Opposition by Dermavita Company (Limited Partnership) Parseghian & Partner to registration of trade mark applications 1780990 (3, 5) JUVEDERM (Figurative) and 1780999 (3) JUVEDERM (Fancy) in the name of Allergan...

[2019] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Dermavita Company (Limited Partnership) Parseghian & Partner to registration of trade mark applications 1780990 (3, 5) – JUVEDERM (Figurative) and 1780999 (3) – JUVEDERM (Fancy) in the name of Allergan Holdings France SAS

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Prianca Moodley and Kate McHaffie of AJ Park
Decision:	2019 ATMO 78 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Dermavita Company (Limited Partnership) Parseghian & Partner (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively the ‘Trade Marks’) which are the subject of the applications detailed below in the name of Allergan Holdings France SAS (‘Applicant’): 

Application Number:	1780990
Filing Date:	4 July 2016
Goods:	Class 3: Cosmetics, namely preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals Class 5: Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin; biological dermal implants, namely, visco-supplementation solutions for filling wrinkles, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals
Trade Mark:	(‘Figurative Mark’)
Application Number:	1780999
Filing Date:	4 July 2016
Goods:	Class 3: Cosmetics, namely preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals)
Trade Mark:	(‘Fancy Mark’)

2. The Goods for which the Trade Marks are sought to be registered are collectively referred to as the (‘Applicant’s Goods’)

3. The applications were examined as required by s 31 of the Trade Marks Act 1995 (‘the Act’) and on 30 July 2017 the applications were advertised as accepted. On 1 September 2017 IP Australia sent correspondence to the Applicant indicating its intention to revoke the acceptances of the Trade Marks. However, following a hearing by a Delegate of the Registrar, a decision was made not to revoke the acceptance of the Trade Marks.[1]

[1] See Allegran Holdings France SAS [2018] ATMO 84.

4. The Opponent filed a Notice of Intention to Oppose both Trade Marks on 5 September 2017.  The Opponent then filed a Statement of Grounds and Particulars on 4 October 2017, subsequently rectified on 8 November 2019 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 15 December 2017.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 21 March 2018.  This evidence consists of a declaration by Houssam Adnan El-Tawil, co-founder and commercial director of the Opponent, made on 20 March 2018 with Exhibits HAET-1 to HAET-8 (‘El-Tawil Declaration’) and a declaration by Christopher Thomas Sheehan, solicitor employed by Zone Law Limited, the Opponent’s then representatives, made on 21 March 2018 with Exhibits CS-1 to CS-4 (‘Sheehan Declaration’). 

2. The Applicant filed Evidence in Answer on 29 June 2018.  This evidence consists of a declaration by Francis Michel Lemoine, President of the Opponent, co-founder and commercial director of the Opponent, made on 28 June 2018 with Exhibits FML-1 to FML-4 (‘Lemoine Declaration’), a declaration by Jonathan Matthew Day, Partner of Carpmaels & Ransford LLP, a UK firm that represents the Applicant in a number of IP matters, made on 28 June 2018 with Exhibits JXD-1 to JXD-3 (‘Day Declaration’) and a declaration by Dawn Judith De Cruz, Associate Director Legal and Compliance of Allergan Australia Pty Ltd and Allergan New Zealand Limited, made on 27 June 2018 with Exhibits DDC-1 to DDC-14 (‘De Cruz Declaration’).  The Opponent did not file any evidence in reply.

   7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 26 October 2017 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 2 April 2019 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 11 February which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent did not file any submissions and did not indicate that it would take part in any hearing.  The Applicant filed written submissions on 26 March 2019 (‘Applicant’s Submissions’).  At the hearing Prianca Moodley and Kate McHaffie of AJ Park represented the Applicant, appearing by video conference.  The Opponent did not appear.

   8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and the oral submissions made at the hearing.

   The Opponent

3. The Opponent is a limited partnership formed under the Laws of Lebanon in 2007.   

   10.     The Opponent is the applicant for the trade mark listed below (‘Opponent’s Trade Mark’). However, consideration of this application has been deferred until the resolution of the present opposition. The Opponent’s Trade Mark was applied for on 14 October 2016 however claims a convention priority date of 22 April 2016 under s 29 of the Act based on Norwegian trade mark application 201606042 (‘the Norwegian Application’).  In Allegran Holdings France SAS[2] (‘Allegran Holdings’) the Delegate determined that the Norwegian Application could not be relied upon by the Opponent to support a claim for a convention priority date of 22 April 2016 under the Act. I note that the Opponent was provided with the opportunity to participate in the hearing of that matter and indeed filed written submissions. Furthermore, the Opponent has filed no evidence and made no submissions in this proceeding to the effect that the decision in Allegran Holdings was incorrect.

