Parfums Christian Dior v Airyday IP Pty Ltd

[2024] ATMO 43

TRADE MARKS ACT 1995

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

ReOpposition by Parfums Christian Dior to registration of the trade mark the subject of application 2209931 (3, 5, 35) – DREAMSCREEN – in the name of Airyday IP Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Luke Merrick of Counsel, instructed by Corrs Chambers Westgarth

Applicant: Catherine Bembrick of Counsel, instructed by XVII Degrees

Decision:                   2024 ATMO 43

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no grounds established – trade mark may proceed to registration

Background

1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Airyday IP Pty Ltd (‘Applicant’). The opposition was brought by Parfums Christian Dior (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).

Trade Mark:	DREAMSCREEN	(‘Applicant’s Trade Mark’)
Application Number:	2209931
Filing Date:	10 September 2021
Specification:	Class 3: (including) soaps, perfumes, and cosmetics Class 5: (including) skincare preparations (pharmaceutical) Class 35: (including) retailing goods, including retailing goods online; Full specification appears in the annexure to this decision. (‘Applicant’s Goods and Services’)

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

3. Following publication of the application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

• Declaration made on 16 September 2022 by Bertrand Tefra, the Chief Financial Officer of the Opponent, with Annexures BT-1 to BT-13 (‘Tefra declaration’).

5. The Applicant filed Evidence in Answer, being:

• Declaration made on 19 December 2022 by Sebastian Cox, the Managing Director of the Applicant, with Annexures SC-01 to SC-17 (‘Cox declaration’).

6. The Opponent did not file Evidence in Reply.

7. Once the time allowed for filing evidence had ended the parties both parties requested to be heard. I am a delegate of the Registrar of Trade Marks, and in that capacity, I heard the matter on 23 February 2024. Luke Merrick of Counsel, instructed by Corrs Chambers Westgarth, appeared on behalf of the Opponent. Catherine Bembrick of Counsel, instructed by XVII Degrees, appeared on behalf of the Applicant. Counsels’ oral submissions were supplemented by written summaries of their submissions which were filed prior to the hearing.

The Opponent

8. According to the Tefra declaration:

[The Opponent] is a subsidiary of the LVMH Group, one of the world’s largest and leading luxury brands group of companies. The LVMH Group is the owner of several of the world’s leading luxury goods brand with a particular emphasis on luxury fashion and leather goods, jewellery, perfumes, cosmetics, wine and spirits. …

[The Opponent] is one of LVMH Group’s fifteen luxury houses specialising in perfume and cosmetics, including, amongst other brands, Guerlain, Acqua Di Parma, Parfums Givenchy, Kenzo Parfums and Marc Jacobs Beauty.

[The Opponent] was co-founded in 1946 in Paris, France by Christian Dior and Marcel Boussac, and has a long history producing luxury fragrance and cosmetics products including:

(a)perfumes;

(b)make-up; and

(c)skincare.

(collectively, PCD Products)

[The Opponent] is internationally recognised as one of the leading brands in the perfumes and cosmetics industries, with more than 13,000 employees worldwide. The PCD Products are sold in more than 150 countries, including Australia. …

For many decades, [the Opponent] has been exporting PCD Products to Australia. During that time, PCD Products have been continuously offered for sale and sold in Australia …

9. The Opponent is the owner of the registered trade mark detailed below:

Trade Mark:

DREAMSKIN (‘Opponent’s Trade Mark’)

Trade Mark Number:

1167707

Application Filing Date:

5 December 2006

Convention Priority Date:

6 June 2006

Specification:

Class 3: Cosmetics, namely moisturizing milks, lotions, creams, emulsions, balms, gels and fluids for face, eye, lip and body care; beauty masks; anti-wrinkle cosmetics

(‘Opponent’s Goods’)

The Applicant

1. According to the Cox declaration:

   The Applicant is the intellectual property holding company for the business undertaken by Airyday Pty Ltd. Hereafter, a reference to the Applicant includes Airyday Pty Ltd.

   On or around August 2020, following a skin cancer scare the Applicant’s founder Frances van der Velden had the idea to create a skin protection business in Australia providing SPF-based skin care and cosmetics products for everyday use. In or around January 2021 the Applicant commenced operations under the business name 'Airyday'.

