Peach and Lily Inc
[2023] ATMO 50
•21 April 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2196808 (class 3) - GLASS SKIN REFINING SERUM - in the name of Peach and Lily Inc
Delegate: Benjamin Goldsworthy Representation: Registrant: Kings Patents and Trade Marks Attorneys Decision: 2023 ATMO 50
Trade Marks Act 1995 (Cth) – Hearing on intention to revoke registration under section 84A and revoke acceptance under section 38 of the Trade Marks Act 1995 (Cth) – trade mark should not have been registered – reasonable to revoke in all the circumstances – revocation of registration and acceptanceBackground
This matter regards a proposal by the Registrar of Trade Marks to revoke the registration and acceptance of registered trade mark number 2196808 in the name of Peach and Lily Inc (‘Registrant’). The relevant details are reproduced below:
Trade Mark: GLASS SKIN REFINING SERUM (‘Trade Mark’)
Class 3: Cosmetic oils; Cosmetic preparations; Cosmetic preparations for cleansing the skin; Cosmetic preparations for use on the skin; Cosmetic products for skin care; Cosmetic skin care products; Cosmetics; Cosmetics for personal use; Cosmetics for use on the skin; Cosmetics in the form of oils; Cosmetics preparations; Moisturising preparations (cosmetic); Oils for cosmetic purposes; Skincare cosmetics; Skincare preparations (cosmetic); Skin lightening compositions (cosmetic); Tonics (cosmetic); Toning creams (cosmetic); Cosmetic kits; Serum (cosmetic preparations); Make-up; Make-up removing preparations; Non-medicated cosmetic preparations; Non-medicated cosmetics; Non-medicated preparations for the skin (toiletries); Non-medicated products for skin care; Non-medicated skin care beauty products; Non-medicated skin care products; Non-medicated skin preparations; Non-medicated skin clarifying lotions; Skin tonics (non-medicated); Skin emollients (non-medicated); Non-medicated preparations for the care of the skin; Non-medicated creams for hydrating the skin; Brightening preparations (‘Designated Goods’)
An application for the Trade Mark was filed on 22 July 2021 (‘Relevant Date’) and examined under s 31 of the Trade Marks Act 1995 (Cth) (‘Act’).[1] No grounds for rejection under the Act were identified during the examination and the acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks on 23 December 2021. No notice of opposition was filed during the opposition period and the Trade Mark was entered onto the Register of Trade Marks (‘Register’) on 2 March 2022.
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
On 25 July 2022, a Deputy Registrar of Trade Marks issued a written Notice of Intention to Revoke Registration (‘Revocation Notice’) to the Registrant. The Revocation Notice stated that the Trade Mark should not have been registered and, taking into account all of the circumstances, it was reasonable to revoke the registration. The following reasons were provided in the Revocation Notice:
Section 84A
Section 84A of the Trade Marks Act 1995 provides the Registrar with the power to revoke registration of a trade mark if satisfied that:· the trade mark should not have been registered; and
· it is reasonable to revoke the registration, taking account of all the circumstances.Section 41
Your trade mark is GLASS SKIN REFINING SERUM.GLASS SKIN is a term in common use for exceptionally smooth, even-toned and lustrous skin that’s so flawless it has the appearance of glass.
The word REFINE is defined in the Macquarie Dictionary as: "verb (refined, refining) –verb (t) 1. to bring to a fine or a pure state; free from impurities: to refine metal; to refine sugar; to refine petroleum. 2. to purify from what is coarse, vulgar, or debasing; make elegant or cultured. 3. to bring by purifying, as to a finer state or form."
The word SERUM is a reference to cosmetic preparations.
The combination GLASS SKIN REFINING SERUM indicates that your goods are for use as a refining serum to achieve/enhance the appearance of glass skin. Other traders should be able to use GLASS SKIN REFINING SERUM in connection with goods or services similar to yours.
In view of all the circumstances described above a Section 41(4) ground for rejection should have been raised against your mark at examination, and in accordance with the provisions of Section 84A and Section 38 of the Act, the Registrar proposes to:
· revoke registration of your trade mark, and
· revoke acceptance of the trade mark, and· return the application to examination, at which stage an examiner will issue a report on the application raising grounds for rejecting it, with a 15-month extension of time for you to overcome the objection(s).
