Re: Opposition by Jetharam Nemaram Gehlot to extension of protection under regulation 17a.33 of the Trade Marks Regulations 1995 of trade mark number 2218465 (International Registration number 1618202) (classes 3

[2024] ATMO 171

TRADE MARKS ACT 1995

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

Re:Opposition by Jetharam Nemaram Gehlot to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2218465 (International Registration number 1618202) (classes 3 & 4) – UTIQUE (composite) - in the name of FM World Sp. z.o.o.

Delegate:

Tracey Berger

Representation:

Opponent: Acumen Intellectual Property

Holder: Pipers Intellectual Property

Decision:

2024 ATMO 171

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – grounds of opposition under ss 42(b), 43, 44, 59 and 60 of the Trade Marks Act 1995 (Cth) considered – no ground established – extension of protection granted

Background

1.     This decision concerns an opposition filed by Jetharam Nemaram Gehlot (‘Opponent’) under Regulation 17A.29 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection to Australia of the trade mark detailed below which is the subject of an International Registration Designating Australia (‘IRDA’) filed by FM World Sp zoo (‘Holder).

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number	Trade Mark	Priority Date	Goods[2]
2218465 (IR 1618202)	(‘Trade Mark’)	2 March 2021	Class 3: Non-medicated cosmetics and toiletry preparations; essential oils and air fragrancing preparations Class 4: Candles for lighting; perfumed candles (‘Holder’s Goods’)

[2] The full specification is shown in Annexure A to this decision.

2.     The IRDA was examined as required by reg 17A.12 and acceptance of the IRDA was advertised on 8 March 2023.  The Opponent filed a Notice of Intention to Oppose the IRDA on 8 May 2023 followed by its Statement of Grounds and Particulars (‘SGP’) on 8 June 2023.  The Holder filed a Notice of Intention to Defend the opposition on 8 August 2023.

3.     The parties proceeded to file their evidence with the Opponent filing its evidence in support of the opposition on 14 November 2023.  After obtaining an extension of time, the Holder filed its evidence in answer on 11 April 2024.  No evidence in reply was filed.

4.     Once the evidence stage ended, the parties were given the opportunity to request a hearing.  Neither party asked to be heard and the Holder requested a decision without a hearing.  This matter has been allocated to me as a delegate of the Registrar of Trade Marks and I make my decision based on the written record of aforementioned materials.

Grounds, onus and Relevant Date

5. The SGP nominated grounds of opposition under ss 42(b), 43, 44, 59 and 60.

6.     The Opponent bears the onus of establishing one or more of the grounds of opposition[3] on the balance of probabilities.[4]  The rights of the parties are assessed at 2 March 2021 being the filing date and priority date of the IRDA (‘Relevant Date’).

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

Evidence

Opponent’s evidence

7.     The Opponent’s evidence consists of a declaration of Michael Adrian Edward Martin, patent and trade mark attorney of Acumen Intellectual Property, attorneys for the Opponent, made on 14 November 2023, with Annexures MM01 to MM04 including confidential Annexures MM02 and MM03 (‘Martin’).

8.     Martin declares that the Opponent and his brothers started a family business in 1998 in India engaged in manufacturing and selling various goods such as cosmetics, henna products, hair dye, hair care and skin care products, depilatory preparations, medicated and Ayurvedic preparations, hand care preparations, hand wash and hand sanitisers (‘Opponent’s Goods’). 

9.     According to Martin, the Opponent’s predecessors in title honestly adopted the mark YUTIKA PHARMA prior to 2009.  The Opponent is the owner of Australian trade mark registration 2120353 YUTIKA (‘Opponent’s Mark’) in class 3 and a family of marks including YUTIKA (or variations thereof) such as YUTIKA NATURAL, YUTIKA PHARMA, YUTIKA SELFCARE, UTICA and YUTHIKA (collectively ‘Opponent’s Marks’).

10.   As a result of the growth of the family business, Prem Henna Private Limited (‘Prem Henna’) was incorporated in 2012 and Yutika Natural Private Limited was incorporated in 2018.  These companies use the Opponent’s Marks under the Opponent’s authorisation and control for the Opponent’s Goods.  The Opponent and his brothers are each directors and shareholders in Prem Henna Private Limited and Yutika Natural Private Limited.

