Opposition by L’Oreal, a Societe Anonyme, to registration of trade mark application numbers 1961047 - (3) - LORE and 1961193 - (3) - LORE PERFUMERY in the name of Lore Perfumery Pty Ltd

[2021] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by L’Oreal, a Societe Anonyme, to registration of trade mark application numbers 1961047 - (3) - LORE and 1961193 - (3) - LORE PERFUMERY in the name of Lore Perfumery Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Shelston IP

Applicant: Tegan Lee Messener-McAndrew

Decision:

2021 ATMO 14

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 and 62A – grounds pressed ss 44 and 60 - no grounds established, trade marks to proceed to registration.

Background

1. This is an opposition brought by L’Oreal, a Societe Anonyme (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and relates to the registration of the following trade mark applications (‘Trade Marks’) in the name of Lore Perfumery Pty Ltd (‘Applicant’):

   Application Number: 1961047

   Trade Mark:               LORE

   Priority Date:             11 October 2018

   Specification:             Class 3:  Air fresheners (fragrant preparations); Aromatherapy oil; Aromatherapy preparations; Aromatic oil; Aromatic perfumery products; Aromatics for fragrances; Aromatics for perfumes; Balms other than for medical purposes; Bases for perfumes; Bath crystals, not medicated; Bath gels, not medicated; Bath lotions, not medicated; Bath oils, not medicated; Bath products, not medicated; Bath salts, not for medical purposes; Beauty care preparations; Beauty care products; Beauty creams (non-medicated); Beauty products; Body care products (non-medicated); Body creams (cosmetics); Body moisturisers; Body oil; Body oil spray; Body sprays (non-medicated); Cleansers for the face; Cleansing creams (non-medicated); Cleansing oils; Cologne; Cosmetics; Cream perfumes; Distilled oils for beauty care; Eau de Cologne; Essences for skin care; Essential oils; Essential oils for the manufacture of perfumes; Essential oils for the production of perfumes; Facial care products (cosmetic); Fragrance preparations; Fragrance sachets; Fragrances; Fragrant preparations; Fumigation preparations (perfumes); Incense; Incense spray; Make-up; Mineral oils (cosmetic); Mint essence (essential oil); Mint for perfumery; Moisturising creams (cosmetic); Mouth sprays, not for medical use; Natural oils for perfumes; Non-medicated perfumery preparations; Oils being perfumed lathering products for use in the bath; Oils for perfumes and scents; Oils for the body (cosmetics); Perfume; Perfume oils; Perfumed body lotions (non-medicated toilet preparations); Perfumed body sprays (toilet preparations); Perfumed creams (non-medicated toilet preparations); Perfumed sachets; Perfumed soaps; Perfumed tissues; Perfumery; Perfumery articles; Perfumery compositions; Perfumery preparations; Perfumery products; Perfumes; Powdered perfumes; Products for beauty care; Room fragrances; Room fragrancing preparations; Room fragrancing products; Room fresheners (fragrance preparations); Room perfume sprays; Room scenting sprays; Sachets for perfuming linen; Scented oils; Scented preparations; Scented sachets; Scents; Skin care creams (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Tonics (cosmetic); Tonics (cosmetic) based on plant extracts; Body care preparations (non-medicated)

   (‘Applicant’s Goods’)

   Application Number: 1961193

   Trade Mark:                  

   Priority Date:             11 October 2018

   Specification:             Applicant’s Goods

2. Acceptances of the Trade Marks for possible registration were published in the Australian Journal of Trade Marks on 29 April 2019.

3. The Opponent filed Notices of Intention to Oppose registration of the Trade Marks on 26 June 2019.

4. On 25 July 2019, the Opponent filed its Statements of Grounds and Particulars (‘SGPs’), completing the Notices of Opposition.

5. Notices of Intention to Defend the opposition were filed by the Applicant on 26 September 2019.

6. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘Regulations’).

7. On 13 July 2020 IP Australia informed the parties that as neither party had requested a hearing, the opposition was to be decided on the written record.

Grounds of Opposition, Relevant Date and Onus

1. In each of the SGPs the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Opponent pressed the grounds under ss 44 and 60 of the Act in its written submissions dated 13 October 2020.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

10.  The date at which the rights of the parties are to be determined is 11 October 2018 being both the filing and priority date of the Trade Marks.

Evidence

Evidence in Support

• Declaration of Delphine de Chalvron, General Counsel Intellectual Property and Media of L’Oreal, S.A., made on 20 December 2019 with Annexures L1 to L17 (‘De Chalvron’).

