Opposition by Happy Skincare ATF Breckell Family Trust to registration of trade mark application number 1960077 (class 8) HAPPYSKINCO - in the name of Happy Skin Co Pty Ltd.

[2021] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Happy Skincare ATF Breckell Family Trust to registration of trade mark application number 1960077 (class 8) HAPPYSKINCO - in the name of Happy Skin Co Pty Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Andrew Sykes, Counsel; Catherine Macneil, Mark My Words Trademark Services Pty Ltd

Applicant: Wen Wu, Counsel; Sam Parisi, Hunters Lawyers

Decision:

2021 ATMO 16

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition ss 42(b), 44, 58 and 60 – section 44 established – trade mark application refused registration.

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark (‘Trade Mark’):

   Trade Mark Number: 1960077

   Trade Mark:  

   Applicant: Happy Skin Co Pty Ltd (‘Applicant’)

   Priority Date: 12 October 2018

   Specification:

   Class 8 – Electrically operated hair removal devices (hand instruments)

2. The Trade Mark was advertised for acceptance in the Australian Official Journal of Trade Marks on 13 March 2019.

3. A Notice of Intention to Oppose was filed by Happy Skincare ATF Breckell Family Trust (‘Opponent’) on the 13 May 2019. The Statement of Grounds and Particulars (‘SGP’) was subsequently filed on 13 June 2019.

4. A Notice of Intention to Defend was filed by the Applicant on 18 July 2019.

5. Evidence in Support was filed by the Opponent on 25 October 2019. The Applicant filed Evidence in Answer on 24 January 2020. Evidence in Reply was filed by the Opponent on the 30 March 2020.

6. On 22 April 2020, the Applicant requested a hearing.

7. Written submissions were filed by both parties prior to the hearing and the matter was heard before me, a delegate of the Registrar, via video conference on 20 November 2020. Wen Wu appeared as counsel for the Applicant accompanied by Sam Parisi of Hunters Lawyers. Andrew Sykes appeared as counsel for the Opponent accompanied by Catherine Macneil of Mark My Words Trademark Services Pty Ltd.

8. Following the Hearing, the Applicant requested to amend their specification to remove Class 3 from the Trade Mark. The Amendment was completed on 5 February 2021. For reference to the original specification, see Annexure A of this decision.

Preliminary Matters

1. During the hearing, the Applicant requested that new evidence be considered under Trade Mark Regulations 1995 (Cth) regulation 21.19. The evidence being:

   ·     An extension of time filed by the Opponent with the United States Patent and Trademark Office (‘USPTO’);

   · A Trade Mark Registration with the New Zealand Intellectual Property Office intended to support the Applicant’s submissions regarding section 44 of the Act.

2. Regulation 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be considered when making a decision. This includes evidence filed out of the evidence stages of proceedings. The party seeking admission of the new evidence must make a compelling case for its inclusion.

3. According to the Applicant, the evidence consisting of an extension of time was not filed during the evidentiary stages of these proceedings because the extension of time was only filed with the USPTO after the evidence stage in proceedings had concluded.

4. Both pieces of evidence are of limited probative value and not crucial to the determination of the matter before me. As such, I have not exercised my discretion to allow the new evidence into these proceeding. The decision will be determined with regard to the evidence properly filed during these proceedings.

Grounds of Opposition

1. The nominated grounds of opposition are sections 42(b), 44, 58, and 60 of the Act.

2. The Opponent has onus of establishing one or more of the nominated grounds of opposition.[1]The required standard of proof is on the balance of probabilities.[2]

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

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3. The date at which the rights of the parties will be determined is the date of the application,[3] which in this matter is the priority date of the Trade Mark, 12 October 2018.

Evidence

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

Opponent’s Evidence

1. The Opponent filed the following evidence during these proceedings:

   Evidence in Support

   ·     A declaration made by Phoebe Breckell dated 24 October 2019 (‘Breckell Declaration’) and annexures PB-01 through to PB-24;

   ·     A declaration made by Jacqueline Pryor dated 24 October 2019 (‘First Pryor Declaration’) and annexures JP-01 through to JP-06.