11.   Martin attests that all of the Opponent’s Goods are sold and marketed worldwide by reference to the Opponent’s Mark.  A list of the Opponent’s registrations for the Opponent’s Marks in India and the Opponent’s Mark around the world is provided.  In addition, the Opponent has registered copyright in the YUTIKA packaging of different products in India.  Confidential Annexure MM2 to Martin sets out the annual global turnover of Yutika Natural Private Limited for 2018/19 and 2019/20 and ‘Turnover of YUTIKA Brand’ for 2020/21 and 2021/22.

12.   The Opponent’s Goods are promoted online at the websites and social media accounts of Prem Henna.  More recently the Opponent’s Goods were promoted at trade exhibitions namely the Beauty World Middle East Exhibition in October 2022 and Intercharm Korea in 2023. 

13.   Martin claims that the Opponent’s Goods are sold on all major Indian and ‘global public’ online shopping websites.  According to Martin, the Opponent’s Goods have been available for sale in Australia since at least February 2020 through various suppliers including at Copies of invoices for the sale of the Opponent’s YUTIKA products in Australia are provided with copies of the Australian packaging.  I note that neither of the packaging samples feature any of the YUTIKA Marks and the only use of YUTIKA is a reference to Yutika Natural Pvt. Ltd as the manufacturer. 

Holder’s evidence

14.   The Holder’s evidence comprises a declaration of Thomas George Robertson, registered patent and trade marks attorney for Pipers Intellectual Property, attorneys for the Holder, made on 11 April 2024 with Exhibits 1-14 (‘Robertson’).

15.   Robertson attests to the establishment of the Holder in 2004, its organisational structure and other companies in the corporate group.  Robertson declares that the ‘[Holder] is famed around the globe for its Multi-level Marketing (MLM) company’ with around 400,000 active International Business Partners who collaborate and work with the Holder including over 4000 partners in Australia.  A list of countries in which the Holder has distributors or licensees selling the Holder’s Goods under the Trade Mark is provided which includes Australia.  Exhibit 3 of Robertson sets out a list of countries, including Australia, in which the Holder’s Goods bearing the Trade Mark have been sold.  Robertson declares that the Holder’s Goods have been sold in Australia since 8 December 2016.  A selection of invoices for the sale of the Holder’s Goods bearing the Trade Mark in Australia is provided.

16.   The Holder’s multi-level marketing business operates by having Franchise Branches who place orders directly with the Holder or its subsidiary.  The Franchise Branch then resells the Holder’s Goods directly to the Business Partners.  The Business Partners can also order directly from the Holder through its website.  The Holder’s Goods bearing the Trade Mark are promoted at conferences and training sessions organised exclusively for the Holder’s Franchise Branches, club members and Business Partners.  Hence only the Holder’s Franchise Branches, club members and Business Partners can purchase the Holder’s Goods.  The Holder’s Goods are not otherwise available for sale and the Holder’s club regulations prohibit the sale of the Holder’s Goods in any other manner. 

17.   Exhibited to Robertson are details of awards received by the Holder, advertising expenditure, photos of the Holder’s Goods promoted at various events, examples of labels and catalogues bearing the Trade Mark and annual sales volumes for 2016-2024 which are modest.

18.   Robertson provides a list of the Holder’s registrations for the Trade Mark around the world in over 50 countries, details of the Holder’s social media accounts and third party websites which promote the Holder’s Goods.

Discussion

Section 44

19. Section 44 relevantly provides:

Identical etc. trade marks

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

(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Holder:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with, or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of goods and/or services which are similar or closely related to the Holder’s Goods (‘the third requirement’).

   21.   In its SGP, the Opponent relies on its Australian registration detailed below:

Number	Trade Mark	Priority Date	Goods
2120353	YUTIKA	16 September 2020	Class 3:Henna; henna powders; hair colours and dyes; detergents; bleaching preparations and other substances for laundry use; cosmetics and toiletries; cleaning preparations; cleaning products; cosmetics; polishing preparations; depilatory preparations; scouring preparations; abrasives; perfumery; essential oils; skin care preparations; creams; lotions; soaps; shampoos; hair oils; hair lotions; hair gels; bath oils other than for medical use; deodorants and antiperspirants for personal use; teeth cleaning products included in class 03

22.   The Opponent’s Mark satisfies the first requirement in that it has an earlier priority date and is in the name of a person other than the Holder.

23.   I now turn to a consideration of whether the marks YUTIKA and the Trade Mark are substantially identical.  This assessment requires that the marks ‘be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison’.[5]

24.   The two marks for comparison in the present case are:

YUTIKA

25.   It is immediately apparent on a side by side comparison that there are stark differences between the two marks as a result of the different word elements and inclusion of the design element in the Trade Mark.  The marks are not substantially identical.

