Opposition by Schubert & Schubert LLC to registration of trade mark number 1966495 - FUR figurative (Classes 3 and 44), and trade mark number 1976490 – Fur Hairdressing (Class 3) - in the name of Fur Hairdressing...

[2021] ATMO 129

TRADE MARKS ACT 1995

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

Re:Opposition by Schubert & Schubert LLC to registration of trade mark number 1966495 - FUR figurative (Classes 3 and 44), and trade mark number 1976490 – Fur Hairdressing (Class 3) - in the name of Fur Hairdressing Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Written submissions by Shelley Einfeld, solicitor.     Holder: Written submissions by Jonathan Williamson, solicitor.
Decision:	2021 ATMO 129 Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds of opposition pressed under ss 42(b), 44, and 60 – grounds under section 44 partially established – goods and services amended – trade marks to proceed to registration.

Background

1. This is a decision on the opposition by Schubert & Schubert LLC (‘Opponent’) to registration of trade mark numbers 1966495 and 1976490 (‘Applications’) filed by Fur Hairdressing Pty Ltd (‘Applicant’). Details of the Applications are set out below:

   Trade Mark number:  1966495

   Trade Mark   (‘Fur Logo’)

   Goods and services       Class 3: Conditioners for treating the hair; Conditioners for use on the hair; Conditioning preparations for the hair; Cosmetic soaps; Cosmetics; Hair care preparations; Hair care products; Shampoos (non-medicated); Hair conditioning preparations; Hair lotions (non-medicated); Hair products; Hair shampoo; Perfume; Perfumery; Hair conditioner

   Class 44: Advisory services relating to beauty treatment; Beautician services; Beauty care services; Beauty salons; Beauty treatment services; Beauty salon services; Cosmetic make-up services; Hair care services; Hair colouring services; Hair cutting services; Hair dressing salon services; Hair styling; Hairdressing; Hairdressing salons; Make-up services

   (‘Fur Logo Goods & Services’)

   Filing Date21 November 2018

   Trade mark number:   1976490

   Trade Mark Fur Hairdressing (‘Word Mark’)

   GoodsClass 3: Conditioners for treating the hair; Conditioners for use on the hair; Conditioning preparations for the hair; Cosmetic soaps; Cosmetics; Hair care preparations; Hair care products; Hair conditioner; Hair conditioning preparations; Hair lotions (non-medicated); Hair products; Hair shampoo; Perfume; Perfumery; Shampoos (non-medicated)

   (‘Word Mark Goods’)

   Filing Date9 January 2019

2. The Applications were accepted for possible registration and subsequently advertised for opposition purposes on 23 January 2020 (Fur Logo) and 17 February 2020 (Word Mark).

3. The Opponent filed a notice intention to oppose the Fur Logo on 22 March 2020, followed by a statement of grounds and particulars on 17 April 2020. The Applicant filed a notice of its intention to defend the Fur Logo from opposition on 29 June 2020. The Opponent filed a notice of intention to oppose the Word Mark on 2 April 2020, followed by a statement of grounds and particulars on 26 April 2020. The Applicant filed a notice of intention to defend the Word Mark from opposition on 30 June 2020.

4. As the statements of grounds and particulars for the opposition to the Fur Logo and the Word Mark are substantively the same, I shall refer to them collectively as the ‘SGP’.

5. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) in both oppositions on 25 September 2020. The Applicant filed Evidence in Answer (‘EIA’) in both oppositions on 10 November 2020. The Opponent filed Evidence in Reply in both matters on 9 January 2021.

   [1] Unless otherwise stated, a reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

6. Both parties were given the opportunity to request an oral hearing or to be heard based solely on written submissions. Both parties elected to file written submissions only.

