Retail Royalty Company v Aloe Vera of America, Inc

[2017] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Retail Royalty Company to registration of trade mark application no(s) 1506390 – FOREVER with eagle device– and 1506397 – FOREVER LIVING PRODUCTS with eagle device– and 1506400 – eagle device- filed in the name of Aloe Vera of America, Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: David Larish of counsel instructed by Spruson & Ferguson Applicant: Philip Kerr of Allens Linklaters
Decision:	2017 ATMO 7 Trade Marks Act 1995 – Section 52 opposition: Sections 42(b), 44 and 60 pressed – s 44 successful – applicant’s evidence insufficient - no need to consider additional grounds.

Background

1. Aloe Vera of America, Inc. (‘the applicant’) filed its three divisional trade mark applications on 3 August 2012 in class 3 of the International Classification of Goods and Services. Relevant details of the applications are set out below.

   Trade mark:  

   Trade mark application:      1506390

   Lodgement Date:                  3 August 2012

   Divisional Date:  31 January 2007

   Divisional Number:             1158730

   Specification:  Class 3: Non-medicated skin care preparations, namely, cleansers, moisturizers, toners, conditioners, emollients and exfoliants for the face and body; skin brightener to reduce the appearance of dark pigmentation; topical cream to reduce the appearance of cellulite; hair care preparations, namely, shampoo, conditioner, styling gel, hairspray and fixatives; non-medicated personal hygiene preparations, namely, personal deodorant, after-shave lotion, tooth gel, mouthwash; cologne for men and women; cosmetic products, namely, non-medicated lip balm; multi-purpose detergent; all-purpose household cleaning preparations

   Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

   Trade mark:  

   Trade mark application:      1506397

   Lodgement Date:                  3 August 2012

   Divisional Date:  31 January 2007

   Divisional Number:             1158731

   Specification:  Class 3: Non-medicated skin care preparations, namely, cleansers, moisturizers, toners, conditioners, emollients and exfoliants for the face and body; skin brightener to reduce the appearance of dark pigmentation; topical cream to reduce the appearance of cellulite; hair care preparations, namely, shampoo, conditioner, styling gel, hairspray and fixatives; non-medicated personal hygiene preparations, namely, personal deodorant, after-shave lotion, tooth gel, mouthwash; cologne for men and women; cosmetic products, namely, foundation, concealer, facial powder, bronzer, blush, eye shadow in powder and/or liquid form, lining pencils for the lips, eyes and eyebrows, mascara, lipstick, lip gloss, non-medicated lip balm and makeup remover; multi-purpose detergent; all-purpose household cleaning preparations
   
   

   Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

   Trade mark:  

   Trade mark application:      1506400

   Lodgement Date:                  3 August 2012

   Divisional Date:  31 January 2007

   Divisional Number:             1158732

   Specification:  Class 3: Non-medicated skin care preparations, namely, cleansers, moisturizers, toners, conditioners, emollients and exfoliants for the face and body; skin brightener to reduce the appearance of dark pigmentation; topical cream to reduce the appearance of cellulite; hair care preparations, namely, shampoo, conditioner, styling gel, hairspray and fixatives; non-medicated personal hygiene preparations, namely, personal deodorant, after-shave lotion, tooth gel, mouthwash; cologne for men and women; cosmetic products, namely, foundation, concealer, facial powder, bronzer, blush, eye shadow in powder and/or liquid form, lining pencils for the lips, eyes and eyebrows, mascara, lipstick, lip gloss, non-medicated lip balm and makeup remover; multi-purpose detergent; all-purpose household cleaning preparations

   Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

2. The applications (which I will collectively refer to as the ‘opposed trade marks’) were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 November 2014. Retail Royalty Company (‘the opponent’) filed Notices of Intention to Oppose the registration of the trade marks on 13 January 2015. The Notices of Intention to Oppose registration were followed by statements of grounds and particulars on 13 February 2015. These documents, all taken together, constitute the Notices of Opposition (‘the Notices’). Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matters in Canberra on 21 October 2016 as a delegate of the Registrar of Trade Marks. David Larish of Counsel instructed by Spruson & Ferguson represented the opponent. The applicant was represented by Philip Kerr of Allens Linklaters.

