Opposition by YEY Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Active Skin Pty Ltd to remove trade mark number 1094648 (class 35, 44) – ACTIVESKIN (Figurative) - in the name of YEY...
[2022] ATMO 11
•31 January 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by YEY Pty Ltd to application under section 92 of the Trade Marks Act 1995 (Cth) by Active Skin Pty Ltd to remove trade mark number 1094648 (class 35, 44) – ACTIVESKIN (Figurative) - in the name of YEY Pty Ltd.
Delegate: Timothy Brown Representation: Opponent: Andrew Fox of counsel; Actuate IP
Applicant: Michael Hazan of counsel; Hazan HollanderDecision: 2022 ATMO 11
Trade Marks Act 1995 (Cth) – application under section 92(4)(b) – use demonstrated in relevant period for some services – Registrar’s discretion not exercised – trade mark partially removed.Background
YEY Pty Ltd (‘Removal Opponent’) is the owner of the following trade mark registration:
Trade Mark Number: 1094648
Trade Mark: (‘Trade Mark’)
Filing Date: 17 January 2006
Specification: Class 35: Online retail and wholesale sale of goods namely haircare products, skincare products, cosmetics, make up and perfumes
Class 44: Beauty and skin care services; beauty salons; skin treatments; massage
(‘Registered Services’)
On 29 July 2019 Active Skin Pty Ltd (‘Removal Applicant’) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (‘Act’) seeking removal of the Trade Mark from the Register for all of the Registered Services.
A Notice of Intention to Oppose the application for removal was filed by the Removal Opponent on 30 September 2019. The Statement of Grounds and Particulars was then filed on 30 October 2019.
The Removal Applicant filed a Notice of Intention to Defend on 6 December 2019.
The Removal Opponent filed evidence in support on 10 March 2020. Evidence in Answer was filed by the Removal Applicant on 11 June 2020. No Evidence in Reply was filed.
Following the finalisation of the period for providing evidence both parties were offered the opportunity to be heard. On 25 September 2020 the Removal Opponent requested a hearing. The matter was held before me, a delegate of the Registrar of Trade Marks, via video conference, on 1 November 2021. Andrew Fox of counsel appeared for the Removal Opponent accompanied by Colin Cheung and Cameron Lang of Actuate IP. Michael Hazan of counsel appeared for the Removal Applicant.
Evidence
Removal Opponent
The Removal Opponent’s evidence consists of a declaration made by Ben Wyeth on 10 March 2020 and Annexures BW-1 to BW-25 (‘Wyeth Declaration’).
Mr Wyeth is a director of Hollvette Pty Ltd (‘Hollvette’), a holding company of the Removal Opponent. Mr Wyeth explains that the Removal Opponent’s core business is the retail of third party skincare products via the website < (‘Removal Opponent’s Website’).
Mr Wyeth declares that the Removal Opponent has continuously used the Trade Mark since March 2006 when the Removal Opponent’s Website was initially launched.
In addition to retail services, Mr Wyeth declares that the Removal Opponent has provided a range of beauty services via a salon since July 2014, including massages, facials, skincare treatments and makeovers. The Removal Opponent’s salon initially provided services under the trade mark, ‘Escape Skin and Beauty’, followed by ‘Sensora’, then finally by ‘Active Skin Salon’ in July 2014.
Mr Wyeth declares that the Removal Opponent has built an extensive reputation in the cosmetics industry. The Wyeth Declaration provides confidential information regarding the Removal Opponent’s annual turnover from the financial year ending in 2006 until the financial year ending in 2019.
In addition to the Trade Mark, Mr Wyeth declares that the Opponent used the following trade marks in connection with retail services:
Trade Mark
Period of Use
ACTIVESKIN
(Plain Word ACTIVESKIN Trade Mark’)
March 2006 to present
(‘First ACTIVESKIN Trade Mark’)
March 2006 to September 2007
(‘Second ACTIVESKIN Trade Mark’)
September 2007 to July 2013
(‘Third ACTIVESKIN Trade Mark’)
July 2013 to July 2014
‘Fourth ACTIVESKIN Trade Mark’
July 2014 to December 2019
‘Fifth ACTIVESKIN Trade Mark’
Late 2017 to present
(Collectively, ‘Removal Opponent’s Trade Marks’)
The Wyeth Declaration includes the following evidence demonstrating use of the Removal Opponent’s Trade Marks:
·Photographs taken by Mr Wyeth of the Activeskin Salon on or around 27 August 2014, and February 2020.