   Since the inception of the Applicant's business and by way of funding from its de facto 'parent' company Claremont Connections Pty Limited (Claremont), the Applicant has invested … into the establishment of the Applicant's business …

   The Applicant has made substantial preparatory steps to launch its Goods and Services in at least Australia since August 2020 and the official launch of at least the Applicant’s primary SPF skincare and cosmetics products under [the Applicant’s Trade Mark] occurred in September 2022. …

   [The Applicant’s Trade Mark] is one of a family of trade marks filed by the Applicant in Australia …

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. At the hearing the Opponent did not press the s 62A ground. The onus of proof rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 10 September 2021, being the filing date of the application (‘Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Consideration of Grounds of Opposition

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

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

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

Section 44

1. Provisions relevant to the consideration of s 44 in this matter are reproduced below:

Section 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)   a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)     a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Section 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.

Section 14 – Definition of similar goods and similar services

(1)  For the purposes of this Act, goods are similar to other goods:

(a)  if they are the same as the other goods; or

(b)  if they are of the same description as that of the other goods.

(2)  For the purposes of this Act, services are similar to other services:

(a)  if they are the same as the other services; or

(b)  if they are of the same description as that of the other services.

1. In the SGP the Opponent nominated the Opponent’s Trade Mark in respect of s 44. The Opponent did not submit that its trade mark is substantially identical to the Applicant’s Trade Mark. This is understandable as on a side by side comparison it is clear that they are not. Further, the s 44 ground was pressed only in respect of the subset of the Applicant’s Goods and Services indicated below (‘Opposed Goods and Services’). Accordingly, the s 44 ground will be considered only in respect of those goods and services.

(a)all goods in Class 3;

(b)skincare preparations (pharmaceutical) in Class 5; and

(c)retail services, department store retail services, wholesale outlet retail services, mail order and electronic shopping retail services connected with the sale of cosmetics and skincare, perfumes, toiletries, skin care preparations, hair care preparations, nail care preparations, sunscreen preparations, shower preparations, cosmetic bath products, beauty face packs, hand care preparations, non-medicated foot creams, body creams (cosmetics), fragrances, preparations for the care of the scalp, make-up, essential oils in Class 35.

1. As a starting point, to successfully oppose registration pursuant to s 44 the Opponent must establish that the Opponent’s Trade Mark:

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

   ·     is registered in respect of at least some goods and services which are similar or closely related to the Opposed Goods and Services (‘the second requirement’); and

   ·     is deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

The first requirement

1. The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.

The second requirement

1. The Opponent’s Trade Mark is registered in respect of certain specified cosmetics in Class 3. The Applicant’s Goods and Services include an unqualified claim for cosmetics in Class 3. This claim of the Applicant encompasses the Opponent’s specific cosmetics; consequently, those goods are similar. The second requirement is therefore satisfied in respect of, at least, the aforementioned goods.

The third requirement

Deceptively Similar?

1. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] Ibid [13].

2. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[5]

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[6]

   Third, allowance must be made for imperfect recollection.[7]

   Fourth, the effect of the spoken description must be considered.[8]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[9]

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[10] …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[11]

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[12]

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[13] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[14] [15]

   [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

   [6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

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

   [14] Ibid [100].

   [15] [2012] FCA 1022, [37]–[46].

3. The Opponent submitted that the relevant trade marks are deceptively similar for the following reasons:

   (a)    Visually, the marks are very similar. They both comprise one word which itself commences with the recognisable word ‘Dream’. The second part of both marks also commences with an ‘S’.

   (b)    Phonetically, there is a significant degree of similarity between the marks. This similarity is primarily a product of the marks commencing with the word ‘DREAM’. However, it also arises because the second part of both marks commences with the sound “SK/SC”.

   (c)    In the context of cosmetic / skincare products, the idea conveyed by the marks is also very similar. The word ‘SKIN’ in the DREAMSKIN mark is, obviously, a direct reference to the use of products on the human body. The word ‘SCREEN’ in the DREAMSCREEN mark evokes a related idea, namely that of a product which acts as a screen for the skin (calling, obviously, on the idea of sunscreen).

   (d)    The similarities between the marks are heightened when it is borne in mind that consumers will have an imperfect recollection of the DREAMSKIN mark. Consumers are likely to recall and fix upon the word ‘DREAM’, both because it is the first and most distinctive part of these marks.