   Evidence in Reply

   ·     A second declaration made by Jacqueline Pryor dated 30 March 2020 (‘Second Pryor Declaration’).

2. The evidence demonstrates that Opponent is the owner of a number of trade marks in Australia (collectively referred to as the ‘Opponent’s Trade Marks’), namely:

   ·     Trade Mark Number: 1647425 (‘Trade Mark Registration’)

   ·     A plain word variation in the form of HAPPY SKINCARE;

   ·     

3. The Breckell Declaration explains that that Opponent has consistently emphasised the term ‘Happy’ in the branding of their business in Australia since June 2010.

4. The Breckell Declaration outlines the history of the Opponent’s use of ‘Happy Skincare’ trade marks as follows:

   ·     The Trade Mark Registration has been used continuously since April 2013.

   ·     Goods bearing the Opponent’s Trade Marks are sold directly by the Opponent and through various third-party retailers in Australia. The Opponent also sells goods bearing the Trade Mark Registration to 37 different countries around the world.

   ·     The Opponent’s Trade Marks have been marketed and promoted since 2010 on a variety of physical and online platforms including the Opponent’s website < (< Instagram (< social media, cross promotion, trade shows/events, signage and printed promotion materials, pay per click media, and provision of product samples.

   ·     In June 2016, the Opponent began providing their products via physical stores.

   ·     From 14 January 2016 until 30 June 2018 the Opponent’s goods were sold and promoted exclusively via <nourishedlife.com.au>. Nourished Life is a large online marketplace for personal care and cosmetic products.

5. Confidential Annexure PB-23 of the Breckell Declaration outlines the Opponent’s turnover and marketing expenditure since the 2009/10 financial year.

Applicant’s Evidence

1. The following evidence was filed by the Applicant:

   Evidence in Answer

   ·     A declaration made by Andy Colalillo (‘Colalillo Declaration’) dated 24 January 2020 and annexures AC-1 to AC-2; and

   ·     A declaration made by Sam Parisi (‘Parisi Declaration’) dated 24 January 2020 and annexures SP-1 to SP-4.

2. The Colalillo Declaration explains that the Applicant first used the Trade Mark in Australia in April 2018 and has sold its products exclusively via <happyskinco.com>. The Applicant deals primarily in intense pulse light (‘IPL’) hair removal devices.

3. The Applicant has promoted the Trade Mark via a combination of various social media advertising, including on Facebook, Instagram and Snapchat. In addition, they have also promoted the Trade Mark using search engine advertising, celebrity and influencer sponsorship, tv and print media, and sponsorship of events and charities.

4. Confidential Annexures AC-1 and Annexure AC-2 of the Colalillo Declaration detail the number of personal hair removal products sold by the Applicant and the Applicant’s marketing expenditure.  

Discussion and Reasons

Section 44

1. Section 44(1) relevantly provides:

   (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)the applicant's trade mark 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.

1. To succeed in this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

2. In the SGP the Opponent identified the Trade Mark Registration as the basis of this ground of opposition. For reference the details of the Trade Mark Registration are:

   Trade Mark Number: 1647425

   Trade Mark:            

   Priority Date: 17 September 2014

   Specification:

   Class 3:  Essences for skin care; Non-medicated skin care products; Skin care creams (cosmetic); Skin care lotions (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Sun skin care products (cosmetics); Essential oils; Beauty care preparations; Beauty care products; Beauty creams; Beauty face packs; Beauty gels; Beauty masks; Beauty milks; Beauty preparations; Cosmetic moisturisers; Cosmetics; Facial care products (cosmetic); Milks (cosmetics); Moisturisers (cosmetics); Body care preparations (non-medicated); Body care products (non-medicated); Cleaning preparations for use on the body; Cosmetic preparations for use on the body; Non-medicated preparations for the care of the body; Non-medicated preparations for use on the body; Non-medicated products for the body; Oil for the body

3. From the details set out above it is evident that the Trade Mark Registration is owned by another party and has an earlier priority date than the Applicant’s Trade Mark.

Comparison of Trade Marks

1. It is common ground between the parties that the two trade marks are not substantially identical. I am agreement with this position, noting that on a side-by-side comparison the differences between the trade marks,[4] particularly in regard to the devices featured in each trade mark, are such that there is not be an overall impression of resemblance between the trade marks.