·Extracts of the Removal Opponent’s Website from between 17 June 2006 and 29 February 2020 sourced from the Wayback Machine.[1]
·Screenshots from the Removal Opponent’s ‘Activeskin blog’ dating from 29 March to 9 March 2020.
·Screenshots from the Removal Opponent’s Facebook account from 2010 to 2020.
·Screenshots from the Removal Opponent’s Instagram Account over the period 2014 to 2020.
·Screenshots from the Removal Opponent’s YouTube Account.
·Looseleaf advertisements from the magazines ‘Home Beautiful’ and ‘Women’s Fitness’ from 2017.
·Print advertisements from Stockland Shopping Centre from July 2014 to May 2018.
·Letters from Dermatologica and Professional Beauty Solutions acknowledging the Removal Opponent as a retailer in the cosmetic industry.
[1] A digital internet archive service that facilitates viewing of captured versions of web pages.
Removal Applicant
The Removal Applicant’s evidence consists of a declaration made by Christina Gerogiannis and Exhibit CG-1 (‘Gerogiannis Declaration’).
The Gerogiannis Declaration provides screenshots of the Removal Opponent’s Website from 2015 to 2020 (sourced from Wayback Machine), screenshots of the Removal Opponent’s Instagram page from 22 December 2014 to 2 June 2020, and screenshots of the Removal Opponent’s Facebook page from 22 December 2014 until 3 June 2020.
Grounds, Onus and Relevant Period
The Removal Applicant filed for removal under section 92(4)(b) of the Act, which 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.
The Removal Applicant alleges that the Removal Opponent did not use the Trade Mark in the course of trade in Australia at any time within the three-year period ending on the 29 June 2019 (‘Relevant Period’).
The Removal Opponent bears the onus of rebutting the allegation made under section 92(4)(b) of the Act.[2]
[2] Trade Marks Act 1995 (Cth) section 100(1)(c).
The Removal Opponent may rebut the allegation by establishing that:
·The Trade Mark was used in good faith by its registered owner in relation to the Registered Services during the Relevant Period;[3] or
·The Trade Mark was not used because of circumstances that were an obstacle to use of the Trade Mark during the Relevant Period.[4]
[3] Ibid s100(3)(a).
[4] Ibid s100(3)(c).
The standard of proof is on the balance of probabilities.[5]
Discussion and Reasons
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Use of the Trade Mark during the Relevant Period
The first issue to be determined is whether there has been use of the Trade Mark by the registered owner, or an authorised user, in good faith in relation to the Registered Services during the Relevant Period.
The ‘use’ required is ‘use as a trade mark’. This is 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 trade mark to the goods or services.[6]
[6] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
A considerable amount of the evidence provided by the Removal Opponent only demonstrates use of the Trade Mark before the Relevant Period. Of the Removal Opponent’s Trade Marks, only three have been used during the Relevant Period. These trade marks being:
Trade Mark
ACTIVESKIN
(‘Plain Word ACTIVESKIN Trade Mark’)
(‘Fourth ACTIVESKIN Trade Mark’)
(‘Fifth ACTIVESKIN Trade Mark’)
Annexure BW-6 of the Wyeth Declaration consists of Wayback Machine archived web pages that demonstrate use on the Fourth ACTIVESKIN Trade Mark on the Removal Opponent’s Website in connection with the retail of various third-party cosmetic goods during the Relevant Period. The same material also demonstrates use of the Plain Word ACTIVESKIN Trade Mark.
Supplementing the evidence from the Removal Opponent’s Website, is evidence from the Removal Opponent’s Instagram and Facebook pages that features use of the Fourth ACTIVE SKIN Trade Mark and the Plain Word ACTIVESKIN Trade Mark during the Relevant Period. The trade marks are used on promotions for the sale of various third-party cosmetic products alongside links to the Removal Opponent’s Website or other sponsors.
The Removal Opponent’s salon is referenced on the Removal Opponent’s webpage during the Relevant Period. Photographs of the physical salon featuring the Fourth ACTIVESKIN Trade Mark have also been provided. Mr Wyeth declares that the photographs were taken around 27 August 2014 and 20 February 2020, and states that the photographs reflect how the Removal Opponent’s salon would have appeared during the Relevant Period. When used in relation to salon services the Fifth ACTIVESKIN Trade Mark is generally used in conjunction with the word SALON.
A significant area of contention between the parties is whether use of the Fourth and Fifth ACTIVESKIN Trade Marks can be considered use of the Trade Mark.
Section 7(1) of the Act provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark’.
