Opposition by SL Beautiful Life Pty Ltd to an application under section 92 of the

[2025] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by SL Beautiful Life Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by BG Wellness Holdings Pty Ltd for removal of trade mark number 1556592 (44) – SL (Figurative) – in the name of SL Beautiful Life Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Written Submissions by Verge Legal Pty Ltd

Applicant: Written Submissions by Griffith Hack

Decision:

2025 ATMO 117

Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Mark during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Mark to be removed from the Register

Background

1. This decision is pursuant to an application made on 3 November 2023 under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) by BG Wellness Holdings Pty Ltd (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks (‘Register’).  The application is made in respect of all the services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.

1556592

Filing date

13 May 2013

Services

Class 44: Consultancy relating to beauty care; Health spas (health, hygiene and beauty care services); Hygienic and beauty care for human beings; Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings or animals

(‘Registered Services’)

Owner

SL Beautiful Life Pty Ltd

Trade Mark

(‘Trade Mark’)

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. SL Beautiful Life Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 10 January 2024 and a Statement of Grounds and Particulars (‘SGP’) on 8 February 2024.  The Applicant filed a Notice of Intention to Defend on 13 March 2024.

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support (‘EIS’)
Iek Lao, director of the Opponent (‘Lao declaration’)	12 June 2024	Annexure A and Exhibits 1-6
Evidence in answer
None filed
Evidence in reply
None filed

5.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 7 October 2024 the Opponent requested a hearing (following discussions with this office, a hearing by written submissions) and paid the appropriate fee following which the Applicant also sought to file written submissions and paid the appropriate fee.  The matter was set down for a hearing on 18 February 2025.  In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 31 January 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 12 February 2025 (‘Applicant’s Submissions’). 

6. I am a delegate of the Registrar of Trade Marks and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material, any oral submissions made by the parties and the evidence listed earlier in this decision:

·The Application for Removal;

·The Notice of Intention to Oppose and SGP;

·The Opponent’s Submissions; and

·The Applicant’s Submissions. 

The Relevant Provisions

7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 relevantly provides:

92  Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)  …

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)used the trade mark in Australia; or

(ii)used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note 1:For file and month see section 6.

Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 3 October 2023 (‘relevant period’).

9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the Trade Mark,[1] and I confirm that five years since filing the application have in fact passed.

[1] Per s 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.

10.     The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 which provides, relevantly to this matter:

100  Burden on opponent to establish use of trade mark etc.

(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) …
(b)  …
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

[…]

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
 (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

(i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
(ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

11.    I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]  In Blount Inc v Registrar of Trade Marks, Branson J observed:

Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.[3]

[2] Pfizer Products Inc. v Karam [2006] FCA 1663, [26] (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52.

[3] [1998] FCA 440 (citation omitted).

12.     In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[5] Little weight is to be given to assertions of use which are not supported by documentary evidence.[6]  Undated examples of use carry little, if any, weight in support of a claim for use of a trade mark within the relevant period.[7] Use of the Trade Mark by an authorised user (as defined by s 8) is taken to be use of the Trade Mark by the Opponent.[8] 

[4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

[5] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

[6] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Hearing Officer Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Hearing Officer Wilson).

[7] Digitus Information Systems Pty Ltd v Leap Software Developments Pty Ltd [2018] ATMO 153, [16] (Hearing Officer Wilson). See also, Simon Burke v Factor Holdings Ltd [2019] ATMO 69, [24] (Hearing Officer Brown).

[8] Act s 7(3).

14.     The principles when a trade mark has been used were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, in which the High Court noted the following:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[9]

[9] [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).

15.     A further useful summary of the principles of use is set out in paragraphs 82 to 84 of the Full Court’s decision in Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd that I extract below:

The primary judge referred to the summary of the relevant principles concerning use “as a trade mark” in Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 87 IPR 464 (Stone, Gordon and McKerracher JJ) which was a case in which the words “luscious Lips” were used on packaged confectionary which included lip shaped lollies. The Full Court summarised the relevant principles as follows at [19]:

1. Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481; [1999] FCA 1721 at [19] (Coca-Cola); E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645; 86 IPR 224; [2010] HCA 15 at [43] (Lion Nathan).

2. A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310; (1991) 30 FCR 326 at 347–8; [1991] FCA 310; 101 ALR 700 at 723; [1991] FCA 310; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).

3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; [1963] HCA 66; 1B IPR 523 at 532 (Shell Co).

4. The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.

5. Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).

6. In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

The fact that a mark considered as a whole is largely or predominantly descriptive does not preclude a finding that it is also acting as a brand. Similarly, the fact that a product may bear more than one brand does not mean that only one of them is used as a trade mark. As the High Court said in Allergan at [25]:

...Where there are several words or signs used in combination, the existence of a clear dominant “brand” is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods [Anheuser-Busch [2002] FCA 390; (2002) 56 IPR 182 at 228 [191]].

In Anheuser-Busch, Allsop J observed at [191]:

It is not to the point, with respect, to say that because another part of the label ... is the obvious and important “brand”, that another part of the label cannot act to distinguish the goods. The “branding function”, if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant “brand” is of relevance to the assessment of what would be taken to be the effect of the balance of the label.[10]

[10] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Ltd [2023] FCAFC 175, [82]-[84] (Nicholas, Burley and Cheeseman JJ).

Discussion

1. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[11]) pursuant to s 100 (either through use or that there were circumstances that were an obstacle to use in the relevant period (per s 100(3)(c)). 