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [12].

2. Section 10 of the Act defines ‘deceptive similarity’ as:

   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.

3. In Shell Co (Aust) Ltd v Esso Standard Oil (Aust)Ltd[5] Windeyer J outlined the approach to assessing deceptive similarity at [13]:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[6]

   [5] [1963] HCA 66.

   [6] Ibid [13].

4. To establish that two trade marks are deceptively similar it is necessary for the Opponent to demonstrate a real tangible danger of deception or confusion occurring.[7] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same source.[8]

   [7] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [8] Ibid.

5. There are a number of factors relevant to the assessment of whether two trade marks are deceptively similar. These include the visual and aural similarity of the trade marks,[9] the idea of the trade mark,[10] and all surrounding circumstances.[11] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[12]

   [9] Re Pianotist Co Ltd (1906) 23 RPC 774, 777; Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658.

   [10] Ibid.

   [11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50].

   [12] Clarke v Sharp (1898) 15 RPC 141, 146.

6. The Opponent submitted that the trade marks are deceptively similar on the basis that each trade mark contains the words HAPPY SKIN followed by the consonant ‘C’. Particular emphasis was placed on the overall phonetic similarity between HAPPY SKINCARE and HAPPYSKINCO, which vary only by the final syllable in the trade marks.

7. The Applicant stressed the differences in the image elements, stylisation, and layout of the two trade marks, contending that, overall, these differences meant that the trade marks were not likely to be confused.

8. The trade marks share a number of visual and aural similarities. They both begin with the word HAPPY followed by a relatively descriptive phrase indicative of the purpose of the goods designated by the trade marks. The SKINCARE and SKINCO elements of the trade marks sound similar and differ only in respect to the ‘-Care’ and ‘-Co’ syllables at the end of the words. Considered as a whole the similarities of words result in two trade marks that both look and sound very similar.

9. Conceptually, the idea of HAPPY or ‘happy skin’ is also consistent between the trade marks. There may be some minor distinction between the meaning of HAPPY SKINCARE and HAPPY SKINCO with the presence of the ‘CO’ element in the trade mark potentially indicating a company. However, I consider the distinction too fine to mitigate the likelihood of confusion in the face of the prominence of the HAPPY elements in the trade mark and the overall similarities in look and sound.

10. Each trade mark contains distinct images, being a smiley face in the Trade Mark and the images of a Kookaburra and a stylised ‘Y’ in the Trade Mark Registration. In my view although these differences provide some degree of visual distinction, it is not enough to distinguish the trade marks. The image of smiley-face in the Trade Mark reinforces the idea of HAPPY, and the images in the Trade Mark Registration, while certainly noticeable, are not prominent enough to impact the impression of the Trade Mark Registration to the same degree as the word elements. In the context of the trade marks overall, the differences in the images do not outweigh the visual and aural similarities derived from the words of the trade marks.

11. The Applicant submitted that the word HAPPY is common to the trade and that the distinctiveness of the Trade Mark Registration lies with its overall representation and combination of elements. In support of this contention the Applicant has referenced trade marks registered in class 3, namely: trade mark number 1045204 HAPPYDERM , trade mark number 1405295 HAPPY FACE, trade mark number 1712430 HAPPY LIPS, trade mark number 1914796 HAPPY HAIR, trade mark number 1767670 HEPPISKIN and trade mark number 1328716 HAPPY. In further support, the Applicant has also noted the examiner’s decision not to raise the Trade Mark Registration as a section 44 ground for rejection in the examination of the Trade Mark, and the decision not to revoke acceptance of the Trade Mark.

12. While all surrounding circumstances are to be considered,[13] I do not view these trade marks as evidence that the term HAPPY is common to the trade.  The state of the Register generally does not evidence or provide insight about market trends or the state of the marketplace.[14]The exact circumstances behind the registration of each of these trade marks is also not clear to me, nor do the facts relevant to the registration of those trade marks necessarily align with this matter. I accept that the trade marks referred to by the Applicant indicate a propensity for traders to seek registration for trade marks containing the word ‘Happy’, but nothing further.

