended, is not “the same kind of thing” as the services designated by the Trade Mark. That evidence was said to be constituted by:

   ·invoices indicative of wholesale transactions,

   ·print advertisements aimed at wholesalers,

   ·the Yellow Pages listing merely listed the Opponent’s business name and telephone number, it did not demonstrate its activities,

   ·prior to the launch of the Opponent’s website, the only way goods could be ordered was on a wholesale basis (i.e. the client was diverted from the Opponent’s “under construction” website to the Wholesale Order Form).

1. Regarding the s.60 ground, the Applicant contended that the Opponent’s marks did not have the requisite reputation. There was no evidence of sales, advertising or promotion figures or evidence of its reputation among end consumers. Its trading activities appeared to be confined to wholesale transactions and, it followed, that any reputation it might have would be confined to retailers. On this basis it was submitted that there was no scope for any relevant deception or confusion to arise.

1. Conversely, it was submitted that the evidence demonstrated the Applicant had a far superior reputation for its services. It had provided evidence of substantial use and promotion, strong sales and advertising figures. In this context it was said to be highly unlikely that customers would be confused or make a link to the Opponent’s services and therefore there was no likelihood of deception or confusion arising by use of the Trade Mark.

1. In relation to the s.42(b) ground, the Applicant noted the Opponent’s claims that use of the Trade Mark would be contrary to s.18 of the ACL because it would cause consumers to assume a connection between the Opponent and the Applicant. In this context the Opponent

needed to establish its reputation amongst those who would be exposed to the conduct, that is, the end consumers. It was submitted that the Opponent had failed to do so. Similarly, in relation to passing off, the Opponent needed to demonstrate reputation, misrepresentation and damage but the Applicant submitted that none of these elements had been made out.

1. The Applicant sought costs.

Grounds of Opposition and Onus

1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.5

1. As noted above, the Opposition grounds claimed in the SGP are those under sections 42, 44, 58,58A and 60 of the Act.

1. The time at which a ground of opposition must be established is the date of filing of the application for registration6. In this case that date is 28 July 2016 (“the relevant date”), also referred to as the “priority date” in ss.44 and 60.

Consideration and reasons

Section 44

1. In the SGP, the Opponent expressed the opposition ground based on section 44 of the Act as follows:

   The opposed mark is substantially identical with or deceptively similar to the following marks and claims goods that are the same or closely related to the goods claimed by the following prior marks:

   Particulars:

   a.  trade mark registration nos. 1137007 and 1127968 and

   b.  trade mark application nos. 1682979 and 1688858.

1. In its Evidence in Support and submissions the Opponent relied on its 5 registered trade marks, 1127968, 1137007, 1307342, 1682979 and 1688858. The Applicant noted this discrepancy in its submissions and, observing that no request had been made to amend the SGP, declined to address this additional trade mark registration. I note that the Opponent, in

5 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6-26].

6 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at [595].

filing its “Submissions in reply” took no issue with this position. In the absence of any argument by the Opponent that it should be included, or any objection to its exclusion, my consideration only relates to its registered trade marks 1137007, 1127698, 1682979 and 1688858 (“the Opponent’s marks”).7

1. Section 44 of the Act 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.

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:

7 I also note that the SGP refers to the goods claimed by the Trade Mark when in fact the Trade Mark designates only services.

(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.

Note 1:     An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:     For predecessor in title see section 6. Note 3:                For priority date see section 12.

1. Therefore, in order to establish the section 44 ground of opposition under, relevantly, subparagraph 44(2), the Opponent must demonstrate, subject to subparagraphs (3) and (4), that the Trade Mark:

·is substantially identical with or deceptively similar to at least one of the Opponent’s nominated trade marks, and

·is in respect of similar services or closely related goods (s.44(2)(a)), and

·has  a  priority  date  not  earlier  than  that  of  Opponent’s  nominated  trade  marks (s.44(2)(b)).