   Grounds and onus

7. The SGP nominated grounds of opposition under regulation ss 42(b), 44, and 60.[2]

   [2] A further ground was specified in the SGP, being ‘Registration of the Trade Mark ought to be refused in the exercise of the Registrar’s discretion by reason of the conduct of the Applicant and/or the nature of the Trade mark and/or of its use and/or on other grounds as the Registrar or the court, on appeal may see fit to allow’. I have not given this ground any consideration. Under s 52(4) of the Act the registration of a Trade Mark may be opposed on any of the grounds specified in the Act and no other grounds. The further ground specified in the SGP is not a ground under the Act and, in my estimation, is not the equivalent of any ground under the Act.

8. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at the filing dates of the Applications.[4]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

9. The following evidence was filed:

   EIS

   Declarations of Laura Schubert, co-founder of Opponent, made on 22 September 2020, with Exhibits LS-1 to LS-7.

   EIA
   Declarations of Frank Valvo, Director of Applicant, made on 6 November 2020, with Exhibits FV-1 to FV-11.

   EIR

   Second declaration of Laura Schubert, made on 8 January 2021.

10. I note that separate declarations have been filed by the Opponent and Applicant as EIS and EIA in relation to the Fur Logo and the Word Mark. However, most of the relevant material in the declarations is the same. The primary difference appears to be in the EIA relating to the history of adoption and use of the Fur Logo and the Word Mark. I will summarise these facts separately. Otherwise, I will refer to the separate declarations forming the EIS and EIA collectively, noting any differences between the declarations that may be relevant.

    EIS

11. Ms Schubert declares she is the co-founder and CEO of the Opponent, a US company founded in 2014.

12. Ms Schubert declares that in addition to being the applicant or registrant for various trade marks in the USA, EU, New Zealand, South Africa, and Hong Kong, the Opponent has also applied for numerous Australian trade mark applications, with the following application being relevant to the present opposition (‘Opponent’s Application’):

    Trade mark number:          1913116   
               Trade mark:  FUR (‘Opponent’s Mark’)
               Priority Date:  14 March 2018

    Goods:Class 3: Toiletries; cosmetics and make-up; deodorants for personal use; depilatory preparations; depilatory waxes; non-medicated creams; cosmetic creams, lotions, gels and oils for skin and hair care; cosmetic hair dyes; perfumes; non-medicated preparations for care, treatment and beautification of the skin, scalp and hair

    (‘Opponent’s Goods’)

13. Ms Schubert declares the Opponent is a manufacturer and distributor of cosmetic preparations for skin and hair, primarily in intimate areas. Ms Schubert explains that the Opponent’s Mark was developed in early 2015 as a playful and suggestive reference to body hair, particularly hair in intimate areas, on which the Opponent’s Goods are intended to be used. The current range of specific products sold by the Opponent includes fur oil, stubble cream, ingrown concentrate, silk scrub, shave cream, bath drops, wash cloth, and ingrown eliminator.

14. Ms Schubert declares that the Opponent’s Mark has been used internationally since October 2015, and used in Australia since July 2017. Ms Schubert states the Opponent’s Goods can be purchased through the Opponent’s website at which has been operational since 2015 and receives a significant number of page views from unique users per month (although no breakdown is given as to the number of Australian users). Ms Schubert also states that the Opponent’s Goods are available in Australia through distributors and outlets Lady Gardener Beauty Studio, Vim & Co, and Nourished Life.

15. Ms Schubert declares that the Opponent’s Goods are promoted under the Opponent’s Mark in a variety of ways including on the Opponent’s website, social media (Instagram and Facebook), retailer websites, Google advertisements, and press releases around the world.

16. Ms Schubert provides confidential revenue figures for the Opponent’s Goods sold and promoted in Australia and internationally. The worldwide figures demonstrate reasonable revenue generated under the Opponent’s Mark prior to the filing dates of the Applications. However, the Australian component of this revenue is relatively modest. Ms Schubert also provides aggregated worldwide promotional expenditure figures which also indicate reasonable promotional expenditure prior to the filing dates of the Applications, however there is no evidence of direct promotional expenditure in Australia.

