Re: Oppositions by Yey Pty Ltd to registration of trade mark applications 1682979 (3, 35) Activeskin (Fancy) and 1688858 (3, 35) activeskin in the name of Active Skin Pty Ltd

[2019] ATMO 89

TRADE MARKS ACT 1995

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

Re:Oppositions by Yey Pty Ltd to registration of trade mark applications 1682979 (3, 35) – ACTIVESKIN (Fancy) and 1688858 (3, 35) – activeskin in the name of Active Skin Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Written Submissions by Actuate IP Applicant:  Lucy McGovern, Counsel, instructed by Michael Hazan of Hazan Hollander
Decision:	2019 ATMO 89 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – ground established – registration refused

Background

1. This decision concerns oppositions brought by Yey Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively the ‘Trade Marks’) which are the subject of the applications detailed below in the name of Active Skin Pty Ltd (‘Applicant’): 

Application Number:	1682979
Filing Date:	24 March 2015
Goods and Services:	Class 3: Skincare cosmetics; Skincare preparations (cosmetic); Beauty care preparations; Beauty care products; Beauty creams; Beauty face packs; Beauty gels; Beauty masks; Beauty milks; Beauty preparations; Beauty products; Distilled oils for beauty care; Non-medicated beauty preparations; Non-medicated skin care beauty products; Products for beauty care; the aformentioned goods being cosmetics Class 35: Distribution of advertising material; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of prospectus; Distribution of prospectuses; Distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins
Endorsement
Trade Mark:	(‘Fancy Mark’)
Application Number:	1688858
Filing Date:	22 April 2015
Goods and Services:	Class 3: Anti-sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the eyes; Colour cosmetics for the skin; Cosmetics; Cosmetics for animals; Cosmetics for bronzing the skin; Cosmetics for eyebrows; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for skin tanning; Cosmetics for suntanning; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics in the form of mascara; Cosmetics in the form of milks; Cosmetics in the form of nail polish; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics in the form of rouge; Cosmetics preparations; Cosmetics to remove pigmentation marks; Essential oils for use in cosmetics; Eyebrow cosmetics; Facial wipes impregnated with cosmetics; Hair cosmetics; Liners (cosmetics) for the eyes; Milks (cosmetics); Moisturisers (cosmetics); Nail base coat (cosmetics); Nail enamel (cosmetics); Nail enamel remover (cosmetics); Nail gloss (cosmetics); Nail hardeners (cosmetics); Nail polish removers (cosmetics); Nail preparations (cosmetics); Nail revitalising lotions (cosmetics); Nail tips (cosmetics); Nail treatment creams (cosmetics); Nail treatment gels (cosmetics); Nail treatment lotions (cosmetics); Nail varnish remover (cosmetics); Nail varnish removing preparations (cosmetics); Night creams (cosmetics); Non-medicated cosmetics; Nourishing creams (cosmetics); Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Paper hand towels impregnated with cosmetics; Preparations for removing cosmetics; Skincare cosmetics; Sprays for use on the body (cosmetics); Sun barriers (cosmetics); Sun blocking cream (cosmetics); Sun blocking gel (cosmetics); Sun blocking lipsticks (cosmetics); Sun blocking lotions (cosmetics); Sun blocking oils (cosmetics); Sun blocking preparations (cosmetics); Sun creams (cosmetics); Sun gel (cosmetics); Sun lotions (cosmetics); Sun milk (cosmetics); Sun protecting creams (cosmetics); Sun protection oils (cosmetics); Sun protection products (cosmetics); Sun protectors for lips (cosmetics); Sun screen preparations (cosmetics); Sun screening preparations (cosmetics); Sun skin care products (cosmetics); Sun-tanning preparations (cosmetics); Suntan lotion (cosmetics); Suntan milk (cosmetics); Suntan oils (cosmetics); Suntan preparations (cosmetics); Tanning compositions (cosmetics); Tanning creams (cosmetics); Tanning oils (cosmetics); Tanning preparations (cosmetics); Textile pads impregnated with cosmetics; Tints (cosmetics); Tissues impregnated with cosmetics; Toilet napkins of cellulose impregnated with cosmetics; Toilet napkins of cellulose wadding impregnated with cosmetics; Toilet napkins of paper impregnated with cosmetics; Toy cosmetics (usable); Varnishes (cosmetics); Skincare preparations (cosmetic) Class 35: Distribution of advertising material; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Distribution of prospectus; Distribution of prospectuses; Distribution of samples; the aforementioned services in relation to cosmetics, creams, serums, supplements and vitamins
Trade Mark:	activeskin	(‘Word Mark’)

