Provendex Pty Ltd v L'Oreal
[2023] ATMO 67
•26 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Provendex Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by L'Oreal for removal of trade mark number 1730428 (class 3) – ÉLIVE THERAPEUTIC PAMPERING (figurative) – in the name of Provendex Pty Ltd
Delegate: | Nicholas Barbey |
Representation: | Opponent: Lucy Davis of counsel instructed by By George Legal Applicant: Megan Evetts of counsel instructed by Spruson & Ferguson |
Decision: | 2023 ATMO 67 Trade Marks Act 1995 (Cth) – application under section 92 – partial removal sought – evidence shows use of the trade mark in relation to a subset of goods during the relevant period – no obstacle to use – discretion exercised in relation to some goods – registration to be partially removed. |
Background
Provendex Pty Ltd (‘Opponent’) is the owner of the following Australian trade mark registration (‘Registration’):
Trade Mark: (‘Trade Mark’)
Application no.: 1730428
Filing Date: 26 October 2015
Specification: Class 3: perfumes, toilet waters; bath and shower gels and salts for non-medical use; toilet soaps; body deodorants; cosmetics, particularly face, body and hand creams, milks, lotions, gels and powders; tanning and after-sun milks, gels and oils (cosmetics); make-up products; Facial scrubs and/or body scrubs; shampoos; gels, foams, balms and aerosol products for hair care and hair styling; hair sprays; hair dyes and bleaching products; hair waving and setting products; essential oils for personal use; cloth or clothing impregnated with essential oils
(‘Registered Goods’)
On 24 November 2020, L'Oreal (‘Applicant’) filed a non-use application based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking partial removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’). The non-use application sought removal of all the Registered Goods except for ‘cloth or clothing impregnated with essential oils’. In the discussion which follows, the goods sought to be removed will be referred to as the ‘Disputed Goods’.[1]
[1] For the avoidance of doubt, the Registered Goods are reproduced in Annexure A to this decision with the Disputed Goods depicted in strikethrough.
The Opponent filed a notice of intention to oppose the non-use application followed by a Statement of Grounds and Particulars (‘SGP’). In response, the Applicant filed a notice of intention to defend the non-use application.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). The Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 10 February 2023 (‘Opponent’s Submissions’) and by the Applicant on 17 February 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 24 February 2023. Lucy Davis of counsel presented submissions on behalf of the Opponent and Megan Evetts of counsel presented submissions on the Applicant’s behalf.
This matter was heard concurrently with oppositions to the removal of Australian trade mark registration 746761 and to the registration of Australian trade mark application 2077385 involving the same parties (‘Other Oppositions’). For clarity, a separate decision has been issued for each matter.
Legal framework
Section 92 of the Act relevantly provides:
Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
…
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Relevant period and onus
The non-use application was filed on 24 November 2020 and complies with s 93(2) of the Act.[2] Pursuant to s 92(4)(b) of the Act, the period in which the Opponent must establish use of the Trade Mark in Australia in good faith is the 3 year period ending on 24 October 2020 (‘Relevant Period’).
[2] See Act s 93(2) prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3. The amended s 93(2) applies to trade mark applications filed from 24 February 2019 onwards.
The onus rests on the Opponent to rebut the non-use allegation.[3] The Registrar retains the discretion to remove the Trade Mark from the Register in respect of any, or all, of the goods for which partial removal has been sought. If satisfied that it is reasonable to do so, the Registrar may decline to remove the Trade Mark from the Register even if the grounds on which the
non-use application was made have been established.[4][3] Act s 100(1)(c).
[4] Ibid s 101(3).
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities.[5]
[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) in respect of oppositions under s 52 of the Act.
Evidence
The following declarations were filed:
| EIS |
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| EIA |
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| EIR |
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EIS
According to Dunbar 1, the Opponent has been selling skincare and cosmetic products under the brand ‘RÉVIVE THERAPEUTIC PAMPERING’ since at least November 2014. At the time of making the application for registration, the Opponent’s intention was to use the Trade Mark alongside the ‘RÉVIVE’ branding.