   (e)    Having regard to the matters set out in sub-paragraphs (a) to (d), there is a strong likelihood that the use of the DREAMSCREEN mark would cause confusion as to whether goods bearing that mark are connected in the course of trade with the DREAMSKIN brand and the business behind it.

4. The Applicant stressed that in assessing deceptive similarity the ‘usual manner in which ordinary people behave must be the test of what deception or confusion may be expected, having regard to the character of customers who would be likely to buy the goods’.[16] The Applicant also noted that it is relevant to consider the context in which the goods are sold, in particular, ‘whether or not the goods are … of personal or intimate interest, in which case closer attention may be given to the detail of trade marks’.[17] It was submitted that the relevant goods ‘are personal care products applied to the skin and will therefore be purchased with considerable care and close attention’.

   [16] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [31] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [17] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [110] (Jagot, Nicholas and Burley JJ).

5. Regarding the comparison of the trade marks here the Applicant submitted:

   The marks are not visually similar. The second part of both marks is different – SCREEN versus SKIN. Screen and skin are distinct words with a different number of letters, different consonants and vowels.

   The marks are not phonetically similar. The word SCREEN comprises two sounds – ‘SCR’ and ‘EEN’, neither of which appear in the word SKIN. The words sound very differently, nor is there any prospect of mispronouncing SCREEN as SKIN. Relatedly, the vowels used in each word produce sounds of different lengths: ‘een’ being a longer sound than ‘in’.

   The first and second parts of the Applicant’s Mark (DREAM and SCREEN) rhyme, while the first and second part of the Opponent’s Mark (DREAM and SKIN) do not. …

   DREAM is not the essential feature of the Applicant’s Mark. There is no reason to parse the word ‘SCREEN’ from the mark in characterising its essential or distinctive features. This is particularly the case given that DREAMSCREEN is an invented (and abstract) single word. …

   [T]he “idea” conveyed by the marks is different. The word SCREEN suggests use of a ‘shield’ or ‘shelter’. The word SKIN plainly evokes the human skin. The idea conveyed by these words is very different. There is no reason to read into DREAMSCREEN the word SKIN as [the Opponent] suggests. …

   [T]he focus is upon the effect or impression produced in the mind of the notional consumer. …

   The goods are personal care products applied to the skin and will therefore be purchased with considerable care and close attention

1. I am inclined to the Applicant’s view. The goods and services we are concerned with in this matter are, or concern, goods which are, because of their nature, likely to be purchased with care and close attention. In these circumstances, the differences between the trade marks are sufficient that deception or confusion are unlikely. I am not satisfied that the Opponent’s Trade Mark so nearly resembles the Applicant’s Trade Mark that it is likely to deceive or cause confusion. This ground of opposition is, therefore, not established.

Section 60

1. The ground based on s 60 is particularised in the SGP as follows:

   The Opponent has, before the priority date of the Opposed Mark, acquired a reputation in Australia in the DREAMSKIN trade mark applied to and in relation to various class 3 goods, including skincare products (the Opponent’s Goods). As a result, use by the Applicant of the Opposed Mark in respect of the claimed goods and services in Australia would be likely to deceive or cause confusion.

2. The Opponent indicated that it pressed this ground (and the s 42(b) ground) in respect of the same goods as were challenged under the s 44 ground; however, it pursued this ground (and the s 42(b) ground) in respect of a broader range of the Applicant’s Class 35 services; the relevant services are those which are crossed out below.