   [11] Act s 100(3)(a) and discussed in AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

2. If the Opponent fails to establish such use or an obstacle to use, I have discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

   Use of the Trade Mark in the relevant period

3. The Opponent’s evidence in this matter consists of a declaration by its sole director, Iek Lao.  The Lao declaration states that the Opponent has operated a shop in Bourke St, Melbourne continuously since 2013 providing health, hygiene and beauty care services. It states that it has used the Trade Mark on the premises, in signage, in advertising fliers, and on various social media platforms.

4. The exhibits to the Lao declaration satisfy me that the Opponent has operated a shop in Bourke St Melbourne in the relevant period.  The key questions are a) What services did it offer in the relevant period and b) whether it was using the Trade Mark or some other mark for those services?  The EIS indicates that the Opponent’s shop offers some form of beauty treatment services or services in the nature of a beauty salon.  It offered those services to the public under the mark SL BEAUTY (‘Word Mark’) or under the mark below (‘Composite Mark’) which is reproduced (or minor variants of) in the Opponent’s advertising and signage.  

5. In my evaluative judgement, I am not satisfied that use of the Composite Mark should be treated as the Opponent using two or more marks separately; noting that the term ‘Beauty’ is descriptive and the Chinese characters translate to ‘beautiful life’.  Rather the Composite Mark should be treated as a use of a single mark consisting of 3 distinct elements, being the Trade Mark, the stylised word ‘beauty’ and the Chinese characters translating as ‘beautiful life’.

6. The only evidence of use of the Trade Mark solus by the Opponent consists of certain WeChat and Facebook posts from within the relevant period where the Trade Mark is displayed as an icon representing the Opponent’s account.  However, as mentioned in part 23.3 of the Trade Marks Manual of Practice and Procedure there should be caution when relying on profile or account pictures in social media as showing dated evidence of use as, when a user updates their profile picture on their account, past posts are often updated using the same picture.  As a result, evidence that may suggest a post was made on social media at a particular time by an account displaying a trade mark may not reflect what accurately occurred at the time.  Furthermore, Paragraphs 43 and 44 of the Applicant’s submissions provide persuasive evidence that the supposed use of the Trade Mark in the Opponent’s social media accounts in the relevant period merely reflects the fact that the Opponent updated their profile pictures after the relevant period to the Trade Mark.  In the absence of any other evidence of use of the Trade Mark solus during the relevant period or an explanation behind the changes in profile photos I am not satisfied that the Opponent’s social media posts made in the relevant period were made using an account icon that reflected the Trade Mark.

1. Therefore, in order to determine if the Opponent has used the Trade Mark in the relevant period I need to determine if either the Word Mark or the Composite Mark contains additions or alterations that substantially affected the identity of the trade marks.  If the marks are not substantially identical to the Trade Mark then the use of these marks would not be use of the Trade Mark.   Each of the marks is depicted below.

   SL BEAUTY

2. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J said:

   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.[12]

   [12] [1963] HCA 66, [12].

3. I accept the Applicant’s submissions on this point and do not consider that either the Word Mark or the Composite Mark are substantially identical to the Trade Mark.  The Word Mark does not reproduce the distinctive stylisation of the Trade Mark and includes the additional element ‘beauty’.  While each change as a whole may be relatively minor the impact of both the changes is of a total impression of dissimilarity; one mark is a distinctive device and the other is the words ‘SL BEAUTY’.  With respect to the Composite Mark, the addition of the stylised element ‘beauty’ and the Chinese characters (meaning ‘beautiful life’) provide an overall impression of dissimilarity between the Composite Mark and the Trade Mark.  While the term ‘beauty’ is descriptive of the Registered Services, neither the Composite Mark nor the Word Mark solely differ from the Trade Mark as a result of the addition of ‘beauty’; it is the combination of the additional term and the overall presentation and, in the case of the Word Mark the absence of the stylisation and in the case of the Composite Mark the additional Chinese characters (that are not strictly descriptive) that result in a total impression of dissimilarity emerging in both cases; indeed the respective marks are visually and aurally quite distinct.  In comparing the Trade Mark with the marks used by the Opponent I do not consider that total impression of resemblance emerges from the comparison.

4. Given my conclusions above I am not satisfied that the EIS shows evidence of use of the Trade Mark for the Registered Services in the relevant period.

   Obstacles to use

   26.     The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Registered Services in the relevant period, pursuant to s 100(3)(c) and in the interests of completeness I note that I have been unable to identify any such obstacles.  As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Services.

   Registrar’s Discretion

   27.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off , the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.[13]  To exercise the discretion in s 101(3) I must be positively satisfied that, despite the lack of use or obstacles to use, it is reasonable to not remove the Trade Mark in respect of the Registered Services.[14] The burden of persuasion falls in this regard falls on the Opponent.[15]

   [13] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2022 Thomson Reuters, [70.2505].

   [14] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

   [15] Ibid.

   28.     The Opponent has made no submissions in respect of the discretion. I therefore do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services. I note the removal of this mark does not impact on the ability of the Opponent to apply to register either the Word Mark or the Composite Mark as a trade mark, being the marks that appear to have been continuously used for the Opponent’s business.

   Decision

   29.     The Opponent has not established its opposition to removal. Accordingly, I direct that registration 1556592 be removed from the Register one month from the date of this decision. 

   30.     If the Registrar is served with a notice of appeal I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

   Costs

   31. The Applicant has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   17 June 2025