Peter Cracknell v Revlon Consumer Products Corporation
[2012] ATMO 70
•17 August 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Peter Cracknell to application under section 92 of the Act by Revlon Consumer Products Corporation to remove trade mark number 1041514(3) - Customeyes & Lips – registered in the name of The WOW Factor-e Pty Ltd
Delegate: Iain Thompson Representation: Opponent: Did not appear – written submissions
Applicant: Margaret Ryan of Philips Ormonde FitzpatrickDecision: 2012 ATMO 70
s92 opposition – opponent’s evidence establishes use during the relevant period – application for removal unsuccessful.Background
On 9 December 2010, Revlon Consumer Products Corporation (‘the applicant’) made application under section 92 of the Trade Marks Act 1995 (‘the Act’) for the removal from the register of trade marks of the trade mark subject of the registration detailed hereunder:
Registration No: 1041514
Owner: The WOW Factor-e Pty Ltd
Registration Date: 13 February 2005
Goods: Class 3: Cosmetics, colour cosmetics, bath and body related products
Trade Mark: Customeyes & Lips(‘the trade mark’)
The application for removal was made under subsection 92(4)(b) of the Act in respect of all of the goods the subject of the registration. The non-use period is 9 November 2007 to 9 November 2010 (‘the relevant period’).
On 21 February 2011, Peter Cracknell, (‘the opponent’) filed notice of opposition to the removal of the trade mark.
Both the opponent and applicant have served and filed evidence as allowed by the Trade Marks Regulations 1995.
The matter came before me, as a delegate of the Registrar of Trade Marks, at a hearing in Melbourne on 18 July 2012. Margaret Ryan, solicitor, of Phillips Ormonde Fitzpatrick, Patent and Trade Marks Attorneys, represented the applicant. The opponent did not appear but relied on written submissions.
In this matter the onus is, in terms of section 100 of the Act, on the opponent to establish to my satisfaction there was at least a single use of the impugned trade mark within the relevant period. In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; [2001] AIPC 91-713; (2001) 51 IPR 149 Drummond J said at [14]:
An application for removal cannot be made on an allegation of almost continuous non-use throughout the whole of the three year period: only an allegation of unbroken non-use throughout a continuous period of three years will suffice. If a single user of the mark during that period is sufficient to disentitle a person from making an application for removal based on s 92(4)(b), the opponent must be entitled by s 100(3)(a) to rebut the allegation on which such a removal application is based by proving a use (in good faith) on just one occasion during the three year period.
The Evidence
It is convenient to observe at the outset that the opponent’s evidence which is claimed to demonstrate use of the trade mark during the relevant period was criticised by Ms Ryan at the hearing as:
·not demonstrating the use of the trade mark in the precise form it was registered; and,
·being of low probative value in establishing the dates of use of the trade mark.
The opponent is a part owner of the opponent. He states that ‘the vision’ for the ‘Customeyes & Lips’ trade mark has been to develop a high quality, yet affordable range of cosmetics that allows the end-consumer to make unique selections reflecting their preferences and needs. Products sold under the ‘Customeyes & Lips’ trade mark thereby allow consumers to customise the make up palettes they purchase, rather than accepting a manufacturer's colour combinations. The customer purchases an empty cosmetic compact with magnetic insert. Customers then select specific colours as they require and the individual metal product pans holding their chosen colours, drop into the compact.
The opponent further states:
The WOW Factor-e Pty Ltd finetuned design, development and product sourcing activity and launched the product under the "Customeyes & Lips" trade mark at The WOW Factor-e [shop] in Frankston, Victoria. The trade marked product was initially trialled in early 2010, with a small quantity of product in the same style as was subsequently launched, offered for sale. See copy sales receipts dated 24/1/2010 and 6/3/2010 as examples of sales made of the trade mark product under "Customeyes & Lips" during this trial marketing phase.
A copy of one of these sales receipts appears below:
The opponent states that an A3 sized in-store poster announcing the up-coming arrival of the new product and showing the trade mark was displayed in-store from late April 2010 until the launch of the product in May 2010. Exhibit 5A of the opponent’s declaration shows this poster:
A similar poster was, states the opponent, displayed in-store when the product was launched in May 2010:
The opponent exhibits to his declaration several sales receipts, dated from June 2010 through to November 2010, which are in similar form and content to that shown above at paragraph 10 of this decision.
The applicant’s evidence in answer comprises a statutory declaration by Kristine van Ruiten and a statutory declaration by Russell John Waters.
Ms van Ruiten is a trade marks attorney and private investigator employed by IP Organisers Pty Ltd. Ms van Ruiten states that on 25 February 2011 she downloaded a copy of a website found at using ‘HTTrack Website CopierTM software version 3.43-12.’
Ms van Ruiten further states:
I have since conducted a search of the downloaded website for occurrences of the terms "customeyes" or "custom" using the program Windows Search Companion. As a result of this search I located only two instances of use of these terms, in the term "Custom-Eyes" appearing in the files:
and
files are on the CD-ROM forming Exhibit KvR-1.
Both of these instances relate to the term "Custom-Eyes - Eyeshadows", which appears in a side bar menu on the homepage for the site. Copies of these homepages showing the reference to "Custom-Eyes" are attached to this declaration as Exhibit KvR-2.
Mr Waters is a trade marks attorney and partner of Phillips Ormonde Fitzpatrick. Mr Waters states:
[I] conducted searches of Australian websites using the Google search engine to determine whether the words CUSTOM and CUSTOMISE are commonly used in relation to cosmetics and makeup. Attached hereto and marked Exhibit RJW1 are sample pages obtained using the search terms "custom" and "cosmetics", for which I note there were about 14,700,000 results. Attached hereto and marked Exhibit RJW2 are sample pages obtained using the search terms "custom" and "makeup", for which I note there were about 741,000 results. Attached hereto and marked Exhibit RJW3 are sample pages obtained using the search terms "customise" and "cosmetics", for which I note there were about 815,000 results.