   [2] [2018] ATMO 84.

Number	Trade Mark	Claimed Priority Date	Goods
1802817	JUVEDERM	22 Apr 2016	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; Cosmetics for professional use and for use by the end consumer; Cosmetic creams, emulsions, lotions, liquids, solutions, milks, gels and oils for the skin (of the face, body, hands, feet, and neck), oils for cosmetic purposes; cosmetic kits; cosmetic products and preparations for skin care; cosmetic masks; cosmetics, cosmetic preparations for slimming purposes; cosmetics for exfoliation, cosmetic peelings; cosmetics for smoothing the skin; cosmetics for hair conditioning and care of the hair and scalp; cosmetic sunscreen products and preparations (emulsions, lotions, milks, gels, oils, liquids); cosmetic preparations for skin whitening, skin whitening creams; bleaching preparations (decolorants) for cosmetic purposes; cosmetics for lightening the skin; cosmetics for perfecting the complexion; anti-wrinkle cosmetics, skin rejuvenation cosmetics, skin lightening cosmetics; cosmetic preparations for skin hydration; cosmetics for toning the skin; essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations

11.     The El-Tawil Declaration contains the following information:

·     The Opponent or its predecessors in title has traded in the cosmetics business in Lebanon since 1999 and has used the trade mark JUVEDERM (‘Juvederm Mark’) from that date.  All rights held by the Opponent’s predecessors in title to the Juvederm Mark were transferred to the Opponent in 2007.  The Opponent’s business has evolved but involves developing, marketing and selling a wide range of cosmetic and cleaning products.

·     The Opponent intends to expand internationally and it or its licencees have obtained certificates allowing its cosmetic products to be sold in a number of jurisdictions, including China, Russia and India.  The Opponent has promoted its products at various expos in Dubai and Hong Kong in 2015, which included visitors from Australia.

·     The Opponent has been involved in various disputes in a number of jurisdictions with the Applicant, including the United States and New Zealand. 

12.     The Sheehan Declaration simply contains additional documents relating to the expos attended by the Opponent referred to in the second dot point above.  The statements made in the Sheehan Declaration amount to submissions as to the nature of the documents annexed to the Sheehan Declaration and shall be treated as such.  Neither of the Opponent’s declarations provide any evidence of use of the Trade Mark in Australia.  Equally, neither of the Opponent’s declarations provide evidence of reputation in Australia that is more than speculative (i.e. that visitors from Australia may have visited expos outside Australia that the Opponent participated in and as a result may have been exposed to the Juvederm Mark).  Furthermore, to the extent that the Opponent’s declarations attach decisions in various overseas authorities, I note that they have limited relevance to the present proceeding as they involve different evidence, law and legal systems.    

The Applicant

1. The Applicant is a French company, incorporated in 1995 and a subsidiary of Allergan, plc (‘Allergan’)    

   14.     The Lemoine Declaration contains the following information:

   ·     Allergan is a global pharmaceutical company with 18,000 employees and commercial operations in around 100 countries around the world.  It has operated in Australia since 1968 through its subsidiary Allergan Australia Pty Ltd.

   ·     Allergan has used the Juvederm Mark/Trade Marks for hyaluronic acid dermal fillers since 2001 and has distributed Juvederm products in Europe since 2004 and in the US since 2006.  The Applicant’s Juvederm product is approved or under review in 90 countries and has sales of over $1 billion annually.  

   ·     Allergan promotes its products under the Juvederm Mark/Trade Marks through various marketing methods, including its website at Facebook and YouTube.

   15.     The Day Declaration contains the following claims/statements:

   ·     On 31 May 2018, a delegate of the Registrar issued a written decision finding that the convention priority date claimed by the Opponent’s Trade Mark was invalid.[3]

   [3] See Allegran Holdings.

   ·     The Applicant and Opponent have been engaged in various international trade mark disputes in respect of the Juvederm Mark/Trade Marks and similar marks and decisions have been issued in various countries, including Turkey and Saudi Arabia, which recognise the Opponent’s bad faith in seeking to register the Juvederm Mark.

