Opposition by BLINC, INC. to an application under section 92 of the Act by SKNCOMPANY Pty Ltd for removal of trade mark number 1039383 (3, 8) – BLINC - in the name of BLINC, INC.

[2019] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by BLINC, INC. to an application under section 92 of the Act by SKNCOMPANY Pty Ltd for removal of trade mark number 1039383 (3, 8) – BLINC - in the name of BLINC, INC.

Delegate:	Nicholas Smith
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant: Omond & Co
Decision:	2019 ATMO 29 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for partial removal - ground only partially established. Exercise of discretion in Opponent’s favour for the remaining goods. Trade Mark to remain on Register.

Background

1. This decision is pursuant to an application made on 27 November 2017 under ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by SKNCOMPANY Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect some of the goods listed below for which the trade mark is registered, that is, the application is only for the removal of certain goods from the class 8 specification of the existing trade mark.

Registration No.	1039383
Lodgement date	27 January 2005
Goods	Class 3: Cosmetics, shampoos, conditioners, body wash and skin care products Class 8: Hand implements for cosmetic treatment of eyelashes (electric and non-electric); hand-operated instruments for cosmetic purposes; hand-operated tools for cosmetic purposes (‘Registered Goods)
Owner	BLINC, INC.
Trade Mark	BLINC (‘Trade Mark’)

1. The goods and services that are sought to be removed from the above specification are:

   Class 3: Cosmetics, shampoos, conditioners, body wash and skin care products;

   Class 8: hand-operated instruments for cosmetic purposes; hand-operated tools for cosmetic purposes; (‘Removal Goods’)

2. BLINC, INC. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 16 March 2018 and a Statement of Grounds and Particulars (‘SGP’) on 16 April 2018.  The Applicant filed a Notice of Intention to Defend on 2 May 2018.

3. The Opponent subsequently filed evidence in support of its opposition to removal, which will be discussed in more detail below.  The Applicant chose not to file any evidence in answer. 

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. By letter issuing from IP Australia on 9 January 2019 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar of Trade Marks for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to rely upon. Neither party filed any submissions. 

5. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material:

   ••         The Application for Removal;

   ••         The Notice of Intention to Oppose and SGP; and

   ••         The Opponent’s Evidence in Support.

   The Law

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of the matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

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

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

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

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

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

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

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

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

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

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

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 27 October 2017 (‘relevant period’).

8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application, and I confirm that five years since filing the application have in fact passed.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

10. I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.

11. In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

12. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b), but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.

    Opponent’s Evidence

13. The Opponent’s evidence in this matter consists of a declaration made on 3 August 2018 by Lewis Farsedakis, President of the Opponent, with Exhibits LF(2)-1 to LF(2)-3 (‘Farsedakis Declaration’).    

14. The Farsedakis Declaration contains the following statements:

    ••         The Opponent has used the Trade Mark in Australia during the relevant period in relation to cosmetics and hand implements and tools for cosmetic purposes, including mascara, lash primer, eyeliner, eyeshadows, eyebrow mousse, eyebrow pencils, eyeliner pencil sharpeners, lash combs, lash curlers, cosmetic brushes and eyebrow trimmers. 

    ••         The Opponent has used the Trade Mark on its products, on its websites, social media accounts and promotional materials consistently and frequently during the relevant period, with invoices attached indicating sales of the Removal Goods bearing the Trade Mark. 

    ••         The Opponent’s BLINC products are distributed in Australia by International Beauty Supplies through various stores in Australia including David Jones and general skincare and cosmetic retailers, as well as through the Opponent’s websites at and blinccosmetics.com.au.

    ••         The Opponent’s extensively promotes its products under the Trade Mark on social media, including Facebook where its Australian page has 658 followers, and Instagram and Twitter.  

    Applicant’s Evidence

15. The Applicant has not filed evidence in this matter. 

    Discussion

16. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years. As the Trade Mark had been registered for more than five years as at the date of the Application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use) or, in the event that the Opponent fails to establish such use, the Registrar exercises its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

17. I find that the Opponent has established that the Trade Mark was used in Australia by the Opponent during the relevant period for all the Removal Goods other than shampoos, conditioners and body wash (being the ‘Remaining Goods’). The Applicant has provided clear, dated invoices that indicate the sale of the Removal Goods (other than the Remaining Goods) under the Trade Mark to clients in Australia during the removal period. As such the Opponent has satisfied the onus under s 100(3)(a) of the Act for the Removal Goods other than the Remaining Goods.

    Obstacles to use

18. The Opponent does not submit, not does its evidence raise matters which could be regarded as obstacles to use of the Trade Mark for the Remaining Goods in the relevant period, pursuant to s 100(3)(c) of the Act. It is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Remaining Goods to remain on the Register.

    Registrar’s Discretion

19. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark. However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.

20. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’, the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.

21. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ••         There had been no abandonment of the trade mark;

    ••         The registered proprietor of the mark still had a residual reputation in the mark;

    ••         There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ••         The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ••         The registered proprietor was not aware of the applicant’s sales under the mark.

22. The evidence in the Farsedakis Declaration illustrates a considerable use of the Trade Mark with respect to cosmetics and skin care products in Classes 3 and 8.  The Remaining Goods, being shampoos, conditioners and body washes, are often used as part of a cleaning and skin care regime and are commonly sold alongside cosmetics and skin care products.  As such, given the requirements of s 101(4) and the not insignificant reputation built up by the Opponent in the Trade Mark for cosmetics and skin care products I am satisfied that it is reasonable in the circumstances to exercise the discretion available to the Registrar pursuant to s 101(3) in favour of the Opponent to allow the Trade Mark to remain on the Register for the Remaining Goods.

    Decision

23. I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register. Accordingly, I decide not to remove trade mark registration 1039383 from the Register in relation to any of the goods for which it is registered.

    Costs

24. The Opponent has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to the application to remove trade mark registration no. 1039383 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Hearings and Oppositions
    27 February 2019