26.   Accordingly, I turn to a consideration of whether the relevant marks are deceptively similar.  Section 10 provides that 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.

[5] TheShell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) (1963) 109 CLR 407, 414 (Windeyer J).

1. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[6] conveniently stated the relevant principles, which may be summarised as follows:

   [6] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[7]

   [7] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[8]

   [8] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[9]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[10]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[11]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[12]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[13]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [14]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[15]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[16]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[17] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[18]

   [9] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [10] Ibid.

   [11] Ibid.

   [12] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

   [13] Shell (n 5), 415.

   [14] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [15] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [16] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   [17] Australian Woollen Mills Ltd (n 9).

   [18] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 9), 657.

   28.   In my view, the Trade Mark is not deceptively similar to the Opponent’s Mark.  Visually the two marks are very different and even taking into account the imperfect recollection of an ordinary consumer, the Holder’s mark is unlikely to be recalled as having any resemblance to the Trade Mark.  Both marks contain invented words but the element UTIQUE in the Trade Mark, suggests a misspelling of ‘unique’ and/or the suffix of ‘boutique’.  No such impression is created by the Opponent’s Mark which gives the impression of a foreign language word.  Further, the design element of the Trade Mark is, in my opinion, an essential and distinctive element.

   29.   There is also little aural resemblance in the pronunciation of the marks.  The Trade Mark has 2 syllables ‘YOU-TIQUE’ whereas the Opponent’s Mark has three syllables being pronounced “YUH-TI-KA.’  Even if the Opponent’s Mark is pronounced ‘YOU-TI-KA’, I consider the strong suffix ‘ka’ to be memorable and different from the Trade Mark.

   30.   Taking into consideration the differences in appearance, pronunciation and impression, even allowing for imperfect recollection, I am not satisfied that consumer would be caused to wonder whether the Holder’s Goods provided under the Trade Mark originate from the same trade source as the Opponent, or that the marks are otherwise connected in some way.

   31. The s 44 ground of opposition is unsuccessful.

   Section 60

   32. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or Goods may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or Goods, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   33. To establish a ground of opposition under s 60, an opponent must first demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market and secondly that as a result of that reputation, use of the trade mark would be likely to deceive or cause confusion.

   Reputation

   34.   Justice Kenny considered the meaning of ‘reputation’ in McCormick & Co Inc v McCormick (‘McCormick’) and based on the Macquarie Dictionary definition, her Honour concluded it refers to ‘the recognition of the [trade mark] by the public generally.’[19]  This means the reputation must be amongst a ‘significant or substantial’ number of Australian consumers, tempered by the nature of the relevant market.[20]   In the present case, the relevant market is large being Australian consumers of cosmetics, skin and body care products, cleaning preparations and candles.

   [19] [2000] FCA 1335, [81] (‘McCormick’).

   [20] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   35.   The Opponent must establish the ‘existence and extent of reputation’ as a matter of fact.[21]  In terms of establishing reputation, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or Goods to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[22] 

   [21] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   [22] [2019] FCA 923, [83].

   36.   In its SGP, the Opponent claims to have a reputation in the Opponent’s Marks in Australia (and globally) before the Relevant Date for the Opponent’s Goods.

   37. Each mark is considered separately for the purposes of s 60 and hence the Opponent must demonstrate a reputation in each of the Opponent’s Marks in Australia at the Relevant Date.

   38.   I am not satisfied, on my assessment of the Opponent’s evidence, that the Opponent had a reputation in the Opponent’s Mark or any of the other of the Opponent’s Marks in Australia at the Relevant Date.  Most of the Opponent’s evidence is directed to use of YUTIKA not the Opponent’s other marks.  Further, the Opponent only commenced use of the Opponent’s Mark in Australia about 13 months before the Relevant Date.  There are no details about the extent of sales or advertising of goods bearing the Opponent’s Mark in Australia.  Many of the products listed in the invoices provided in Annexure MM03 of Martin are for the sale of goods under other trade marks and Annexure MM04 of Martin suggests that those goods do not feature the Opponent’s Mark.  Moreover, the value of goods sold under the YUTIKA mark in the invoices is minimal both in value and unit sales.  There is no evidence that Australian consumers have been exposed to any advertising undertaken by the Opponent which is limited to Prem Henna’s websites and social media accounts, and two foreign trade shows after the Relevant Date.