17. Ms Schubert annexes to the declaration examples of use of the Opponent’s Mark, including on packaging, promotional merchandise, the Opponent’s website, and third-party websites.  

    EIA

18. Mr Valvo declares that he is the director and shareholder of the Applicant, an Australian company incorporated in June 1997. Mr Valvo states that the Applicant is the owner of the following registered trade marks:

    Trade mark number:          1164698  
               Trade mark:  Fur Hair
               Priority Date:  5 March 2007

    Goods:Class 3: Hair cosmetics, namely, shampoos, conditioners, hair lotions, and hair soaps

    Trade mark number:          1164699
               Trade mark:  Fur Hairdressing
               Priority Date:  5 March 2007

    Goods:Class 44: Hygienic and beauty care for human beings and animals, medical services, veterinary services

    (‘Applicant’s Registrations’)

19. Mr Valvo declares that the Applicant’s business “Fur Hairdressing” was first established as a hairdressing salon in Prahran, Melbourne, in November 1996. The Fur Hairdressing business has since 2009 traded at Fitzroy, Melbourne. Mr Valvo states that since 1996, the Fur Hairdressing business has provided cut and colour services, and has also sold its own FUR, FUR HAIR, and FUR HAIRDRESSING branded products from its salon.

20. Mr Valvo declares that the Fur Logo was first used for the Fur Hairdressing business and on goods since August 2009. Annexed to the declaration are labels and photos of shampoo and conditioner bearing the Fur Logo (including with the words HAIRDRESSING, SHAMPOO, or CONDITIONER appearing underneath):

21. Mr Valvo provides a summary of sales of products for FYE 2017, 2018, and 2019 which indicates sales of modest quantities of Fur Shampoo and Fur Conditioner prior to the filing date of the Applications. In addition, Mr Valvo provides an Internet Archive Wayback Machine extract from May 2013 which displays both the Fur Logo appearing on the website ‘furhairdressing.com’, and an extract of the Facebook page ‘Fur Hairdressing’ which indicates the page was created on 11 September 2009 and includes comments from customers from January 2017 to April 2018. Mr Valvo additionally provides an Instagram screenshot and post from March 2012 including the Word Mark, and an undated webpage extract from furhairdressing.tumblr.com which prominently displays the Word Mark.

    EIR

22. Ms Schubert in her second declaration responds to various points raised by Mr Valvo in the EIA, including characterizing revenue and advertising expenditure figures provided by Mr Valvo as not particularly high and also pointing out the relatively limited geographical area in which the Applicant carries on the Fur Hairdressing business.

23. Ms Schubert also objects to claims by Mr Valvo that the Opponent is infringing the Applicant’s Registrations, or that it has breached any of the Applicant’s common law trade mark rights.

    Discussion

    Section 44

24. To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority dates of the Applications, and which is in the name of a person other than the Applicant.  The earlier mark must be substantially identical or deceptively similar to the trade marks of the Applications, and must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Applications, (ii) services that are similar to the services of the Applications, (iii) goods that are closely related to the services of the Applications, or (iv) services that are closely related to the goods of the Applications.

25. The Opponent relies on the Opponent’s Application as the basis for s 44 ground.  The Opponent’s Application has a priority date of 14 March 2018, which is earlier than the priority dates of both the Fur Logo (21 November 2018) and the Word Mark (9 January 2019).

26. The Opponent in submissions does not argue that the Fur Logo and Word Mark are substantially identical to the Opponent’s Mark. Instead, the Opponent argues that the respective trade marks are deceptively similar.

27. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:

    -There must be a real, tangible danger of confusion, not just a mere possibility.[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]

    -It must be considered how the goods or services are ordinarily sold or provided.[13]

    [5] Trade Marks Act 1995 (Cth) s 10.

    [6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [8] Optical 88 Ltd v Optical 88 Pty Ltd [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [13] Ibid.