1. Priority date is defined in the Act as follows:

Definition of priority date

The priority date for the registration of a trade mark in respect of particular goods or services is:

(a)     if the trade mark is registered--the date of registration of the trade mark in respect of those goods or services; or

(b)    if the registration of the trade mark is being sought--the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered

1. Each of the Opponent’s marks is either registered (1127968 and 1137007) or registration is being sought (1682979 and 1688858) and has an earlier priority date than the Trade Mark. Therefore s.44(2)(b) is met.8

Substantially identical

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

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.9

1. A side by side comparison appears below:

Trade Mark	Opponent’s marks	Trade Mark
ACTIVESKIN	1127968
Active Skin	1137007
1682979 (opposed)
activeskin	1688858 (opposed)

1. Aside from an inconsequential space (1137007) or emphasised text on the first part of the word (1682979), on a side by side comparison, having regard to their essential features, I am satisfied that there is a total impression of resemblance between the Trade Mark and the Opponent’s marks 1682979, 1688858 and 1137007 such that they should be regarded as substantially identical.

1. In relation to the Opponent’s mark 1127968, it is a composite mark, quite visually different to the Trade Mark. While the dominant cognitive cues include the words “Active Skin”, they are in stylised text, placed on top of each other with a dividing line between them. In addition the prominent flower devices, two poppies on either side of the words, are also dominant and quite striking. Self-evidently, on a side by side comparison, the essential features of this Opponent’s mark, striking the eye, are dissimilar to the Trade Mark. Consequently I consider that an impression of dissimilarity between the marks emerges such that they cannot appropriately be characterised as substantially identical. Therefore, I am not satisfied that the

8 See table above at paragraph 11.

9 Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 at [13].

Trade Mark is substantially identical to the Opponent’s trade mark 1127968. Because of my findings below, it is unnecessary to consider whether the Trade Mark is deceptively similar to it.

Similar services or closely related goods

1. Section 14 of the Act provides as follows:

Definition of similar goods and similar services

(1)    For the purposes of this Act, goods are similar to other goods:

(a)    if they are the same as the other goods; or

(b)    if they are of the same description as that of the other goods.

(2)    For the purposes of this Act, services are similar to other services:

(a)    if they are the same as the other services; or

(b)    if they are of the same description as that of the other services.

1. In order to establish the ground of opposition under s.44(2)(a) the Registrar must be satisfied of one of the following tests:

·     that the Services are the same, or of the same description, as the Opponent’s services designated in its substantially identical trade marks, and/or

·     that  the  Services  are  closely  related  to  the  goods  designated  in  the  Opponent’s substantially identical trade marks.

Similar services

1. In relation to the similarity of the services between the Trade Mark and the Opponent’s marks, the Opponent simply asserted in its submissions, again misstating the applicable comparison, that “the Trade Mark Application claims services that are similar to the goods or closely related to the services claimed by the [Opponent’s marks]”.

1. In its Submissions in reply, the Opponent contended that the Applicant had misapplied the applicable legal test, stating that “the correct legal test involves the comparison of the goods/services for which the Acticeskin (sic) Trade Marks are registered and the services claimed by the Opponent.” A table listing the marks and their goods/services was included. The silence of the Applicant regarding the relationship between “cosmetics” and some of the services designated in the Trade Mark was noted and it was asserted that “at the very least the

above services are similar or closely related to the goods and services claimed in the [Opponent’s marks].” The Opponent made no reference to its evidence in this respect, nor were any reasons or submissions provided which indicated or even suggested that  the relevant legal tests in this regard were satisfied.

1. The Applicant submitted, and referred to evidence indicating, that the services designated by the Opponent’s marks involved wholesale distribution. Pertinently, the Opponent did not dispute this or offer any persuasive evidence otherwise. In this context, I attach greater weight to the Applicant’s evidence and substantial submissions regarding the differences between its designated class 35 online retail and discount services and the class 35 distribution services designated in the Opponent’s relevant marks.

1. In relation to the Trade Mark’s class 44 services, there is no indication or suggestion in the evidence, nor were any substantive submissions put, that these are similar or of the same description as the class 35 services designated in the Opponent’s marks.

