Re: Opposition by Kiss Nail Products, Inc to registration of trade mark application no.(s) 1743097 (3) - KIS (stylized) and 1743098 (3) - KIS in the name of KIS My Body Pty Ltd

[2020] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by KISS NAIL PRODUCTS, INC to registration of trade mark application no.(s) 1743097 (3) – KIS (stylized) - and 1743098 (3) – KIS - in the name of KIS MY BODY Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: K & L Gates

Applicant: Michelle Calder of IP Wealth Pty Ltd

Decision:

2020 ATMO 125
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 44, 60 and 42(b) pressed– section 60 established – registration refused

Background

1. KIS MY BODY Pty Ltd (‘the applicant’), filed trade mark application numbers 1743097 and 1743098 on 22 December 2015 in class 3 of the International Classification of Goods and Services. Current details of the applications are set out below.

   Trade mark:  

   Trade mark application no: 1743097            

   Filing Date:  22 December 2015

   Specification:  Class 3: Cleaning preparations; soaps; essential oils; perfumery; preparations for application to, or for, care of the face, body, skin, including but not limited to, natural and organic preparations; body, skin, hand care, feet care and facial soaps, cleansers, washes, detergents, creams, mists, toners, moisturisers, lotions, exfoliants, scrubs, polishes and detergents (non-medicated); aromatics (essential oils); essential oils including for cosmetic purposes, personal use, manufacture of perfumes; cleansing oils; distilled oils for beauty care; natural oils for perfumes; oils for cosmetic purposes; oils for the body, hair, or skin; scented or perfume oils; skin care oils (cosmetic); flower perfume extracts; oils for perfumes and scents; essences for skin care; soaps incorporating oils or essential oils; perfume; perfume oils or water; oils for perfumes and scents including natural oils for perfumes; aromatic perfumery products; perfumed articles including soaps, body lotions, body sprays, or creams (toilet preparations); shaving soap, lotions, soap, sprays; body creams; cream perfumes; non-medicated creams; non-medicated creams incorporating oils or essential oils; non-medicated creams for the body, eyes, face, feet, lips, and skin; skin care creams; barrier creams for the skin and hands; preparations for toning the skin; non-medicated skin care; nonmedicated creams for hydrating, moisturising, softening, soothing and protecting the skin; nonmedicated dermatological creams and lotions for the skin; anti-ageing creams and lotions for the skin; skin irritation creams and lotions; aloe vera creams for the skin; conditioning and soothing creams and lotions for the skin; non medicated bath oils; aromatic substances for personal use

   Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

   Trade mark:   KIS

   Trade mark application no: 1743098            

   Filing Date:  22 December 2015

   Specification:  Class 3: Cleaning preparations; soaps; essential oils; perfumery; preparations for application to, or for, care of the face, body, skin, including but not limited to, natural and organic preparations; body, skin, hand care, feet care and facial soaps, cleansers, washes, detergents, creams, mists, toners, moisturisers, lotions, exfoliants, scrubs, polishes and detergents (non-medicated); aromatics (essential oils); essential oils including for cosmetic purposes, personal use, manufacture of perfumes; cleansing oils; distilled oils for beauty care; natural oils for perfumes; oils for cosmetic purposes; oils for the body, hair, or skin; scented or perfume oils; skin care oils (cosmetic); flower perfume extracts; oils for perfumes and scents; essences for skin care; soaps incorporating oils or essential oils; perfume; perfume oils or water; oils for perfumes and scents including natural oils for perfumes; aromatic perfumery products; perfumed articles including soaps, body lotions, body sprays, or creams (toilet preparations); shaving soap, lotions, soap, sprays; body creams; cream perfumes; non-medicated creams; non-medicated creams incorporating oils or essential oils; non-medicated creams for the body, eyes, face, feet, lips, and skin; skin care creams; barrier creams for the skin and hands; preparations for toning the skin; non-medicated skin care; nonmedicated creams for hydrating, moisturising, softening, soothing and protecting the skin; nonmedicated dermatological creams and lotions for the skin; anti-ageing creams and lotions for the skin; skin irritation creams and lotions; aloe vera creams for the skin; conditioning and soothing creams and lotions for the skin; non medicated bath oils; aromatic substances for personal use

   Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

2. I will refer to the above trade mark applications as the ‘Trade Marks’ for ease of reference throughout the decision.

3. Acceptance of the Trade Marks for possible registration was published in the Australian Official Journal of Trade Marks on 4 January July 2018. Subsequently KISS NAIL PRODUCTS, INC (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

4. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).      

5. The matter has been directed to me to decide on the written papers as a Delegate of the Registrar.

   Grounds of Opposition

6. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995(‘the Act’) and those grounds of opposition under sections 42(b), 44 and 60 were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

7. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·David Cho (‘Cho’) dated 15 August 2018 with Annexures DC-1 to DC-8

   Evidence in Answer

   ·Louise Rawlings (‘Rawlings’) dated 29 November 2018 with Exhibits LR-1 to LR-30

   Discussion

   Section 60 - Reputation in Australia

8. Section 60 of the Act provides:

   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 services 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 services, 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.

9. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks below:

   KISS              

   (“opponent’s trade marks”)

10. The opponent has also obtained registration for its plain text trade mark KISS. Trade Mark Registration no. 701348 is for the plain text word KISS and registered in class 3 and 8 and has a priority date of 29 January 1996. Trade Mark Registration no. 1105744 is for the plain text word KISS and registered in class 3 and 21 and has a priority date of 28 March 2006. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the cosmetic goods for which the opponent’s trade mark no. 1105744 is registered in class 3 are the same as those of the Trade Marks.