The Revocation Notice offered the Registrant an opportunity to respond with written submissions and/or request to be heard on the matter. The Registrant did respond with written submissions and evidence on 26 August 2022. However, the Deputy Registrar maintained the intention to revoke in a letter of 14 September 2022. Substantially the same reasons as in the Revocation Notice were provided, with the Deputy Registrar also noting that the Registrant had previously and unsuccessfully filed for the same trade mark for similar goods in International Registration Designating Australia number 2058514 (International Registration number 1504333) (‘IRDA’).[2] Ultimately, on 21 September 2022 the Registrant requested to be heard in accordance with s 84A(5).
[2] An examiner had raised s 41 as a ground for rejection in respect of the IRDA and the Registrant did not overcome these issues, nor did the Registrant request to be heard. The IRDA lapsed on 26 July 2021, a few days after the Registrant applied for the Trade Mark.
I have been allocated the matter to decide as a delegate of the Registrar of Trade Marks. The Registrant elected to not appear and provided written submissions only. On 3 November 2022 the Registrant requested until 4 February 2023 to file evidence and submissions. I granted this request. However, the Registrant filed submissions and evidence on 4 November 2022 and did not provide any further evidence or submissions.
Summary of Evidence and submissions
The Registrant provided written submissions together with a declaration dated 4 November 2022 of Clinton Priddle, Attorney for the Registrant (‘Declaration’).
The Declaration had six attached exhibits outlined below:
· Exhibit CP-1 – dated Wayback Machine screenshots taken showing the Registrant’s website in 2018, 2019, 2020 and 2021, and a screenshot taken directly of the Registrant’s website dated 23 August 2022.
· Exhibit CP-2 – screenshots taken 23 August 2022 of the Registrant’s PEACH & LILY Facebook and Instagram pages.
· Exhibit CP-3 – screenshots taken 23 August 2022 of various websites selling or mentioning Designated Goods bearing the Trade Mark. There are also a number of websites referring to goods sold by the Registrant, some dated before and others after the Relevant Date.
· Exhibit CP-4 – screenshots taken 24 August 2022 of a Google search for the words ‘glass skin refining serum’, showing the first 5 pages of results.
· Exhibit CP-5 – extracts showing the extension of protection of the Trade Mark in New Zealand, Canada, United Kingdom, Mexico and Israel.
· Exhibit CP-6 – an extract appearing to show Google search interest in the term ‘glass skin’ in Australia. The results displayed appear to be from June 2021 to October 2022, with comparative reference to interest in the term ‘hyaluronic acid’.
Legal framework
Section 84A relevantly provides:
84A Registration may be revoked
Power to revoke
(1) The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
(a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the registration, taking account of all the circumstances.
(2) The circumstances to be taken into account under paragraph (1)(a) include the following:
(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international agreement;
(c) any special circumstances making it appropriate:
(i) not to register the trade mark; or
(ii) to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
(3) The circumstances to be taken into account under paragraph (1)(b) include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;
(c) other action taken in relation to the trade mark as a registered trade mark;
(d) any special circumstances making it appropriate:
(i) to revoke the registration; or
(ii) not to revoke the registration.
Note: For use of a trade mark see section 6.
Section 41 relevantly provides:
41Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Discussion
Whether the Trade Mark should have been registered
I first must decide whether the Trade Mark should not have been registered taking account of all the circumstances that existed when the Trade Mark became registered (whether or not the Registrar knew then of their existence). Section 84A(2)(a) provides that a relevant circumstance includes any error or omission that led directly or indirectly to the registration of the Trade Mark.
The Deputy Registrar identified s 41 as a ground for rejection that should have been raised. From the examination worksheet on the file, it appears the examiner did consider the possibility of a s 41 ground for rejection. However, they did not raise s 41 as a ground for rejection and considered the Trade Mark as prima facie capable of distinguishing the Designated Goods. Therefore, the Registrant asserts that this matter concerns simply a change of opinion and not an ‘error or omission’. This argument unravels when one considers that errors in the application of the Act do occur and those are the very scenarios s 84A(2)(a) intends to cover. An examiner may, upon considering the established legal tests and requirements of the relevant sections of the Act, nevertheless reach an incorrect conclusion and fall into error. Section 84A(2)(a) was intended to cover as much.[3]
[3] Mt Shadwell Pty Ltd [2018] ATMO 25, [20] (‘Mt Shadwell’).
