Sephora v Anthony Rechtman as Trustee for TBN Unit Trust

[2016] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Sephora to registration of trade mark application 1578821 (3) - Outrageous Volume Mascara - filed in the name of Anthony Rechtman as Trustee for TBN Unit Trust.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Gabriella Rubagotti of Counsel instructed by Victoria Bell of Baker & McKenzie Applicant: Ben Fitzpatrick of Counsel instructed by Hamish Rotstein of Rotstein Commercial Lawyers
Decision:	2016 ATMO 39 Trade Marks Act 1995 - s52 opposition to registration - s58: Opponent has prior use in Australia of identical trade mark for the same goods. Registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Anthony Rechtman as Trustee for TBN Unit Trust (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:         1578821
Priority Date:             6 September 2013
  (‘the Relevant Date’)

Goods:Class 3: Anti-sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the eyes; Colour cosmetics for the skin; Cosmetics; 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; 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); 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); Tints (cosmetics); Varnishes (cosmetics)

(‘the Specified Goods’)

Trade Mark:               Outrageous Volume Mascara

(‘the Trade Mark’)

1. The application was examined as mandated by section 33 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 29 May 2014.

2. On 29 July 2014, Sephora (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark.  Thereafter, the opposition process has followed the timetable set out below:

   29 August 2014 – Statement of Grounds and Particulars filed by the Opponent relevantly including the following ground:

   Applicant not the owner of the trade mark - Section 58

   (a) The Opponent is a retailer of perfumes, beauty products and cosmetics with its head office in France. The Opponent was founded in 1970 and now operates the leading chain of perfume and cosmetics stores in France.

   (b) The Opponent's first retail store outside France was opened in New York, USA in 1998. The Opponent currently operates approximately 1,300 stores in 27 countries worldwide including Canada, China, Malaysia and Singapore. The Opponent also operates a very successful website at (the Website).

   (c) The Opponent adopted the mark "Outrageous Volume Mascara" in respect of its mascara products in January 2012. The Opponent has been selling "Outrageous Volume Mascara" products in its retail stores located around the world and over its online store at the Website since the launch of the product in January 2012.

   (d) The Opponent's "Outrageous Volume Mascara" products have become extremely successful and popular throughout the world.

   (e) The Opponent's "Outrageous Volume Mascara" products have been available for sale on a website specifically targeted at Australian consumers and have been sold to Australian consumers since at least as early as November 2012.

   12 September 2014 – Notice of Intention to Defend filed by the Applicant.

   10 December 2014 – All Evidence in Support filed by the Opponent – Declarations of:

   Claire Combot, Intellectual Property Manager of the Opponent, made on 8 December 2014, together with Annexures CC-1 to CC-24; and,

   Jane Elizabeth Gurney, paralegal; of Baker & McKenzie, made on 10 December 2014, together with photographs of Exhibit JEG-1.

   29 April 2015 – All Evidence in Answer filed by the Applicant – Declaration of:

   Anthony Rechtman dated 16 April 2015 and exhibits AR-1 to AR-34

   5 August 2015 – All Evidence in Reply filed by the Opponent – Declaration by:

   Claire Combot, made on 16 July 2015, together with Annexures CC-25 to CC-27.

3. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties at a hearing in Canberra on 8 June 2016.  The Opponent was represented by Gabriella Rubagotti of Counsel instructed by Victoria Bell of Baker & McKenzie who attended by teleconference.  The Applicant was represented by Ben Fitzpatrick of Counsel instructed by Hamish Rotstein of Rotstein Commercial Lawyers.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The Relevant Date at which the grounds under section 52 of the Act must be considered is the filing date which is here the priority date of the opposed application[2].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

1. In submissions before me, this matter was argued primarily on the ground under section 58 with other grounds being pressed by the Opponent as fallback positions. In my view, the evidence is sufficient to satisfy the Registrar that the ground under section 58 has been established. It is convenient therefore to discuss the evidence in detail only as it relates to the section 58 ground and under that heading. It is sufficient to now summarise the Opponent’s argument as being that it had first sales in Australia under substantially identical trade marks (OUTRAGEOUS VOLUME and OUTRAGEOUS VOLUME MASCARA) in relation to the same goods (mascara) via an internet website before the Relevant Date and is therefore the owner of the Trade Mark.