In around November 2019, the Opponent commenced using the Trade Mark in Australia. Mr Dunbar explains that the Registered Goods have been sold by reference to the Trade Mark via third party retailers. He also declares that, since at least February 2020, the Opponent ‘has promoted and continues to promote the [Registered] Goods by reference to the [Trade Mark] on its official website, accessible at Mr Dunbar estimates that there are 400 to 500 third party retailers which stock products branded with the Trade Mark throughout Australia. Annexed to Dunbar 1 are dated examples, obtained from an internet archiving service, which show the Trade Mark being used during the Relevant Period.
[6] Dunbar 1, [14], [16].
Dunbar 1 states that the Opponent ‘is in the process of rebranding all if [sic] the products which it currently sells under the RÉVIVE Branding to the [Trade Mark], as it wishes to adopt a singular brand across its entire product range’.[7] In short, the Opponent has ‘moved to using the [Trade Mark] as its primary branding’.[8] Dunbar 1 mentions the impending launch of a new website accessible at and lists new products which are intended to be released later in 2021. These new products include various body lotions, creams and scrubs. Mr Dunbar notes that the release of these new products under the Trade Mark has been hampered by supply issues arising from the COVID-19 pandemic.
[7] Ibid [18].
[8] Ibid [18(b)].
Dunbar 1 also details products that the Opponent ‘is currently in the process of developing’ and ‘which will be branded with the [Trade Mark] when released to market’.[9] Specifically, Mr Dunbar emphasises that ‘the research and development phase’ of these products occurred during the Relevant Period and it ‘typically takes a number of years to develop a new beauty care product which is ready for market release’.[10] The products under development include face creams, toner and oils. The Opponent expects that they will be released ‘in the Australian market in the first half of 2022’.[11]
[9] Ibid [21].
[10] Ibid [22].
[11] Ibid [23].
Dunbar 1 acknowledges that the representatives of the Opponent and the Applicant have exchanged correspondence concerning the Other Oppositions. Mr Dunbar states that the Applicant has not mentioned that any of the Opponent’s trade marks ‘present an obstacle to registration of any relevant trade mark sought by [the Applicant] in Australia’.[12] As such, he is ‘unaware of any plausible commercial motive for [the Applicant] to file the removal action against the [Registration]’.[13]
EIA
[12] Ibid [31].
[13] Ibid.
According to Chalvron 1, the non-use application was filed because the Trade Mark is likely to cause confusion with its ‘ELVIVE’ mark.[14] Annexed to Chalvron 1 are declarations which were filed as evidence in the Other Oppositions. Broadly speaking, these declarations attest to the Applicant having first commenced use of ‘ELVIVE’ in 1997 in the United Kingdom and, since 2007, having continuously used ‘ELVIVE’ in relation to hair care and styling products in Australia. The declarations also discuss perceived similarities between the words ‘ÉLIVE’ and ‘ELVIVE’ and assert that it is common for companies to sell general cosmetic products as well as hair care and styling products under the one brand.[15]
EIR
[14] See Australian trade mark registration 746761 (‘ELVIVE’). This registration is currently subject to a non-use application filed by the Opponent.
[15] Chalvron 2, [32]–[34]; Howe Declaration, [4].
Dunbar 2 states that ‘ÉLIVE’ in the Trade Mark ‘is intended to be pronounced “eh-live”, not “ee-live” with a hard “e” sound’.[16] Mr Dunbar declares that the Trade Mark was created independently of the Applicant’s ‘ELVIVE’ mark. In his view, ‘ÉLIVE’ and ‘ELVIVE’ are dissimilar such that ‘any chance of Australian consumers believing that ÉLIVE is somehow related to or associated with ELVIVE is very minimal’.[17] Mr Dunbar states that he is not aware of any instances of consumer confusion occurring between ÉLIVE and the Applicant’s ‘ELVIVE’ branding in the Australian marketplace.
[16] Dunbar 2, [8].
[17] Ibid [9].
