Rhythm & Blue Inc Limited v The Temple Skincare Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Rhythm & Blue Inc Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by The Temple Skincare Pty Ltd to remove trade mark number 844671 (42) – TEMPLE SPA - in the name of Rhythm & Blue Inc Limited

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Simon Gapes of Griffith Hack

Removal Applicant: Joseph Elks of Counsel instructed by Progressive Legal Pty Ltd

Decision:

2023 ATMO 178

Trade Marks Act 1995 (Cth) – application under section 92 – section 92(4)(b) application for non use – no use shown – discretion not exercised – trade mark removed

Background

Rhythm & Blue Inc Limited (‘Removal Opponent’) is the registered owner of the following trade mark (‘Registration’):
Registration Number:                    844671
Trade Mark:  TEMPLE SPA (‘Trade Mark’)
Filing Date:  1 August 2000
Specification:  Class 42: Beauty salons, hair salons, health clinics; provision of information and consultancy services relating to health, beauty and body care (‘Registered Services’)
On 11 February 2020 a non-use application (‘Application’) based on s 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] was filed in the name of Rene Thorpe and Justin Herald. As a result of amendments, the removal applicant is now The Temple Skincare Pty Ltd (‘Removal Applicant’). The Application is for the removal of the Trade Mark from the Australian Register of Trade Marks (‘Register’) in respect of all the Registered Services.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 6 April 2020 the Removal Opponent filed a Notice of Intention to Oppose the removal of the Trade Mark, followed by its Statement of Grounds and Particulars (‘SGP’) on 5 May 2020. On 23 July 2020 the Removal Applicant filed a Notice of Intention to Defend the Application.
The Removal Opponent filed the following declaration as evidence in support:
·Declaration of Mark Warom, Chief Executive Officer and a Director of the Removal Opponent, made on 7 April 2021, with Annexures MW-1 to MW-16 (‘Warom’).
The Removal Applicant filed the following declaration as evidence in answer:
·Declaration of Rene Herald, Director of the Removal Applicant, made on 9 July 2021, with Annexures RH-1 to RH-16 (‘Herald’).
The Removal Opponent filed the following declaration as evidence in reply:
·Declaration of Chris O’Sullivan, Executive Director of the Removal Opponent, made on 7 September 2021, with Annexures CO-1 (‘O’Sullivan’).
Once time for filing evidence had ended an oral hearing was requested by both parties. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 16 October 2023. Simon Gapes of Griffith Hack appeared on behalf of the Removal Opponent. Joseph Elks of Counsel instructed by Progressive Legal Pty Ltd appeared on behalf of the Removal Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.
Legal Framework
Part 9 of the Act deals with the removal of trade marks from the Register due to non-use.
Section 92(4)(b) provides:
Application for removal of trade mark from Register etc.
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
[…]
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for the registration of the Trade Mark,[2] and I confirm that five years since filing the application for the registration of the Trade Mark have in fact passed.
[2] See s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1. Pt 3) as applies in the present matter. The amended s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.
For the purposes of s 92(4)(b) the relevant period is the three year period ending on 11 January 2020 (‘Relevant Period’).
Pursuant to s 100(1), the Removal Opponent bears the onus of rebutting an allegation made under s 92(4)(b).
In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.[3] Provided the use is in good faith, a ‘single bona fide use of the mark’ may be enough to rebut an allegation of non-use.[4] Little weight is to be given to assertions of use which are not supported by documentary evidence.[5] In Nodoz Trade Mark, Wilberforce J said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[6]
[3] [2001] FCA 261, [16].
[4] Ibid [17].
[5] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[6] (1962) RPC 1, 7.