   39. The Opponent has not established that it had a reputation in any of the Opponent’s Marks in Australia at the Relevant Date and therefore, the s 60 ground of opposition fails.

   Section 42(b)

   40. Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark would be contrary to law.

   41.   The onus is on the Opponent to establish that use of the Trade Mark by the Holder would be, rather than could be, contrary to law on the balance of probabilities.[23]

   [23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   42.   In its SGP, the Opponent simply lists the ‘Competition and Consumer Act 2010’ (‘CCA’) and ‘tort of passing off.’

   43. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[24]

   [24] See e.g.: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ), Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   44. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Holder’s Goods is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation in breach of the ACL.

   45.   Furthermore, I am not satisfied that use of the Trade Mark will amount to passing off.  Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]

   [25] [1989] FCA 506, [40] (citations omitted).

   46.   For similar reasons, I am not satisfied that the use of the Trade Mark would involve passing off.

   47. As such, I am not satisfied that use of the Trade Mark by the Holder would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 43

   48.   This section requires the Opponent to demonstrate that there is a connotation in the Trade Mark (or a part of it) and that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.

   49.   The ‘connotation’ must arise from the Trade Mark  and not from any comparison with another trade mark.  As Spender J noted in Winton Shire Council v Lomas:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[26]

   [26] Winton Shire Council v Lomas [2002] FCA 288, [19].

   50.   In its SGP, the Opponent claims that because of the Opponent’s reputation in the Opponent’s Marks, use of the Trade Mark is ‘likely to convey to consumers the connotation that the Holder and/or the Holder's Goods have the licence or approval of the Opponent when in fact they have no such licence or approval.’ 

   51. The particulars set out in the SGP do not suggest a connotation arising from the Trade Mark itself and are more relevant to s 60, which has been dealt with above. Moreover, there is nothing in the Opponent’s evidence identifying a connotation in the Trade Mark that is likely to deceive or cause confusion. Accordingly, the Opponent has not established a ground of opposition under s 43.

   Section 59

   52. Section 59 provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

   53.   It is well established that applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[27]  The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[28]  If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[29]

   [27] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

   [28] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

   [29] Suyen Corp v Americana International Ltd (n 27) [190].

   54.   In its SGP, the Opponent particularises this ground as follows:

   Based on online investigations, the [Holder] appears to only provide perfumes, hair oil and face oil.

   There is no indication that the [Holder] offers under the Opposed Trade Mark the remaining goods listed in class 3 or any of the goods listed in class 4 under the Opposed Application.

   Registration of the Opposed Trade Mark should therefore be refused on the ground that as at 2 March 2021, the priority date of the Opposed Application, the [Holder] did not intend:

   
   

   1. to use, or authorise the use of, the Opposed Trade Mark in Australia; or

   
   

   2. to assign the Opposed Trade Mark to a body corporate for use by the body corporate in Australia;

   
   

   3. in relation to the goods specified in the Opposed Application, other than perfume and hair oils.

   55.   The Opponent’s evidence does not disclose any enquiries undertaken by the Opponent into the business activities of the Holder.  Although Martin has not established a prima facie case of lack of intention on the part of the Holder, the Holder has provided evidence that it has used the Trade Mark in Australia for perfumery.  Moreover, Robertson shows that the Trade Mark is used at least overseas for a range of goods including cosmetics, hair preparations, essential oils for personal use, hand wash, shower gel, body lotions and creams, perfumery, skin care preparations, candles and massage oil.  It is not necessary for the Holder to have an immediate intention to use the Trade Mark in Australia for all of the Holder’s Goods.  As Jacobson J stated in Health World Limited v Shin-Sun Australia Pty Ltd:

   In my view, the intention…is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[30]

   [30] [2008] FCA 100, [160].

   56. I am satisfied that the Holder had a sufficiently settled intention to use the Trade Mark for the Holder’s Goods at the Relevant Date. Accordingly, the s 59 ground of opposition is unsuccessful.

   Decision

   57. Section 55 of the Act relevantly provides:

   55  Decision

   (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 Goods 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.

   58.   I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, extension of protection of the Trade Mark which is the subject of the IRDA may proceed not less than one month from the date of this decision.