   Grounds of Opposition

4. The Notices nominated three grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponents to establish one or more of their grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] That is the standard I adopt here.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

5. Prior to the hearing the opponents advised that they would press and provide submissions on the grounds under sections 42(b), 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the goods in the specification of the opposed trade marks, there is no requirement for the other grounds of opposition to be considered.

   Evidence

   6.     Prior to the hearing on the substantive issue, I proposed to direct under Reg 21.16 (6) and (7) that all evidence in these proceedings be joined and considered as a whole when I made my decisions. The applicant objected. However, I was not persuaded by the applicant’s objection and the evidence was subsequently joined.

   7.     Therefore, the evidence consists of the following declarations:

   Opponent’s Evidence

   ·Declaration of Esta Cohen made on 6 August 2015 with exhibits 1 to 24 (“Cohen 1”)

   ·Declaration of Esta Cohen made on 9 February 2015 with exhibit  EC-1 (“Cohen 2”)

   ·Declaration of Amanda Caldwell made on 18 December 2015 with exhibit AC-1 (“Caldwell 1”)

   ·Declaration of Amanda Caldwell made on 26 June 2015 with exhibit AC-1 (“Caldwell 2”)

   Applicant’s Evidence

   ·Declaration of Navaz Ghaswala made on 2 October 2015 with exhibits NG-1 to NG-25 ( “Ghaswala 1”)

   ·Declaration of Navaz Ghaswala made on 7 December 2015 with exhibits NG-1 to NG-25 ( “Ghaswala 2”)

   Discussion

   Section 44 - Identical etc. trade marks:

6. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and 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)…; 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.

7. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

   Ø  a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade marks  are either substantially identical or deceptively similar;

   Ø  the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

   Ø  the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

8. The opponent is most notably the owner of trade mark registration no. 1112956 which has earlier priority dates than that of the opposed trade marks. The details of that registration are as follows:

   
   Trade mark:  

   Trade mark application:      1112956

   Lodgement Date:                  9 May 2006

   Convention Details:              31 January 2006

   78/803194 United States of America

   Specification:  Class 3: After-shave lotions, non-medicated lip balm, bath oil, bath powder, non-medicated bath salts, bubble bath, beauty masks, body cream, body oil, body powder, cologne, perfume, toilet water, cosmetic pencils, hand cream, eye cream, night cream, shaving cream, skin cleansing cream, skin cream, deodorant soap, personal deodorants, antiperspirants, and combination deodorants/antiperspirants, emery boards, essential oils for personal use, eye makeup, eye makeup remover, eye pencils, eye shadow, eyebrow pencils, eyeliners; face powder, facia1 scrubs, foundation makeup, bath gel, shaving gel, shower gel, lip gloss, lipstick, hair conditioners, hair gel, hair rinses, hair spray, skin lotion, facial lotion, body lotion, makeup, facial makeup, mascara, massage oil, skin moisturizer, nail enamel, nail polish, rouge, sachets, hair shampoo, shaving balm, shaving lotion, skin cleansing lotion, skin soap, skin toners, liquid soaps for hand, face, and body, and cosmetics, including compacts

   Class 18:Athletic bags, all-purpose athletic bags, all-purpose sports bags, backpacks, barrel bags, beach bags, book bags, clutch bags, duffel bags, gym bags, leather shopping bags, shoulder bags, tote bags, travel bags, billfolds, briefcases, business card cases, calling card cases, credit card cases, attache cases, document cases, key cases, overnight cases, passport cases, passport wallets, passport holders, credit card holders, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, clutch purses, coin purses, drawstring pouches, waist packs, handbags, leather key fobs, knapsacks, luggage, luggage tags, pocketbooks, briefcase-type portfolios, purses, rucksacks, satchels, suitcases, and wallets

   Class 25: Clothing and accessories, including blazers, vests, sweaters, turtleneck sweaters, sweater coats, skirts, skorts (combination skirt and shorts), pants, jeans, shorts, shirts, t-shirts, sport shirts, pull-overs, overalls, blouses, shortalls, polo shirts, rugby shirts, halters, halter tops, sweatshirts, sweatpants, and fleecewear; swimwear; beach cover-ups; sleepwear; pyjamas; robes; underwear, including bras, panties, boxer shorts, shell bra tanks, and undershirts; outerwear, including jackets, vests, parkas, coats, pea coats, ski pants and ski jackets, 3-in-1 system coats, snowboarding pants and jackets, anoraks, gloves, ear muffs, scarves and mittens; ties; belts; footwear, including socks, shoes, slippers, leather boots, rubber boots, insoles, sandals, flipflops, sneakers, clogs and slides, and hosiery; athletic footwear, including athletic shoes, trail and hiking shoes and boots, canvas shoes, and rollerskates; headwear, including hats, hoods, caps, baseball caps, visors, sun visors, headbands, babushkas, head and wrist sweatbands, headscarves, berets