Section 58

1. Section 58 of the Act provides:

   Applicant not owner of trade mark

   58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:  For applicant see section 6.

2. As observed by Kenny, Gyles & Allsop JJ in Colorado Group Ltd v Strandbags Group Pty Ltd[3]:

   [4]. In order for a person properly to register a trade mark, the person must be the owner (formerly, proprietor, which is the same thing) of the trade mark: see ss 27(1) and 58. As the learned primary judge said (in Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628 ("first judgment") at [23]):

   First, in respect of a mark which has never been used the proprietor is the person who is (or claims through) the author of the mark (which could include the copyist of a foreign mark) and intends to use it: In re Hudson’s Trade-Marks (1886) 32 Ch D 311, 319-320; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27; (1949) 78 CLR 601, 627-628.

   This proposition is not in doubt, although it does not assist in the present case.

   [5]. Where a person has used a mark prior to an application for registration (as in this case), this person may be regarded as the owner of the mark, providing another person has not made earlier use of it. This proposition is relevant here. Again, to quote the primary judge (in his first judgment at [23]):

   In the case of an inherently distinctive mark nothing more than first use is necessary to establish proprietorship. The applicant need not show that the mark has gained public recognition. Any general use of the mark as a trade mark will be enough, although in a rare case the use may be so inconsequential that it should be ignored as de minimis ... If a mark is not inherently distinctive but indicates that an article emanates from some (unusually anonymous) source because, or partly because, the mark has acquired a secondary meaning, strictly speaking first use is not sufficient to establish proprietorship. To make out proprietorship it is also necessary to show that the mark does in fact distinguish the applicant’s goods from the goods of others. Even if this is not an aspect of proprietorship, unless a secondary meaning is established s 41 would bar registration of the mark.

   [6]. The owner of a mark does not have rights at large in relation to the mark. The effect of the 1995 Act, which, in this regard, is much the same as earlier trade mark legislation, is that a trade mark must be registered in respect of particular goods or services as set out in Schedule 1 to the Trade Marks Regulations 1995 (Cth): see reg 3.1, 4.4 and Sch 1; also the 1995 Act, s 19 and 27. Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has first been used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods "of the same kind": see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and In re Hick’s Trade Mark (1897) 22 VLR 636 at 640.

   [3] [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246 from [4].

3. Accordingly, given that the goods of interest to the parties are, for the purposes of this decision, identical (mascara), the issues which arise for my decision are whether the trade marks are (as a minimum) substantially identical and if Opponent had first use of its trade marks (‘the Opponent’s Trade Marks’) in Australia.

4. In regard to first use of the Opponent’s Trade Marks, Ms Combot states in her first declaration:

   [12]. Up until 22 April 2014, Sephora's private label products (including its OUTRAGEOUS VOLUME mascara product) were available for sale in Australia through the website (‘the Tarazz Website’).

   [13]. The Tarazz Website is operated by Tarazz Pty Ltd[5] (‘Tarazz’),[6] an Australian company involved in the retail of cosmetics and beauty products, fashion, homewares, etc. Attached and marked Annexure CC-5 are copies of a company extract for Tarazz obtained from ASIC and a Whois extract for the domain name <tarazz.com.au>.

   [14]. Tarazz describes itself as "Australia's gateway to a world of retail brands, putting global shopping at your fingertips". The Tarazz Website claims as a point of difference the fact that they partner with brands that do not have a retail presence in Australia, or do not ship directly to Australia. Attached and marked Annexure CC-6 are copies of screenshots from Tarazz's "About us" website page. Attached and marked Annexure CC-7 are screenshots from the Tarazz Website showing the sale of Sephora products.