   16.     The De Cruz Declaration contains the following claims/statements:

   ·     Allergan (by itself or its subsidiaries) first used the Juvederm Mark/Trade Marks in Australia in 2007 and has continuously used the Juvederm Mark/Trade Marks in Australia since that date. 

   ·     Allergan promotes itself and its products under the Juvederm Mark/Trade Marks through an Australia-based website at and through print media advertisements.  Allergan’s Juvederm product has substantial reputation and good will in Australia.  

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   18.     The onus of proof in an opposition rests upon the Opponent.[4]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5]  The date at which the rights of the parties are to be determined is 4 July 2016 (‘relevant date’), being the priority date of the application in Australia.[6]

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [5] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

3. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) 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 goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (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:

   (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.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   20. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Marks (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Marks (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

4. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances exist which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Opponent’s relied upon mark.

   22. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark. The Trade Marks have a priority date of 4 July 2016. The Opponent’s Trade Mark was applied for on 14 October 2016 however claims a convention priority date of 22 April 2016 under s 29 of the Act based on Norwegian trade mark application 201606042. For the reasons set out Allegran Holdings I am not satisfied that the Opponent’s Trade Mark can claim that earlier priority date under the Act and hence the Opponent’s Trade Mark does not have a priority date which is earlier than that of the Trade Marks. As the first requirement is not satisfied I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

5. Section 60 of the Act is reproduced below:

   Section 60 - 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.

6. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   (a) Since at least the year 1999, the Opponent has extensively used and authorised the use of marks containing the sign JUVEDERM (the ‘Opponent’s Trade Mark’) internationally as a trade mark in respect of, and so as to distinguish the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products (the ‘Opponent’s Goods’) from those of others.

   (b) As a consequence of the extensive use of the Opponent’s Trade Mark, the Opponent has acquired a reputation and goodwill in Australia in respect of the Opponent’s Goods;

   (c) The Opposed Application seeks registration of the sign depicted below:

   (the ‘Applicant’s Trade Mark’)

   as a trade mark in Australia in respect of the following goods:

   Class 3: Cosmetics, namely preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals

   Class 5: Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin; biological dermal implants, namely, visco-supplementation solutions for filling wrinkles, all to be sold and marketed only to licensed physicians, surgeons or healthcare professionals

   (the ‘Applicant’s Goods’).

   (d) The Applicant’s Trade Mark is substantially identical with or deceptively  similar to the Opponent’s Trade Mark, in that both trademarks include as their central or most prominent feature, the word “JUVEDERM”, the sole difference between the two marks being that the Applicant’s trade mark also contains a graphic symbol element

   (e) By reason of the matters pleaded in Particulars 2(a) to (d), and in particular, by reason of the similarities between:

   (1) the Applicant’s Trade Mark and the Opponent’s Trade Mark; and

   (2) the Applicant’s Goods (on the one hand), and the Opponent’s Goods (on the other hand),

   use of the Applicant’s Trade Mark in Australia in respect of the Applicant’s Goods, is likely to deceive or cause confusion.

1. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion. Given the nature of the products in question, being cosmetics, the relevant market, and hence the corresponding level of awareness required by Australians of the Juvederm Mark in Australia is quite large.[7] The Opponent has provided no evidence that it has used the Juvederm Mark in Australia at the relevant date. Equally its evidence as to any reputation amounts to little more than speculation that some Australians may have had some contact with the Opponent shortly before the relevant date at international exhibitions or events. Given the above I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act as there is no evidence that the Juvederm Mark had a reputation in Australia at the relevant date.

   Section 42

   [7] See

2. Section 42 of the Act is reproduced below:

   42 - 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.

3. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[8]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[9]

   [8] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [9] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

4. The Opponent has particularised the ground of opposition in the SGP as follows: 

   (a) The Opponent refers to and repeats the matters pleaded in paragraphs 1, 2, 3 and 4 of this Statement of Grounds and Particulars, together with the Particulars subjoined to each such paragraph;

   (b) By reason of the matters pleaded in those paragraphs, the Opponent has established a reputation and goodwill in Australia in the Opponent’s Goods and in similar and closely related goods and services;

   (c) By reason of the matters pleaded in paragraph 6 (b), and by reason of the similarity of:

   (1) the Applicant’s Trade Mark and the Opponent’s Trade Marks to one another; and

