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

This matter concerns an opposition by Active Skin Pty Ltd to the registration of trade mark application 1786296, "ACTIVESKIN", in classes 35 and 44, filed by Yey Pty Ltd. The decision was made by M. Cooper.

The primary legal issues before the court were whether the Opponent's trade marks were used in Australia prior to the Applicant's filing date, and if so, whether the Applicant's proposed mark was deceptively similar to the Opponent's marks, leading to a likelihood of confusion among consumers. The court also considered the admissibility of late-filed submissions from the Opponent.

The court admitted the Opponent's late-filed submissions under regulation 21.15(4) of the Trade Mark Regulations 1995, as there was no clear prejudice to the Applicant. The Opponent, through its evidence, claimed continuous use of its "activeskin" trade marks since March 2004, both by its predecessors in title and by the Opponent itself following its incorporation in August 2006. This use was asserted to include marketing, advertising, offering for sale, and selling cosmetic and skin care goods in Australia, supported by exhibited documents, website extracts from the Wayback machine, and tax invoices. The Opponent also claimed its marks appeared in third-party advertisements and on its website.