2. The Goods and Services for which the Trade Marks are sought to be registered are collectively referred to as the (‘Applicant’s Goods and Services’)

3. Following the advertisement in 17 August 2017 in the Australian Official Journal of Trade Marks of the Trade Marks’ acceptances for possible registration, the Opponent filed a Notice of Intention to Oppose the registration of both Trade Marks on 12 October 2017.  The Opponent then filed a Statement of Grounds and Particulars in respect of both oppositions on 13 November 2017.  An amendment to the Statement of Grounds and Particulars was filed on 15 November 2017 with the amendment concerning the Word Mark only (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58A, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend both oppositions on 11 December 2017.

Evidence

1. The Opponent filed Evidence in Support of its oppositions (‘EIS’) on 15 March 2018.  This evidence consists of a declaration by Ben Wyeth, director of Hollvette Pty Ltd, the holding company of the Opponent, made on 15 March 2018 with Annexures BW-1 to BW-54 (‘Wyeth 1’). 

2. The Applicant filed Evidence in Answer (‘EIA’) on 21 June 2018.  This evidence consists of a declaration by Stephen Smith, director of the Applicant, made on 21 June 2018 with Exhibit SS-1 (‘Smith Declaration’). 

3. The entirety of Wyeth 1 and the Smith Declaration, including publically available information such as trade mark registrations and the Applicant’s website, is claimed to be confidential to the Applicant.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (in that case in respect of the then opponent) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

4. In particular, I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity, which the Applicant has chosen not to do in this case (The Opponent, while claiming the entirety of Wyeth 1 to be confidential, has identified areas of particular sensitively in its evidence) .  If, in my summary of the Applicant’s evidence, I have disclosed information that is sensitive, then this is a problem that has arisen by that party not specifically identifying that information as sensitive.

5. The Applicant filed Evidence in Reply (‘EIR’) on 28 August 2018.  This evidence consists of a second declaration by Ben Wyeth, made on 28 August 2018 (‘Wyeth 2’).  No claim of confidentiality has been made in respect of the information contained in Wyeth 2.

   9. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 8 October 2018 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 3 April 2019 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 7 February 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 22 March 2019 (‘Opponent’s Submissions’) and indicated that they would not be present at the oral hearing.  The Applicant filed written submissions on 26 March 2019 (‘Applicant’s Submissions’).  At the hearing Lucy McGovern of Counsel instructed by Michael Hazan of Hazan Hollander represented the Opponent, appearing by telephone.

   10. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

6. The Opponent is an Australian company that has been trading since July 1999.   

   12.     The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Goods
1094648	(‘Opponent’s Fancy Mark’)	17 Jan 2006	Class 35: Online retail and wholesale sale of goods namely haircare products, skincare products, cosmetics, make up and perfumes Class 44: Beauty and skin care services; beauty salons; skin treatments; massage
1688828	activeskin[2] (‘Opponent’s Word Mark’)	22 Apr 2015	Class 35: Online discount  services being the retailing and wholesaling of goods namely haircare products, skincare products, cosmetics, make up and perfumes; Online retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies namely haircare products, skincare products, cosmetics, make up and perfumes; online retailing of goods namely, haircare products, skincare products, cosmetics, make up and perfumes Class 44: Consultancy services relating to personal appearance (hair, beauty, cosmetics) being beauty and skin services

[2] I note that the Opponent’s Word Mark has the same priority date as the Word Mark and as such is not particularized in respect of the s44 ground of opposition against the Fancy Mark but is in respect of the Word Mark.

13.     Wyeth 1 and 2 contain the following claims/statements:

·     The Opponent uses the word ‘activeskin’ (‘Activeskin Mark’) as a trade mark for all its services.  It commenced trading on 13 July 1999 and since then has developed into a leading cosmetics retailer, both online and through its physical salon.

·     The Opponent’s physical salon is located in Balgowlah and offers beauty services and retails third party beauty and cosmetics products. It has operated since 1999 (under a different name) but was rebranded as the ActiveSkin salon in March 2014.

·     The Opponent operates an online retailing site at which, since 2006 has retailed third party beauty and cosmetics products under the Activeskin Mark.

·     At the relevant date the Opponent’s online retailing site had approximately 38,000 members, who receive special discounts and additional services from the Opponent. 

·     The Opponent has promoted its website through the use of Google and search engine optimisation marketing with campaign expenses being significant.  The Opponent’s website receives a significant number of unique visitors per year.  The Opponent also engages in other digital marketing, including by Facebook, Instagram and YouTube.