The Grujovski Declaration details the results obtained from various searches of the Register for trade marks containing either an ‘É’ or an ‘Ó’. It also disputes the claim that companies typically provide hair care products together with cosmetics under the one brand. Mr Grujovski declares that he ‘conducted various searches of the websites of leading supermarkets and chemist retailers’ to identify ‘prominent brands used in connection with the sale of hair care and hair styling products in Australia’.[18] The results returned brands such as Pantene, Tresseme, Herbal Essences and Schwarzkopf. Mr Grujovski undertook further searches of the official websites for these brands which revealed each brand was ‘exclusively promoted and used in connection with the sale of hair care and hair styling products, and not in connection with the sale of any cosmetics, make-up, skin care products or body care products’.[19]
[18] Grujovski Declaration, [15].
[19] Ibid [14].
Discussion
The main issue for determination is whether the Opponent (or an authorised user) has used the Trade Mark in Australia in relation to the Disputed Goods during the Relevant Period. If the evidence establishes that the Opponent (or an authorised user) has, then the non-use allegation is taken to have been rebutted and the Trade Mark will remain registered in respect of the Disputed Goods. If the evidence fails to establish use of the Trade Mark for all of the Disputed Goods, then consideration will turn to whether it is reasonable to invoke the Registrar’s discretion to preserve the Trade Mark for any goods for which it has not been used.
The evidence of use required to be demonstrated is ‘use as a trade mark’. That is, the Trade Mark must have been used as a badge of origin.[20] The extent of use required is not onerous and a ‘relatively small amount of use’ may be sufficient to rebut a non-use application.[21] Potentially, a single bona fide use of a trade mark during the relevant period may suffice to prevent removal.[22] However, if reliance is placed on a solitary example of use, it should be established by ‘overwhelmingly convincing proof’.[23]
Use of the Trade Mark during the Relevant Period
[20] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ) wherein it was observed that ‘[u]se “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods’.
[21] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [64] (French CJ, Gummow, Crennan and Bell JJ).
[22] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).
[23] Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).
The Opponent contends that the Trade Mark has been used in relation to gloves, socks and neck wraps that are impregnated with cosmetic and skincare treatments.[24] It further contends that the Trade Mark has been used in relation to hand sanitiser and hand wash during the Relevant Period.[25] In the Opponent’s opinion, there is sufficient evidence to rebut the non-use allegation with respect to the following Disputed Goods: ‘cosmetics, particularly face, body and hand creams, milk, lotions, gels and powders’, ‘essential oils for personal use’, ‘bath and shower gels and salts for non-medicinal use’ and ‘toilet soap’.
[24] Opponent’s Submissions, [30(a)]–[30(c)].
[25] Ibid [30(d)].
In my assessment, the evidence filed supports a finding that the Trade Mark has been used during the Relevant Period in relation to moisturising gloves and moisturising socks. Dunbar 1 contains several examples of the Trade Mark being used in relation to the aforementioned goods during the Relevant Period.[26] These examples are supplemented by multiple invoices which show that the goods were sold during the Relevant Period.[27] As such, the Opponent has established use of the Trade Mark in respect of moisturising gloves and moisturising socks during the Relevant Period. However, for the reasons detailed below, I am not satisfied that the Trade Mark was used in relation neck wraps, hand sanitiser or hand wash during the Relevant Period.
[26] Dunbar 1, Annexure GD-5.
[27] Ibid Annexure GD-9.
As a preliminary observation, the Opponent’s evidence has several limitations. Many examples provided showing use of the Trade Mark are either undated or dated after the Relevant Period and are often conflated with examples of the ‘RÉVIVE’ branding. This material does not assist the Opponent in showing use in the Relevant Period. Similarly, reliance was placed on ‘current extracts’ of websites to illustrate how the Trade Mark was allegedly used during the Relevant Period. The Opponent does so because Mr Dunbar declares that, based on his working knowledge of the Opponent’s business, ‘the goods shown in the [current] extracts’ were sold ‘commencing from a date within the [Relevant Period]’.[28] This amounts to little more than a bare assertion that the current use of the Trade Mark reflects how it was previously used. Plainly, in the absence of dated contemporaneous evidence, this is insufficient to establish that the Trade Mark was used during the Relevant Period. This is especially the case given Dunbar 1 states that only the goods were sold during the Relevant Period and not specifically that the goods were sold in the packaging shown in the ‘current extracts’.
[28] Ibid [17] (emphasis added).