I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[7]
[7] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of an action opposing registration rather than removal.
In accordance with s 101, if the ground for removal is established, I may decide to remove the Trade Mark from the Register in respect of any of the Registered Services identified in the Application, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark from the Register.
Discussion
Established in 2000, the Removal Opponent is an English company that manufactures, markets and sells a luxury range of beauty, skincare, bath and body care, spa and aromatherapy products.
The Removal Opponent submits that it does not operate ‘bricks and mortar’ beauty salons, hair salons, or health clinics or provide the Registered Services: beauty salons; hair salons; and health clinics, in Australia. However, the Removal Opponent submits that since 2000 the provision of advice and consultancy services has been an integral aspect of its business and that it has provided the services ‘provision of information and consultancy services relating to health, beauty and body care’ under or by reference to the Trade Mark during the Relevant Period.
Use of the Trade Mark during the Relevant Period
The Removal Opponent submits that the services ‘provision of information and consultancy services relating to health, beauty and body care’ are provided through several channels, including through its website blog page, social media accounts, through its partnerships with spas and salons, and its Spa to Go (‘STG’) service.
Annexure MW-6 to Warom comprises copies of weblog posts from the Removal Opponent’s website dated between January 2018 to November 2019. The weblogs are titled:
·Multi-masking;
·Tips for a better nights sleep;
·Facial and Skin Oil Ritual: The Facial and Skin Ritual;
·Perfect Bronzed Pins and Limbs;
·Lizy’s Diary – Glamping, Aromatherapy and the Benefits of Staycations;
·Autumn Skincare Tips for your Handy;
·How & Why You Should Detox Your Skin;
·Lizy’s Diary – Navigating A New Year;
·Holiday Skincare Advice;
·What is Blue Light;
·Discover your hydration hero with our co-founder Liz Warom; and
·Winter Beauty Tips.
The weblog header in each of the above posts is shown below:
The weblog footer in each of the above posts is shown below:
Confidential Annexure MW-7 to Warom comprises an undated report listing the number of Australian internet users who have viewed the Removal Opponent’s weblog posts.
The Removal Opponent submits that it uses the Trade Mark through its STG service which is its direct selling, salon, beauty consultancy and spa platform. For context, in O’Sullivan, Mr O’Sullivan reproduces a screenshot of the participants in a STG spa class held in Scotland via videoconference in April 2021. The spa class participants included guests or customers in London, Melbourne and Brisbane. The screenshot shows the host sitting in front of a banner promoting the following trade marks:
Confidential Annexure MW-16 to Warom is a copy of the Removal Opponent’s order list detailing product sales into Australia directly from its STG consultants dated from February 2018 to December 2020.
The Removal Opponent submits that it also provided the services being ‘provision of information and consultancy services relating to health, beauty and body care’ through its social media accounts, and through its partnerships with spas and salons, however there is no evidence before me of these services being provided via these channels during the Relevant Period.
In my assessment of the evidence, the only trade mark used by the Removal Opponent in relation to its weblog and STG services consists of a device of a three pillar temple atop the word TEMPLESPA without a space between the words TEMPLE and SPA (‘Removal Opponent’s logo trade mark’). Therefore, under s 100(3)(a), I must consider whether use of the Removal Opponent’s logo trade mark is use of Trade Mark with additions or alterations not substantially affecting its identity. The test is the same as the test in respect of substantial identity and this requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[8] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:
[8] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Trade Mark