In deciding whether the Trade Mark should not have been registered, I must engage with any relevant grounds for rejection in the Act, including s 41. The question here is whether a ground for rejection existed under s 41 such that the Trade Mark should not have been registered.
Section 41
If I am satisfied that the Trade Mark is not capable of distinguishing the Designated Goods from those of other persons, s 41 requires that the Trade Mark be rejected. Relevant to this assessment is whether the Trade Mark has ‘inherent adaptation’ to distinguish. If the Trade Mark has ‘sufficient inherent adaptation to distinguish’ the Designated Goods, then a s 41 ground for rejection does not exist. However, if I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Designated Goods, the next question will be whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that at the Relevant Date it did not in fact distinguish the Designated Goods based on the extent of the Registrant’s use.[4] If the Trade Mark has some inherent adaptation to distinguish, it should be rejected only if I am satisfied that, even after considering the level of inherent adaptation of the Trade Mark, the extent of the Registrant’s use of the Trade Mark, and other relevant circumstances, the Trade Mark did not or would not distinguish the Designated Goods.[5]
[4] Section 41(3).
[5] Section 41(4).
In deciding a trade mark’s inherent capacity to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks explained:
[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] (1964) 111 CLR 511, 514, cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).
The majority in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’) held:
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[7]
Ordinary signification
[7] Cantarella (n 6) [59].
The signification which the words forming the Trade Mark ‘ordinarily possess’ (‘ordinary signification’), is the ordinary meaning of the words to people in Australia who purchase, consume and trade in the Designated Goods (‘Relevant Persons’).[8] All Designated Goods are class 3 goods relating to skin, each of which having within its bounds cosmetic and other skin preparations intended to achieve beauty, health and a pleasing appearance of one’s skin.
[8] Ibid [70].
The words ‘glass skin’ have a meaning which speaks to the clarity, smoothness and overall beauty in the appearance of skin. The words are similar in meaning and effect to the words ‘porcelain skin’. The Macquarie Dictionary includes an entry for the term ‘glass skin’ defining it as, ‘a clear, luminous complexion’, this entry is before the Relevant Date.[9] Therefore, the term has a laudatory operation regarding skin or for products for skin. The verb ‘refine’ is defined in the Macquarie Dictionary as meaning, ‘to purify from what is coarse, vulgar or debasing; make elegant or cultured’ and ‘to bring by purifying, as to a finer state or form’.[10] The word ‘serum’ is a word that refers to a cosmetic or other treatment for skin. Indeed, ‘serums’ are even referenced in the list of Designated Goods. The Registrant’s own evidence suggests that the words, ‘refining serum’ and ‘glass skin’ are likely to be used by traders in relation to their skin related goods and have a relevant ordinary signification. At Exhibit CP-3 these words are used variously in exhibited articles in a descriptive sense to refer to the Designated Goods, introducing the product of the Registrant, explaining the meaning of the words ‘glass skin’ and in describing the effects of use of the Designated Goods in that respect; for example, one article is titled ‘The $55 Serum That Beauty Gurus Swear by for Glass Skin’. Another article refers to the Designated Goods in a comparative sense, with the title ‘Get a free mini bottle of this No. 1 best selling “glass skin” serum that sells every 3 minutes’, which suggests that other traders do in fact sell competing glass skin serums. The Registrant’s own use in the evidence specifies that the Designated Goods, will ‘hydrate’, ‘improve’ and ‘firm’, resulting in ‘glass skin’.[11] All these functions are aptly summed up by the verb ‘refine’ or, in its extension, the word ‘refining’.
[9] Macquarie Dictionary (8e, Macquarie Dictionary Publishers, 2020) 655, ‘glass skin’. See also, Macquarie Dictionary (online at 22 December 2022) ‘glass skin’.
[10] Macquarie Dictionary (8e, Macquarie Dictionary Publishers, 2020) 1282, ‘refine’; Macquarie Dictionary (online at 22 December 2022) ‘refine’ (definitions 2 and 3).