   Promotion, marketing, and advertising services; retailing goods, including retailing goods online; retail services (including retailing goods online), department store retail services, wholesale outlet retail services, mail order and electronic shopping retail services connected with the sale of cosmetics and skincare, perfumes, toiletries, skin care preparations, hair care preparations, nail care preparations, sunscreen preparations, shower preparations, cosmetic bath products, beauty face packs, hand care preparations, non-medicated foot creams, body creams (cosmetics), fragrances, preparations for the care of the scalp, make-up, essential oils, sunglasses, cases for glasses and sunglasses, sports goggles, costume jewellery, jewellery, watches, handbags, pocket wallets, vanity cases (not fitted), briefcases, articles of luggage, wallets, purses, leather belts, bags, sporrans, credit card holders, card holders, make-up bags and cases, cloth pouches and sleeves for bags, electronic devices, jewellery, trinkets and makeup, key holders, pet clothing, collars and leashes, riding whips, clothing, footwear, telecommunication and computer apparatus, instruments peripherals and accessories, textile articles, bath and bed linen, cushion covers, table cloths, napkins, textile articles and fabrics, lace, embroidery, ribbons, buttons, hair accessories, ornaments, hair grips, hair slides and hair bands, badges for wear, belt clasps, shoe buckles, shoe ornaments, zippers, loyalty cards; sales promotion services; business management and organisation consultation; Information and advisory services relating to retail, advertising and promotion, and business management and organisation; advertising and promotion services; distribution of goods; business consultancy services; discount store services (retail, wholesale, or sales promotion services); provision of business information

3. Section 60 is reproduced below:

Section 60 - 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.

1. To establish this ground of opposition the Opponent must demonstrate that at the Relevant Date the Opponent’s Trade Mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[18] Her Honour quoted with approval the following words of Lockhart J from 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 …[19]

   [18] [2000] FCA 1335, [81] (Kenny J).

   [19] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).

3. On the subject of reputation Kenny J 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 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 its 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.[20]

   [20] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

4. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[21] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[22]

   [21] [2000] FCA 1587 (Heerey J).

   [22] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.

5. The Tefra declaration states:

   Since 2014, [the Opponent] has offered for sale, promoted for sale and sold Dreamskin Goods in Australia on a continuous basis. Since that date, [the Opponent’s] revenue derived from the sale of Dreamskin Goods in Australia has been substantial. …

   Since 2014, [the Opponent] has continuously engaged in the promotion of Dreamskin Goods under or by reference to the Dreamskin Mark around the world, including in Australia via:

   (a)point-of-sale materials at [the Opponent’s] Boutiques;

   (b)point-of-sale materials at [the Opponent’s Products] Retailers;

   (c)[the Opponent’s] Online Boutique;

   (d)global advertising campaigns; and

   (e)[the Opponent’s] social media platforms.

6. Much of the Opponent’s evidence shows use of the Opponent’s Trade Mark alongside other signs which are either ostensibly or clearly trade marks; typical examples are provided below.

1. In submitting that the evidence does not establish that the Opponent’s Trade Mark had acquired a reputation, the Applicant pointed to the use alongside DIOR, CAPTURE TOTALE and other signs, and made submissions, including:

   [T]he word DIOR is positioned separately from, and appears in darker text than, any of the terms ‘Dreamskin’, ‘Capture’, or ‘Capture Totale’. In contrast the word DREAMSKIN is not prominently displayed;

   [The Tefra declaration] establishes that Dior products are sold through Dior branded boutiques. When products bearing the word DREAMSKIN are sold, it is evident that the display of those goods is in conjunction with prominent use of the word DIOR on shopfronts, shelves and displays. When the products are sold in third party retailers, the evidence expressly establishes that they are sold in ‘concession stands’ which are ‘prominently identified by use of the trade mark Dior’. The overwhelming branding focus in these sales channels is on DIOR;

   When products are sold by third party retailers online, the word DIOR is again prominently displayed, with each product listed under that name (in bold) with other words including CAPTURE or CAPTURE TOTALE.

2. I am not persuaded that the use of the Opponent’s Trade Mark in conjunction with the other signs referred to above significantly affects the acquisition of a reputation by the Opponent’s Trade Mark. It is common for trade marks to be used in conjunction with other trade mark material and it still be clearly separate from the surrounding signs. The Opponent’s Trade Mark is, in much of the evidence, clearly a trade mark distinct from the surrounding signs. This is not to say, however, that the Opponent’s evidence does not have other shortcomings.

3. In respect to the evidence of reputation acquired by the Opponent’s Trade Mark in Australia, the Applicant submitted:

   [The Opponent] has not established the necessary reputation in Australia. Dior has filed limited evidence of the use of its global advertising campaigns in Australia, other than to state that those campaigns appeared on social media. When evidence of expenditure on these campaigns is given, it is not particularised by region or country but provides only ‘global’ figures. Similarly, the ‘influencer’ evidence relied upon by Dior is tangential at best, comprising a post with 84 ‘likes’ (from unnamed people in unknown geographic locations) and a post with a blurry photograph of the packaging of what appears to be a Dreamskin product.