Evidence in Answer

• Declaration of Teagan Messener-McAndrew, Sole Director of Lore Perfumery Pty Ltd, made on 1 April 2020 with Exhibits TLMM 1 to TMLL 22 (‘Messener-McAndrew’).

Evidence in Reply

• Declaration of Andrew Scott Lockhart, Legal Practitioner and Special Counsel of Shelston IP Pty Ltd for the Opponent, made on 3 June 2020 with Annexures ASL1 to ASL11A (‘Lockhart’).

Additional Material

• Written submissions by Andrew Lockhart and Sean McManis of Shelston IP for the Opponent dated 13 October 2020 (‘Opponent’s submissions’).

The Opponent’s Evidence

11.  The De Chalvron declaration provides the following information about the Opponent:

• The Opponent a French industrial group, was founded in 1909 and is the world’s largest cosmetics company, marketing a broad range of cosmetic products, which are sold in over 150 countries.
• The Opponent’s L’OREAL trade mark is used in three main ways: L’OREAL is the corporate brand for the Opponent; L’OREAL PARIS (‘L’OREAL PARIS trade mark’) is used as the Opponent’s mass consumer brand; and L’OREAL PROFESSIONNEL PARIS (‘L’OREAL PROFESSIONNEL PARIS trade mark’) is used as the Opponent’s professional brand.
• The Opponent has used the L’OREAL trade mark continuously in Australia, by or under its control, from the 1960s to the present date, on or in relation to cosmetic products.

12.  The Lockhart declaration includes peer reviewed articles and extracts from textbooks in the fields of trade mark law, consumer/cognitive psychology and consumer behaviour.

The Applicant’s Evidence

13.  The Messenger-McAndrew declaration provides the following information about the Applicant:

• The Applicant created the LORE PERFUMERY brand in January 2017.
• The Applicant has continuously sold fragrance and cosmetics products under the LORE PERFUMERY and LORE trade marks through its retail store since 2 May 2017 and via its online retail store at since 8 November 2017.

Section 44

14. Section 44(1) of the Act 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.

[…]

15.  The Opponent must establish that the Trade Marks are 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.

1. In the event that each of these requirements is satisfied by the Opponent it may still 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 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.

17. In each of the SGP’s the Opponent has particularised the s 44 ground of opposition as follows:

The Opponent is the owner of the following prior trade mark:

Application number:     191519

Trade Mark:               L’OREAL (‘L’OREAL trade mark’)

Priority date:              23 November 1964

Specification:             Class 3: Bleaching preparations and other substances for laundry use; cleaning; polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices

18.  From the information set out above, the L’OREAL trade mark is registered by a person other than the Applicant and it has a priority date earlier than 11 October 2018.

19.  The comparison of the goods is straightforward. The L’OREAL trade mark is registered for soaps, perfumery, essential oils, cosmetics and hair lotions in class 3 and the Applicant seeks registration of the Trade Marks in relation to the same or similar goods in class 3.

20.  The Opponent does not contend the Trade Marks are substantially identical to the L’OREAL trade mark. However, I will briefly note that the test for substantial identity requires that the trade marks be considered side by side while having regard to the essential features of the trade marks.[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. Noting the differences in the words LORE and L’OREAL, I am satisfied that on a side by side comparison the trade marks do not have a total overall impression of resemblance.

[3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, [12].

21. Therefore, the remaining question under s 44(1) of the Act is whether the Trade Marks are deceptively similar to the L’OREAL trade mark.

22. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

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.

23.  The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[4]

[4] Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd [1979] RPC 410, [423].

24.  In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it is noted that ‘the threshold for confusion is not high’.[5] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[6] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[7]

[5] Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70].

[6] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].

[7] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, [113].

25.  When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’[8] and all the surrounding circumstances are relevant to the consideration, such that any consideration is essentially a question of fact and meaning:

You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.[9]

[8] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, 89 IPR 457, [111]; see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] per Katszmann J.

[9] Pianotist Co.’s Application (1906) 23 RPC 774, [777].

26.  The principle authority for guidance in determining whether trade marks are deceptively similar comes from the judgement of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

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 [trade mark].[10]

[10] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, [13].

27.  The Opponent’s submissions in this regard were that the impressionistic nature of the analysis required consideration of the following statement of Luxmoore LJ in Rysta Ltd’s Application which discussed the doctrine of imperfect recollection and the importance of first impression:

The answer to the question of whether the sound of one word resembles too nearly the sound of another...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.[11]

[11]Rysta Ltd’s Application (1943) 60 RPC 87, [108].

