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

This matter concerned oppositions by Yey Pty Ltd to two trade mark applications, 1682979 and 1688858, both for the mark "Activeskin" (or "activeskin"), filed by Active Skin Pty Ltd. The applications were for goods and services in classes 3 and 35, relating to cosmetics and retail services for cosmetics. The decision was made by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the grounds of opposition, particularly under section 60 of the *Trade Marks Act 1995* (Cth), had been established. This section concerns whether a trade mark is likely to deceive or cause confusion due to its identity or similarity to another trade mark in which the opponent has acquired reputation. The delegate also considered the applicant's claim of confidentiality over its evidence and how this impacted the assessment of the opposition.

The delegate adopted the approach of a previous decision in *Source Homeloans Pty Ltd v Coles Group Ltd*, holding that a broad claim of confidentiality over all evidence would unduly hinder the assessment of the opposition. The delegate found that while some commercially sensitive matters might exist, the applicant had not sufficiently identified them. Crucially, the delegate determined that the applicant's trade marks were substantially identical to the opponent's "Activeskin" mark, which had acquired a reputation in the retail of cosmetics. Despite the opponent not providing evidence of actual confusion, the delegate found that the similarity of the marks and the strong connection between the opponent's reputation and the applicant's goods and services made it likely that consumers would be deceived or confused into believing the applicant's products were private label offerings from the opponent. Therefore, the ground of opposition under section 60 was established.

As a result, the delegate refused to register both trade mark applications. The opponent, being the successful party, was awarded costs, with costs for one application being awarded as per Schedule 8 of the *Trade Mark Regulations 1995* and reduced costs for the other application.