[11] Declaration, Exhibit CP-1.
Whilst I have considered the dictionary meanings of the relevant words, the dictionary meanings merely confirm a clear overall ordinary signification. Regardless, I also consider it likely that Relevant Persons would perceive these words as bearing the ordinary signification. The ordinary signification is not one which would for example, ‘fail to spring unaided to the mind of the relevant Australian consumers or traders’.[12] The Registrant asserts that the Trade Mark is a ‘covert and skillful allusion’.[13] I cannot agree with that assessment. Unlike ‘Post Without The Office’,[14] which had a somewhat opaque ordinary signification,[15] little to no amount of mental effort would be required for the ordinary consumer of the Designated Goods to readily perceive the signification of these words as I have described.
[12] ATP Institute Pty Ltd [2018] ATMO 94, [18].
[13] Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190, 201 (Williams J).
[14] Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42.
[15] Ibid [27].
As a totality, the ordinary signification of the words of the Trade Mark is that the products are used to bring about a clear, luminous complexion (glass skin) in the form of a cosmetic preparation (refining serum). This is a direct reference to the kind, quality, intended purpose or some other characteristic of the Designated Goods.[16] The Registrant’s own evidence confirms this intended purpose where exhibited articles regarding the Designed Goods of the Registrant describe them as being, ‘for glass skin’. I am satisfied that a sufficient number of Relevant Persons are likely to receive the words ‘Glass Skin Refining Serum’ as referring to the Designated Goods and their intended use.
Desire of other traders to legitimately use the Trade Mark
[16] Section 41, Note 1. I am mindful of the comments made in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [29]-[30] (Wilcox J) clarifying that this note is not of legislative force, though is indicative of judicial precedent.
The second limb of the test for s 41, as explained in Cantarella, requires me to consider whether other traders, operating without improper motives, would desire to use the Trade Mark, or some trade mark nearly resembling it, for that sake of its ordinary signification:
Often the answer to the first question, i.e., what is the ordinary signification of the word mark will provide the answer to the second question, i.e., is it the case that other traders might legitimately need to use the mark in respect of their goods. Sometimes the issues will be relatively clear and little evidence will be required. Burger King appears to be such a case (see Gibbs J at 425). In other cases, evidence might be called on the issue of the ordinary signification of the word mark as happened in Faulding. Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question (Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse v Fry Consulting”) at 543-544 [102] per Kenny J), but would be considered in light of all of the evidence in the case.[17]
[17] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [126] (Besanko, Jagot and Edelman JJ).
Submissions were made about the apparent level of aptness of Trade Mark to describe the Designated Goods.[18] I do not agree with these submissions. I view the words as apt to describe the Designated Goods and this is demonstrated by the Registrant’s evidence. The Registrant also relies on a comparison between the Google Trends results for searches of the words ‘hyaluronic acid’ and ‘glass skin’, which showed the words ‘hyaluronic acid’ are more common. I do not agree this data provides assists the Registrant’s position or overrides the aptness of the words of the Trade Mark to describe the Designated Goods. I add that it is not a requirement that words be the ‘most apt’, for a s 41 ground for rejection to be on sure ground.
[18] Registrant’s submissions, [30].
The popularity of the use of terms is not dispositive and uncommonness does not dislodge the fact that an ordinary signification exists. Evidence that a term is commonly used can assist in identifying the descriptive nature of a sign. In its submissions the Registrant focused on the words ‘common use’, used in the Revocation Notice. However, the Trade Mark need not be in ‘common use’ for a s 41 ground for rejection to be established. Even where there is little to no actual use by other traders, the core question concerns the ordinary signification and the likelihood of other honest traders desiring use for the sake of its ordinary signification. Such evidence assists regarding the likelihood of other persons being desirous of use, though its absence by no means rules out the possibility or probability of such desires.
I am satisfied that other traders are likely to have a legitimate desire to make use of the Trade Mark or some trade mark nearly resembling it for the sake of the ordinary signification I have described. It likely that other traders would desire to use words nearly resembling the Trade Mark to describe their skin preparations as being refining serums which achieve the appearance of ‘glass skin’. The desirability to use such words is evident from the very descriptiveness of the words constituting the Trade Mark. Accordingly, the Trade Mark falls for consideration under s 41(3).