1. In all the circumstances therefore I am not satisfied the Opponent has demonstrated that the Services are the same or of the same description as those class 35 services designated in the Opponent’s marks.

Closely related goods

1. With regard to s. 44(2), and the relationship between the Services and the goods specified in the Opponent’s marks, the comments of French J (with whom Tamberlin J agreed) in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) are apposite:

   The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be

   described as “closely related”. …10

2. In this connection His Honour also said that “closely related” is a term of wider import than “similar”.11

1. And further at paragraph 38:

10 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 at [37].

11 Ibid.

The range of relationships between goods and services which may support the designation "closely related" will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145; (1983) 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks "...of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone". His Honour observed that:

"Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods." (at 522)

…

Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as "closely related goods" in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative.12

1. And at 41

Mr F.J. Smith, a former Commonwealth Registrar of Trade Marks and Designs and Commissioner of Patents, observed at the time of the 1978 amendment that:

"It will be an exercise of the Registrar's judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect

of those services and goods more likely." - Smith, supra, 53 ALJ 118 at 120 13

1. As noted above, I am satisfied that the Trade Mark is substantially identical to the Opponent’s trade marks 1137007, 1682979 and 1688858. Each of these marks specifies “Cosmetics”, and many different types of cosmetics, in class 3. In particular, 1682979 refers to “Skincare cosmetics; Skincare preparations (cosmetic); Beauty care preparations; Beauty

12 Op cit at [38].

13 Op cit at [41].

care products; Beauty creams, Beauty milks; Beauty masks… the aforementioned goods being cosmetics”. The Opponent’s mark 1688858 similarly refers to cosmetics and skincare cosmetics, among many other types and uses of cosmetics.

1. Relevantly, the Trade Mark specifies services in Class 44: “Beauty salons; Beauty services; consultancy services relating to personal appearance (hair, beauty, cosmetics) being beauty and skin services; medical services for treatment of the skin; Services for care of the skin...”

1. The provision of beauty and skin services self-evidently involves the use of, or consultation concerning, the use of skincare cosmetics and beauty care products and preparations. Beauty salon services are performed “by means of” these goods. In my view therefore the connection between these goods and the services claimed in the Trade Mark is not tenuous or remote. This view is reinforced by the example given by the former Registrar, in the article cited in

   Woolworths (above), that cosmetics and beauty salons are considered to be closely related goods and services.14

1. In this context I am satisfied that the services designated by the Trade Mark in class 44 are closely related to the goods specified in the Opponent’s registered trade mark 1137007 (s.44(2)(a)(i)) and in its trade marks 1682979 and 1688858 which it seeks to register (s.44(2)(a)(ii)).

1. It follows that, subject to considerations relevant to ss.44(3) and (4), the Trade Mark must be rejected.

Section 44(3)(b) – other circumstances

1. Section 44(3)(b) of the Act provides the Registrar with a discretion to accept a trade mark on the basis of “other circumstances” if it is “proper to do so.”

1. The Applicant primarily relied on s.44(3)(b) if the s.44(2) opposition ground was otherwise successful. It submitted that it had established “other circumstances” for the purposes of s.44(3)(b) or, in the alternative, the Applicant has established honest concurrent use of the Trade Mark within the meaning of s.44(3)(a). It accepted it bore the onus of establishing the existence of such circumstances.

14 Smith F J “The Trade Marks Amendment Act 1978” 53 Australian Law Journal 118 at [119].

1. The Applicant noted the comments of the delegate in Richard James Pty Ltd v Grant Olver Investments Pty Ltd (“Richard James”) that “other circumstances” “may comprise any aspect of the applicant’s use tending to minimize the risk of confusion or showing particular hardship.”15 It was submitted in this regard that:

   ·     The Applicant has had registration for trade mark 1094648, a stylized version of the Trade Mark, for over 11 years and “well before” the priority date of any of the Opponent’s marks.

· It “is entirely appropriate and proper not to apply sub-section 44(2) in circumstances where the Applicant has a similar trade mark registration which predates any of the registrations and applications which the Opponent relies on.”