11. It is for me to determine whether the opponent has established that before 22 December 2015  the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its Trade Marks would be likely to cause confusion.

12. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

13. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335 [81]

14. The Cho declaration avers that since 1989 the opponent commenced business using its KISS trade marks on the design, manufacturing and offering for sale of beauty products including artificial nails, nailcare products, skincare products, hair care products and appliances, beauty accessories and other personal care products. Cho states that the opponent commenced using its KISS trade marks in Australia on its cosmetic products in 2004 which I note is before the priority date of the applicant’s Trade Marks. The opponent’s KISS branded products are sold throughout the world in over 90 countries, including in Australia, through multi-brand retailers, pharmacies and online retail stores[7].

    [7] Cho declaration at [10]

15. The number of retail stores that sell the opponent’s KISS branded products throughout Australia is impressive and includes retailers such as Big W, Amcal, Advantage Pharmacies, Kmart, Priceline, Chemworld Chemists, Chempro, Woolworths, Terry White Chemists and Soul Pattinsons to name a few[8].

    [8] Cho declaration at [14]

16. Mr Cho provides an outline of the total unit sales for the opponent’s KISS cosmetics from 2004 until 2018 in Australia.       These figures are contained within Confidential Annexures DC-7 accompanying the Cho declaration. Confidentiality has been claimed for these figures which I will discuss only so far as necessary in order to support my reasoning in this decision. While Mr Cho has not provided specific figures down to an exact number in the confidential exhibit it is clear that the growth and the total number of units sold to Australian retailers has remained moderate with some significant peaks in demand during this time. The total revenue generated from the sales of these goods by the opponent and in turn by the Australian retailers is also significant given the relative low cost of the individual KISS cosmetic items.

17. When it comes to the media and marketing expenses for the KISS goods within Australia, Mr Cho has again provided a general statement as to the expenses incurred for the period between 2012 and 2018[9]. I note that a number of these years included in the total for the media and marketing expense are after the priority date of the opposed application which, coupled with Mr Cho’s unspecified statements, make it difficult to determine how much has been spent on marketing and advertising as at the priority date. Regardless, the amount spent is moderate given that the opponent’s evidence demonstrates that, in conjunction with the opponent’s advertising efforts, third party retailers such as Priceline and Big W also advertise the opponent’s KISS cosmetics in order to sell them[10] and those sales are taking place.

    [9] Confidential Annexure DC-8 accompanying the Cho declaration

    [10] Annexure DC-1 accompanying the Cho declaration

18. I also note that significant exposure for the opponent’s KISS cosmetics takes place via social media platforms such as Facebook and Twitter where is has a notable following[11]. I note that both of these social media platforms were established by the opponent in June 2009 and that it is likely the opponent’s Pinterest account could only have been set up since 2010 at the earliest.

    [11] Annexure DC-6  accompanying the Cho declaration

19. The applicant has rightfully pointed out that a number of examples within the opponent’s evidence are dated after the priority date of the opposed applications. However, given the number of sales generated before the priority date of the opposed applications even if I were to attribute the lowest number quoted by Mr Cho for each year, that is still a moderate and solid number of the opponent’s KISS cosmetic products sold within Australia per year from 2004 up until the priority date. The level of distribution and revenue within Australia even when I exclude those amounts most likely after or around the priority date still indicates the substantial and growing reach of the opponent’s KISS cosmetics within the Australian marketplace before the priority date.

20. I am satisfied that the opponent’s trade mark had acquired a reputation in Australia for its cosmetic goods before the priority date of the Trade Marks. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

21. Overall I consider that, given the reputation acquired by the opponent’s trade marks, a significant number of consumers would at the very least experience a reasonable doubt[12] as to the existence of some sort of connection between the opponent’s trade marks and the Trade Marks if they were used to the extent of all of the goods listed in the opposed applications. In considering the similarities between opponent’s trade marks and the Trade Marks it becomes clear that the respective trade marks share some striking similarities.

    [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade marks	Trade Marks
KISS	KIS

1. Both trade marks contain the letters KIS- which are likely to be pronounced by the general Australian consumer as ‘KISS’ with the general idea of a ‘kiss’ lingering in the consumers memory. It is the only word element in the respective trade marks and while there is some stylization differences between the trade marks, this is not sufficient to detract from the overall impression of similarity between the respective trade marks.

2. I believe that there are striking similarities between the trade marks which add to the potential for confusion between the trade marks. This is particularly so when the opponent has demonstrated use on nail products, eyelashes, makeup and hand creams. The trade marks may be applied to the same and similar cosmetic goods sold in the same areas of retail stores to those consumers looking for cosmetic goods.

3. The opponent has clearly invested money and time in promoting its various trade marks and also in growing its business through brand extension. I note that in addition to the KISS trade marks discussed above, the opponent has also extended the brand to include lines of cosmetic products sold under the trade marks NEW YORK KISS, RED BY KISS, PINK BY KISS, RUBY KISSES and FIRST KISS[13]. While section 60 does not require a finding that the trade mark are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.

   [13] Cho declaration at [11]

4. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

5. Section 55 of the Act 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 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:          Forlimitationssee section 6.

6. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no.(s) 1743097 and 1743098.

   Costs

7. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   21 July 2020