·     The Opponent’s website, in 2015 was the number 1 website result for various Google search results, including ‘active skin’.

14.     When viewing the Opponent’s evidence, I note that, given the size of the cosmetic market in Australia, turnover from Opponent’s website prior to the relevant date was not huge.  At the same time turnover was hardly insignificant, and remained broadly static between 2009 and 2014, indicating a reasonable, consistent, turnover from a smallish online store.  Equally, the number of members to the Opponent’s A-List membership service is not huge given the market for cosmetics in Australia, but hardly insignificant.  The amount the Opponent has spent on search engine optimisation and advertising is quite considerable and I am satisfied that the Opponent’s website received a considerable number of unique visitors, both at and in the years prior to the relevant date.  Finally, while the Opponent (and the Applicant quite properly points this out in its submissions) conflates sales, advertisers and visitors to its site in Australian and overseas jurisdictions, it is obvious from the content of the website and its .au domain name that the Opponent’s website is primarily, if not exclusively targeted at the Australian market and as such the majority of its customer base and reputation would likely be within Australia.

The Applicant

1. The Applicant is an Australian company that was registered in 2006.  

   16.     The Applicant is the registered owner of the trade marks listed below. 

Number	Trade Mark	Priority Date	Goods
1127968	5 Aug 2006	Class 3: Cosmetics
1137007	Active Skin	22 Sep 2006	Class 3: Cosmetics Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)
1307342	23 Jul 2009	Class 3: Cosmetics; cosmetics for personal use; cosmetics for the treatment of dry skin; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics preparations; skincare cosmetics

17.     The Smith Declaration contains the following claims/statements:

·     The Deponent registered the Active Skin business name in 2004 and prior to the establishment of the Applicant, the Deponent and his wife marketed, advertised, offered for sale and sold a wide range of cosmetic and skincare goods in Australia, under and by reference to the Activeskin Mark.  Since its incorporation on 14 August 2006 the Applicant marketed, advertised, offered for sale and sold a wide range of cosmetics, creams, serums, supplements, and vitamins, in Australia under and by reference to the Activeskin Mark.  At the time of incorporation in 2006, all goodwill and rights to the Activeskin Mark held by the Deponent and his wife were transferred to the Applicant.

·     The Applicant uses the Activeskin mark on product packaging, office materials, advertisements and on the Applicant’s website at which has operated since 2007.

·     The Applicant has promoted its goods since 2004 through various publications and extracts advertisements, dated as early as 14 October 2004, showing use of the Trade Mark.  The Applicant, from 2005 also advertised its goods and services under the Activeskin Mark through the yellow pages.

18.     The EIS provides tax invoices issued by the Applicant/Deponent from customers bearing the Activeskin Mark dated 5 February 2005, with the invoices issued in the Applicant/Deponent’s name prior to August 2006

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, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 60 in respect of both the Trade Marks. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should this decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   20.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The dates at which the rights of the parties are to be determined is 24 March 2015 and 22 April 2015 (‘relevant dates’), being the priority date of the respective applications in Australia.[5]

   Discussion

   Section 60

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

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

2. Section 60 of the Act 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 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.

3. To establish a ground of opposition under s 60 an opponent must 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 such that use of the trade mark would be likely to deceive or cause confusion.[6]

   [6] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[7]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]

   [7] [2000] FCA 1335, [81].

   [8] (1992) 33 FCR 302, 343.

1. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]

   [9] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

2. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[10] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[11]

   [10] (2000) 50 IPR 1.

   [11] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

3. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[12]

   [12] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

4. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The opposed trade mark is similar to one or more prior trade marks including the Opponent’s trade marks which are the subject of registrations Nos. 784574 and 1755260 which, as a result of extensive prior use in relation to the registered goods, have acquired a reputation in Australia.

   The Opponent began preparations for and has been subsequently using the Opponent’s Marks extensively in relation to the Opponent’s Services in Australia since at least 2004. Accordingly, the Opponent’s Marks have, and at the Application Priority Date had, a resulting strong reputation in Australia in relation to the Opponent’s Services. As a result of the Opponent’s reputation in the Opponent’s Marks in Australia, the Applicant’s use of the Applicant’s Mark in respect of the Applicant’s Goods and Services would be likely to deceive or cause confusion.