   Endorsements:  Convention priority claimed: 31 January 2006, United States of America, No. 78/803194 in respect of AFTER-SHAVE LOTIONS, NON-MEDICATED LIP BALM, BATH OIL, BATH POWDER, NON-MEDICATED BATH SALTS, BUBBLE BATH, BEAUTY MASKS, BODY CREAM, BODY OIL, BODY POWDER, COLOGNE, PERFUME, TOILET WATER, COSMETIC PENCILS, HAND CREAM, EYE CREAM, NIGHT CREAM, SHAVING CREAM, SKIN CLEANSING CREAM, SKIN CREAM, DEODORANT SOAP, PERSONAL DEODORANTS, ANTIPERSPIRANTS, AND COMBINATION DEODORANTS/ANTIPERSPIRANTS, EMERY BOARDS, ESSENTIAL OILS FOR PERSONAL USE, EYE MAKEUP, EYE MAKEUP REMOVER, EYE PENCILS, EYE SHADOW, EYEBROW PENCILS, EYELINERS, FACE POWDER, FACIAL SCRUBS, FOUNDATION MAKEUP, BATH GEL, SHAVING GEL, SHOWER GEL, LIP GLOSS, LIPSTICK, HAIR CONDITIONERS, HAIR GEL, HAIR RINSES, HAIR SPRAY, SKIN LOTION, FACIAL LOTION, BODY LOTION, MAKEUP, FACIAL MAKEUP, MASCARA, MASSAGE OIL, SKIN MOISTURIZER, NAIL ENAMEL, NAIL POLISH, ROUGE, SACHETS, HAIR
   
   SHAMPOO, SHAVING BALM, SHAVING LOTION, SKIN CLEANSING LOTION, SKIN SOAP, SKIN TONERS, LIQUID SOAPS FOR HAND, FACE, AND BODY, AND COSMETICS, INCLUDING COMPACTS in class 3, ATHLETIC BAGS, ALL-PURPOSE ATHLETIC BAGS, ALL-PURPOSE SPORTS BAGS, BACKPACKS, BARREL BAGS, BEACH BAGS, BOOK BAGS, CLUTCH BAGS, DUFFEL BAGS, GYM BAGS, LEATHER SHOPPING BAGS, SHOULDER BAGS, TOTE BAGS, TRAVEL BAGS, BILLFOLDS, BRIEFCASES, BUSINESS CARD CASES, CALLING CARD CASES, CREDIT CARD CASES, ATTACHE CASES, DOCUMENT CASES, KEY CASES, OVERNIGHT CASES, PASSPORT CASES, PASSPORT WALLETS, PASSPORT HOLDERS, CREDIT CARD HOLDERS, COSMETIC CASES SOLD EMPTY, TOILETRY CASES SOLD EMPTY, VANITY CASES SOLD EMPTY, CHANGE PURSES, CLUTCH PURSES, COIN PURSES, DRAWSTRING POUCHES, WAIST PACKS, HANDBAGS, LEATHER KEY FOBS, KNAPSACKS, LUGGAGE, LUGGAGE TAGS, POCKETBOOKS, BRIEFCASE-TYPE PORTFOLIOS, PURSES, RUCKSACKS, SATCHELS,
   