    [13] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50].

    [14] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [35]; British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, 302.

13. Regarding the multiple decisions by IP Australia, I note that this hearing is not a review of the examiner’s decision, nor of the decision not to revoke the trade mark under section 38 of the Act. While I can appreciate the Applicant’s desire for me to be consistent with these decisions, the delegates making those decisions did not have the benefit of all of the information I currently have before me, nor am I bound to follow those decisions. Given the reasons I have provided regarding the similarity of the trade marks, I am not inclined to view these decisions as a basis for finding that there would not be a likelihood of confusion.

14. Accounting for imperfect recollection and considering the similarities between the trade marks outlined above, I am satisfied that the trade marks are deceptively similar.

Comparison of Goods

1. Section 14(1) of the Act provides:

   (1)  For the purposes of this Act, goods are similar to other goods:

   (a)  if they are the same as the other goods; or

   (b)  if they are of the same description as that of the other goods.

1. In the Matter of an Application by LadislasJellinek for the Registrar of Trade Mark (1946) 63 RPC 59 (‘Jellinek’), Romer J stated that the answer to whether goods are of same description depends on ‘whether the goods belong to the same or different trades’[15]. In determining this question consideration should be given to the nature of the goods,[16] the purpose for which the goods will be used,[17] and the trade channels through which the goods are bought and sold.[18] Similarly, in Reckitt & Colan Ltd v Boden (1945) 70 CLR 84 Dixon J stated at 94:

   What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put.  Another is whether they are commonly dealt with in the same course of trade or business.

   [15] In the Matter of an Application by LadislasJellinek for the Registrar of Trade Mark (1946) 63 RPC 59, 64.

   [16] Ibid.

   [17] Ibid.

   [18] Ibid.

2. These factors were also adopted by the High Court of Australia in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[19].

   [19] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5].

3. The scope of the Trade Mark Registration’s specification, ‘body care products (non-medicated’), and whether it should be read to include ‘electrically operated hair removal devices (hand instruments)’ in Class 8 is a matter of contention between the parties. The Opponent submitted that ‘body care products (non-medicated)’ describes all forms of products used to care for the body and should not be limited to cosmetics, or skin care substances. Conversely, the Applicant argued that the phrase ‘non-medicated’ indicates that the goods are cosmetic or topical in nature and should not be construed to include goods such as ‘hand instrument’.

4. Whether goods are within a statement of goods in respect of which a trade mark is sought to be registered is generally a question of construction.[20]

   [20] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [44].

5. In respect to the description, ‘body care products (non-medicated)’, the use of the negative prefix in the phrase ‘non-medicated’ indicates that the body care products are not medicated in nature. The term ‘medicated’ is defined as something treated or impregnated with medicine.[21] Describing a good as ‘non-medicated’ does not limit the specification to cosmetics, preparations, or any other class of goods classified in Class 3, even if the description would certainly include such goods. This would be too strict of an interpretation where the ordinary meaning of the phrase describes goods that are not medicated in nature. Rather, in my view, ‘body care products (non-medicated)’ describes a diverse range of goods for body care purposes, including, and not limited to, skin care preparations, cosmetics, but also body care articles, tools and instruments that could be reasonably identified as a ‘product’. On this basis there are goods that fall within the scope of Trade Mark Registration’s specification that are the same as the goods designated in the Trade Mark.

   [21] Macquarie Dictionary (online at 18 January 2021) ‘medicated’(def 1-2).

1. My comments regarding the scope of the Trade Mark Registrations specification notwithstanding, I note that the Applicant has submitted that the difference in price between ‘electrically operated hair removal devices’ and the goods specified in Class 3 of the Trade Mark Registration indicate a difference in the nature of the goods. The Applicant’s submissions tend to focus on IPL devices. I understand based on evidence in the Colalillo Declaration that these are the goods the Applicant primarily deals in. However, section 44(1) is determined not in regard to actual use, but with reference to the use to which the trade mark could reasonably be put.[22] While IPL devices may be expensive, many electric shaving, hair removal devices and other goods within the scope of the Trade Mark’s specification are not.[23] Despite this, I recognise there is a distinction between the mechanical nature of electric hair removal devices and many of the cosmetic and skin care preparations specified in Class 3 of the Trade Mark Registration.