28. I am satisfied that both the Fur Logo and the Word Mark are deceptively similar to the Opponent’s Mark. With regards to the Fur Logo, this is the same word as the Opponent’s Mark but represented in a stylised font. While the stylisation of the Fur Logo does differentiate the marks to a small extent, the fact that both trade marks share the word FUR as their essential feature creates a high likelihood of confusion, particularly amongst consumers with imperfect recollection. With regards to the Word Mark, this mark only differs from the Opponent’s Mark by use of the word ‘Hairdressing’. The additional word is descriptive and for this reason also does not mitigate the significant likelihood of confusion.

29. I must now consider whether the Fur Logo Goods & Services and the Word Mark Goods are similar and/or closely related to the Opponent’s Goods.  

30. The test for determining whether goods are the similar to other goods requires consideration of whether they are the same (in the literal sense) or they are of ‘the same description’. Whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative. [14]

    [14] Re Jellinek’s Application (1946) 63 RPC 59, 70.

31. The Opponent’s Goods encompass a broad range of cosmetics, skin care, hair care, and perfumery products falling within Class 3.  The scope of the Opponent’s Goods is sufficient to directly encompass all of Class 3 of the Fur Logo Goods & Services and the Word Mark Goods.

32. The Opponent also submits that services in class 44 of the Fur Logo Goods & Services are closely related to the Opponent’s Goods. However, I note that the Opponent does not support the allegation of closely related goods and services with detailed arguments.

33. In Registrar of Trade Marks v Woolworths Ltd[15], French J said:

    The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. As its use in the Mathys Committee Report indicated however, it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services...
    …
    The range of relationships between goods and services which may support the designation “closely related” will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks “…of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed that:

    “Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.” (at 522)

    [15] [1999] FCA 1020, [37]-[38].

34. In Deanna Campese v Lash HQ Pty Ltd[16] the delegate held that beauty care services and beauty products were closely related goods and services on the basis that consumers of such services often seek to purchase beauty products (such as skin care products and false lashes) from beauticians. This finding was reached in the absence of any contrary arguments from the Applicant. Nevertheless, when one considers the fact that both beauticians and hair stylists, and other professionals within the beauty industry, spend a significant amount of time consulting with their clients on appropriate products that suit the client’s particular physical attributes and personal circumstances, in addition to offering such products for sale to their client, I am satisfied that there is a sufficiently close relationship between beauty/hair care products and the professional services provided by a beautician or hair stylist.  

    [16] [2020] ATMO 99, [16]-[17] (Hearing Officer Wilson).

1. For the reasons given above, I consider that the Opponent has established a prima facie ground of opposition under s 44(1) for all of the Fur Logo Goods & Services and Word Mark Goods.

2. The Applicant submits that even if  grounds under ss 44(1) or (2) are established, the Applicant is entitled to registration under ss 44(3) and/or 44(4).

3. Turning first to s 44(4), the Applicant must establish that it has used the Fur Logo and the Word Mark in relation to the relevant goods or services since before the priority date of the Opponent’s Mark, continuously up until the filing date of the Applications. Provided that there is continuity of genuine commercial use by the Applicant, the quantum of such use is for the most part immaterial under s 44(4).

4. The ‘use’ required to be demonstrated is ‘use as a trade mark’, with such use being in ‘good faith’. This means genuine commercial use, as opposed to token use, of the sign as a badge of origin in the sense that it indicates a connection in the course of trade between the goods or services and the person who applies the sign to those goods or services.[17] Use of a trade mark for goods includes use in relation to the goods and is not limited to a direct application of the mark to the goods or their packaging.[18] Use of a trade mark in relation to services includes use in physical or other relation to the services.[19]

   [17] See Trade Marks Act 1995 (Cth) s 17; see also Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

   [18] Trade Marks Act 1995, ss 7(4), 9, 92(4)(b).

   [19] Ibid s 9. See also Thunderbird Products Corp v Thunderbird Marine Products P/L [1974] HCA 51 (Jacobs J).