The Removal Applicant referred to the decision of Optical 88 Limited v Optical 88 Pty Limited (No 2)[7] (‘Optical 88 (No 2)’). In Optical 88 (No 2) Yates J considered the following trade marks:
(‘707 mark’)
(‘966 mark’)
(‘modified 707 mark’)
[7] [2010] FCA 1380 (Yates J).
Justice Yates stated:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity. However, the ‘707 mark is registered only for goods, not services.[8]
[8] Ibid [256].
The Removal Applicant also relied on the decision of Colorado group Ltd v Strandbags Group Pty Ltd.[9] The registered trade mark in that decision was the word ‘Colorado’. However, the evidence demonstrated that the trade mark, ‘Colorado’, had been used consistently in conjunction with a mountain peak device. Allsop J found that while ‘Colorado’ was important to the impression of the trade mark, it was not the registered trade mark that had been used, but the composite of the trade mark, ‘Colorado’, and the mountain device.[10]
[9] [2007] FCAFC 184 (Kenny, Gyles and Allsop JJ).
[10] Ibid [110].
The Removal Opponent referred to the decision of E & J Gallo Winery v Lion Nathan Australia Pty Ltd (‘E & J Gallo’).[11] E & J Gallo involved the question of whether the addition of a device of a bare foot to the registered trade mark, BAREFOOT, was an addition or alteration that substantially affected the identity of the registered trade mark. The High Court found that it did not substantially affect the identity of the registered trade mark because the device was an illustration of the word, BAREFOOT.[12]
[11] [2010] HCA 15 (French CJ, Gummow, Crennan and Bell JJ).
[12] Ibid [110].
The Removal Opponent also relied on the decision of Pioneer Computers Australia Pty Ltd v Pioneer KK. In this decision the differences in font between two trade marks comprised solely of the word ‘Pioneer’, were regarded only as minor differences that reflected a change in style rather than a substantive change.[13]
[13] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135, [117] (Bennett J).
Both parties referred to various other decisions dealing with comparisons of trade marks in the context of section 7(1) of the Act. The common thread in all the decisions is the need for there to be a total impression of similarity between the two trade marks cognisant of the essential elements of the trade marks.
The Removal Opponent emphasised that the Trade Mark is predominantly comprised of the words ‘activeskin’, in plain text, with minimal stylisation, and noted the lack of any colour limitation.
Conversely, the Removal Applicant characterised the stylised elements of the Trade Mark as striking visual elements, and regarded the absence of the green circle device from the Trade Mark to be an alteration that substantially affects the identity of the Trade Mark.
Each of trade marks contain the words ACTIVESKIN. The fonts of the respective trades marks do differ, with both the Fourth ACTIVE SKIN Trade Mark and Fifth ACTIVE SKIN Trade Mark utilising thinner fonts and capital letters. The green shaded circle featured in the Trade Mark is also absent from the other trade marks. These changes are relevant, but the question is ultimately whether the changes substantially affect the identity of the trade marks. In my view, they do not. The essential feature of each of the trade marks are the words ACTIVESKIN. Consumers are likely to identify any services provided under these trade marks by reference to the words ACTIVESKIN. I do not consider the fonts of the trade marks unusual, nor the differences between the fonts significant enough to leave an impression on consumers. Similarly, I do not consider the green shading behind the letter ‘a’ in the Trade Mark to be an essential element of the Trade Mark. Accordingly, I am satisfied that a total impression of similarity emerges from a comparison between the Trade Mark and the Plain Word ACTIVESKIN Trade Mark, the Fourth ACTIVESKIN Trade Mark and the Fifth ACTIVESKIN Trade Mark.
During the oral submissions the Removal Applicant questioned the reliability of the Removal Opponent’s Wayback Machine evidence and submitted that it should be disregarded. Reservations regarding the use of Wayback Machine evidence were expressed in King Par LLC v Brosman Golf Pty Ltd where Greenwood J stated that he could not ‘be satisfied as to the accuracy of the dates of archive of those images on any of the websites to which they are attributed by the W M search engine’.[14] In Voxson Pty Ltd v Telstra Corporation Limited (No 10) Perram J stated relying on Wayback Machine evidence would involve hearsay’.[15]
[14] [2014] FCA 795, [168].
[15] [2018] FCA 376, [35].
Proceedings before the Registrar of Trade Mark are not constrained by the hearsay rule or the provisions of any statutes regarding admissibility of evidence in the courts. In the absence of any countervailing facts, and noting the Removal Opponent’s case does not rely solely on the Wayback Machine evidence, I am satisfied that the Wayback Machine evidence provided by the Removal Opponent is a reliable indication of the content of the webpage at the date indicated by the archive.
