Peach and Lily Inc

Case [2023] ATMO 50

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 acceptance

Background

  1. 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’)

  2. 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).

  3. 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:

    ·…

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Peach and Lily Inc [2023] ATMO 50
Case
[2023] ATMO 50
Decision Date

CaseChat Overview and Summary

This matter concerned an application by Peach and Lily Inc. (the Registrant) to revoke the registration of a trade mark. The decision was made by Benjamin Goldsworthy, acting as a delegate of the Registrar of Trade Marks. The Registrant elected not to appear at the hearing and provided written submissions and evidence only.

The legal issues before the delegate were whether the trade mark should not have been registered, considering all circumstances existing at the time of registration, and whether it was reasonable to revoke the registration. These considerations were to be made in light of sections 84A and 41 of the relevant legislation, which address the Registrar's power to revoke registration and the criteria for a trade mark's ability to distinguish an applicant's goods or services, respectively.

The delegate considered the evidence provided by the Registrant, including website screenshots, social media pages, and search results related to the term "glass skin." The delegate applied section 84A, which allows for revocation if the trade mark should not have been registered and it is reasonable to do so. The delegate also had regard to section 41, which requires a trade mark to be capable of distinguishing the applicant's goods or services. After weighing the material and considerations, the delegate was satisfied that it was reasonable to revoke the registration of the trade mark.

Consequently, the delegate exercised the power under sections 84A and 38 to revoke both the registration and the acceptance of the trade mark application. The delegate directed that the trade mark application be returned to examination.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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 revokedPower 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.

Decision

Reasons for decision

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 GoldsworthyHearing OfficerOppositions and HearingsTrade Marks and Designs21 April 2023

Ratio Decidendi

Legal Principle Established

Section 84A relevantly provides:84A Registration may be revokedPower 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