   [22] Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; 129 CLR 353, 362.

   [23] See: First Pryor Declaration Annexure JP-04A.

2. In a broader sense, electric hair removal instruments can be characterised as ‘body care products’. The Trade Mark’s specification, ‘electrically operated hair removal devices (hand instruments)’ would include goods such as electric shaving devices, laser hair removal devices, epilators, and intense pulse light devices.  These goods are put to the same use as many of the ‘body care products’ , ‘beauty care products’ or ‘cosmetics’ specified in Class 3 of the Trade Mark Registration. For example, shaving devices or electric hair removal devices are used to remove hair from the body, so too are depilatory waxes and creams.  Such goods also tend to be used in conjunction with shaving cream, moisturisers, or lotions to reduce abrasion in the hair removal process. To this last point, the Opponent has also submitted that cosmetics and beauty care products are often sold alongside, or as part of a kit, with beauty or body care tools, noting that their own cosmetic goods are sold alongside makeup applicators and brushes.

3. The Applicant has submitted that electric hair removal devices are sold through different trade channels. Although I accept that there are speciality stores that deal in shaving or hair removal equipment, goods that fall within the scope of both specifications are also readily available in pharmacies, department stores and supermarkets.

4. None of the above factors are determinative. However, considering my comments regarding the similarity of the goods and the scope of respective specifications, I am satisfied that the goods are similar within the meaning of section 14 of the Act.

5. In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCA 3665; [1999] FCA 1020 French J noted at [40] that there is one practical judgement to be made:

   Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.  It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.  Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.  

6. Given the degree of resemblance between the trade marks and the nexus between the respective goods, I am satisfied that there would be a real tangible danger of confusion between the trade marks.

7. The Opponent has established section 44(1) of the Act.

8. In the event that section 44(1) is established, the Applicant submitted the Trade Mark should be allowed registration under section 44(3) of the Act.

Honest Concurrent Use or Other Circumstances

1. Section 44(3) provides:

   (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.

1. In McCormick & Co Inc v McCormick [2000] FCA 1335, Kenny J summarised the criteria for determining whether registration should be permitted under section 44(3)(a):

   (1)    The Honesty of the concurrent use;

   (2)    the extent of the use in terms of time, geographic area and volume of sales;

   (3)    the degree of confusion likely to ensue between the marks in question;

   (4)    whether any instances of confusion have been proved; and

   (5)    the relevant inconvenience that would ensue to the parties if registration were to be permitted.[24]

   [24] McCormick & Co Inc v McCormick [2000] FCA 1335, [30].

2. The ‘honesty’ required by section 44(3)(a) is commercial honesty.[25] The exact circumstances surrounding the adoption of the Trade Mark by the Applicant were not disclosed in the Applicant’s evidence. The Opponent has submitted that silence on the matter of honesty is fatal to a claim of honest concurrent use. While the Applicant is not required to explicitly declare that their use of the trade mark is honest, the absence of any information pertaining to why the Applicant adopted the Trade Mark is problematic. The Applicant submitted that honesty may be inferred from other factors, namely, the commonness of the words used in the trade mark, the Applicant’s subsequent conduct, the likelihood of confusion, the Applicant’s knowledge of the Opponent’s trade mark, and the nature the continued use of the trade mark. Each of these factors are relevant to the overall assessment of honest concurrent use but are circumstantial in respect to the honesty of the Applicant’s use of the Trade Mark. Honesty is critical to the assessment of honest concurrent use.[26]Although the Applicant has been transparent about their commercial activity and use of the Trade Mark, the lack of evidence regarding the adoption of the Trade Mark or state of awareness of the Opponent’s Trade Mark affords me little basis to determine whether or not the use of the Trade Mark was honest.

   [25] In Re Parkington & Co Ltd’s Application (1946) 63 RPC 171, 182; see also: Ibid [32].

   [26]Chris-Telle Pty Ltd v Australian Swimming Inc (2004) 64 IPR 110; [2004] ATMO 60, 119; Re Granada Trade Mark [1979] RPC 303, 313.