   SUITCASES, AND WALLETS in class 18, CLOTHING AND ACCESSORIES, NAMELY, BLAZERS, VESTS, SWEATERS, TURTLENECK SWEATERS, SWEATER COATS, SKIRTS, SKORTS (COMBINATION SKIN AND SHORTS), PANTS, JEANS, SHORTS, SHIRTS, T-SHIRTS, SPORT SHIRTS, PULL-OVERS, OVERALLS, BLOUSES, SHORTALLS, POLO SHIRTS, RUGBY SHIRTS, HALTERS, HALTER TOPS, SWEATSHIRTS, SWEATPANTS, AND FLEECEWEAR; SWIMWEAR; BEACH COVER-UPS; SLEEPWEAR; PAJAMAS; ROBES; UNDERWEAR, NAMELY BRAS, PANTIES, BOXER SHORTS, SHELL BRA TANKS, AND UNDERSHIRTS; OUTERWEAR, NAMELY, JACKETS, VESTS, PARKAS, COATS, PEA COATS, SKI PANTS AND SKI JACKETS, 3-IN-1 SYSTEM COATS, SNOWBOARDING PANTS AND JACKETS, ANORAKS, GLOVES, EAR MUFFS, SCARVES AND MITTENS; TIES; BELTS; FOOTWEAR, NAMELY, SOCKS, SHOES, SLIPPERS, LEATHER BOOTS, RUBBER BOOTS, INSOLES, SANDALS, FLIPFLOPS, SNEAKERS, CLOGS AND SLIDES, AND HOSIERY; ATHLETIC FOOTWEAR, NAMELY, ATHLETIC SHOES, TRAIL AND HIKING SHOES AND BOOTS,
   
   CANVAS SHOES, AND ROLLERSKATES, HEADWEAR, NAMELY, HATS, HOODS, CAPS, BASEBALL CAPS, VISORS, SUN VISORS, HEADBANDS, BABUSHKAS, HEAD AND WRIST SWEATBANDS, HEADSCARVES, BERETS in class 25 and RETAIL STORE SERVICES, ELECTRONIC RETAIL COMMERCE OVER THE INTERNET/WORLDWIDE WEB, CATALOG RETAIL SALES, MAIL ORDER AND PHONE ORDER RETAIL SALES, ALL FOR A WIDE RANGE OF FRAGRANCES, COSMETICS AND PERSONAL CARE GOODS OF THE TYPE FOUND IN INTERNATIONAL CLASS 3; CANDLES; SUNGLASSES; JEWELRY AND WRISTWATCHES; STATIONERY, POSTERS, PICTORIAL, ART AND COLOR PRINTS, CALENDARS AND TRAVEL DIARIES, PENS, PENCILS, PORTFOLIOS, NOTEPADS, GREETING CARDS, AND NOTE CARDS; A WIDE RANGE OF GOODS OF THE TYPE FOUND IN INTERNATIONAL CLASS 18, INCLUDING WALLETS, HANDBAGS, PURSES, SHOULDER BAGS, AND LUGGAGE, SCHOOL BAGS, BACKPACKS, DAYPACKS, WAIST PACKS, DUFFLE BAGS, GENERAL PURPOSE SPORT BAGS, LAUNDRY BAGS, AND PORTFOLIOS; AND
   
   UMBRELLAS; AND A WIDE RANGE OF WEARING APPAREL AND CLOTHING ACCESSORIES, INCLUDING CLOTHING, HEADWEAR AND FOOTWEAR in class 35

9. The opposed trade marks cover the same goods in class 3 as those goods which are specified in the opponent’s trade mark registration. The remaining issue for me to determine is whether any of the opposed trade marks are either substantially identical with or deceptively similar to the opponent’s previously registered trade mark.

Comparison of the trade marks

1. A comparison of the trade marks reveals there are striking similarities between the respective trade marks:

Applicant’s trade marks

Opponent’s trade mark

1.

2.

3.

1. It is obvious that the applicant’s first two trade marks are not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”)[2]. There are additional words within the applicant’s first two trade marks which act as a clear visual and aural difference between the respective trade marks and which are sufficient to preclude a finding of substantial identity.

   [2] (1963) 109 CLR 407 [414]

2. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade marks.[3] The likelihood of deception must be finite and non-trivial.[4]

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] ‘Shell’

   [4] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell at 415:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The principles laid out in these tests have not been challenged.

6. The applicant has argued that trade mark application no. 1506390 FOREVER with eagle device  and trade mark application no. 1506397 FOREVER LIVING PRODUCTS with eagle device are clearly differentiated from the opponent’s trade mark by way of the additional words “FOREVER” and “FOREVER LIVING PRODUCTS”. It is the applicant’s position that these words prevent the trade marks from being deceptively similar to the opponent’s trade mark because the opposed trade marks, as a whole, convey a completely different impression to consumers. In regards to trade mark application no. 1506400 the eagle device solus, the applicant states that as the opponent did not object to the applicant’s use of the eagle device in the United States and that as the opponent has not provided any instances of confusion between the trade marks, the trade marks are not deceptively similar.