28. The Opponent submits that the trade marks are intended for use with goods that are likely to be sold from the shelves of supermarkets, pharmacy stores, discount retailers, department stores, duty free stores and other specialist retail stores. How the goods are presented for sale would include a situation where L’OREAL branded goods and the LORE branded goods are placed in similar locations on these shelves. I am also to consider that the containers the goods are sold in are not always oriented so that the whole of the label can clearly be seen,[12] and that some of the goods are not very expensive and consumers do not take as much time and care in purchasing these goods.

[12] A. and F. Pears Ltd v Pearson Soap Co Ltd (1925) 37 CLR 340.

29.  The Opponent argues that visually its L’OREAL trade mark incorporates the whole of the word LORE and that the prefix LORE would be strongly associated with the name L’OREAL.

30.  Visually, while the L’OREAL trade mark starts with the letters making up the prefix LORE, it also contains an apostrophe between the letter L and O - which is an important addition to the trade mark for English language speakers as an apostrophe is mainly used in contractions to indicate the place where letters have been omitted – and ends with the suffix AL. In comparison the Trade Marks are the plain word LORE.  

31.  Therefore, I find that the trade marks are not visually similar, and the application of the trade marks on the Applicant’s Goods in so far as there is a possibility that some consumers might see only the first four letters of the L’OREAL trade mark and so confuse them with LORE is remote.   

32.  In regard to the aural similarities of the trade marks the Opponent argues that the trade marks have the same first syllable as the leading feature and the main aural impression.

33.  Moreover, the Opponent submits that when shoppers ask a sales assistant for LORE products there is a likely tangible risk they will be misheard by the sales assistant because L’OREAL would be anticipated because of the ‘top of mind’ awareness of the L’OREAL trade mark.

34.  However, I consider the two words LORE and L’OREAL are pronounced quite differently. The word LORE is pronounced lɔ and a single syllable trade mark whereas the word L’OREAL is pronounced lɔːrɪəl and has three syllables.

35.  Phonetically, the two words are separated because all three syllables in the word L’OREAL are exaggerated even taking into account ‘the tendency of persons using the English language to slur the termination of words’[13] unlike the word LORE where the final letter E is lost.   

[13] London Lubricants (1920) Limited’s Application (1924) 42 RPC 264, [30].

36.  Therefore, I am not satisfied that the trade marks are aurally similar, nor am I satisfied that a sales assistant would be led to phonetic confusion and consequently mix up the trade marked products.

37.  Considering the visual and aural characteristics of the trade marks, the different ideas behind the trade marks and the different connotations would also lessen the likelihood of confusion.

38.  The word LORE is a well-known English word meaning a body of traditions and knowledge on a subject, whereas the word L’OREAL has no inherent meaning.

39.  The Opponent argues that the difference in meaning between the words is irrelevant because of the low level use and understanding of the word LORE; the fact that it has no meaning of any relevance or significance in relation to cosmetics; and consumers will likely mistake LORE with L’OREAL on first impression. However, I consider the principle that, where a word trade mark conveys an idea and the other one does not, the trade marks are more easily distinguishable,[14] is relevant here.

[14] Tornado Trade Mark [1979] RPC 155.

40.  In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J set out the following proposition:

[To] show that a trade make is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.[15]

[15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, [594-5].

41.  Accordingly, I find that the Trade Marks are not deceptively similar to the L’OREAL trade mark. Deception or confusion between the trade marks is no more than a mere possibility.

42. The Opponent has not established the ground of opposition under s 44 of the Act.

Section 60 – Reputation in Australia

43. Section 60 of the Act provides:

1. 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.

44. In each of the SGPs the Opponent particularised the s 60 ground of opposition as follows:

The Opponent or its related entities have extensively used the L’OREAL trade mark throughout the world, including in Australia since the sixties on or in relation to a broad range of cosmetics, including perfume, skin care, soaps, hair care, body care, make-up and sun protection products. As a result of this use the Opponent’s L’OREAL trade mark has acquired a substantial reputation in Australia and, because of that reputation, the use of the opposed Trade Mark would be likely to deceive or cause confusion.

45. To satisfy s 60 of the Act the Opponent must establish a reputation exists in another trade mark in Australia before the priority date. The reputation must be significant enough for the use of the Trade Marks in the Australian marketplace to be likely to deceive or cause confusion.