Removal Opponent’s logo trade mark

TEMPLE SPA

On a side by side comparison I find that the device element in the Removal Opponent’s logo trade mark is sufficient for me to conclude that the respective trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of resemblance. As such I find that the Removal Opponent has not used the Trade Mark in relation to the Registered Services during the Relevant Period.
Obstacles to use
In the SGP the Removal Opponent stated that if there has been no use of the Trade Mark within the Relevant Period, any failure to use was due solely to circumstances that were an obstacle to the use of the Trade Mark and was not due to an intention to abandon the Trade Mark or due to an intention not to use it in relation to the Registered Services.
The Removal Opponent has not formally set out any matters in its evidence or submissions that amount to an obstacle to the use of the Trade Mark for the Registered Services in the Relevant Period, pursuant to s 100(3)(c) and I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Mark to remain on the Register for any of the Registered Services.
Registrar’s Discretion
Section 101(3) provides:
101 Determination of opposed application—general
[…]
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
[…]
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd, the Full Court of the Federal Court provided the following observations regarding the discretion under s 101(3):
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. …
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. …
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[9]
[9] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).
The Removal Opponent submits that it has not abandoned the Trade Mark and the Registrar should exercise discretion to retain all the Registered Services because use or registration of the Trade Mark for these services by a third party is likely to cause consumer confusion. Furthermore, the Removal Opponent considers that the provision of beauty advice and related services is a natural extension of the manufacture and sale of goods by the Removal Opponent.
The Removal Opponent submits that it has been marketing and selling beauty products in Australia since 2011.[10] Confidential Annexure MW-9 to Warom comprises a copy of a spreadsheet listing the Removal Opponent’s product sales to Australian addresses from September 2018 to February 2020. Confidential Annexure MW-10 to Warom comprises copies of invoices for the above product sales. Annexure MW-11 to Warom comprises copies of the Removal Opponent product brochures sent to Australian customers.
[10] Warom [5] and [6].
Mr Warom deposes the Removal Opponent has partnered with Wyndham Hotels & Resorts in the Asia-Pacific region as an official supplier of beauty and cosmetic products to Wyndham Hotels and Ramada Resorts in Australia.[11]
[11] Warom [26] to [28], Confidential Annexures MW-14 and 15.
Confidential Annexure MW-1 to Warom comprises of the Removal Opponent’s global sales for the years 2017 to 2021.
Confidential Annexure MW-12 to Warom is a copy of the Analytics All Web Site Data for Australian internet users activity to the Removal Opponent’s website from January 2017 to December 2020. Confidential Annexure MW-13 to Warom is a copy of the Removal Opponent’s Digital Footprint in Australia for Facebook and Instagram from January to December 2020.
In regard to the Removal Opponent’s future plans for Australia, in Warom, Mr Warom declares that the Removal Opponent intends to roll out its STG program internationally, first in the United States of America in 2022 and then in Australia in 2023.
The Removal Applicant argues that in the absence of evidence and a good reason why the Trade Mark should remain on the Register it should be removed.
I am not persuaded by the Removal Opponent’s position that is reasonable to not remove the Trade Mark. The Trade Mark has been registered since 2000 and the Removal Opponent’s evidence does not establish that it has used the Trade Mark in relation to the Registered Services either before, during or after the Relevant Period. While the Removal Opponent’s global sales are substantial, there is no breakdown of goods and services and no separate figures for Australia. The evidence does show that the Removal Opponent has made sales of its goods in Australia, however the goods feature the Removal Opponent’s logo trade mark and not the Registration. Furthermore, there is no evidence that the Removal Opponent has targeted Australian consumers by its website or social media accounts. As such I do not find that the Removal Opponent has a residual reputation in the Trade Mark in Australia.
I also note that the Removal Opponent deposes that it intends to roll out its STG program in Australia in 2023 and that use of the Trade Mark for the Registered Services is part of its legitimate business needs. However, the Removal Opponent has not provided a documented business plan for the rollout of the STG program in Australia or corroborated any steps taken in the furtherance of this purported intention. Nor has the Removal Opponent provided evidence that manufacturers of cosmetic and beauty products provide beauty advice and related services as a natural extension to their businesses.
The Registration has been on the Register for 20 years and the Removal Opponent has not used the Trade Mark as registered. In the absence of evidence, I am unpersuaded that the removal of the Trade Mark for the Registered Services would result in consumer confusion or practically impact on the interests of the Removal Opponent in any way. Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Registered Services.
Decision
The ground for removal under s 92(4)(b) has been established in respect of the Registered Services.
I direct that trade mark registration 844671 be removed from the Register. In the event of an appeal, the disposition of the removal will instead be subject to the decision made by the Court.
Costs
Both parties sought an award of costs. 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 Removal Opponent as allowed by Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
3 November 2023

[2023] ATMO 178

3 November 2023

Key Legal Topics

Areas of Law

Intellectual Property

Statutory Interpretation

Legal Concepts

Remedies

Costs

Statutory Construction

Appeal