Opposition by Billie, Inc to registration of trade mark application number 1958719 (Classes 3 and 8) – BILLIE - in the name of Sergey Kayudin.

[2021] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by Billie, Inc to registration of trade mark application number 1958719 (Classes 3 and 8) – BILLIE - in the name of Sergey Kayudin.

Delegate:	Blake Knowles
Representation:	Opponent: Allens Patent & Trade Mark Attorneys. Applicant: A.P.T. Patent and Trade Mark Attorneys.
Decision:	2021 ATMO 112 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 58, 59, 60, and 62A raised by Opponent – s 59 considered and established – registration refused.

Background

1. This is a decision on the opposition by Billie, Inc (‘Opponent’) to registration of trade mark number 1958719 (‘Application’). On 28 September 2018 (‘Relevant Date’), Sergey Kayudin (‘Applicant’) applied to register ‘BILLIE’ (‘Trade Mark’) for the following goods:

   Class 3: Shave products namely, shaving lotions, shaving creams, and shaving oils; body cleansers, body wash, and body moisturizers

   Class 8: Razors and razor blades, handles, cartridges, and holders all specifically designed for and containing razor blades and structural parts

   (‘Goods’)

2. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes on 15 April 2019. The Opponent filed notice of its intention to oppose registration of the Trade Mark on 17 June 2019 and a statement of grounds and particulars (‘SGP’) on 17 July 2019. The Applicant filed a notice of intention to defend on 20 September 2019.  

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

3. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support on 20 December 2019. The Applicant did not file Evidence in Answer. 

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard by way of written submissions and paid the relevant fee. The Applicant did not request a hearing or file written submissions. As such, I have decided this matter based on the particulars set out in the SGP, and the evidence and submissions of the Opponent.

   Grounds and onus

5. The SGP nominated grounds of opposition under ss 42(b), 58, 59, 60, and 62A. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

6. The following Evidence in Support was filed under reg 5.14:

   Declaration of Georgina Gooley, Co-Founder and employee of Opponent, made on 19 December 2019 with Exhibits GG-1 to GG-2.  

7. Ms Gooley declares that the Opponent was founded in New York in November 2017 as a female first body brand built on providing premium quality shaving and body care products designed for women. The Opponent adopted the trade mark BILLIE (‘Opponent’s Mark’) for its business and sells under the Opponent’s Mark products including razor cartridges, razor handles, razor holders, shaving cream, body lotion, and body wash (‘Opponent’s Goods’).

8. Ms Gooley states that at the time of making her declaration, the Opponent’s Goods are sold online in the United States but with plans to expand into the Australian and Canadian markets. The Opponent’s Goods are sold on the website mybillie.com. However, Ms Gooley also explains that sample products have been supplied to third-parties in Australia since December 2017, and that the Opponent has customers and followers from around the world, including in  Australia. Ms Gooley also declares that the Opponent maintains a mailing list and regularly emails subscribers regarding the Opponent’s Goods.

9. Ms Gooley summarises the use and promotion of the Opponent’s Mark, including online advertisements in Google and promotion via social media (Facebook, YouTube, Instagram, Twitter, and LinkedIn). At the time of making the declaration, the Opponent’s Facebook page had over 96,000 followers, and the Opponent’s YouTube page had over 2,947,990 views. The Opponent’s Mark has also been featured in numerous media articles prior to the Relevant Date, including in numerous Australian publications and on Australian websites.

10. Ms Gooley provides confidential revenue and promotional expenditure figures which indicate reasonable revenue and expenditure prior to the Relevant Date, although I assume these figures relate exclusively (or at least primarily) to the US market. Similarly, Ms Gooley provides customer numbers prior to the Relevant Date which indicates that the Opponent developed a large customer base in the USA shortly after use of the Opponent’s Mark commenced in 2017.  

11. Ms Gooley provides details of trade mark registrations and applications filed by the Opponent in the USA. The Opponent’s US trade mark no. 87416912 for BILLIE (filed 19 April 2017) contains a near identical claim to Class 8 of the Goods, and the Opponent’s US trade mark no. 87416857 (also filed 19 April 2017) contains a claim very similar to Class 3 of the Goods.  

12. Ms Gooley declares that the Applicant is the father of Ms Maria Markina, the New York based co-founder and co-CEO of Athena Club, a subscription based feminine care brand launched in July 2018. Annexed to the declaration are a LinkedIn profile of Ms Markina which indicates she is Co-Founder of Athena Club, a LinkedIn profile for Mr Charles Desmarais, another co-founder of Athena Club, and an article from Forbes magazine dated August 2019 which corroborates Ms Gooley’s statement that the Athena Club is a feminine care brand.

13. Ms Gooley declares that Ms Markina signed up to the Opponent’s mailing list on 6 January 2018, and that subsequently she has received emails and opened links within those emails that lead to the Opponent’s website. Ms Gooley also states that Mr Desmarais has made five online purchases of the Opponent’s Goods, including two before the Relevant Date.