Evidence of use relating to s 41(3)
I must now consider whether, at the Relevant Date, the Trade Mark in fact did distinguish the Designated Goods, based on the extent of the Registrant’s use. The Registrant provided evidence of use of the Trade Mark in relation to the Designated Goods. However, not all uses are relevant in the assessment of evidence; use by itself does not ‘equal distinctiveness’.[19] To be relevant, a use must be use ‘as a trade mark’; that is, it must be use as a ‘badge of origin’ as opposed to use which describes the Designated Goods.[20] Any use which is not use as a trade mark will not assist the Registrant’s position.
[19] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 302 (Jacob J).
[20] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 (Black CJ, Sundberg and Finkelstein JJ).
The Trade Mark as it appears in the evidence would be interpreted as describing the Designated Goods rather than operating as a badge of origin. Even if this was all taken to be evidence of use as a trade mark, as will be seen, it would not overcome the ground of rejection. In considering the extent of an applicant’s use the task will often begin with sales figures and volume of goods sold in relation to the trade mark. The solitary overall Australian sales figure provided covers sales since March 2020 without an end date, so most likely until the date of the Declaration, being 4 November 2022. As I am considering this issue under s 41(3), only sales occurring before the Relevant Date are relevant. Because the evidence provides only an overall sales figure since March 2020, it is impossible to determine what sales within that overall figure occurred before the Relevant Date. At any rate, the actual figure falls short when considering the extent of historical use that is normally required to show that a trade mark with no inherent adaptation to distinguish, distinguished in fact at the Relevant Date. Additionally, no evidence was provided regarding the volume of Designated Goods sold in Australia or their retail price in relation to the sales figures provided. The Declaration is made by an attorney and not by an employee of the Registrant, who would have a more complete and direct understanding and knowledge of the sales information. No clear indication is otherwise provided about the source of the information in the Declaration. Overall, the evidence of sales figures, regarding the extent of Registrant’s use of the Trade Mark is insufficient.
The evidence has numerous other deficiencies. Exhibit CP-1 shows uses of the Trade Mark on what appears to be a US website in 2018, 2019, 2020, 2021 and 2022, directed at the US market. No evidence of the website targeting Australian consumers is provided. Whilst the Declaration refers to 1903 reviews from consumers of the Designated Goods, there is no evidence about whether these reviews relate significantly to Australian sales. Some, though not all, material also appears to be dated after the Relevant Date. The Exhibit CP-2 material concerns the Registrant’s social media activities. This evidence does not clearly show how much of the Registrant’s social media audience is Australian. Such evidence also does not greatly assist as it concerns the Registrant itself and various other purported trade marks, rather than exclusively or predominantly the Trade Mark. Whilst Exhibit CP-3 demonstrates use of the Trade Mark on some Australian websites, most appears to be on overseas websites or is dated after the Relevant Date. None of the evidence shows the number of unique visitors for the various websites. Exhibit CP-4, which concerns Google search results, is of limited assistance as the material is dated after the Relevant Date. Regardless, that searches for ‘glass skin’ have yielded results referring to the Registrant is not necessarily dispositive of the issue. The first use of the Trade Mark by the Registrant is not clear from the evidence; and the period of use that is shown is not lengthy, considering the lack of inherent adaptation to distinguish. Further, the sales figures are not so great as to compensate for this moderate length of time of the Registrant’s use.
After consideration of the evidence, I find that it would not overcome the s 41 ground for rejection. I am satisfied that Trade Mark should not have been accepted and registered without evidence of use and on the evidence before me that s 41(3) would not be satisfied. Had it not been for this error, the Trade Mark would not have been registered. Accordingly, the scenario mentioned in s 84A(2)(a) has been demonstrated. Therefore, the discussion now proceeds to the issue of the reasonableness of revocation of registration.
Reasonableness of revocation of the Trade Mark in all the circumstances
The Registrar must consider all of the circumstances before it when determining if it is reasonable to revoke registration.[21] Section 84A(3) sets out a non-exhaustive list of circumstances that may be considered. These circumstances include any use that has been made of the Trade Mark, that there are any current or past legal proceedings, other actions taken in relation to the Trade Mark as a registered trade mark, and any special circumstances making it appropriate to revoke or not revoke registration.