·     The examiner relied on this provision in accepting the Trade Mark for registration. It was claimed in this regard that the examiner’s decision was correct and should be followed.

·     The Opponent did not address the fact of the Trade Mark’s acceptance under this provision and has offered no argument that the examiner was wrong in this regard.

1. In its submissions in reply, the Opponent did refer to the Applicant’s claims under s.44(3) and noted that the Applicant had sought to rely on its registered trade mark 1094648 to justify a finding of “other circumstances” under s.44(3)(b). It submitted that no evidence had been provided of the use of this trade mark registration in relation to its proposed class 35 and 44 services. There was said to be no supporting evidence of the claims that the Applicant had operated a beauty salon and/or that the salon was operated by reference to the Trade Mark or its trade mark 1094648. In the absence of such evidence the Opponent submitted that the discretion under s. 44(3) should not be exercised.

1. At the hearing the Applicant’s counsel reiterated the s.44(3) submissions, emphasising its ownership of its trade mark 1094648 since January 2006 and its extensive evidence of use of the Trade Mark in relation online retail services which predated use of the Opponent’s marks for such services. He noted a lack of corroborative evidence of the Opponent’s claims as to

15 [2005] ATMO 18 at [36].

use and contended that the Opponent’s invoices only demonstrated use of “Active Skin” as a business name, not a trade mark.

1. There is little judicial guidance on the relevant criteria for consideration under s.44(3)(b), which is probably reflective of the wide discretion it provides. Much of the case law concerns whether it is appropriate to take into account events occurring after the relevant date16. This is not a concern in the current application. In this context I have confined my consideration of the exercise of the s.44(3)(b) discretion to those circumstances which prevailed at the relevant date.

1. In Analyses Conseils the delegate considered that some of the required s.44(3)(a) criteria were also applicable to s.44(3)(b).17 He took into account evidence of the extent of use of the Trade Mark, whether there had been any instances of confusion, what might reduce the risk of confusion (in that case, the different trade channels through which the goods would be distributed) and the inconvenience, if any, to the opponent and/or the applicant which might result from registration of the Trade Mark18.

2. The circumstances of this application appear to be unusual insofar as over the last 12 years a number of identical or substantially identical “activeskin” trade marks have been applied for and co-exist on the Register in the name of either the Applicant or Opponent19. On the face of it, both sets of trade marks primarily relate to the sale, distribution and/or use of third party goods in the cosmetics or beauty industry.

1. In particular, in relation to the Applicant’s trade mark 1094648 to which the Opponent referred, I note that it is identical to the Trade Mark except for the device of a concentric circle over the letter “a” which, I consider, is an addition that does not substantially affect the Trade Mark’s identity. It follows that I am satisfied that use of the Applicant’s mark 1094648 constitutes use of the Trade Mark  (s.7(1))20 and is relevant to considerations of “other circumstances” under s.44(3)(b).

16 PB Foods Ltd v Malanda Dairy Foods Ltd. [1999] FCA 102; Hill Industries v Bitek Pty Ltd [2011] FCA 94;

TiVo Inc v Vivo Interational Corp Pty Ltd. [2012] FCA 252.

17 Analyses Conseils Informations ACI v Iguassu (No.16) Pty Ltd & AI Nominees Pty Ltd. [2011] ATMO 4.
18 Ibid.
19 Paragraph numbers 11 and 24 above.

20 E & J Gallo  Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144; 84 ALJR 353; 265 ALR

645; 86 IPR 224 at [64].

1. As noted above, the Opponent contended that there was no evidence of the Applicant’s use of its trade mark 1094648 on the proposed class 35 and 44 services. Contrary to these submissions, I note that the the Applicant’s evidence of its website pages, including the Trade Mark, refer from at least 19 May 2007 to the Applicant’s salon. In addition, interviews in annexures BW-17 and BW-18 to the Wyeth declaration confirm the ongoing operation of the

   Applicant’s salon, which opened in 1999, and its later adoption of “Activeskin”21. I am

   therefore satisfied that the Applicant has established use in relation to the class 44 services prior to the relevant date.