   [15]. Tarazz was approved as a member of the Rakuten LinkShare Program on or about October 2012. Given that Sephora USA does not ship goods directly to Australia, Tarazz had to establish a postal address and forwarding facility in the United States. The shipping addresses that were set up by Tarazz (and input into Sephora USA's database) were located at 10415 La Cienega Blvd, Los Angeles and 101 Alan Drive, Newark in the U.S.A. An example of an order placed through Tarazz's website under the Rakuten LinkShare Program on 28 November 2013[7] is attached as Annexure CC-8. This order shows that the one of the products purchased was Sephora's OUTRAGEOUS VOLUME mascara product, that the shipping address for Tarazz was located in the U.S.A. and that the billing address was also located in the U.S.A.

   [4] A Whois domain name search (Annexure CC-5 to Ms Combot’s declaration) shows that the domain name tarazz.com.au was registered at Melbourne IT by Tarazz.

   [5] The ASIC address for Tarazz is in Richmond, Victoria (Annexure CC-5 to Ms Combot’s first declaration).

   [6] I note that a proforma affiliate agreement is at Annexure CC-3 to Ms Combot’s first declaration.

   [7] I note that this date is after the Relevant Date.

5. Concerning use of the Opponent’s Trade Marks in Australia, Ms Combot states in her first declaration:

   [27]. Since as early as 1 November 2012, Sephora has been advertising and offering for sale its OUTRAGEOUS VOLUME DRAMATIC VOLUME MASCARA products in Australia over the Tarazz Website. Attached and marked Annexure CC-19 are screenshots of the Tarazz Website taken on 5 November 2012, 13 December 2012 and 24 March 2013 respectively depicting Sephora's "Sephora Favorites Lash Stash" set and OUTRAGEOUS VOLUME mascara gold. The description of Sephora's "Favorites Lash Stash" set indicates that the package includes the "OUTRAGEOUS VOLUME MASCARA" product.

   [28]. During the period between November 2012 and November 2013, approximately 55 units of OUTRAGEOUS VOLUME DRAMATIC VOLUME MASCARA mascara and OUTRAGEOUS eye shadow products were sold to Australian consumers through the Tarazz Website. Attached at Confidential Annexure CC-20 is a spreadsheet provided by Sephora USA providing details of these sales. The products are described in the "Product Name" column. All relate to OUTRAGEOUS VOLUME DRAMATIC VOLUME MASCARA branded eye shadow and mascara products. Where a name of the Australian customer is available, it is listed under the "Shipadd1" column. The products were shipped by Tarazz from its US depots at 10415 La Cienega Blvd, Los Angeles and 101 Alan Drive, Newark to the customers in Australia.

6. The first page of Annexure CC-19 is a printout of a WayBack Machine ‘snapshot’ of a Tarazz webpage[8] (‘the Webpage’) as it was on 5 November 2012.  The Webpage is an advertisement of the Sephora Favorites Lash Stash (‘the Stash’).  The text of the advertisement explains that the Stash contains, inter alia, the ‘Sephora Collection Outrageous Volume Mascara in Ultra Black.’

   [8] >

   Pictures (not featured on the Webpage) of the product sold under one of Opponent’s Trade Marks appear below:

7. I infer that the lettering on the necklet in the above pictures is the trade mark SEPHORA.

8. Some difficulties in discussing Annexure CC-20 are introduced by its claim for confidentiality.  Annexure CC-20 is a spreadsheet which shows a series of transactions by, I infer from login codes, three different individuals employed by Tarazz who record orders for goods from the Opponent for on-sale to, or on behalf of, Australian clients.  As the order with the highest serial number occurs at the top of the spreadsheet, and as the numbers decrease down the spreadsheet, I infer that the earliest orders in time are recorded at the bottom of the spreadsheet.  Relevantly the orders include an Outrageous Volume Set, and ten Outrageous Volume Dramatic Volume Mascaras – nine items of which are at the bottom of the spreadsheet and hence are presumed to be earliest in time.  Other difficulties with the spreadsheet were pointed out by Mr Fitzpatrick at the hearing: while Ms Combot has declared that these sales took place between November 2012 and November 2013, the transactions are undated.  Further, there is no record of who in Australia the purchasers were or where they lived.  However, the sales do mesh with the date of the Webpage and weighing the probability that Tarazz would order goods on behalf of Australian clients and then not deliver them against the probability that Tarazz did perform as promised, I consider that the spreadsheet establishes that goods under the Opponent’s Trade Marks were sent to Australian customers within the period November 2012 and November 2013.  Additionally, while it is not established beyond all doubt that these sales were before the Relevant Date (6 September 2013), it is (on balance) more probable than not that the early group of nine items at the bottom of the spreadsheet do reflect the despatch of mascaras bearing the Opponent’s Trade Marks to Australia prior to the Relevant Date.[9]  Additionally, certain irregularities in the way that those particular orders are recorded and the Australian purchasers are identified suggests a new system with which the employees of Tarazz were unfamiliar and hence a date closer to November 2012 and before the Relevant Date.