3. In addition, I note that the extent and duration of the Applicant’s use would preclude the application of my discretion under s44(3)(a) of the Act. The use of the Trade Mark by the Applicant has occurred over a relatively short period of time before the priority date of the Trade Mark. The Applicant states that first use of the Trade Mark began in April 2018, only 6 months before the priority date of the Trade Mark. Although there is no minimum time frame for honest concurrent use, in general, the shorter the period of concurrent use the greater the challenge an applicant will face in justifying the acceptance of a trade mark. The Applicant has provided commercial information regarding the sales of goods bearing the Trade Mark and marketing expenditure. The amounts provided a relatively significant but are not contextualised in the period of use prior to the filing of the Trade Mark. As such, the extent of use in the period before the priority date is unclear.

4. Having regard to the deficiencies in the evidence, the short period of use before the relevant date and lack of established honesty, I am satisfied that it is not appropriate to exercise the discretion under section 44(3)(a) of the Act.

5. In regard to section 44(3)(b) of the Act, the Applicant repeated its submissions on deceptive similarity in relation to the goods in Class 8. Section 44(3)(b) permits acceptance of a trade mark because of ‘other circumstances’. ‘Other circumstances’ tend to be circumstances apart from those that would support a finding of honest concurrent use.[27] However, the circumstances the Applicant has relied on are those relevant to section 44(1) and, to some degree, section 44(3)(a). These reasons may provide context to which ‘other circumstances’ may be considered, but they are not indicative of any other circumstance that would justify acceptance in the face of my findings on sections 44(1) and 44(3)(a).

   [27] Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124; 381 ALR 631, [80].

6. Having regard to all the circumstances discussed above, I am satisfied that the Applicant has not established honest concurrent use of the Trade Mark, or other circumstances that would warrant the application of section 44(3) of the Act.

7. The Opponent has established the ground of opposition under section 44 of the Act. Having found in favour of the Opponent under section 44 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.

Decision

1. Section 55(1) of the Act provides:

   Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has established the ground of opposition under section 44 of the Act. Accordingly, I refuse to register trade mark application number 1960077.

Costs

1. Both parties have requested an award of costs. As the Opponent was successful in their opposition, I award costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

26 February 2021

Annexure A

Original Specification of Trade Mark Application 1960077

Class 3: After sun creams (not medicated); Anti-ageing creams, not medicated; Beauty creams (non-medicated); Body creams (cosmetics); Bronzing creams; Cocoa butter in the form of creams; Cosmetic acne creams; Cosmetic creams; Cosmetic creams for wrinkles; Day creams (non-medicated); Face foundation creams; Facial creams (cosmetic); Moisturising creams (cosmetic); Moisturising skin creams (cosmetic); Non-medicated creams; Non-medicated creams for application after exposure to the sun; Non-medicated creams for application before exposure to the sun; Non-medicated creams for facial scrubs; Non-medicated creams for hydrating the skin; Non-medicated creams for moisturising the skin; Non-medicated creams for personal care; Non-medicated creams for protection against the sun; Non-medicated creams for protection of the skin; Non-medicated creams for softening the skin; Non-medicated creams for soothing the skin; Non-medicated creams for the body; Non-medicated creams for the face; Non-medicated creams for the lips; Non-medicated creams for the skin; Non-medicated foot creams; Non-medicated protective creams; Non-medicated skin creams; Non-medicated suntan creams; Non-medicated washing creams; Nourishing creams (non-medicated cosmetics); Perfumed creams (non-medicated toilet preparations); Self tanning creams (cosmetic); Shaving creams; Skin care creams (cosmetic); Skin creams (cosmetic); Skin tanning creams for human use; Sun creams (cosmetics); After sun moisturisers; Body moisturisers; Cosmetic moisturisers; Facial moisturisers (cosmetic); Moisturising body lotion (cosmetic); Moisturising lotions (cosmetic); Moisturising skin lotions (cosmetic); Non-medicated moisturisers; Base cream; Non-medicated face cream; Skin cleansing cream (cosmetic); Aftershave moisturising cream; Aftershave moisturising milk

Class 8: Electrically operated hair removal devices (hand instruments)