Opposition by BLINC, INC. to an application under section 92 of the Act by SKNCOMPANY Pty Ltd for removal of trade mark number 831250 (3) – BLINK - in the name of BLINC, INC.

[2019] ATMO 45

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 831250 (3) – BLINK - in the name of BLINC, INC.

Delegate:	Nicholas Smith
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant: Omond & Co
Decision:	2019 ATMO 45 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for partial removal -- Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use. Exercise of discretion in Opponent’s favour. 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 of 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 specification of the existing trade mark.

Registration No.	831250
Lodgement date	10 April 2000
Goods	Class 3: Cosmetics; make-up, including eye make-up, eye brow pencils and eye crayons; mascara; lipsticks; lipgloss; lipbalms; preparations for removing make-up; soap for personal use; cosmetic creams; deodorants for personal use; essential oils; nail polish and nail care preparations; perfumes; blush; potpourri; hair care products including shampoos and conditioners for personal use (‘Registered Goods)
Owner	BLINC, INC.
Trade Mark	BLINK (‘Trade Mark’)

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

   Class 3:  Cosmetics and make-up except eye make-up, eye brow pencils, eye crayons and mascara; lipsticks; lipgloss; lipbalms; preparations for removing make-up; soap for personal use; cosmetic creams; deodorants for personal use; essential oils; nail polish and nail care preparations; perfumes; blush; potpourri; hair care products including shampoos and conditioners for personal use; (‘Removal Goods’)

2. In essence, the application for removal is for all the Registered Goods other than eye make-up, eye brow pencils, eye crayons and mascara.  BLINC, INC. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 7 February 2018 and a Statement of Grounds and Particulars (‘SGP’) on 7 March 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. On 7 March 2019, the Opponent filed written submissions (‘Opponent’s Submissions’).  The Applicant did not file 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,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act.

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 on the balance of probabilities.[2]

    [2] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

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),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

    [4] Nodoz Trade Mark (1962) RPC 1, 7.

    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, in addition to the Trade Mark, has also registered the trade mark BLINC (No. 1039383) (‘BLINC Mark’) in Australia.  The Opponent has used the BLINC 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 (‘Blinc Products’). 

    ·The Opponent has used the BLINC Mark on the Blinc Products, on its websites, social media accounts and promotional materials consistently and frequently during the relevant period, with invoices attached indicating sales of the Blinc Products 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 extensively promotes its Blinc Products under the BLINC Mark on social media, including Facebook where its Australian page has 658 followers, and Instagram and Twitter.   

15. Notably, the Farsedakis Declaration does not provide any evidence of present or past use of the Trade Mark in Australia, nor does it provide any explanation for this absence.  The EIS does state that, in the deponent’s opinion, the use of the Trade Mark by any third party for the Registered Goods would deceive or cause confusion.

    Applicant’s Evidence

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

    Discussion

17. 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.[5] 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.

    [5] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

    Use of the Trade Mark in the relevant period

18. I find that the Opponent has established that during the relevant period, the Opponent has been engaged in selling various cosmetic goods in Australia under the BLINC Mark being the Blinc Products.  However I am not satisfied that any of the Blinc Products are the Removal Goods; i.e. they are not ‘lipsticks; lipgloss; lipbalms; preparations for removing make-up; soap for personal use; cosmetic creams; deodorants for personal use; essential oils; nail polish and nail care preparations; perfumes; blush; potpourri; hair care products including shampoos and conditioners for personal use’.  Rather they are best described as eye make-up, eye brow pencils, eye crayons and mascara, the goods that the Applicant does not seek to remove from the registration.

19. I am not satisfied that the Opponent has established that it has used the word ‘BLINK’ by itself, as a trade mark in the relevant period in Australia, in respect of any goods and services; there is simply no evidentiary support for this proposition. 

    Obstacles to use

20. 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 Removal 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 Removal Goods to remain on the Register.

    Is use of BLINC Mark use of the Trade Mark?