   [9] I note that the latest order on the spreadsheet is numbered 2704492597 and at Annexure CC-8 of Ms Combet’s declaration, the same order is dated 28 November 2013 which is two months after the Relevant Date.  This tends to corroborate Ms Combet’s declaration and suggests that the earliest order on the spreadsheet, numbered 2240618159, was at or close to the earliest sale stated by Ms Combet (November 2012).

9. Does the Tarazz Webpage constitute a use of the Opponent’s Trade Marks in Australia?  In Ward Group Pty Ltd v Brodie & Stone Plc[10] (‘Ward Group’) Merkel J stated:

   [43]. In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.

   [10] [2005] FCA 471; (2005) 143 FCR 479; 215 ALR 716; (2005) 64 IPR 1; [2005] AIPC 92-087.

10. Thus I do not see difficulties with the fact that the operations of Tarazz were either largely or completely based in the USA.  This is because Tarazz operated an Australian registered website specifically targeted at Australia with transactions couched in Australian dollars.  It carried an advertisement for goods targeted at the Australian market carrying the Opponent’s Trade Marks (and the text portion of the advertisement explained that the Stash included ‘Sephora Collection Outrageous Volume Mascara in Ultra Black’).  That the Webpage was downloaded in Australia prior to the Relevant Date may be inferred by the purchases of mascara ordered by people within Australia accessing the webpage.  While Tarazz was interposed between the owner of the Opponent’s Trade Marks and the Australian purchaser, it is not obvious why this dealing is not within the bounds of, or analogous to, that in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[11] (‘Gallo’).  While Mr Fitzpatrick observed that (in contradistinction to the case here) the goods in Gallo were present in Australia when sold, in Gallo the Court said:

    [52]. An overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption. As affirmed by Gummow J in Wingate Marketing Pty Ltd v Levi Strauss& Co, "whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark". During the trading period, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale. [Footnotes not included]

    [11] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

1. Accordingly I consider that what is more relevant in this case is that there was a public offer in the advertisement on the Webpage under the Opponent’s Trade Marks directed to potential purchasers in Australia.  Although this is a single use of the Opponent’s Trade Marks in Australia, this is all an opponent has to establish: Thunderbird Products Corp v Thunderbird Marine Product Pty Ltd (1974) CLR 592.

2. Are the Opponent’s Trade Marks and the Trade Mark substantially identical?  In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[12] (‘Shell’) Windeyer J said: [12]:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

   [12] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

3. It may be apparent from the above discussions of the Opponent’s Trade Marks that there is some debate about what the Opponent’s Trade Marks constitute.  There is the combination trade mark ‘Sephora Collection Outrageous Volume Mascara in Ultra Black’ that appears on the Webpage and there is the trade mark as it appears on the goods: ‘OUTRAGEOUS VOLUME Dramatic Volume Mascara’.  Although the former is more relevant to my decision, I will consider both of them.

4. Mr Fitzpatrick submitted that the entire expressions ‘Sephora Collection Outrageous Volume Mascara in Ultra Black’ and ‘OUTRAGEOUS VOLUME Dramatic Volume Mascara’ constitute the trade marks of the Opponent and that these cannot be considered to be substantially identical to the Trade Mark when the test in Shell is applied.  Ms Rubagotti put her client’s view that the Opponent’s Trade Marks are composite trade marks where the elements ‘Outrageous Volume Mascara’ and ‘OUTRAGEOUS VOLUME’ may be considered to be discrete trade mark material in themselves.