[21] Explanatory Memorandum, The Intellectual Property Laws Amendment Bill 2006 (Cth) sch 1, [35].
The Registrant has in summary asserted the following circumstances as relevant to the question of reasonableness:
(1)That the decision to revoke concerns a minor difference in opinion that ‘reasonable minds may differ’ on the question of an error in relation to s 41.
(2)The Registrant’s use of the Trade Mark. It asserts this use is ‘beyond merely bona-fide use’ and is ‘significant use’, based on the direct sales figure provided.
(3)That various registrations have occurred in other jurisdictions.
The relevant circumstances I have been referred to consist mainly of the alleged use of the Trade Mark in relation to various skin and cosmetic preparations, which has occurred leading up to and after the Relevant Date. However, the nature of the error that led to registration as well as the strength of any relevant grounds for rejection which was not raised will also be relevant. In this instance, I consider the strength of the ground for rejection which should have been raised to be toward the upper reaches of s 41. In summary, I am satisfied that the Trade Mark has no inherent adaptation, and that it did not in fact distinguish the Designated Goods based on the extent of its use at the Relevant Date – this is a relatively strong ground and weighs in favour of revocation.
I consider the public interest as a relevant consideration that goes to the reasonableness. There is a public interest for traders to have available a vocabulary of signs to facilitate communication about their goods.[22] Also of weight is the public interest in ensuring that the Register only maintains registration of valid trade marks,[23] this may even be in the interest of the Registrant itself.[24] Whilst there has been no opposition or third party intervention regarding the Trade Mark, the public interest remains relevant to this decision since other traders cannot always be relied upon to challenge decisions of the Registrar where an error has been made.
[22] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, [65] (Lindgren J). See also, Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
[23] Woolworths Limited v BP plc (No 2) [2006] FCAFC 132 [156] (Heerey, Allsop and Young JJ).
[24] Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 (Burley J), cited in Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd [2021] FCA 1399 [189] (Bromwich J). See also, Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010) 240 CLR 590, [20] (French CJ, Gummow, Heydon and Bell JJ).
Any use of the Trade Mark will be relevant[25] and use of the Trade Mark will carry significant weight for deciding the reasonableness of revocation of registration.[26] However, the most relevant uses will be those amounting to use as a trade mark. That is, uses as a ‘badge of origin’ and ‘in the course of trade’ upon or in relation to the Designated Goods. Therefore, any use which is not use as a trade mark is less relevant to this matter. However, the use for the purposes of answering the question concerning reasonableness under s 84A need not be of such a level so as to overcome a s 41 ground for rejection.[27]
[25] Section 84A(3)(a).
[26] Mr Lorne Bobart [2010] ATMO 43, [56] (‘Bobart’).
[27] Mt Shadwell (n 3) [30].
A relevant consideration will be investment, sales and other actions the Registrant has taken in relation to the Trade Mark as a registered trade mark.[28] The evidence shows little specificity in terms of sales volume and is for only a short period of time. There is no information about sales numbers within Australia from the apparent US based websites. The origins of any reviews for sales mentioned on the various websites is also unclear. There is also no information about Australian sales numbers demarcated. All that is provided is a bare assertation of a total figure for sales for the period between the March 2020 and the Declaration
[28] Section 84A(3)(c).
Another important consideration is the fact that the use of the Trade Mark that is evidenced demonstrates descriptive use, and not use as a trade mark. This weighs in favour of it being reasonable to revoke. That the type of evidence of use provided is not use as a trade mark also significantly weakens an assertion that property rights would be adversely affected should the registration now become a nullity. The Act does contemplate the accrual of property rights even where a trade mark has insufficient adaptation to distinguish in some instances where there is evidence of use as a trade mark. However, there are little if any valid property rights likely extant in words which have little to no capacity distinguish and concomitantly there has been no use of such by a purported owner as a badge of origin. The use that is shown does not confirm or consolidate existing rights and the use is not extensive or at least so significant that it would be unreasonable to revoke.[29]
[29] Bobart (n 26) [56].