   Dior has not provided, for example, evidence of visits to its website or social media sites from Australian consumers, nor evidence of those visits directed expressly to the Dreamskin products.

   Although summaries of sales revenue have been provided (without supporting documents), sales figures alone are not sufficient to establish reputation in Australia.

4. Many of the shortcomings raised by the Applicant regarding the Opponent’s evidence of reputation acquired in Australia are accepted; nevertheless, there is sufficient evidence that the question of acquired reputation be considered further. The shortcomings will be taken into account in the final assessment.

5. The Applicant has also criticised the Opponent’s evidence on the basis of its relation to the Relevant Date. Specifically:

   [M]uch of [the Opponent’s] evidence is not relevant in circumstances where it relates to activities occurring after the Priority Date. The photographs of (undisclosed) Dior branded boutiques are not dated and appear to have been taken after the Priority Date. Similarly, a number of the photographs of Facebook posts, or Instagram ‘followers’ post-date the Priority Date.

6. There are challenges for opponents when gathering evidence for proceedings such as these. For example, there may be no photographs of how goods were displayed in stores which were taken prior to the Relevant Date. The best that an opponent can do in such circumstances might be to make declarations as to the state of things before the Relevant Date and provide post-dated photographs in support. As an example in the present matter, the Tefra declaration states:

   Since the launch of Dreamskin Goods in Australia in or about 2014, Dreamskin Goods have been continuously displayed for sale, offered for sale and sold, under reference to the Dreamskin Mark in [the Opponent’s] Retailers which, as outlined above, include some of Australia’s largest department and cosmetics stores including the Myer, David Jones and Sephora locations listed in Annexure BT-1. Images of Dreamskin Goods being displayed for sale and offered for sale, under reference to the Dreamskin Mark in one of [the Opponent’s] Retailers, Myer Melbourne City, are shown below. To the extent these examples are from after the Priority Date, they are representative of how Dreamskin Goods and Dreamskin Mark were displayed for sale and offered for sale continuously in [the Opponent’s] Products Retailers in Australia for many years before the Priority Date.

Such statements are generally taken on face value unless there is good reason to doubt their veracity. This type of evidence is assessed in light of the evidence as a whole and given appropriate weight.

1. In the case of what might generally be referred to as ‘website evidence’—which encompasses business websites and social media sites—dating of that evidence is generally straightforward. It is possible to refer to internet archives to obtain information as to how pages appeared prior to the Relevant Date. Social media pages typically have dates on which posts are made, and which can be seen in contemporary screenshots. Post-dated evidence of this type is given appropriate weight based on the dates shown. There are, again, accepted shortcomings with the Opponent’s evidence as regards the dating of the evidence. Such evidence has been given appropriate weight.

2. The Applicant has also criticised the Opponent’s evidence on the basis that it ‘does not establish (if indeed there was any reputation in the DREAMSKIN alone) that the reputation is among a “significant section of the public”’. This particular submission has not been elaborated upon sufficiently for me to draw any conclusions. For example, there are no submissions as to what a significant section of the public might be in respect of the relevant goods and services and why the Opponent’s goods and services might not have reached that section of the public. Given the trade channels in which the Opponent’s goods have been sold—including its own shopfronts and the major retailers mentioned—I am satisfied that any reputation acquired is in respect of a significant section of consumers of those types of goods.

3. On balance I am satisfied that the Opponent’s Trade Mark has acquired a reputation in Australia in respect of skin care cosmetics; however, because of the shortcomings of the evidence referred to above, the reputation is at best, modest.

4. It is not sufficient that the Opponent merely establish that its trade mark has acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[23]

   [23] (1937) 58 CLR 641, 658.

5. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn 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 the 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. ^[24]

   [24] [1979] RPC 410, 423 (citations omitted).

6. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[25]

   [25] (1997) 38 IPR 495, 501 (Heerey J) (citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.

7. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[26]

   [26] [1999] FCA 1020, [50] (French, Branson and Tamberlin JJ). These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

8. Notwithstanding the reputation acquired by the Opponent’s Trade Mark, because of the differences between the respective trade marks—as discussed in respect of the s 44 ground—I am not satisfied that because of that reputation use of the Applicant’s Trade Mark in respect of any of the Applicant’s Goods and Services would be likely to deceive or cause confusion. The Opponent has, therefore, not established this ground of opposition.

Section 42(b)

1. The ground of opposition pursuant to s 42 was particularised in the SGP as follows:

   The Opponent has, before the priority date of the Opposed Mark, acquired a reputation in Australia in the DREAMSKIN trade mark applied to and in relation to the Opponent’s Goods. As a result, use by the Applicant of the Opposed Mark in respect of the claimed goods and services in Australia would be contrary to law. In particular, use of the Opposed Mark by the Applicant would amount to misleading or deceptive conduct and the making of false representations pursuant to sections 18 & 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010).

2. The relevant provisions of s 42 are reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) …

   (b) its use would be contrary to law.

3. The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[27] The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[28]

   [27] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [28] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).

4. In its submissions the Opponent recognised that if the s 60 ground ‘is not upheld, its s 42(b) ground would also fail’. This proposition is accepted as the test for misleading and deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent test than that for deception or confusion under s 60.[29] Further where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. [30] Accordingly the s 42(b) ground is not established.

   [29] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

   [30] Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107] (Beaumont J).

Decision

1. Section 55 relevantly provides:

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade mark 2209931 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks

5 March 2024

Annexure

The Applicant’s Goods and Services

Class 3: Soaps, perfumes, and cosmetics; skin care, hair care, body care, and make-up products; essential oils; hair lotions; non-medicated preparations for application to or care of the skin, scalp, hair or nails; cosmetics; aromatherapy preparations; aromatherapy oils; beauty masks; cleansing milk for toilet purposes; cosmetic kits; cosmetic preparations for slimming purposes; cosmetics; cosmetic creams; extracts of flowers (perfumes); eyebrow cosmetics; eyebrow pencils; cosmetic kits; lipsticks; lotions for cosmetic purposes; make-up; make-up powder; make-up preparations; make-up removing preparations; mascara; beauty masks; oils for cosmetic purposes; cosmetic masques, treatments, creams, lotions, serums, tonics, essential oils; sunscreen preparations; sun-tanning preparations (cosmetics); bath oils for cosmetic purposes; body and beauty care cosmetics; foams containing cosmetics and sunscreens; foundation; shampoos; toners; topical skin sprays for cosmetic purposes

Class 5: Skincare preparations (pharmaceutical); pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; medicated mineral drinks; medicinal drinks; vitamin drinks; dietetic drinks adapted for medical purposes; nutritional drinks for dietary and medicinal purposes; dietary food supplements

Class 35: Promotion, marketing, and advertising services; retailing goods, including retailing goods online; retail services, department store retail services, wholesale outlet retail services, mail order and electronic shopping retail services connected with the sale of cosmetics and skincare, perfumes, toiletries, skin care preparations, hair care preparations, nail care preparations, sunscreen preparations, shower preparations, cosmetic bath products, beauty face packs, hand care preparations, non-medicated foot creams, body creams (cosmetics), fragrances, preparations for the care of the scalp, make-up, essential oils, sunglasses, cases for glasses and sunglasses, sports goggles, costume jewellery, jewellery, watches, handbags, pocket wallets, vanity cases (not fitted), briefcases, articles of luggage, wallets, purses, leather belts, bags, sporrans, credit card holders, card holders, make-up bags and cases, cloth pouches and sleeves for bags, electronic devices, jewellery, trinkets and makeup, key holders, pet clothing, collars and leashes, riding whips, clothing, footwear, telecommunication and computer apparatus, instruments peripherals and accessories, textile articles, bath and bed linen, cushion covers, table cloths, napkins, textile articles and fabrics, lace, embroidery, ribbons, buttons, hair accessories, ornaments, hair grips, hair slides and hair bands, badges for wear, belt clasps, shoe buckles, shoe ornaments, zippers, loyalty cards; sales promotion services; business management and organisation consultation; Information and advisory services relating to retail, advertising and promotion, and business management and organisation; advertising and promotion services; distribution of goods; business consultancy services; discount store services (retail, wholesale, or sales promotion services); provision of business information