7. However, I do not agree with the applicant. The eagle devices share numerous similarities: both are silhouettes which are clearly of eagles having two wings open and extended upward along with the head pointed downward and two claws extended forward and under the beak of the eagle. While the applicant’s eagle device appears to be holding a branch (or aloe branch more specifically when very carefully considered) and faces in the opposite direction to the opponent’s eagle device, these are small differences that are only evident on a side-by-side comparison and are insufficient to differentiate the trade marks from each other when considering deceptive similarity. Despite the applicant’s submissions, I am satisfied that the applicant’s third trade mark for the eagle device solus is at least deceptively similar to the opponent’s eagle trade mark. 

8. With regard to the applicant’s first two trade marks which contain word elements, while the word elements in the applicant’s trade marks preclude a finding of substantial identity, they do not preclude a finding of deceptive similarity. The applicant has argued that a consumer is likely to refer to the goods by the word element and not the eagle device. I accept that there is a difference between in the respective trade marks in that the applicant’s trade marks contain words, however, the eagle device is a very striking and prominent feature of the opposed trade marks and it is the only element of the opponent’s trade mark. An eagle device is very original and striking when applied to the goods which are the subject of the applications.

1. Taking all the above factors into the assessment of judging the respective wholes of the trade marks I find that there is a real and tangible danger that Australian consumers imperfectly recalling the opponent’s trade mark would be deceived or confused as to trade source upon encountering the applicant’s goods bearing the opposed trade marks. Therefore, I find all the opposed trade marks to be deceptively similar to the opponent’s trade mark. However, paragraphs 44(3) and subsection 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

2. In order to consider any potential prior use and honest concurrent use or other circumstances. I turn to the applicant’s evidence.

   Considering the applicant’s evidence

3. The applicant was founded in Arizona in 1978 and it sells health and beauty products based on the plant, aloe vera. From what I understand, the applicant is a form of multi-level marketing company and has grown considerably on an international level since it was founded. Its products are sold directly to individuals through sales representatives (‘independent distributors’) who invest an amount of money for aloe vera products and are encouraged to recruit other independent distributors and sell the applicant’s goods.

4. Ghaswala 2 states that the eagle device was taken as the applicant’s new company logo in May 2006 because Rex Maughan, President and CEO of the applicant, issued a special announcement that explained how he was inspired by catching sight of an eagle and that led him to adopt a depiction of the eagle as the company logo. This announcement appears in a copy of a company newsletter contained in Exhibit NG-4. Ghaswala 2 states that the eagle device trade mark has been used by the applicant in Australia, both on its own and in conjunction with its trade marks FOREVER LIVING PRODUCTS and FOREVER in relation to the relevant goods since at least July 2006. This first use in July 2006 means that section 44(4) is not a relevant consideration. Australian company newsletters from 2006 are provided in exhibits NG-8 to NG-10 which demonstrate use of the eagle device in various ways, sometimes including the word FOREVER. However, I note that there are limited examples of the applicant using any of its eagle device trade marks before the priority date of the applications. Rather, the vast majority of the evidence before me is dated long after the priority dates of the opposed trade marks.

5. Ghaswala 2 at paragraph 20 outlines the number of independent distributors offering goods for sale under the opposed trade marks in Australia. That number at first glance appears to be considerable. However, it is unclear to me how many of these distributors are ‘active’ or engaged in selling the applicant’s goods, or indeed, have made more than an initial purchase.

6. Ghaswala 2 goes on to explain that the applicant sells its products directly to local distributors in Australia and via its website and paragraph 30 of the declaration outlines the wholesale figures for sale of the applicant’s goods in Australia from 2007 until 2015. These figures appear steady with little fluctuation. The applicant has also provided the total world-wide sales figures from 2006 until 2014. These figures are very significant, however, I note that on the basis of these world-wide figures that the sales figures for Australia are nominal at best.

7. Turning to the Australian sales figures, confidential exhibit accompanying Ghaswala 2 contains copies of invoices of goods sold in Australia. The invoices are very faint and not many of the details are legible though I can make out the word Australia, the letter head stating ALOE VERA OF AMERICA, INC, the occasional word FOREVER in the item/description list and potentially year numbers such as 2007. None of the invoices contain the applicant’s trade marks as applied for nor are the invoices clear enough for me to properly ascertain when or to whom the items were shipped and the total amount due does not appear to be in the delegated box in the invoices.