   (2) the goods in respect of which the Opposed Application seeks registration (on the one hand), and the Opponent’s Goods (on the other hand), use of the Applicant’s Trade Mark in Australia in respect of the goods covered by the Opposed Application, would constitute commission by the Applicant of the tort of passing off;

   (d) By reason of the matters pleaded in paragraphs 5(a), (b) and (c), the earlier use of the Applicant’s Trade Mark in Australia in respect of the goods covered by the Opposed Application, would constitute conduct engaged in by a person in the course of trade or commerce that is misleading or deceptive or likely to mislead or deceive, in contravention of Section 18 of Schedule 2 to the Competition and Consumer Act 2010 (Commonwealth);

   (e) Further and alternatively to paragraph 5 (d), by reason of the matters pleaded in paragraphs 5(a), (b) and (c), the use of the Applicant’s Trade Mark in respect of the goods covered by the Opposed Application, would constitute the making, in the course of trade or commerce, of false or misleading representations by a person, in contravention of Section 29 (1) of Schedule 2 to the Competition and Consumer Act 2010 (Commonwealth);

   (f) Further and alternatively to paragraphs 5 (d) and (e), by reason of the matters pleaded in paragraphs 5 (a), (b) and (c), the use of the Applicant’s Trade Mark in respect of the goods covered by the Opposed Application, would constitute conduct engaged in by a person in the course of trade or commerce that is unconscionable within the meaning of the unwritten law from time to time, in contravention of Section 20 of Schedule 2 to the Competition and Consumer Act 2010 (Commonwealth);

   (g) Further and alternatively to paragraphs 5 (d), (e) and (f), by reason of the matters pleaded in paragraphs 5 (a), (b) and (c), the use of the Applicant’s Trade Mark in respect of the goods covered by the Opposed Application, would constitute conduct engaged in by a person in the course of trade or commerce and in connection with the supply or possible supply of goods or services to a person (other than a listed public company) that is unconscionable in all the circumstances, in contravention of Section 21 of Schedule 2 to the Competition and Consumer Act 2010 (Commonwealth);

   (h) Further and alternatively to paragraphs 5 (d), (e), (f) and (g), by reason of the matters pleaded in paragraphs 5(a), (b) and (c), the use of the Applicant’s Trade Mark in respect of the goods covered by the Opposed Application, would constitute unconscionable conduct in Equity.

5. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60.[10] Consequently, I find that the Opponent has also failed to establish that the Applicant’s use of either of the Trade Marks would be contrary to s 18 of the ACL.

   [10] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

6. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[11], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[12] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   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.[13]

   [11] [2014] ATMO 65, [50].

   [12] [2003] FCA 104, [107].

   [13] [1989] FCA 506, [40] (citations omitted).

7. Finally I note that in circumstances where the Opponent has provided no evidence of its use of the Juvederm Mark in Australia or submissions on this point I am unpersuaded that the use of either of the Trade Marks by the Applicant would amount to unconscionable conduct, either under the Competition and Consumer Act 2010 or the general law of Equity.

8. For these reasons I am not satisfied that use of either of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 58

9. Section 58 of the Act is reproduced below:

   Section 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.

10. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. [14]  These are:

    · that the Trade Mark (in question) is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[15]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[16] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark (in question) based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark (in question) by the Applicant (‘the third factor’).[17]

    [14] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

    [15] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [16] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    [17] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

11. The ground based on s 58 of the Act was particularised in the SGP as follows:

    The Opponent:

    (a) acting through its partner and predecessor in title Sevag Parseghian in or about November 1999 authored a sign containing the word JUVEDERM, with the intention that the sign be adopted as a trade mark for the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products;

    (b) adopted the sign JUVEDERM as a trade mark for the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products, in or about at least the year 1999;

    (c) has, since at least 1999 and at all subsequent relevant times, produced and offered for sale and sold the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products under or by reference to the trade mark JUVEDERM;

    (d) sought the registration of the sign JUVEDERM as a trade mark in Norway pursuant to Norwegian trade mark application No 201605042 (which was filed on 22 April 2016) in respect of (amongst other things) the following goods in Class 3 of the Register: “Bleaching agents and other substances for laundry; agents for cleaning, polishing, stain removal, and abrasive; soaps; perfumes, essential oils, hair tonic; dentifrices; oils for cosmetic use; cosmetic kit; cosmetic preparations for slimming purposes, cosmetics and balm for the care of hair and scalp; cosmetic sunscreen products and preparations (emulsions, lotions, gels, oils and fluids); essential oils and aromatic extracts; toiletries; compositions for washing and scenting.

