Re: Opposition by Shiseido Company, Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Dr. Kurt Wolff GmbH and Co. KG. to remove trade mark number 1412378 (class 3) -Tuning Color Group

This matter concerned an application under section 92 of the *Trade Marks Act 1995* (Cth) by Dr. Kurt Wolff GmbH and Co. KG (the Removal Applicant) to remove trade mark number 1412378 (class 3), registered by Shiseido Company, Limited (the Removal Opponent). The Removal Applicant sought removal on the grounds of non-use of the trade mark. The decision was made by Hearing Officer M. Cooper.

The primary legal issue before the Hearing Officer was whether the Removal Opponent had demonstrated sufficient use of the trade mark "Tuning Color Group" in Australia during the relevant period, which was the three years ending one month prior to the filing of the non-use application. This involved determining whether the evidence presented constituted "use as a trade mark" in a manner that distinguished the Removal Opponent's goods from those of other traders, and whether any use was directed towards the Australian market. A secondary issue arose regarding the admissibility of late-filed evidence by the Removal Opponent, specifically invoices intended to prove sales.

The Hearing Officer considered the evidence of use, including brochures, website extracts, and invoices. It was found that undated brochures did not establish use in the relevant period. Website extracts, while showing the mark, did not demonstrate authorised use or that the use was targeted at Australia, and importantly, the mark appeared alongside other descriptors and under dominant brands such as "SHISEIDO" and "PRIMIENCE," leading to the conclusion that "Tuning Color Group" functioned as a description of colours rather than a trade mark distinguishing the goods. Invoices also failed to establish trade mark use, as they referenced product codes rather than the trade mark itself. The Hearing Officer was not satisfied that the evidence established use of the trade mark in a branding or distinguishing role, concluding that the ground for removal based on non-use had been established. The Hearing Officer also declined to admit the late-filed invoices, finding the explanation for their omission unconvincing and noting the potential prejudice to the Removal Applicant.

Consequently, the Hearing Officer ordered that the trade mark be removed from the Register. The Removal Opponent was ordered to pay the Removal Applicant's costs.