8. Ghaswala 2 claims that the goods listed in the invoices are all presented with one or other of the applicant’s trade marks on the packaging of the goods. To this end, exhibit NG-15 accompanying Ghaswala 2 contains copies of different invoices dated from 2008 until 2012 with the products on top of the invoice to show how the applicant’s trade marks are used on the products listed in the invoices. But those same products also cover up a number of details on the invoices. The packaging of some of these products do include the eagle device and sometimes the applicant’s FOREVER with eagle device trade mark. Although I note that a number of the goods in the exhibit are not those goods covered by the opposed applications and appear to be vitamin supplements and juices. Once again, the exhibits are also dated after the priority date of the opposed trade marks. I also note from exhibit NG-16 which contains a copy of the applicant’s product catalogue that while a number of products are sold under the applicant’s various eagle device trade marks there are also a considerable number of products which do not contain any of the opposed trade marks but rather other trade marks such as an seagull device or other unrelated trade marks.

9. David Larish, Counsel for the opponent, pointed out that the vast majority of the applicant’s evidence of use of its eagle device trade marks is dated after the priority date of the opposed trade marks. Philip Kerr, the representative for the applicant, acknowledged at the hearing that there are very limited examples of the applicant using the opposed trade marks on the relevant goods before the priority date but argued that the Registrar is entitled to take account of any use and relevant circumstances after the priority date and that the length and extent of honest concurrent use after the date of the application is a relevant consideration[5].

   [5] PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47; “Granada” trade mark [1979] RPC 303; B & T (Bantel) Ltd v Caterpillar Tractor Co [1982] IPD 4123; “Bud” Trade mark [1988] RPC 535 (chD); Trepper v Miss Slefridge Ltd (1991) 23 IPR 335; Dinning v New Balance Athletic Show Inc (1992) AIPC 90-931

10. The priority date is the relevant date for honest concurrent use but as recognized in Conde Nast Publications Pty Ltd v Taylor[6], evidence of events after the priority date may be admitted to illuminate the likelihood of confusion as at the priority date[7]. In this case there are very limited examples of use before the priority date and the evidence of use after the priority date is ambiguous. I am not satisfied it is appropriate to apply subsection 44(3)(a).

    Section 44(3)(b): Other circumstances

    [6] [1998] FCA 864; (1998) 41 IRP 509 and other like authority

    [7] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [245]

11. Mr Kerr argues that section 44(3)(b) deals with commercial realities which, in the Registrar’s opinion, demonstrate that acceptance of a trade mark application is justified even if she considers there to be a real risk of deception or confusion. He further maintains that it is evident from the decade of coexistence in Australia without instances of confusion that there is no real risk of confusion or deception in the marketplace and that the trade marks should be accepted under section 44(3)(b). However, I do not share Mr Kerr’s opinion.

12. While I certainly may take into account a decade of use after the priority dates of the applications when making my decision, statements made by declarants must be supported by considerable and clear evidence of use. In this situation I am faced with a number of exhibits dated after the priority dates which are limited to a few products including lip balm, bath gel and moisturizing creams and not to the broad range of products listed in the specification of goods for the opposed trade marks. I am also faced with the applicant’s evidence in exhibit NG-16 which is copies of its catalogues with a number of its goods being branded with trade marks other than the opposed trade marks. From what I am able to read on the invoices in confidential exhibit NG-12, there are a number of products listed on those invoices which may or may not bear the opposed trade marks based on the pictures of products in exhibit NG-16. Indeed, it appears that the applicant uses the term SONYA rather than the opposed marks on its makeup goods including eye shadow and this is supported by exhibits NG-12 and NG-16.

13. Given the fact that the vast majority of this evidence is dated after the priority dates of the opposed trade mark applications the ambiguities in the evidence before me work against the applicant. The opponent has established a section 44 ground of opposition against each of the applicant’s trade marks, and the evidence provided by the applicant is simply not sufficient to satisfy me, on the balance of probabilities, that it is appropriate to apply section 44(3)(b).

14. The ground of opposition under section 44(1) of the Act has been established.

    Decision

15. 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.

16. I find that the opponent has met the onus upon them, in terms of the ground of opposition under section 44. Accordingly I refuse to register trade mark application no(s). 1506390, 1506397 and 1506400.

    Costs

17. 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 in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    20 January 2017