5. The Applicant has made extensive submissions to the effect that at the relevant date, the Opponent’s Activeskin Mark had not acquired a reputation in Australia in respect of a significant or substantial number of persons in the relevant market.  It notes the broad nature of the market for cosmetics products in Australia, the limited geographical nature of the Opponent’s salon (and limited period of trading under the Activeskin Mark), and the failure of the Opponent to distinguish between its national and international audience in its evidence relating to the Opponent’s website.  I also note the Applicant’s submissions that much of the evidence by the Opponent of its print advertising is irrelevant as it postdates the relevant dates.

6. While the Applicant’s submissions have considerable force, on balance I am satisfied on the evidence before me that at the relevant dates, the Opponent’s Activeskin Mark had acquired a reputation in Australia in respect of the retail of cosmetics, sufficient for the requirements under s 60(a) of the Act, though the reputation was not particularly strong. At the relevant dates the Opponent had been operating its website under the Activeskin Mark for 9 years and the evidence before me is that during those 9 years its website received a substantial number of unique visitors. While the Opponent’s evidence does not distinguish between Australian and overseas based visitors, given the nature of the Opponent’s website, being a site almost exclusively targeted to Australia (with prices in Australian dollars) I consider it likely that a significant majority of those visitors were from Australia. The measurement of unique visitors to a website is not an exact science (since it counts visits from different computers rather than different individuals), nevertheless even if the actual number of individuals that interacted with the Opponent’s website was half the number of unique visitors stated in the Opponent’s evidence, that still amounts to a significant number of individuals in Australia that are aware of and interact with the Opponent. Furthermore I note the Opponent’s significant expenditure on advertising and search engine optimisation in the years prior to the relevant dates such that such that Australian Internet users looking for an online site retailing cosmetics would more than likely have been exposed to the Opponent’s Activeskin Mark. I do not accept the Applicant’s submissions that the presence of third party brands on the Opponent’s website dilutes the reputation of the Opponent’s Activeskin mark – the Opponent is an online retailer; it would be expected to retail products which were produced by third parties.

7. On balance, while noting the matters raised by the Applicant in its submissions, I find that the by reason of its considerable number of unique visitors to its website and continued trading for 9 years, the Opponent has established that it had acquired a sufficient reputation in the Activeskin Mark in respect of the retail of cosmetics.  I do not find such a reputation established in respect of salon services; the Opponent’s use of the Activeskin Mark being for a single salon, for a limited period of time, with a limited turnover.

8. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Marks would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[13]

   [13] (1937) 58 CLR 641, 658.

9. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.[14]

   [14] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

10. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[15]

    [15] [2012] ATMO 124 at [40].

11. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[16]

    [16] [2016] FCA 729 at [142].

12. Furthermore, when considering the manner in which a Trade Mark is to be used I am to consider the notional use (that is, the fair and normal use) of the trade marks in question. 

    36. In the present case each of the Trade Marks is substantially identical to the Activeskin Mark. Furthermore there is a clear nexus between the retail of cosmetics, the area in which the Activeskin Mark has a reputation and the Applicant’s Goods and Services, which, broadly summarized, are cosmetics and services relating to the retail of cosmetics. While I note that the Opponent has not provided any evidence of actual confusion, this is not a requirement of s 60, though Health World Ltd v Endura Ltd  noted that ‘in cases where the applicant and the opponent have been trading alongside one another for a significant period of time, the absence of evidence of confusion will weigh against the opponent’[17]. Furthermore, as identified in the Opponent’s Submissions, the provisions of ss 44(3) and 44(4) relating to honest concurrent use and prior use have no equivalent application in respect of the s 60 ground.

    [17] [2015] ATMO 66, [68].

    37. Given that the Opponent has established that its substantially identical trade mark has acquired a reputation arising out of its use in connection with services that have a strong connection with the Goods and Services it is easy to anticipate a circumstance where a consumer, familiar with the Opponent’s Activeskin Mark as the mark of a cosmetics retailer, would see either of the Trade Marks used for (for example) a cosmetic product and be caused to wonder whether that cosmetic product was a private label product offered by the Opponent. While the Opponent’s reputation in the Activeskin Mark is on the weaker end of the spectrum, the degree of similarity between the respective marks and the nexus between the respective goods and services is such that the use of the use either of the Trade Marks in connection with the Applicant’s Goods and Services would be likely to deceive or cause confusion. I find that the Opponent established the ground of opposition pursuant to s 60 of the Act.

    Decision

    38. I have found the Opponent has established the ground of opposition pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Marks.

    Costs

    39.     The parties each sought costs. As the successful party, the Opponent is so entitled.

    40.     In respect of trade mark number 1682979 I award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995.

    41.     In respect of trade mark number 1688858 I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[18]

    [18] [2001] ATMO 78.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    11 June 2019