46.  In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’[16] and quoted with approval in the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[17]

[16] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

[17] Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

47.  Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves. [18]

[18] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMOS 23; (1999) 47 IPS 423, [426].

48.  What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1995) provided some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …[19]

[19] Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.

49.  In this matter, the goods concerned are soaps, perfumery, essential oils, cosmetics and hair lotions which are sold in supermarkets, department stores, pharmacies and via online retailing sites where products are mostly self-selected or through beauty and hair salons. I also note that the goods may include items at various price points. Therefore, the relevant market is virtually the entire Australian population from early teenage years onwards.  

50.  In De Chalvron it is deposed that the L’OREAL trade mark has been used continuously in Australia since the early 1960s.

51.  De Chalvron avers that the L’OREAL trade mark is used in three ways: L’OREAL solus is the corporate brand for the Opponent; L’OREAL PARIS is the Opponent’s mass consumer brand for cosmetic products; and L’OREAL PROFESSIONNEL PARIS is the Opponent’s professional brand for products available in beauty and hair salons.

52.  In my assessment, the volume of sales under the Opponent’s L’OREAL PARIS and L’OREAL PROFESSIONNEL PARIS trade marks for the years 2013 to 2018, as shown in Confidential Annexures L13-14 are exceptionally high.

53.  While the Opponent has not provided its advertising expenditure figures for Australia, Confidential Annexure L16 provides a key indication of the extent and breath of the Opponent’s promotional activities in Australia. The annexure shows the advertising schedule for the years 2016 and 2017 in relation to the L’OREAL PARIS and L’OREAL PROFESSIONNEL PARIS trade marks.

54.  Further evidence of the Opponent’s advertising campaigns is provided in the De Chalvron as follows:

• Annexures L15B1-3 are videos of advertisements which were aired on Metro and Regional Television during January 2017 to April 2017, for the L’OREAL PARIS trade mark in relation to haircare, skincare;
• Annexures L15C1-3 provide proofs of three advertisements which were used in the Opponent’s advertising campaign which ran from January 2017 to April 2017. The advertisements show use of the L’OREAL PARIS trade mark in relation to skincare and haircare and appeared in well-known and widely distributed publications such as Vogue, Elite, Elle, Cosmopolitan, Beauty Heaven, Harper’s Bazaar, Body + Sole, Marie Claire, House and Garden, Womens Day and New Idea; and  
• Annexure L15D is a photo of a roadside advertisement which was displayed during 2016 and shows use of the LOREAL PARIS trade mark in relation to makeup.

55.  The Opponent makes extensive use of celebrity endorsements in its advertising campaigns:

• Annexure L15E1 is an article published in ‘Beauty Heaven’ dated 11 May 2016. The article discusses L’OREAL Ambassador Helen Mirren’s thoughts about beauty in the lead up to her first TV campaign as ambassador for L’OREAL PARIS; and
• Annexures L15E2-3 provide proofs of two L’OREAL PARIS advertisements with celebrity endorsements from Jennifer Lopez, promoting haircare and Andie MacDowell, promoting skincare. The advertisements were used in advertising campaigns during 2015 to 2017.

56.  The Opponent’s digital media exposure provided in Annexure L15G shows extracts from YouTube searches of videos uploaded by the Opponent with content about L’OREAL branded products dating back to 2017.

57.  In addition, De Chalvron states that the Opponent promotes its products through three Australian websites and Moreover, Annexure L6C1 is a copy of a Website Analytics Report dated 1 September 2011 to 1 October 2019, and the metrics show millions of visitors to the Opponent’s Australian website over this period.

58.  In De Chalvron, evidence of consumer awareness of the L’OREAL trade mark in Australia is demonstrated in the following articles and market studies:

• Annexure L8 is an article by ‘Mordor Intelligence’ that states L’OREAL was the leading player in the Australian beauty and personal care products market in 2016;
• Annexure L11B is an article from ‘Business Insider’ entitled These 7 companies control almost every single beauty product you buy, dated 29 July 2017. The article lists 39 brands offered by the L’Oreal group including L’OREAL, L’OREAL PARIS and L’OREAL PROFESSIONNEL PARIS; and
• Confidential Annexures LL10A-A1 are copies of slides extracted from a market study conducted by ‘Kantar’ (a global research agency) in 2018. The studies measured Australian consumer awareness of the L’OREAL PARIS brand compared to other brands of cosmetics and skincare with robust results in both areas.