Having regard to the reasoning above, I am satisfied that the evidence demonstrates use of the Trade Mark with additions or alterations that do not substantially affect the identity of the Trade Mark in relation to all of the services in Class 44 and in relation to online retail sale of goods namely haircare products, skincare products, cosmetics, make up and perfumes in Class 35. However, I am not satisfied that the opponent has used the Trade Mark in relation to the wholesale sale of goods.
No submissions have been made by the Removal Opponent regarding any obstacles to the use of the Trade Mark. Nor does any of the information before me suggest that an obstacle prevented use of the Trade Mark during the Relevant Period. Accordingly, as the Removal Opponent has not established use of the Trade Mark in relation to wholesale sale of goods, I will now consider whether it is appropriate to exercise discretion to allow the Trade Mark to remain registered for those services.
Discretion
Section 101 of the Act provides:
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
The Removal Opponent bears the onus of satisfying me that that the discretion under section 101(3) of the Act ought to be exercised.[16]
[16] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273] (Yates J).
In Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J summarised the considerations relevant to the exercise of Registrar’s discretion:
In Austin, the Full Court affirmed that Flick J’s view that while public interest, particularly in the integrity of the Register, was the guiding principle behind the discretion, the private commercial interests of parties could be taken into account and the interests of both consumers and traders must be recognised (at [33]-[34]).
In E&J Gallo, Flick J identified (at [202]) the following factors additional to that in s 101(4) which, while not exhaustive, were also relevant to the exercise of the discretion: whether there has been no abandonment of the trade mark; whether the registered proprietor still had a residual reputation in the mark; whether there had been sales by the registered proprietor in relation to the goods for which removal was sought since the relevant period ended; whether the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and whether the registered proprietors were aware of the applicants’ sales under the mark.[17]
[17] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [467]-[ 468] (Dodds-Streeton J).
The Registrar may also take into account whether the trade mark has been used for similar services or closely related goods.[18]
[18] Trade Marks Act 1995 (Cth) s101(4).
The Removal Opponent submits that the discretion not to remove the Trade Mark for wholesale services ought to be applied for the following reasons:
·The Removal Opponent has demonstrated legitimate use and commercial interest in the Trade Mark since March 2006;
·Removal of the Trade Mark would heavily prejudice the Removal Opponent due to heavy investment in promotional activities for the Trade Mark since March 2006; and
·The absence of any demonstrated prejudice to the Removal Applicant were the direction to be exercised in favour of the Removal Opponent.
The Removal Applicant submits that the discretion should not be exercised because the Removal Opponent has never provided wholesale services and, as such, the period of non-use was substantially greater than the minimum statutory period of three years. Further, the absence of any evidence concerning prospects of confusion indicates there is little possibility that removing the trade mark would result in confusion for the public.
The Removal Opponent has a long history of using the Trade Mark in connection with retail services. The sales figures provided also indicate some degree of reputation for the Trade Mark in respect to the retail of cosmetics. Whilst there are differences, the wholesale of cosmetics is a very similar service to retail, particularly when confined to the same goods. There may be potential for confusion if another trader were to use a substantially identical or deceptively similar trade mark for wholesale of goods relating to cosmetics.
However, the purpose of section 92 of the Act is to enable removal of unused trade marks. The public interest in the integrity of the Register generally favours the removal of an unused trade mark unless sufficient reason is provided by the Removal Opponent to warrant the unused trade mark remaining registered. In this matter, while the evidence establishes use of the Trade Mark in relation to retails services over a long period of time, the Removal Opponent has never used the Trade Mark in connection with wholesale services, nor does the evidence indicate any such intention to do so in the future. Finally, limiting the Registered Services would not impair the Opponent’s capacity to continue to use the Trade Mark.
Having regard to the reasons above, I am not satisfied that it is reasonable to exercise the discretion in the Removal Opponent’s favour to allow the Trade Mark to remain registered in respect to the wholesale services.
Decision
The Removal Opponent has rebutted the allegation of non-use in respect of the Class 44 services and online retail sale of goods namely haircare products, skincare products, cosmetics, make up and perfumes in Class 35. I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Registered Services to remain unamended. Accordingly, I direct that, one month from the date of this decision, trade mark registration number 1094648 be amended as follows:
Class 35: Online retail
and wholesale saleof goods namely haircare products, skincare products, cosmetics, make up and perfumesClass 44: Beauty and skin care services; beauty salons; skin treatments; massage
Should the Registrar be served with a notice of appeal before the amendment of the Trade Mark, I direct that the amendment of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.
Costs
Both parties sought costs. The general rule is that costs follow the event. As both parties had a degree of success, I decline to award costs in this matter.
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs31 January 2022
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