5. The Registrar also has discretion to determine that a trade mark has been used, if it is used with additions or alterations that do not substantially affect its identity.[20] In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the court held that a comparison of marks for determining whether they are substantially identical is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.[21] The court went on to find that the following two trade marks were substantially identical, based on the common presence of the words INSIGHT and a similar device, and notwithstanding differences in font, stylisation, and descriptive material:

   [20] Ibid s 7(1).

   [21] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

6. I am satisfied based on the evidence that the Applicant has used the Fur Logo and the Word Mark (including as a version comprising the words Fur Hairdressing with the word ‘Fur’ represented in stylized form) in relation to hairdressing and styling services and shampoos and conditioners since before the priority date of the Opponent’s Mark, continuously up until the filing dates of the Applications.  Further, as the difference between the Applicant’s trade marks is merely in descriptive material (which can be largely discounted), and font/stylization, I consider that the Fur Logo and the Word Mark differ from each other only in respect of elements that do not substantially affect the identity of the marks. On this basis, I consider that use of the Fur Logo is effectively use of the Word Mark, and vice versa, at least insofar as hair related goods and services are concerned.

7. I consider that the Applicant has established prior and continuous use of the Fur Logo and Word Mark under s 44(4) for the following goods and services of the Applications (‘Used Goods & Services’):

   Fur Logo Goods & Services

   Class 3: Conditioners for treating the hair; Conditioners for use on the hair; Conditioning preparations for the hair; Shampoos (non-medicated); Hair conditioning preparations; Hair shampoo; Hair conditioner

   Class 44: Hair care services; Hair colouring services; Hair cutting services; Hair dressing salon services; Hair styling; Hairdressing; Hairdressing salons

   Word Mark Goods

   Class 3: Conditioners for treating the hair; Conditioners for use on the hair; Conditioning preparations for the hair; Hair conditioner; Hair conditioning preparations; Hair shampoo; Shampoos (non-medicated)

8. I do not consider the Applicant has established prior use under s 44(4) for the following goods and services of the Applications (‘Unused Goods & Services’):

   Fur Logo Goods & Services

   Class 3: Cosmetic soaps; Cosmetics; Hair care preparations; Hair care products; Hair lotions (non-medicated); Hair products; Perfume; Perfumery

   Class 44: Advisory services relating to beauty treatment; Beautician services; Beauty care services; Beauty salons; Beauty treatment services; Beauty salon services; Cosmetic make-up services; Make-up services

   Word Mark Goods

   Class 3: Cosmetic soaps; Cosmetics; Hair care preparations; Hair care products; Hair lotions (non-medicated); Hair products; Perfume; Perfumery

9. I note that the Unused Goods & Services include broad claims that would encompass products and services for which the Applicant has demonstrated prior and continuous use, namely, shampoos, conditioners, and hair dressing / styling services. For example, the claim for ‘hair products’ would include shampoos and conditioners. However, such a claim would also include a wide variety of other products that are not the same kind of thing as shampoos and conditioners (including hair removal goods, hair wax, and hair colourings) for which the Applicant has not demonstrated use. I do not consider it appropriate to allow broad claims such as ‘hair products’ to remain without being restricted. However, given that the specific products for which the Applicant has demonstrated use are otherwise expressly stated in the specification of goods, such a restriction would serve no useful purpose. Similar reasoning applies to claims such as beauty care services, advisory services relating to beauty treatment, and beauty salons in class 44. To the extent that these broad claims may include hair related services, the Applicant is adequately served by the other specific hair related claims in class 44.

10. Turning to consideration of honest concurrent use or other circumstances under s 44(3), as there has been no use of the Fur Logo and Word Mark for the Unused Goods & Services, there is no compelling reason why the provisions s 44(3) should be applied to allow registration of the Fur Logo or the Word Mark to proceed to registration for the Unused Goods & Services.