14. Ms Gooley declares that in December 2019 Athena Club launched 14 new products, including some corresponding to the Opponent’s Goods. Ms Gooley states that to her knowledge, Ms Markina, Mr Desmarais, and Athena Club have never used the mark BILLIE in commerce.

15. Ms Gooley declares that that on 27 September 2018 (one day before the Relevant Date), the Applicant (who is a Canadian citizen) filed an application for BILLIE in Canada containing a specification that is the same as the Goods.

    Discussion

    Section 59

16. To establish the s 59 ground, the Opponent must establish that the Applicant did not have a genuine intention to use the Trade Mark in relation to the Goods at the Relevant Date.  

17. The Opponent in particularising the s 59 ground states:

    As at 28 September 2018, the Applicant did not have any business established in Australia, nor was he a director of any Australian companies, as would be expected of an Applicant intending to apply a trade mark to goods offered in Australia in the course of trade.

    …

    The absence of any established business in Australia and therefore no ability to trade the goods under the Opposed Trade Mark, coupled with the adoption of an identical trade mark covering identical goods to the Opponent’s trade marks in the United States, infers that the Applicant sought registration of the Opposed Trade Mark with the intention of preventing or limiting the Opponent’s activity in Australia, and/or to sell the Opposed Trade Mark to the Opponent. It is highly likely that the corresponding Canadian application was filed by the Applicant for similar reasons.

18. In submissions, the Opponent states:

    It is the Opponent’s contention that the Applicant filed its BILLIE trade mark in order to advance the business of his daughter, and never had any intention to use the BILLIE trade mark or enter into any commercial endeavour to compete with that of the Opponent, but rather filed the BILLIE trade mark for the sole purpose of harming the Opponent’s business to the benefit of his daughter, further thinking that if he was the applicant and not his daughter, who has a different last name, the Opponent would not be able to make the connection.

19. It is well established that applying for registration of a trade mark brings with it a presumption that the Applicant intends to use the trade mark.[4] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date.[5]

    [4] Suyen Corp v Americana International Ltd [2010] FCA 638 [197] (Dodds Streeton J).

    [5]Aston v Harlee Manufacturing Co [1980] HCA 47.

20. The mere allegation by the Opponent that the Applicant lacks a genuine intention to use the Trade Mark is not by itself sufficient to displace the presumption of intention to use. However, where a sufficient ‘cloud’ exists (based on the allegations and evidence of the Opponent) regarding the intention of the Applicant at the Relevant Date, the presumption of intention to use can be displaced and grounds under s 59 can be established in the absence of a ‘plain and direct response’ from the Applicant to the allegations and evidence of the Opponent.[6]

    [6]Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20, [51] (Hearing Officer Williams).

21. The Opponent’s evidence is not without flaws. While I am satisfied based on the evidence of the connection between Ms Markina, Mr Desmarais, and the Athena Club, and that Ms Markina and Mr Desmarais operated a competing business and likely had knowledge of the Opponent’s Mark before the Relevant Date, there is no evidence supporting the claim that the Applicant is the father of Ms Markina. However, I acknowledge that documentary evidence of this family relationship may be difficult to obtain. I also give weight to the fact that the Applicant has not filed even a brief declaration stating that Ms Markina is not his daughter or explaining his commercial interest in the Trade Mark in Australia.  

22. I am satisfied that the adoption of the Trade Mark by the Applicant was not merely coincidental, particularly taking into account the uniqueness of the Trade Mark and given that the specification of the Goods is very similar in composition to specifications used by the Opponent in two of its US trade mark applications filed prior to the Relevant Date. I consider that it is more likely than not that the Applicant was aware of the use of the Opponent’s Mark at the Relevant Date, and in the absence of evidence to the contrary, this influenced the decision by the Applicant to file the Application in Australia.  

23. The above factors are not necessarily sufficient in themselves to conclusively determine that the Applicant lacked a genuine intention to use the Trade Mark in Australia at the Relevant Date. However, the Opponent’s evidence rises above vague assertions and the specific contentions made by the Opponent have a sufficient basis in logic and fact (on the balance of probabilities) to raise a cloud regarding the Applicant’s intentions at the Relevant Date. The Opponent’s case is sufficient to displace the presumption of intention to use and shift the onus to the Applicant to provide a plain and direct response to the allegations made by the Opponent.

24. In the absence of a direct response from the Applicant, I am satisfied that the Applicant more likely than not did not have a genuine intention to use the Trade Mark in Australia at the Relevant Date.

25. For the reasons given above, I consider that the ground under s 59 is established.

26. As I have found that a ground of opposition is established, I do not need to consider the remaining grounds relied on by the Opponent.

    Decision and costs

27. The Opponent has established a ground of opposition. As such, I have decided to refuse registration of the Trade Mark in accordance with s 55. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

28. The Opponent has applied for an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks

    1 October 2021