Turning to the specific contentions, the evidence of the Trade Mark use in relation to neck wraps during the Relevant Period consists of a single undated photograph.[29] Mr Dunbar declares that this photograph is ‘representative of the way in which [the Opponent] has presented the packaging of the [Registered Goods]’ since around November 2019.[30] Aside from this photograph, the invoices provided do not refer to any neck wraps being sold nor does the remainder of the evidence contain any relevantly dated examples demonstrating use of the Trade Mark in relation to neck wraps. In these circumstances, I am not satisfied that the Trade Mark was used in relation to neck wraps during the Relevant Period.
[29] Opponent’s Submissions, [30(c)].
[30] Dunbar 1, [11].
As regards to the evidence supporting use in relation to hand sanitiser, my attention was drawn to a ‘current extract’ from Amazon Australia which displays an image of a sanitiser bottle bearing the word ‘élive’ in the same font as that depicted in the Trade Mark.[31] The ‘Product Details’ beneath this image specify the ‘Date First Available’ as being ‘20 August 2020’. In isolation, this extract does not constitute convincing proof that the image displayed was present when the product listing was first made available. It is common for images on a listing to be updated to reflect a brand refresh, whilst the product information remains the same. This is particularly relevant given the listing relied on was approximately a year old at the time it was captured and the Opponent was in the process of rebranding. Indeed, Mr Dunbar acknowledges that as part of the Opponent’s rebranding, ‘all product listings on Amazon Australia will be updated to show the relevant products being branded with the [Trade Mark]’.[32] No cogent evidence has been led to confirm that that image displayed in the ‘current extract’ was the same one at the time the product was first listed nor have any hand sanitiser sales been itemised in the invoices provided. The remainder of the evidence is devoid of any other relevantly dated examples to substantiate use of the Trade Mark in respect of hand sanitiser. In the absence of such, I am not satisfied that the Trade Mark was used in relation to hand sanitiser during the Relevant Period.
[31] Ibid Annexure GD-10.
[32] Ibid [18(d)].
With respect to hand wash, reliance was placed on two undated photographs showing the front and back of an antibacterial hand wash bottle bearing the Trade Mark. This bottle is declared to be ‘representative’ of the Opponent’s packaging since around 2019.[33] A significant difficulty with this example is that it constitutes the only example in the entirety of the evidence filed to support use of the Trade Mark in relation to hand wash. Evidently, two undated photographs of the same hand wash bottle are insufficient to establish the Trade Mark was used in relation to such goods during the Relevant Period. To bolster its position, the Opponent referenced a solitary invoice dated 16 February 2020 which itemises the sale of one ‘Elive Antibacterial Hand Wash 500ml (6/ctn)’ product.[34] However, in the absence of contemporaneous dated examples of use, it is not clear on the face of the document that this pertains to use of the Trade Mark and not, for example, the Opponent’s plain word ‘ÉLIVE’ trade mark which forms the subject of Australian trade mark application 2077385. As such, even when the example and this single invoice are considered in combination, it falls short of providing ‘overwhelmingly convincing proof’ that the Trade Mark was used in relation to hand wash during the Relevant Period.
[33] Ibid [11].
[34] Ibid Annexure GD-9.
Accordingly, the evidence filed only establishes that the Opponent has used the Trade Mark in relation to moisturising gloves and moisturising socks during the Relevant Period. I accept that these goods are a form of cosmetics given their purpose is to moisturise and improve the appearance of the hands and feet. The fact that delivery of the cosmetic moisturising treatment is achieved via a glove or sock does not materially alter this characterisation and I agree with the Opponent that these goods are akin to face masks. However, I do not accept that the moisturising gloves and moisturising socks may be reasonably characterised as ‘bath and shower gels and salts for non-medicinal use’ or ‘toilet soap’. In the absence of any cogent submissions or evidence, the mere fact that the moisturising gloves are ‘infused’ with essential oils, whereby essential oils form an ingredient of same, does not mean they can be characterised as an ‘essential oil for personal use’. This is because use of a trade mark should be construed as being in relation to the product itself and does not, by extension, constitute independent use in relation to each ingredient in the product’s composition.[35]
[35] See, eg, Re Spillers Ltd’s Application (1953) 70 RPC.