    Cosmetics; Cosmetics for professional use and use of end-users; Cosmetic creams, emulsions, lotions, fluids, agents, gels and oils for use on the skin (in the face, on the body, hands and in the neck); Cosmetic products and preparations for skin care; Cosmetic masks, cosmetics, exfoliation cosmetics, cosmetic peeling; Cosmetics for smoother skin; Cosmetic preparations for skin bleaching, skin bleaching cream, bleaching preparations (colorants) for cosmetic purposes; Cosmetics to make skin lighter, cosmetics to perfect face color and skin; Anti-wrinkle cosmetics, cosmetics for skin rejuvenation, cosmetics to make skin lighter, cosmetic preparations for skin hydration, cosmetics for skin tone.”

    (e) has, since at least the year 1999 and at all subsequent relevant times, sold the Opponent’s range of professional and home care cosmetic products under or by reference to the trade mark JUVEDERM;

    (f) has, since at least the year 1999 and at all subsequent relevant times, used, intended to use or to authorise the use of the sign JUVEDERM as a trade mark in the Commonwealth of Australia and elsewhere in respect of, and so as to distinguish the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products, from those of others;

    (g) has, since at least the year 1999 and at all subsequent relevant times, advertised, marketed or promoted the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products under or by reference to the sign JUVEDERM so as to distinguish the Opponent’s products from of others;

    (h) has, since at least the year 1999 and at all subsequent relevant times, used or intended to use or authorise the use of signs containing the name JUVEDERM as trade marks in the Commonwealth of Australia and elsewhere in respect of the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products, and so as to distinguish the Opponent’s products from those of others; and

    (i) has, since at least the year 1999 (but in any event, from a date that precedes both:

    (1) the earliest priority date that the Opposed Application may lawfully claim, and

    (2) the date (if any) on which the Applicant claims that the trade mark the subject of the Opposed Application was first used in Australia)

    and at all other relevant times, used or authorised the use of (or intended to use or authorise the use of) the sign JUVEDERM in the Commonwealth of Australia and elsewhere as a trade mark for the Opponent’s range of professional and home care cosmetic products, aesthetic products and anti-ageing products, being goods that are the same as, or substantially the same as or of the same description as the goods covered by the Opposed Application.

12. There is no evidence before me of any use of the Juvederm Mark in Australia prior to the relevant date by the Opponent. The issue of the earlier priority date claimed by reason of the Norwegian Application has been discussed and dismissed in respect of the s 44 ground above. In the absence of any further submissions on this point I find that the third factor is not established and the Opponent has failed to establish the ground of opposition under s 58 of the Act.

    Section 62A

13. Section 62A of the Act is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

14. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

15. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[18]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[19]

    [18] [2004] EWCA Civ 1028; [2005] FSR 10.

    [19] [2012] FCA 81, [147].

16. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[20]

    [20] Ibid [165]-[166].

17. The Opponent has particularised this ground of opposition in the SGP as follows:

    (a) The Opponent refers to and repeats the matters pleaded in paragraphs 1, 2, 3, 4, & 5 of this Statement of Grounds and Particulars, together with the particulars subjoined to each such paragraph.
    (b) By reason of the matters referred to in paragraphs 5 (a) to (h), the Applicant’s conduct (and in particular, the Applicant’s Trade Mark) seeks to emulate the image of the Opponent and of the Opponent’s goods and to misappropriate the international reputation and goodwill that the Opponent has generated in the Opponent’s Trade Marks and in the Opponent’s image;
    (c) Further and in the alternative to paragraph 6 (b), by engaging in the conduct referred to in that paragraph, the Applicant has engaged in behaviour that falls short of acceptable commercial standards.

18. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[21] Given the absence of any evidence of reputation or use of the Juvederm Mark in Australia by the Opponent, any evidence at all supporting the particulars set out in the SGP and the considerable evidence of international use by the Applicant of the Juvederm Mark in Australia since 2008, I cannot conclude that the decision of the Applicant to seek to register the Trade Marks was a decision made to take advantage of any reputation the Opponent may have had in the Juvederm Mark. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the applications was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [21] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

    Decision

19. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application nos. 1780990 and 1780999 may proceed to registration not less than 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 discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

    44. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs respect of trade mark number 1780990 against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995. In respect of trade mark number 178099 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[22]

    [22] [2001] ATMO 78.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    21 May 2019