1. I am also satisfied the Applicant’s evidence establishes its use of the Trade Mark in relation to its class 35 discount retail services. For example, annexure BW-3, displaying the trade mark 1094748 and dated 21 August 2006, states specifically that “active skin assists you in making the right skincare decisions at discounted prices” and it contains a statement “Price Guarantee, always the lowest prices”. Regarding online retail services for pharmaceutical, medical and veterinary supplies or sanitary preparations, I note that some of the products advertised on the Applicant’s website are regarded as medical-grade products and that “B Kamins Chemist” products are also available. Services are also advertised for “blemish control”, deodorants, tanning treatments and for online skin consultations. Overall therefore I am satisfied that the applicant has used its Trade Mark and/or its registered mark 1094648, in respect of all its listed services except veterinary supplies. In the context of s.44(3)(b), however, nothing turn on this. The s.44(3)(b) discretion is broad and the range of circumstances to which the Registrar may have regard is unlimited. There is nothing in the evidence or submissions which persuades me it is necessary to limit the application of s.44(3)(b) to evidence of prior use in respect of all the Services or, correspondingly, to refuse it because of the absence of evidence of prior use of the mark in respect of all the designated goods and services.

1. The Applicant also specifically drew attention to the lack of any evidence of confusion. That is, the Opponent’s and the Applicant’s “activeskin” marks have co-existed in the market for several years with no apparent confusion. The Opponent did not submit or provide evidence otherwise.

21 Annexure BW-2 contains references in August 2005 to the “Active Skin project”.

1. In this regard I note the comments of the delegate in Richard James case in which s.44(3)(b) was applied to register the trade mark:

   The current commercial realities of this situation appear to be that each party is trading in one corner of the clothing market and that those corners are separated by not only the intended purchaser and wearer, but also the cost of the garments...22

2. Similarly, by way of analogy, the evidence in this opposition indicates that, while each party is operating in the beauty/cosmetics industry with substantially identical trade marks, they appear to have effectively operated in separate spheres with the apparent consequence that the potential for any deception or confusion has been minimised. In this context I attribute some weight to the Applicant’s claims and submissions regarding the distinctions between how it provides its services compared to the manner of delivery of the Opponent’s goods. That is, that they operate through different trade channels and have different types of clients who purchase differently and for different reasons. The Opponent did not effectively dispute these claims, particularly the Applicant’s claim that the Opponent provided wholesale services and did not provide any online services until November 2013.

1. I consider the apparent lack of any claimed or evidenced confusion in the market by either party in respect of the use of its substantially identical marks, weighs significantly in favour of my exercise of the discretion under s.44(3)(b).

1. In addition, in relation to s.44(3)(b), there was no evidence by the Opponent of any inconvenience should the Trade Mark be registered.

1. Therefore, I am satisfied in the circumstances established by the evidence that it is “proper” I accept the Trade Mark for registration under s.44(3)(b).

Section 58A

1. In its SGP the Opponent claimed in this regard that it first used, and had continuously used, “the activeskin trade marks” in respect of similar goods or closely related services, or similar services or closely related goods, since at least 2004, before the Applicant’s use of the Trade Mark.

1. Section 58A provides:

22 Richard James at [36].

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.

1. The Trade Mark was not accepted under s.44(4).

1. It follows that the s.58A ground of opposition is not applicable and therefore not established.

Section 58

1. Section 58 of the Act 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.

   Note: For applicant see section 6.

1. In the SGP the Opponent claimed that the Applicant is not the true owner of the Trade Mark because the Opponent “first used the activeskin trade marks, including the mark “activeskin” in relation to the same or similar services claimed by the opposed trade mark, since about 2004, prior to the application for the proposed mark being lodged.” It was further claimed that the Opponent “is therefore the true owner of the mark “activeskin” in relation to the services the subject of the opposed trade mark application”.

100.As noted above, the Applicant claimed its director had created the name “Activeskin” in mid- 2004, the domain name was registered on 25 February 2005 and its first use of its mark was when it was launched in April 2006. It submitted the Opponent had not discharged the onus on it to establish that its marks were used in relation to the Services or “the same kind of thing”.