For completeness, I do not accept the Applicant’s submission that the examples of use should be construed as exclusively demonstrating use in respect of ‘cloth or clothing impregnated with essential oils’, being the goods for which removal is not sought.[36] My reasons for this are twofold. First, whilst these moisturising gloves and moisturising socks are marketed as being ‘infused with intense essential oils’, this alone does not preclude it from being characterised as a cosmetic moisturising treatment. For example, the packaging prominently labels the goods as ‘moisturising gel gloves’ and the accompanying information in the examples confirm that the product’s purpose is to ‘deeply moisturise your skin’ and dispense with the need for hand cream.[37] Second, as a matter of general principle, an example of use may be capable of constituting evidence of use in relation to multiple claims within a broad specification depending on the nature of the items claimed and the example of use provided. For instance, an example of a trade mark used in respect of chocolate cake is equally capable of supporting a claim for ‘cakes’ as it is for a claim of ‘baked goods’.
[36] Applicant’s Submissions, [23].
[37] Dunbar 1, Annexure GD-9.
In light of the above, the evidence establishes that the Opponent has used the Trade Mark has in respect of moisturising gloves and socks, being a subset of the Disputed Goods, during the Relevant Period.
Obstacles to use
The SGP did not particularise that the Opponent sought to rely on any obstacles to use of the Trade Mark during the Relevant Period. Nor did the Opponent’s Submissions explicitly assert the existence of any such obstacles during the Relevant Period. I confirm that there is nothing in the material before me that would establish the existence of an obstacle which prevented use of the Trade Mark in relation to any of the Disputed Goods during the Relevant Period.
Registrar’s discretion
Pursuant to s 101 of the Act, the Registrar retains a broad discretion not to remove an unused trade mark if it is satisfied that it is reasonable to do so. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Federal Court provided the following insights regarding the discretion under s 101(3) of the Act:
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[38]
[38] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
Broadly speaking, the Opponent asserted that the discretion should be exercised to preserve the registration in respect of all the Disputed Goods for the following reasons. First, the Disputed Goods are goods of the same description to ‘cloth or clothing impregnated with essential oils’ when regard is had to the nature, use and trade channels of such goods. Second, the Opponent has a genuine intention to expand its product range as evidenced by its development of new products and consideration should be given to the COVID-19 pandemic which has delayed this expansion. Third, the Trade Mark enjoys a reputation in Australia and removal of the Disputed Goods may cause confusion. Fourth, the Opponent points out that the Applicant has not disclosed any ‘legitimate private interest’ it has in seeking the partial removal of the Trade Mark.
Unsurprisingly, the Applicant contended that the discretion should not be exercised. Emphasis was placed on the fact that the Trade Mark ‘has been registered for over seven years; and, in that time, [the Opponent] has failed to use the mark for almost all of the goods for which the mark is registered’.[39] It also highlighted that the Opponent’s evidence shows that use of the Trade Mark only commenced relatively recently and that such use was in relation to a confined set of goods. The Applicant rejects the assertion that the Trade Mark has acquired a reputation in Australia and points out that alleged delay cause by the COVID-19 pandemic is not supported by any underlying business records. As such, it believes that the failure to use the Trade Mark in respect of almost all of the Disputed Goods should weigh against exercising the discretion in the Opponent’s favour.
[39] Applicant’s Submissions, [33].
There is considerable merit in the submissions advanced by the Applicant. For the reasons discussed earlier in this decision, the evidence establishes that use of the Trade Mark has only been in relation to a confined subset of the Disputed Goods, despite being registered for approximately 5 years as at the filing date of the non-use application. The evidence filed does not provide a sufficient basis to conclude that the Trade Mark enjoyed a reputation in Australia. The confidential annual turnover and advertising expenditure figures for the financial years ending in 2020 and 2021 have not been sufficiently particularised, nor is there any information regarding how or to what extent the Trade Mark has been promoted. I also agree with the Applicant’s contention that the alleged delay caused by the COVID-19 pandemic has not been properly explained and, in the absence of any supporting evidence, amounts to little more than a bare assertion by Mr Dunbar.