   59.   If the Registrar is served with a notice of appeal, I direct that extension of protection of the IRDA shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

   60. Both parties sought an award of costs and as costs generally follow the event, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

13 September 2024

ANNEXURE A – Holder’s Goods

Class 3:  Aloe vera preparations for cosmetic purposes; antiperspirants [toiletries]; anti-perspirants in the form of sprays; deodorants and antiperspirants; antiperspirants for personal use; aromatics; aromatic oils; lotions for cosmetic purposes; balms, other than for medical purposes; flower perfumes (bases for -); lip gloss; nail glitter; amber [perfume]; tissues impregnated with cosmetic lotions; tissues impregnated with cosmetics; facial wipes impregnated with cosmetics; moist wipes impregnated with a cosmetic lotion; wipes impregnated with a skin cleanser; tissues impregnated with make-up removing preparations; tissues impregnated with essential oils, for cosmetic use; essential oils of lemon; deodorants for human beings; deodorants for human beings or for animals; air fragrance reed diffusers; extracts of flowers [perfumes]; herbal extracts for cosmetic purposes; sunscreen preparations; hair dye; incense; joss sticks; cosmetics; make-up preparations; make-up preparations; natural cosmetics; cosmetics for eyelashes; eyebrow cosmetics; cosmetics for children; cosmetics for personal use; skincare cosmetics; skin care creams [cosmetic]; cosmetic creams; skin whitening creams; hair spray; nail polish; cosmetic masks; potpourris [fragrances]; mint for perfumery; almond milk for cosmetic purposes; facial cleansing milk; cleansing milk for toilet purposes; soaps; perfumed soaps; perfumed soaps; antiperspirant soap; toilet soap; cosmetic soaps; soaps and gels; liquid bath soaps; soaps for body care; soap for foot perspiration; deodorant soap; shaving soap; almond soap; nail art stickers; hair nourishers; conditioning preparations for the hair; hair conditioners for babies; jasmine oil; lavender oil; gaultheria oil; almond oil; bergamot oil; rose oil; oils for hair conditioning; peppermint oil [perfumery]; cuticle oil; hair fixing oil; oils for cosmetic purposes; oils for cosmetic purposes; oils for perfumes and scents; oils for perfumes and scents; essential oils; essential oils for personal use; cedarwood (essential oils of -); oils for toilet purposes; cosmetic pencils; breath freshening strips; teeth whitening strips; shoe polish; musk [perfumery]; eye-washes, not for medical purposes; liquid latex body paint for cosmetic purposes; hair lotion; mouthwashes, not for medical purposes; mouthwashes, not for medical purposes; vaginal washes for personal sanitary or deodorant purposes; after-shave preparations; lipstick; pomades for cosmetic purposes; dentures (preparations for cleaning -); make-up removing preparations; eye make-up remover; depilatory preparations; hair removal and shaving preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; bath preparations; baths (cosmetic preparations for -); bath preparations, not for medical purposes; hair waving preparations; shining preparations [polish]; fumigation preparations [perfumes]; nail care preparations; skin, eye and nail care preparations; denture polishes; hair straightening preparations; sun blocking preparations [cosmetics]; tanning preparations; phytocosmetic preparations; collagen preparations for cosmetic purposes; cosmetic preparations for bath and shower; cosmetic preparations for slimming purposes; breath freshening preparations for personal hygiene; astringents for cosmetic purposes; toiletries; perfumed lotions [toilet preparations]; non-medicated cosmetics and toiletry preparations; perfumed body lotions [toilet preparations]; perfumery; perfumery, essential oils; face powder; eyelashes (false -); bath salts, not for medical purposes; shampoo; dry shampoos; body shampoos; shampoos for pets [non-medicated grooming preparations]; baby shampoo; shampoo bars; shampoos for personal use; false nails; artificial nails for cosmetic purposes; cleansers for intimate personal hygiene purposes, non medicated; dentifrices; dentifrices and mouthwashes; air fragrancing preparations; massage candles for cosmetic purposes; talcum powder, for toilet use; mascara; long lash mascaras; petroleum jelly for cosmetic purposes; toilet water; toilet water; cologne impregnated disposable wipes; lavender water; perfume water; floral water; micellar water; javelle water; hydrogen peroxide for cosmetic purposes; moustache wax; cosmetic kits; nail varnish removers; nail varnish remover [cosmetics]; nail polish remover pens; hair gel; shaving gel; make-up removing gels; styling gels; dental bleaching gels; gels for cosmetic use; gels for fixing hair; massage gels, other than for medical purposes; gel eye patches for cosmetic purposes.

Class 4:  Candles for lighting; perfumed candles.