I have also conducted searches using the Google search engine for the term "CUSTOM EYES" in relation to cosmetics and makeup. The majority of results relate to products produced by the applicant or one of its associated companies and sold under the REVLON brand, but the search results reveal that the term is also in use by other traders in the cosmetics field. Attached hereto and marked Exhibit RJW4 are examples of Australian websites featuring the term "CUSTOM EYES" in relation to cosmetic products not associated with the REVLON brand. These include references to:
e.l.f. Essential custom eyes (and Essential custom face) sold on the website;
Gorgeous Cosmetics Custom Eyes Eyeshadow Palette and
Physicians Formula Shimmer Strips Custom Eye Enhancing Gel CreamLiner.
The term "CUSTOM EYES" is also used in other English speaking countries in relation to cosmetic products. Attached hereto and marked Exhibit RJW5 are examples of non-Australian websites featuring the term "CUSTOM EYES" in relation to cosmetic products not associated with the REVLON brand. This includes use of "CUSTOM-EYES" by Avon Inc. in relation to their "Eye Want It Collection"; use of "Custom Eyes" by e.l.f. Cosmetics UK; use by Lamas Beauty, in an article by Peter Lamas entitled The Art of Custom Eyes; use on the website in relation to a "Custom Eyes Kit" and use by CUSTOM-EYES STUDIO and Customeyes Ink in relation to permanent makeup services.
Mr Water’s searches of the Internet were, to judge by the date upon the print-outs, performed on or about 9 November 2011.
Discussion
It is the applicant’s submission that the expression ‘Customeyes’ so lacks in inherent adaptation to distinguish in relation to cosmetics that any alteration to the way that the expression is rendered, such as CustomEyes, or Custom-Eyes, must affect its identity such that its use would not be caught by subsection 7(1) of the Act[1] which provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
[1] See also section 100 of the Act.
Thus, argues the applicant, the rationale in Deckers Outdoor Corporation v B & B McDougal [2006] ATMO 5 (‘Deckers’) applies.
The decision in Deckers was predicated upon a finding that, at the filing date, the words UGG BOOTS, similar to the trade mark there under consideration, completely lacked any inherent adaptation to distinguish the goods. This being the case, the decision to register the trade mark could only have been because of a minor variation from the plain words UGG BOOTS which occurred in that trade mark.
Inherent adaptation may be adjudged according to the tests in, for example, Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 where Kitto J said at 514:
[T]he question whether a mark is adapted to distinguish [is to] 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.
I do not accept that the applicant’s evidence establishes that the expression ‘customeyes’ lacks any inherent adaptation to distinguish. The applicant has found three isolated usages of similar expressions by traders other than the registrant and applicant. These instances post-date by over six years the filing date of registration 1041514 which is the date at which the registrability of the trade mark was assessed.
Further, these instances do not, to my mind, demonstrate that the expression ‘customeyes’ is needed without improper motive in the ordinary course of trade by other traders to use in respect of their cosmetics. In my consideration, the apparently invented word ‘customeyes’ is obviously a pun on word ‘customise’ and while other traders might need to use expressions such as ‘customise your eyes’ or even ‘eye customiser’, it is unlikely that other traders would legitimately require to use the made up word ‘customeyes’.
Accordingly, where the opponent alleges a use of the trade mark ‘CustomEyes & Lips’, in its posters which appear at paragraphs 11 and 12, above, I accept that the opponent is in fact alleging use with alterations or additions not substantially affecting the identity of the registered trade mark ‘Customeyes & Lips’.
Ms Ryan was, at the hearing, quite critical of the probity of the opponent’s evidence and took me through a detailed criticism of each exhibit. When I suggested that a different picture might emerge if the opponent’s evidence was considered as a whole, Ms Ryan stated that she thought that this course was inappropriate. I consider that Ms Ryan could possibly be correct in her submission if the registrant’s use of its trade mark had to be established beyond all reasonable doubt but the standard which applies in these proceedings is that I be satisfied on ‘the balance of probabilities’.
The sales receipts and posters discussed earlier which are relied upon by the opponent, when considered together, suggest that it is improbable that the registrant has not used its trade mark in the form in which it appears on those posters during the relevant period. The receipts carry dates from within the relevant period and definitively tie the opponent’s narrative to the trial of the product followed by the launch of the product in relation to which those posters were respectively displayed and on which the trade mark appears.
I am thus satisfied that the evidence establishes that the trade mark was used at least in relation to cosmetics products by the opponent during the relevant period.
Discretion
Subsections 101(3) and (4) provide:
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4)Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a)similar goods or closely related services; or
(b)similar services or closely related goods;
to those to which the application relates.
The opponent has established the use of its trade mark in relation to ‘cosmetics’. There remains the goods, ‘bath and body related products’ in respect of which the opponent has not demonstrated the use of its trade mark.
The goods ‘bath and body related products’ are, in my consideration, sufficiently similar to ‘cosmetics’ that use by a person other than the registrant of the trade mark Customeyes & Lips in relation to those goods would be deceptive and confusing. Accordingly, no good purpose would be served by directing that the scope of the registration be limited in relation to those goods.
Decision
Section 101 of the Act relevantly provides:
101Determination of opposed application—general
(1)Subject to subsection (3) and to section 102, if:
(a)the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b)the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
I am not satisfied that the grounds on which the application was made have been established.
Costs
Having been successful in this matter the opponent is entitled to his costs which I order against the applicant at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
17 August 2012
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