Similarly, the evidence of the Opponent’s intention to use the Trade Mark in relation an expanded range of goods is not persuasive. The only evidence which supports an intention to release products later in 2021 is a PowerPoint presentation which is dated April 2021.[40] The Opponent has not provided any details as to the intended audience of this presentation and whether it was even circulated to the public. As such, it does not assist the Opponent. Meanwhile, the evidence of products currently under development consists of two sample testing reports pertaining to baby lotion and barrier cream, both dated in June 2021 and an email exchange between the Opponent and a product development business on 7 September 2017.[41] I do not consider the existence of two sample reports to be persuasive in the context of the Trade Mark having been registered for some 6 years at the time they were received and notably the email exchange does not even mention the Trade Mark or any iterations thereof.
[40] Dunbar 1, Annexure GD-14.
[41] Ibid Annexure GD-15.
I have also considered the Opponent’s argument that the Disputed Goods are at least goods of the same description to ‘cloth or clothing impregnated with essential oils’. While there are varying degrees of merit in the submissions advanced with respect to the Disputed Goods, this factor is merely one consideration in determining if the discretion should be exercised.[42] It is not a determinative factor, rather it may be taken into account when considering the discretion.
[42] See, eg, Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [171]–[173] (Bennett J).
Finally, the established use of the Trade Mark during the Relevant Period in respect moisturising gloves and moisturising socks does not justify the retention of the broad claim for ‘cosmetics, particularly face, body and hand creams, milks, lotions, gels and powders’. Refining the Registered Goods to reflect the actual use shown does not require any fine distinctions to be drawn. Nevertheless, the evidence demonstrates that the Trade Mark has been applied to moisturising neck wraps, albeit such evidence is either undated or post the Relevant Period. I consider that it is reasonable to exercise the discretion to preserve the registration of this item. However, I do not consider that the public interest is served by maintaining the Registration for remainder of the Disputed Goods when the Trade Mark has never been used in relation to same.
Bearing the above in mind, I am satisfied that the discretion may be exercised in relation to moisturising neck wraps but I am not satisfied that it is reasonable to exercise the discretion available under s 101(3) of the Act in favour of the Opponent to allow the Trade Mark to remain on the Register in respect of the remaining Disputed Goods. As such, I decline to exercise the discretion in respect of those goods.
Decision
The ground for removal under s 92(4)(b) of the Act has been established in respect of the Disputed Goods, except for moisturising gloves and moisturising socks. It is reasonable to exercise the discretion in respect of moisturising neck wraps. As such, I direct that trade mark registration 1730428 be partially removed from the Register. The partial removal is to be effected by amending the Registered Goods to:
Class 3:
perfumes, toilet waters; bath and shower gels and salts for non-medical use; toilet soaps; body deodorants;cosmetics being moisturising gloves, moisturising socks and moisturising neck wraps;, particularly face, body and hand creams, milks, lotions, gels and powders; tanning and after-sun milks, gels and oils (cosmetics); make-up products; Facial scrubs and/or body scrubs; shampoos; gels, foams, balms and aerosol products for hair care and hair styling; hair sprays; hair dyes and bleaching products; hair waving and setting products; essential oils for personal use;cloth or clothing impregnated with essential oilsGiven this decision may be appealed, the partial removal shall not take place until at least one month from the date of this decision. In the event of an appeal, the partial removal of trade mark registration 1730428 shall not occur until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.
Costs
Both parties have sought an award of costs. Costs usually follow the event. However, as each party has been partially successful, it is appropriate in this case that each party bears its own costs.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
26 May 2023
Annexure A
Class 3: perfumes, toilet waters; bath and shower gels and salts for non-medical use; toilet soaps; body deodorants; cosmetics, particularly face, body and hand creams, milks, lotions, gels and powders; tanning and after-sun milks, gels and oils (cosmetics); make-up products; Facial scrubs and/or body scrubs; shampoos; gels, foams, balms and aerosol products for hair care and hair styling; hair sprays; hair dyes and bleaching products; hair waving and setting products; essential oils for personal use; cloth or clothing impregnated with essential oils
Key Legal Topics
Areas of Law
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Commercial Law
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Contract Law
Legal Concepts
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Breach
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Contract Formation
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Damages
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Offer and Acceptance
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Reliance
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