59.  The Opponent also relies on the use and recognition of the L’OREAL trade mark overseas.

60.  De Chalvron provides the approximate worldwide sales figures for goods sold under the L’OREAL PARIS trade mark for years 2014 to 2018 which are in the billions. Moreover, De Chalvron submits the Opponent has one of the largest advertising budgets worldwide for any cosmetic brand with expenditure in the hundreds of millions.

61.  According to De Chalvron the Opponent promotes its LOREAL trade mark internationally through the following websites: loreal.com; lorealparis.com; and lorealprofessionnel.com.

62.  According to De Chalvron the Opponent’s sales and promotional activities over many decades have led to the L’OREAL brand and trade mark being positioned as one of the leading brands worldwide.

63.  The L’OREAL trade mark appears in many global brand rankings which are carried out by independent organisations including:

• Annexures L7B1-2 are copies of ‘Interbrand’s’ Best Global Brands showing that in 2014 and 2015, L’OREAL was ranked 43;
• Annnexure L7C is a copy of ‘Brandz’ Top 100 Most Valuable Global Brands 2018 which shows L’OREAL as number 1 in the personal care top 15;
• Annexures L7D1-4 are copies of ‘BrandFinance Brandirectory’ rankings, listing L’OREAL as: number 2 in the top 50 cosmetics brands for 2015; number 1 in the top 50 cosmetics brands for 2016; number 2 in the top 50 cosmetics brands for 2017; and number 2 in the top 50 cosmetics brands for 2018;
• Annexures L7E1-4 are copies of ‘BrandFinance Brandirectory’ annual reports, ranking L’OREAL as:  92 in the top 500 most valuable brands in 2015; 80 in the top 500 most valuable brands in 2016; 105 in the top 500 most valuable brands in 2017; and 161 in the top 500 most valuable brands in 2018;
• Annexure L7E5 is a copy of an article by Elise Wilson published by ‘Beauty Directory’ on 5 May 2016. The article discusses why L’OREAL is the world’s most valuable cosmetics brand as per ‘BrandFinance’ cosmetics 50 rankings; and  
• Annexure L7F is an article from ‘Euromonitor International’ a global market research company which publishes a list of the top 100 megabrands rankings and lists L’OREAL the world’s leading beauty and personal care brand by sales in 2017.

64. The evidence before me overwhelmingly establishes that the Opponent had, prior to the priority date acquired a reputation in both Australia and Internationally amongst a significant or substantial number of people in relation to the goods. As such the first limb of the test for s 60 has been met.

65.  I must also be satisfied that because of the Opponent’s reputation in its L’OREAL trade mark, use of the Trade Marks on the specified goods would be likely to device or confusion.

66.  It is well known that the concepts of deceive or cause confusion are inexplicably linked to how similar the respective trade marks are. In Roger Seller & Myhill Pty Ltd v Reece Pty Ltd[20] the delegate said:

Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

[20] Roger Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39-40].

67.  In Coca Cola Company v All-Fect Distributors Ltd[21] Kitto J explained that there is no limit on the nature of the confusion and it is enough that the minds of the public are mixed up or perplexed about the relationship between the two trade marks.

[21] Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, [39], citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, [423].

68.  It is also important to recognise that reputation can be a double-edged sword which either reinforces or mitigates difference between the trade marks under comparison.[22]

[22] Flight Centre v World Flight Centre [2003] ATMO 60, [22].

69.  The Opponent contends the L’OREAL trade mark has a substantial reputation and it is at the top of consumers’ minds in terms of awareness, especially when consumers are considering cosmetic products for possible purchase and that this increases the risk of confusion resulting from first impression, especially in the context of supermarkets and other retail stores.

70.  However, the Opponent’s argument looks at a combination of hypothetical situations or circumstances and in taking account of all of the evidence, I find that the strength of the reputation of the L’OREAL trade mark in respect of cosmetic goods weighs against the likelihood of confusion with the Trade Marks in respect of the same goods.

71. In reference to the reasons I have already set out in relation to the s 44 ground of opposition, I am satisfied on the balance of probabilities that no such deception or confusion would eventuate if the Trade Marks were accepted for registration in Australia for the Applicant’s goods.

72. The ground of opposition under section 60 of the Act has not been established.

Decision

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

55  Decision

(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.

74.  The Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Trade Marks 1961047 and 1961193 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 this 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 Courts order or direction.

Costs

75.  Both parties sought their costs. Costs may follow the event.

76. In respect of trade mark 1961047 I award costs against the Opponent as per Schedule 8 of the Regulations.

77.  In respect of trade mark 1961193 I award costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd [2001] ATMO 78.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

24 February 2021