101.Having regard to s.58, the Full Federal Court in Pham Global identified the relevant principles.23  To succeed on this opposition ground, an opponent needs to establish that its

23 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (“Pham Global”) [2017] FCAFC 83 at [50].

mark or marks is/are identical or substantially identical to the applicant’s mark, that its mark had been used in respect of goods and services that are “the same kind of thing” as the Trade Mark and it has the earlier claim to ownership based on its use of its mark/s before the filing of the Applicant’s mark or any use of it as a trade mark.

Substantially identical

102.As noted above, I consider that on a side by side comparison the Trade Mark is substantially identical to the Opponent’s marks 1137007, 1688858 and 1689279.

Same kind of thing

103.As also noted above, in order to establish ownership, it is necessary to establish that the use claimed was “in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration”.24

104.What  constitutes  goods or  services  “of the  same  kind”  was  considered  by  Allsop  J  in

Colorado Group Ltd v Strandbags Group Pty Ltd (“Colorado”):

In Carnival Cruises v Sitmar Cruises 120 ALR at 514, Gummow J referred to there being no differences of "character or quality" of the services in that case to gainsay that they were the "same kind of thing".

……

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and  Underhay FG, Kerly on Trade

Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.25

105.Further, as the court commented in this regard in Anchorage:

As Allsop J also observed in Colorado at [89], there is a difficulty involved in fixing upon the proper frame of reference for the purpose of determining whether goods or services are of the same kind. Nevertheless, as his Honour also

24 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [49].

25 Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 at [88-9].

suggested at [89], the question whether goods or services are of the same kind must be addressed in a practical and common sense way and by asking whether the relevant goods or services are essentially the same.26

106.At its highest, the Opponent’s case demonstrates that it has used the Opponent’s marks for class 3 goods and class 35 services. The test for the “same kind of thing”, as the above authorities illustrate, is narrower than the assessment required under s.44 for “similar services” or “closely related goods”. In a context in which I have already found that the Services and those designated in the relevant Opponent’s marks are not similar, it follows that I am not satisfied that they can be appropriately characterised as the “true equivalent kind of thing” or “essentially the same.”

107.Although I have previously found that the Trade Mark’s class 44 services are closely related to the Opponent’s class 3 goods, given the aforementioned narrower test that applies in respect of a claim to ownership under s.58,27 there was nothing in the evidence or the Opponent’s submissions demonstrating that its use of its substantially identical marks in relation to its designated class 3 goods was in respect of “essentially the same” as the or “the same kind of thing” as the Services provided for in class 44.

108.Given the above findings, it is unnecessary for me to determine the Opponent’s claims of first use of the Trade Mark.

109.Accordingly, the Opponent has not established its s.58 ground of opposition.

Section 60

110.Section 60 provides as follows:

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.

26 Anchorage, [64].

27 Colorado at [16-17].

Note:         For priority date see section 12.

111.Therefore, to establish the s.60 ground of opposition, an Opponent must demonstrate that, at the priority date of the Trade Mark,

·there was another trade mark

·that had acquired a reputation in Australia and

·because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

112.The Opponent claimed in the SGP as follows:

“Other trade marks had, before the priority date of the registration of the opposed mark in respect of the goods and services for which the opposed mark has been accepted for registration, acquired a reputation in Australia and because of the reputation of the other marks, the use of the opposed mark would be likely to deceive or cause confusion. Particulars:

a.  the Opponent is the owner of the activeskin trade marks;

b.  The Opponent or its authorised user has continuously used the activeskin trade marks in respect of the claimed services since about 2004, before the priority date of the opposed mark. Further, the Opponent or its authorised representatives have extensively promoted and advertised those goods and services in Australia, including online.

113.In its submissions in this regard, the Opponent relied on evidence of use of its marks on its website, in magazine, newspaper and radio advertisements throughout Australia, in directories such as the Yellow Pages, on quotations, invoices or receipts to customers, and on stationery and office materials used and distributed by the Opponent.