21. While the matters referred to in the paragraphs above are sufficient to reach a conclusion that the Opponent has not satisfied its onus under s 100(3)(a) of the Act, a relevant question that arises in respect of the exercise of the registrar’s discretion (discussed below) is whether the Opponent’s use of the BLINC Mark on the Blinc Goods during the relevant period is use of the Trade Mark under s 100(3)(a) of the Act. S 7(1) of the Act provides:

    Use of trade mark

    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. [emphasis added]

22. I must therefore be satisfied that the replacement of the ‘k’ in the Trade Mark with a ‘c’ does not substantially affect the identity of the Trade Mark.  The test to be applied here is whether there is substantial identity between the Trade Mark and the BLINC Mark[6] with the test for substantial identity being set out below:

    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.[7]

    [6] Link Recruitment Pty Ltd v Link Employment And Training Inc (2006) 69 IPR 614, 619 [21]-[22].

    [7] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

23. To assist the side by side comparison I have reproduced the Trade Mark and the BLINC Mark below:

    BLINK     BLINC

24. The marks are aurally identical; any use of the BLINC Mark aurally could be taken as use of the Trade Mark.  Furthermore I consider it likely that consumers seeing the BLINC Mark used on the Removal Goods, being cosmetics (such as eye-make up) would see the BLINC mark as a misspelling of ‘blink’.  

25. In Tricarico v Dunn Bay Holdings Pty Ltd[8], the Federal Court referred to and summarised the case of Re Pelican Trade Mark[9], extracted below.  In that case the UK Board of Trade found, in essence, that the marks PELICAN and PELIKAN were substantially identical since the change (the replacement of the 'c' with the ‘k’) would result in a replacement word that would appear to consumers as a mere misspelling of the English word.

    In Re Pelican Trade Mark [1978] 95 RPC 424 the Board of Trade allowed an appeal by a German company from a decision of the Registrar’s delegate to refuse an application made under s 35(1) of the Trade Marks Act 1938 (UK) for leave to amended its registered trade mark. The trademark in question was the word ‘Pelican’ which appeared in italicised font. The applicant sought leave to amend the trade mark to the word ‘Pelikan’. The Registrar declined to grant the company leave to amend its trade mark because he considered that the proposed alteration would, first, change the visual appearance of the mark and, second, change the trade mark from a well-known English word for a particular type of bird to a word that some people might recognise as the German word for a type of bird but others would not. Together, he concluded, these factors substantially affected the identity of the mark.

    However, on appeal, the Board of Trade granted leave to amend the trade mark because, first, the visual appearance was not substantially changed as the trade mark remained in italicised lower case font and the letter ‘k’ merely substituted the letter ‘c’ in the middle of the word and, two, the meaning was not substantially changed because even if English people did not know that the amended trade mark was the German word for pelican, the trade mark would appear to them as a mere misspelling of the English word. The Board of Trade distinguished Otrivin Trade Mark [1967] 84 RPC 613, in which the applicants were not permitted to change the trademark OTRIVIN to OTRIVINE, because that trade mark was an invented word.

    [8] [2012] FCA 271, [52]-[53].

    [9] [1978] 95 RPC 424.

26. For the same reasons as set out in Re Pelican Trade Mark, I find that the Trade Mark and the BLINC Mark are substantially identical.  As such, I find that that the Opponent has established that the Trade Mark was used in Australia by the Opponent during the relevant period for the Blinc Goods but it has not established that the Trade Mark was used for the Removal Goods.

    Registrar’s Discretion

27. 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.[10] 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.[11]

    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.[12]

    [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    [12] Ibid [171]-[172].

1. 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’,[13] 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.[14] 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.[15]

   [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

2. 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;[16] and

   ·Whether the Trade Mark has been used in respect of similar goods/services or closely related goods/services.[17]

   [16] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   [17] s101(4) of the Act.

3. The evidence in the Farsedakis Declaration illustrates a considerable use of and reputation in the Trade Mark with respect to cosmetics and in particular the Blinc Goods. The Removal Goods, being cosmetic creams, make-up, blush, soaps, shampoos, conditioners and body washes, are often used as part of a cleaning and skin care regime, are commonly produced by the same companies 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 eye-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 Removal Goods.

   Decision

4. I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register in respect of any of the Removal Goods. Accordingly, I decide not to remove trade mark registration 831250 from the Register in relation to any of the goods for which it is registered.

   Costs

5. 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. 831250 be awarded against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   2 April 2019