11. The Applicant submits that I should exercise a broad discretion under s 101(3) of the Act not to remove the Fur Logo or the Word Mark from the register. I note that in recent proceedings relating to removal of the Applicant’s trade mark number 1164698 for “Fur Hair”, discretion was exercised under s 101(3) in the Applicant’s favour to allow that trade mark to remain registered for a broader range of goods than those for which the Applicant had demonstrated use. However, s 101(3) is only relevant to proceedings to remove a registered trade mark under Part 9 of the Act. It is not relevant to oppositions to registration of trade marks under Part 5 of the Act. As such, the broad discretion under s 101(3) cannot be relied on by the Applicant in defending the opposition to registration of the Fur Logo and the Word Mark.

12. For the reasons given above, I consider that the Opponent has succeeded in establishing a ground of opposition under s 44 in relation to the Unused Goods & Services.

13. As I have found that grounds under s 44 are partially established, I will now consider whether the other grounds of opposition are made out for the Unused Goods & Services.

    Section 60

14. To establish this ground, an Opponent must establish a reputation in another trade mark existing in Australia before the filing dates of the Applications. The Opponent must then prove that because of this reputation, use of the Fur Logo or Word Mark for the Used Goods & Services is likely to deceive or cause confusion.

15. It is not necessary for the Opponent to establish that the trade mark relied on as the basis for this ground and the Fur Logo or Word Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods and services, the more likely the existence of a reputation in the trade mark relied on by an Opponent is to give rise to a likelihood of confusion. 

16. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

    It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that 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 the esteem, or image, projected by that trade mark. The quantum of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[22]

    [22] McCormick & Company Inc v McCormick [2000] FCA 1335, [85]-[86].

17. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[23]

    [23] [2019] FCA 923, [83] (O’Bryan J).

18. The Opponent relies on reputation in the Opponent’s Mark as the basis for s 60. However, I am not satisfied that the Opponent has a reputation in the Opponent’s Mark in Australia at the filing dates of the Applications. The revenue figures provided by the Opponent, while reasonable on a worldwide basis, are modest in relation to the Australian market. Further, there is no way to determine how much of the aggregated worldwide promotional expenditure figure would relate directly to the Australian market. The remaining evidence indicates that while there may be consumers in Australia with some knowledge of the Opponent’s products, it is not possible to conclude that the Opponent has an appreciable reputation among the relevant section of the Australian market (which would comprise any adult Australian with an interest in hair removal and grooming). In the absence of reputation in the Opponent’s Mark, I cannot determine whether there is a likelihood of confusion.

19. As the Opponent has not established a reputation in the Opponent’s Mark in the Australian market, the s 60 ground must fail.

    Section 42(b)

20. The Opponent under s 42(b) alleges consumers would be misled or deceived by use of the Fur Logo and Word Mark based on reputation in the Opponent’s Mark. As such, the Opponent suggests this behaviour would constitute a breach of ss 18 and 29 of the Australian Consumer Law and the tort of passing off.

21. For the same reasons as given under s 60, I am not satisfied that consumers would be misled or deceived by use of the Trade Mark. Therefore, s 42(b) is not established.

    Resolution of opposition

22. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[24]

    [24] [2014] FCA 1304, [232].

23. In circumstances where an opposition has been established in respect of some, but not all, of the relevant goods and services the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods and services for which a ground of opposition has been established.

24. Given the opposition has only been made out in relation to some of the goods and services of the Applications, I offered the Applicant the opportunity to delete the goods and services for which a ground of opposition had been established under s 44, namely, the Unused Goods & Services.

25. The amendments have now been made and on that basis I find that the oppositions have not been established.  

    Decision and costs

26. Following the amendments referred to above, I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  The trade marks may proceed to registration not less than one month from the date of this decision. 

27. If the Registrar is served with a notice of appeal of my decision for either or both of the Applications, I direct that registration shall not occur until the appeal is withdrawn or discontinued.  Otherwise the disposition of the Applications should be in accordance with the Court’s order or direction.

28. As both parties have had a measure of success, I decline to award costs.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks

    28 October 2021