114.I make the following observations about the Opponent’s claims in this regard:

·     the business and office materials (packing slips, with compliments slips, gift vouchers) evidence is undated;

·     the labels  bearing the trade marks said  to  be attached to the Opponent’s Goods are undated and do not appear in the evidence on any goods;

·     the product brochures are undated;

·     the 3rd party invoices to the Opponent for advertising, although variously dated from 21 July 2004, do not demonstrate where, when or what was advertised or whether it was advertised by reference to the Opponent’s marks;

·     no supporting evidence, aside from some of the invoices noted below, is provided of the claimed advertising in publications listed at paragraphs 24 and 26 of the first Smith declaration;

·     the Opponent’s tax invoices, claimed to “prominently feature the Activeskin trade marks” largely indicate that the goods have come from and are being invoiced by the Opponent. That is, they do not demonstrate use of the Opponent’s marks as trade marks but use of the company name in the course of its business activities.28 Later invoices incorporate the marks however this use is limited and of little value in demonstrating the Opponent’s reputation in its marks;

·     the claimed national advertising in the Yellow Pages in 2004 and 2005 was not substantiated. Evidence demonstrated advertising in the Liverpool and Kempsey Yellow Pages around 2004/05 however the attached copy from the 2005 Liverpool Yellow Pages displayed only the company name and address and telephone number under the category “Skin Treatment.” For the reasons given above, I do not consider this constitutes use as a trade mark such as to demonstrate the Opponent’s reputation;

·     the supporting evidence of the advertising listed at paragraph 25 demonstrates use of the Opponent’s marks however the magazines in which the marks appear seem to be of limited focus (i.e. health and wellbeing or new age magazines) and no information is provided as to their distribution, sales or circulation. In this context they are of little probative value in demonstrating the Opponent’s relevant reputation.

115.In its response, the Applicant contended that the Opponent had not provided evidence to demonstrate the existence of the requisite level of reputation. Referring to the McCormick decision29, it was noted that it had not provided any figures which showed the extent to which the Opponent’s goods and services had been provided under the Opponent’s marks, such as

28 Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at [74-75].

29 McCormick & Co Inc. v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192.

gross sales figures. Furthermore it had not provided any evidence of expenditure for promotion or advertising under the Opponent’s marks nor had it demonstrated any real tangible danger of deception or confusion.

1. As referred to by the Applicant, the comments of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks

   & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.30

117.While the evidence established the apparently contemporaneous presence of the Trade Mark and the Opponent’s marks in the market, there is scant evidence as to whether and to what extent the Opponent had any reputation in its marks at the relevant date. As the Applicant observed, the lack of information such as gross sales or advertising figures meant the Opponent “has failed to provide sufficient evidence that its Opponent’s Mark had a sufficient reputation at all in Australia as at the Priority Date.”

118.The only evidence of advertising expenditure provided was in the invoices attached to the first Smith declaration covering the period 2004 to 201531. The accumulated invoice amounts were very modest. In addition, as also noted above, the content of the invoiced advertisements as referred to in paragraphs 24 and 26 of the first Smith declaration, where and when they appeared and whether or not they referenced the Opponent’s marks, is unknown.

30 [86].

31 Pages 243-254 of exhibit SS-1 to the first Smith declaration.

119.Even if I accept that the Opponent had a modest reputation with Australian consumers in respect of its goods and services at the relevant date, I consider this is insufficient in the context of this application to enliven s.60. I note the comments of Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:

...the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346. What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.32

120.This view was endorsed by the Full Court in Renaud Cointreau, in upholding Heerey J’s approach:

[H]is Honour correctly stated the test as being whether the reputation [of the mark] is one of which a significant number of people would be aware. He proceeded to say that the reputation of the trade mark must be of such a nature and extent as to create a real tangible danger of deception or confusion.” 33

121.The designated goods and services in this respect are generally related to cosmetics and their distribution, so this is not a highly specialised market as contemplated by Heerey J. Therefore, to enliven s.60, the Opponent needs to have demonstrated awareness/appreciation of its marks among a significant or substantial number of Australian consumers and distributors of cosmetics before the relevant date. On the basis of the evidence as discussed above, I am not satisfied that the Opponent has done so.

