Re Opposition by Deanna Campese to registration of trade mark application 1842813 (44) - Lash'd Doll House - in the name of Lash HQ Pty Ltd

[2020] ATMO 99

TRADE MARKS ACT 1995

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

ReOpposition by Deanna Campese to registration of trade mark application 1842813 (44) – LASH’D DOLL HOUSE – in the name of LASH HQ PTY LTD

Delegate:                 Robert Wilson

Representation:       Opponent: Mark My Words Trademark Services Pty Ltd

Applicant: Clifford Gouldson Lawyer

Decision:                   2020 ATMO 99

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – beauty care services closely related to associated goods – mark within a mark – trade marks deceptively similar – registration refused

Background

1. This decision concerns an opposition brought by Deanna Campese (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark detailed below. The application is in the name of LASH HQ PTY LTD (‘the Applicant’):

Application No.:

1842813

Filing Date:

5 May 2017

Specification:

Class 44: Beauty care services; beauty salons; beauty consultation; beauty services, including waxing, brow grooming services, brow and lash tinting services; tanning salon services; provision of artificial pigment-based tanning (tanning services); cosmetic make-up services; cosmetic treatment services; consultancy relating to cosmetics; application of make-up (cosmetic services); application of make-up for special events, including weddings, school formals and photo shoots (cosmetic services); brow grafting (cosmetic services); eyelash grafting services (cosmetic services); services for the care of the skin; mobile cosmetic services
(‘the Applicant’s Services’)

Trade Mark:

LASH’D DOLL HOUSE

(‘the Applicant’s Trade Mark’)

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

3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

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

• Declaration made on 30 November 2018 by the Opponent, with Annexures DC‑01 to DC-19 (‘the Opponent’s declaration’).

5. The Applicant did not file any Evidence in Answer.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party requested a hearing. Neither party filed written submissions. The Opponent’s declaration contains some statements which are in the nature of submissions rather than evidence: these statements will be taken as submissions and referred to as necessary and where appropriate.

7. As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter on the material discussed above.

The Opponent

8. According to the Opponent’s declaration:

I started working in the field of eyelash services and beauty care in or around November 2010, and in January 2011 I established by own business.

My passion for eyelashes prompted me to think of LASH’D as a possible brand for eyelash extension services in or around January 2011.

From at least as early as July 2011, I have provided eyelash extension services as well as various beauty services … as an independent contractor operating out of third party beauty salons. At that time, my formal trading name was ‘Glamour Beauty’, however … I promoted my services under [the] word trade mark LASH’D via my business’ Facebook page …

On 10 June 2016, I filed Australian trade mark application no 1776400 for the trade mark LASH’D in respect of Class 3 beauty products (including false eyelashes) and related implements in class 8. This application was accepted and subsequently registered.

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

Application Number:

1776400

Priority Date:

10 June 2016

Specification:

Class 3: Adhesives for affixing artificial eyelashes; Adhesives for affixing false eyelashes; Artificial eyelashes; Cleansing products for the eyelashes; Cosmetic preparations for eyelashes; Cosmetic products for eyelashes; Cosmetics for eyelashes; Eyelashes; False eyelashes

Class 8: Hand implements for care of the eyelashes (non-electric)

(‘the Opponent’s Goods’)

Trade Mark:

LASH’D (‘the Opponent’s Trade Mark’)

The Applicant

1. There is no information before me from which I might provide a background of the Applicant.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Opponent need establish only one of the nominated grounds of opposition to successfully oppose registration. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 5 May 2017, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

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

Section 44

1. Relevant provisions of the Trade Marks Act 1995 (Cth) are reproduced below:

Section 44 - Identical etc. trade marks

1. …  

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

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

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

   (ii)           a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

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

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. In the SGP, the Opponent nominated the Opponent’s Trade Mark in respect of s 44. To successfully oppose the application pursuant to s 44 the Opponent must establish that the Opponent’s Trade Mark:

   ·     is registered by a person other than the Applicant (‘the first requirement’); and

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

   ·     is in respect of at least some goods which are closely related to the Applicant’s Services (‘the third requirement’); and

   ·     is substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the fourth requirement’).

2. The first and second requirements are clearly satisfied.

The third requirement

1. The Opponent’s Trade Mark is registered in respect of goods in Classes 3 and 8, whereas the specification of the application is for services in Class 44. In Qantas Airways Limited and Edwards, Yates J referred to a 1979 paper by the then Registrar of Trade Marks and Designs, Mr F J Smith, which was published just prior to amendments of the Trade Marks Act 1955 which introduced service mark protection and the concept of closely related goods and services to Australia for the first time.[4] Mr Smith gave a number of examples of where conflict between competing trade marks for goods and services might arise. Amongst the examples provided were cosmetics and beauty salon services.

   [4] [2016] FCA 729, [109]–[110].

2. The Opponent submitted:

   Based on my experience working in the beauty industry and in the lash extension industry, I consider there to be a close connection between the services claimed by the Applicant … and the beauty products and related implements which are the subject of [the Opponent’s Trade Mark’s registration] … This is because consumers of beauty care services and lash extension services often seek to purchase beauty products from their trusted beauticians and lash technicians. So, for instance, a client seeing a beautician for a facial will often be offered a range of skin care products to purchase from their beautician. Likewise, it is becoming increasingly common for lash technicians to promote and sell false lash products and related products … to their clients.

3. On the basis of Mr Smith’s paper and the Opponent’s submissions—and in the absence of submissions which might persuade me otherwise—I am satisfied that the Opponent’s Goods are closely related to the Applicant’s Services.

The fourth requirement

Deceptively Similar?

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

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] [1963] HCA 66, [13].

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

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

   First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[6]

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[7]

   Third, allowance must be made for imperfect recollection.[8]

   Fourth, the effect of the spoken description must be considered.[9]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[11] …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[12]

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[13]

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[14] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[15] [16]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

   [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

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

   [14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

   [15] Ibid [100].

   [16] [2012] FCA 1022, [37]–[46].

3. The Opponent’s Trade Mark is wholly contained within the Applicant’s Trade Mark. This alone is not sufficient to make the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning sufficiently different, from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[17] and JOCKEY vs THROTTLE JOCKEY.[18] This, however, is not the situation here.

   [17] Kingsley v Scott [2011] ATMO 10.

   [18] Jockey International Inc v Wilkinson [2010] ATMO 22.

4. The Applicant’s Trade Mark does not, as a whole, convey a conceptual meaning that is sufficiently different to that conveyed by the Opponent’s Trade Mark. ‘Lash’d doll house’ does not as a group of words convey a conceptual meaning in the same way that SOUL REBELLION or THROTTLE JOCKEY do. There is not, it seems to me, any such thing as a ‘lash’d doll house’. At a stretch, ‘lash’d doll house’ might be taken to mean a doll house which has eyelashes—a seemingly unlikely interpretation. In the absence of evidence and/or submissions which persuade me that this is an obvious interpretation of the Applicant’s Trade Mark, I am of the view that it is not. LASH’D remains, in the Applicant’s Trade Mark, a primary distinctive element and indicator of trade source. For this reason, consumers would be likely, at least, to be caused to wonder whether the trade source of the Opponent’s Goods and the trade source of the Applicant’s Services are one and the same. The trade marks are, therefore, deceptively similar. The Opponent has established this ground of opposition.

Decision

1. Section 55 relevantly provides:

   55Decision

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

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

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

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

   Note:For limitations see section 6.

2. I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As a delegate of the Registrar, I accordingly refuse to register the Applicant’s Trade Mark.

Costs

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

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
4 June 2020