5. Whether or not a trader is using a single compound trade mark or two different trade marks used together is a matter for the decision-maker’s objective assessment – in the words of Lockhart J in Pepsico Australia Pty Ltd v Kettle Chip Company Pty Ltd[13], with “resort to common sense”.

   [13] (1996) 33 IPR 161 at 163.

6. The expression ‘Sephora Collection’ occurs with some frequency in relation to different products within the Opponent’s range of eye make-up goods on the Webpage and I am satisfied that when the Opponent used the composite trade mark ‘Sephora Collection Outrageous Volume Mascara in Ultra Black’ it is using the words ‘Sephora Collection’ as a sub-brand in relation to a range of eye make-up, the words ‘Outrageous Volume Mascara’ as a product trade mark within that range, and the words ‘in Ultra Black’ only as a description of the goods: see also Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd[14]; and compare with Anheuser-Busch Inc v Budejovick[yacute] Budvar, Národní Podnik[15].

   [14] 2004] FCA 438; (2004) 61 IPR 242; [2004] AIPC 91-983; [2005] ALMD 363.

   [15] [2002] FCA 390; 56 IPR 182 at [155].

7. Similarly, I consider the trade mark material on the product shown at [14], above, to be the words OUTRAGEOUS VOLUME and that the words ‘Dramatic Volume Mascara’ in smaller typeface function only as a description of the product.

8. The Opponent’s trade mark OUTRAGEOUS VOLUME MASCARA (within the composite trade mark ‘Sephora Collection Outrageous Volume Mascara in Ultra Black’) is, of course, identical to the Trade Mark and, on the basis of the use of that trade mark in relation to mascara before the Relevant Date in Australia the opposition must succeed.  However, I note for completeness sake that the Trade Mark and the Opponent’s OUTRAGEOUS VOLUME trade mark must also be considered to be substantially identical by analogy with PB Foods Ltd v Malanda Dairy Foods Ltd[16] (‘Malanda’) where Carr J considered whether the trade marks CHILL and CHOC CHILL were substantially identical in respect of flavoured milk products.  Carr J stated:

   [38]. The question to be decided in each case is largely one of fact, provided that the test is properly applied. Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY. In the end, I found myself in agreement with the delegate's reasoning and conclusion which is set out at p 10 of her reasons as follows:

   "When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison. PB Foods' mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a "total impression of similarity" and the proprietorship claim is supported."

   [16] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47.

9. While of course there can be no ‘claim to vary’ here, the principle is much the same: the ‘claim to vary’ in Malanda merely emphasises the genericity of both the element ‘choc’ and the words which may be ‘varied’ for it such as, for example, ‘vanilla’, ‘strawberry’ or ‘banana’.  Likewise, the word ‘mascara’ in the Trade Mark simply has no trade mark work to do other than as a statement as to the nature of the goods: it is purely generic.  Indeed, in view of the breadth of the Specified Goods, and the misdescriptiveness of the word ‘mascara’ in the Trade Mark in relation to most of those goods, it is difficult to understand how the Applicant could use the Trade Mark without substituting for the word ‘mascara’ appropriate descriptors in order to accurately describe the full range of goods in respect of which registration is sought.  Accordingly, even when allowing for the comparative lack of inherent adaptation within shared features of the parties’ trade marks, as per Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[17], an impression of identity emerges.

   [17] [1952] HCA 15; (1952) 86 CLR 536.

10. Consequently, I find that the Applicant cannot put itself forward as the owner of the Trade Mark because the Opponent has established that it had use of a trade mark which is substantially identical to the Trade Mark in relation to the same goods before the Relevant Date.

11. The Opponent has established its ground under section 58 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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:For limitations see section 6.

2. I refuse to register the Trade Mark.

Costs

1. The Opponent sought its costs in the event that it was successful and I award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
24 June 2016