122.Further, having regard to the comments in McCormick’s above, I am not satisfied that the newspaper advertisements and a handful of invoices are sufficient to establish the Opponent’s reputation in its marks such that would give rise to “a real tangible danger of deception or confusion”34. This is particularly so in a situation in which the marks have concurrently existed in the market, in the same industry, for several years with no evidence of any confusion being claimed or apparent.

123.Overall, while the evidence demonstrated the use of the Opponent’s marks in relation to cosmetics and their distribution, it did not support the Opponent’s claims concerning the extent of its use of its marks as a badge of origin in connection with the relevant services in

32 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587 [91].

33 Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 [75].

34 Ibid.

the relevant period, or “substantial advertising expenditures and other promotions” such that it demonstrated the visibility of the brand to the end purchasers of the Opponent’s goods or services at the relevant date or enabled the inference of a relevant reputation to be drawn.

124.It follows that I am not satisfied the Opponent’s marks, at the relevant date, had acquired a sufficient reputation among actual or potential Australian consumers of the opposed goods and services for the purposes of s.60(a).

125.In the circumstances it is unnecessary to consider s.60(b).

126.Accordingly, the Opponent has not established the s.60 ground of opposition.

Section 42 (b)

127.Section 42 of the Act provides:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)    the trade mark contains or consists of scandalous matter; or

(b)    its use would be contrary to law.

128.In the SGP the Opponent relied on its particulars under its s.60 grounds in this regard and claimed that by virtue of the use by the Opponent or its authorised user of its trade marks, the use of the Trade Mark would be likely to deceive or cause confusion such as to contravene s.18(1) of the ACL and would constitute passing off at common law.

129.The Applicant contended that the Opponent had failed to demonstrate a sufficient reputation at all, but particularly in relation to end consumers, and also relied on its s.60 submissions in this regard. It was submitted that none of the elements of passing off were made out.

130.As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia,

with whom, in this regard, Katzmann J and Greenwood J agreed:

Section 42(b) of the TMA requires that the use of trade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark. 35

131.Section 18 of the ACL (formerly s.52 of the Trade Practices Act 1974 (Cth), the “TPA”) requires a likelihood that Australian consumers be misled or deceived as to the true origin of

35 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 at [411].

the designated goods and/or services or their connection with the Opponent. Several previous cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60. For example, in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[8] Gibbs CJ said with respect to (then) s 52 of the TPA:

In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

132.I note my findings above that the s.60 ground of opposition has not been established. In this context, where the Opponent has not established the relevant reputation, I am not satisfied, in the absence of any further persuasive evidence in this regard, that it has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s.18 of the ACL. It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct as required by s.18 of the ACL.

133.In relation to passing off, the Opponent made similar claims to those it made in respect of

s.18 of the ACL, submitting that misrepresentation “will no doubt take place since the opposed mark is substantially identical with, or deceptively similar to, each of the Activeskin Trade Marks… therefore any use has high potential to injure the reputation of the opponent and goodwill in the Activeskin Trade Marks ..[and] therefore would constitute passing off”. As noted by the Applicant, the Opponent did not provide any evidence or persuasive submissions as to the loss element required for a successful passing off action.

134.The relationship between passing off and (then) s.52 of the TPA was addressed by Hill J in

Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another,

failure to succeed under s 52 or s 53 will invariably mean that  proceedings for passing off would likewise fail.36

135.That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off.

136.The Opponent has not established that use of the Trade Mark would be contrary to law in the sense that it constituted passing off.

137.Accordingly the s 42(b) ground of opposition has not been established.

Decision

138.Section 55 of the Act relevantly provides:

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.

139.The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.

140.This Application may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Regulations.

36 Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 at [39]; (1989) 16 IPR 431.

M. Cooper Hearing Officer

Oppositions and Hearings 28 November 2018