Opposition by Kiss Nail Products Inc to registration of trade mark application number 2392866 (class 3) - KissT - in the name of Tracy Keevers

[2025] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Kiss Nail Products Inc to registration of trade mark application number 2392866 (class 3) - KissT - in the name of Tracy Keevers

Delegate:

Tracey Berger

Representation:

Opponent: FB Rice Pty Ltd

Applicant: Redchip Lawyers Pty Ltd

Decision:

2025 ATMO 54

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition claimed under ss 42(b), 44, 58, 60 and 62A – s 44 ground of opposition established – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Kiss Nail Products Inc (‘Opponent’) to registration of the trade mark detailed below filed in the name of Tracy Keevers (‘Applicant’):

Trade Mark: KissT (‘Trade Mark’)

Number:2392866

Filing Date:    29 September 2023 (‘Relevant Date’)

Specification: Class 3: Non-medicated skin care beauty products; Beauty care preparations; Beauty preparations; Non-medicated beauty preparations; Cosmetic products for eyelashes; Cosmetic creams; Cosmetics; Moisturisers (cosmetics); Cosmetic skin care products; Hair care preparations; Non-medicated preparations for the care of the hair; Facial care products (cosmetic); Make-up; Beauty masks; Perfumes; Nail polish; Lip glosses; Cosmetic preparations for eyelashes (‘Applicant’s Goods’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the application for possible registration on 1 March 2024, the Opponent filed a Notice of Intention to Oppose the registration on 28 March 2024, following by a Statement of Grounds and Particulars (‘SGP’) on 26 April 2024.  The Applicant filed a Notice of Intention to Defend on 27 May 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. As evidence in support of the opposition, the Opponent filed a declaration of Beom John Kim, registered patent and trade mark attorney of SJ Partners IP Law Firm, the Opponent’s external legal counsel, made on 2 September 2024 with Annexures BJK-1 to BJK-12 (‘Kim’). No other evidence was filed in the proceedings.

4.     Once the time for filing evidence had ended, the parties were able to request a hearing.  The Opponent requested a decision without a hearing and the Applicant did not ask to be heard.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials. 

Grounds, onus and Relevant Date

5.     The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A.

6.     The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the application.[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Opponent’s Evidence

7.     Kim declares that the Opponent is the largest manufacturer and distributor of professional quality nail care products in the world and since 1989 has been engaged in designing, manufacturing and selling beauty products including artificial nails, nailcare products, skincare products, cosmetics, hair care products and appliances, beauty accessories (‘Opponent’s Goods’) under its flagship brand KISS (‘Opponent’s Mark’).  The Opponent’s Goods are sold globally in over 90 countries including in Australia through multi-brand retailers, pharmacies and online retailers.  A sample list of retailers who sell the Opponent’s Goods in Australia is provided together with extracts from the websites of Big W and Priceline illustrating the Opponent’s Goods for sale in Australia.

8.     The Opponent’s Mark was first used in Australia in 2004 when it commenced selling the Opponent’s Goods through its Australia distributor, Key-Sun Laboratories Pty Ltd.  In addition to the Opponent’s Mark, the Opponent uses various KISS- formative marks including KISS NEW YORK, RED BY KISS, PINK BY KISS, RUBY KISSES, FIRST KISS and KISS Colors & Care. 

9.     The Opponent owns the following Australian trade mark registrations (‘Opponent’s Registrations’):

Number	Trade Mark	Priority Date	Goods
701348[5] (’48 Mark’)	KISS	29 Jan 1996	Class 3:  Nail care products in class 3, being nail decals, nail tips, nail tip glue, fingernail and toenail conditioners and hardeners, nail polish removers, cuticle softeners, cuticle removing preparations, nail preservers, nail conditioners, nail cream, nail gel, liquid nail coverings, nail enamels, nail tints, nail rouge, artificial nails, adhesives for attaching fingernails, nail polishes, glue remover, nail treatments being nail strengtheners, sealers and protectors, acrylic fingernail sculpturing kits and/or systems, polish kits, adhesive strengtheners Class 8:  Fingernail and toenail implements being nail cutters and nail drills; fingernail and toenail abrasives including nail files
1105744 (’44 Mark’)	KISS	28 March 2006	Class 3:  Cosmetics; hair color preparations Class 21:  Fingernail treatment utensils, namely, brushes

[5] Registration 701348 has the following endorsements: ‘Provisions of subsection 41(5) applied’ and ‘Provisions of subsection 44(4) applied’.

10.     As evidenced in the Annexures to Kim, the Opponent’s Mark is promoted in Australia:

·     on the Opponent’s Goods;

·     on the Opponent’s website at and Australian distributor’s website at advertisements, press releases and materials provided to trade representatives of the Opponent’s Goods;

·     the Opponent’s social media accounts namely Facebook with 847,000 followers, X with about 45,000 followers, Instagram with 662,000 followers, YouTube with 30 million views and almost 20,000 subscribers; and Pinterest with 13,600 followers and 1.8 million monthly views; and

·     in third party articles.