Revocation of registration may be an inconvenience to the Registrant and that should also always be seriously considered when deciding the question at hand. The Registrant claims to have structured its business affairs in reliance upon the registration of the Trade Mark as an indication the registered rights are subsisting and they claim their website is evidence of their ‘flagship product’ being the Trade Mark. However, no evidence of the specifics of the post-registration structuring has been provided. The Registrant has not provided detail about what specific actions it took as a result of the purported grant of rights. The Registrant asserts a difficulty in determining exact Australian sales during that period and does not present any evidence in that regard. The Declaration consists of almost only bare assertions of inconvenience and is made by an Attorney, not an officer of the Registrant itself. The period of time between entry on the Register and the issue of the Revocation Notice was a matter of five months. The experience with the IRDA was demonstrative of the issues the Registrant would likely face in the application for the Trade Mark. I have considered the activities of the Registrant in terms of sales before and after the registration, as well as before and after the issue of the Revocation Notice. The evidence before me in that regard does not strongly weigh against it being reasonable to revoke registration.
Where a reputation in the subject trade mark has developed I am mindful that this could be a factor I must weigh. However, there is no strong evidence of a reputation here. The Google Trends data in Exhibit CP-6 also does not support the case for the Registrant regarding reasonableness. The fact that searches generally appear to be conducted alongside the Registrant’s name does not necessarily assist the Registrant in demonstrating a reputation such that it would not be reasonable to revoke. To the extent that such evidence would be relevant, it is also equally and potentially evidence of the Registrant’s own name being the known brand, with consumers viewing the Trade Mark as a description of the goods. The other evidence also does not support any reputation which would relevantly impact the question of reasonableness to revoke registration.
The Registrant has noted its registrations in overseas jurisdictions in New Zealand, Canada, United Kingdom, Mexico and Israel as relevant to the question of reasonableness. However, no detail has been provided about the specific relevance of these registrations or any adverse impact to the Registrant should revocation of registration follow. I am mindful that traders operating across jurisdictions often do so by economies of scale; a rebranding or re-packaging might be an inconvenience and cause costs. It is trite that these jurisdictions have different requirements and legislative machinery for registration of trade marks, and differences in language, compared with Australia. The IRDA was the subject of a s 41 ground for rejection which was not overcome. The application for the Trade Mark was filed only days before the IRDA seeking protection of the same mark lapsed in Australia. Overall, the s 41 ground for rejection is unsurprising, with the s 41 having been raised for the IRDA and not overcome. The overseas registrations do not weigh heavily, if at all, against the reasonableness of revocation.
I have carefully considered the relevant factors in this matter. I have balanced the seriousness of the error leading to acceptance and registration, the nature and extent of use of the Trade Mark, and the other surrounding circumstances. I have carefully considered all of evidence and submissions made by the Registrant. I am aware that decisions made under this section of the Act are not common and great caution is required in the exercise of this power.[30] I am aware that instances are very rare where there has been a hearing before a delegate of this office and it has resulted in a revocation being reasonable, even where the trade mark should not have been registered.
[30] Mt Shadwell (n 3) [14] and Bobart (n 26) [18]-[20].
In the context of the established intent of s 84A, weighing all the relevant material and considerations, I am satisfied that it is reasonable in the circumstances for the Registrar to revoke registration of the Trade Mark. For the same reasons I am also satisfied that the Trade Mark should not have been accepted and it is reasonable to revoke acceptance of the Trade Mark.
Decision
By s 84C the effect of revocation of registration of the Trade Mark is that the Act will apply as if registration did not take place. This will also be the case if the Registrar revokes the acceptance of the application after the revocation of registration.[31] Section 84C(5) also provides that the Registrar may, but need not, examine the application again under section 31 before rejecting the application.[32] As I am satisfied that it is reasonable to revoke the registration and acceptance of the Trade Mark, I exercise the power under ss 84A and 38 to revoke registration and acceptance respectively. I direct that the Trade Mark application be returned to examination.
[31] Section 84C(5).
[32] This has effect despite paragraph 38(2)(b) which provides if revocation of acceptance takes place, the Registrar must examine the trade mark under s 31.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
21 April 2023
0
15
0