11.     Kim annexes details of the number of units of the Opponent’s Goods sold in Australia and the wholesale revenue generated by these sales and also provides the Opponent’s advertising expenditure for promoting the Opponent’s Goods in Australia. 

12.     Kim declares that the Applicant is an individual located in Queensland who co-owns the business name Bomb Beauty Co.

Discussion

Section 44

13.     Section 44 relevantly provides:

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)    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.

14.     To succeed on the s 44 ground of opposition, the Opponent must nominate a trade mark that meets the following requirements:

·is in the name of a person other than the Applicant (‘first requirement’);

·has a priority date which is earlier than the Relevant Date (‘second requirement’);

·covers goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘third requirement’); and

·is substantially identical with, or deceptively similar to, the Trade Mark (‘fourth requirement’).

15.     In its SGP, the Opponent relies on the Opponent’s Registrations.  I confirm that the Opponent’s Registrations satisfy the first and second requirements.  Accordingly, I turn to a consideration of the third requirement.

Similar Goods

16.      Section 14 provides that two sets of goods are similar if they are the same or of the same description.  The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[6] 

[6] Jellinek's Application (1946) 63 RPC 59 (Romer J).

17.     The ‘nail care products’ of the 48 Mark encompasses the Applicant’s ‘nail polish’.  Further,  the Opponent’s 44 Mark covers ‘cosmetics’ and ‘hair color preparations’.  These goods overlap directly with many of the items claimed by the Applicant.  In my view, the Applicant’s beauty and cosmetic products are often manufactured by the same traders as the Opponent’s cosmetics and are sold through the same trade channels to the same class of consumers for the same purpose as the Applicant’s beauty and cosmetic goods.  Accordingly, I find that the Applicant’s Goods are similar to the goods of the Opponent’s Registrations and turn to the fourth requirement whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.

Substantially identical or deceptively similar

18.     The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

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] 

[7] [1963] HCA 66, [12] (Windeyer J).

19.     The marks in question are shown side by side below:

KISS KissT

20.     The marks obviously share the prefix KISS which is an essential element of both marks.  Although the two marks differ by only one letter, the addition of the ‘T’ in the Trade Mark creates visual and aural differences.  In my view, these differences are such that the two marks are not substantially identical and I move to consider whether the trade marks are deceptively similar.

21.     Section 10 provides that 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.

22.     Justice Windeyer noted the different test for deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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].[8]

[8] (n 7) [13].

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which may be summarised as follows:

   [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[10]

   [10] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[11]

   [11] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[12]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[13]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[14]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[15]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[16]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [17]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[18]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[19]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[20] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[21]

   [12] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [13] Ibid.

   [14] Ibid.

   [15] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

   [16] Shell (n 7) [13].

   [17] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [18] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [19] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   [20] Australian Woollen Mills Ltd (n 12).

   [21] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 12), 657.

   24.     The Opponent’s Mark is entirely contained in the Trade Mark and whilst this is not in itself sufficient to render the marks deceptively similar, it does create an obvious degree of resemblance.  Further, the shared element KISS is the prefix of the Trade Mark and the beginning of a word is more important for the purpose of distinction.[22] 

   [22]  London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279 (Sargent LJ).

   25.     The question of deceptive similarity must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[23]  Whilst the word KISS may make reference to some of the relevant class 3 goods, I consider it to be inherently distinctive in relation to the other products claimed.  There is no evidence before me that the shared element KISS is commonly used for the relevant class 3 goods or is otherwise not distinctive.  I am aware that there are other marks containing the word KISS on the Register for the same or similar class 3 goods to those in the present case but I consider the present mark to be more similar differing by only one letter at the end of the mark.  The final letter ‘T’ in the Trade Mark may suggest to consumers that the Applicant’s KissT products are simply a variation or different range of the Opponent’s KISS goods.  I believe that consumers who are familiar with the Opponent’s earlier KISS mark will be caused to wonder whether it might not be the case that the Applicant’s Goods are those of the Opponent or otherwise connected to the Opponent.  I do not consider that the additional letter ‘T’ in the Trade Mark sufficiently changes the look, sound and idea conveyed from that of the Opponent’s Mark.  Taking into account the doctrine of imperfect recollection, there is a real tangible danger that consumers seeing the Trade Mark in relation to the Applicant’s Goods would be caused to wonder whether those goods originated from the same trader or was in some way related to the Opponent.[24]  I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark.

   [23] Frigiking Trade Mark [1973] RPC 739, 752.

   [24] Opponent’s Submissions, [57].

   26.     I find that the Opponent has satisfied the requirements of s 44(1) and note that the Applicant has not filed any evidence of use or other circumstances that would justify registration of the Trade Mark under ss 44(3) or 44(4).   

   Decision

   27. Section 55 of the Act relevantly provides:

   (1)  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.

   28.     The Opponent has established a ground of opposition under s 44.  Accordingly, I refuse to register trade mark number 2392866.

   29. Both parties requested an award of costs. As costs generally follow the event, I award costs against the Applicant in accordance with s 221 in the amounts outlined in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   11 March 2025