Sephora v Anthony Rechtman as Trustee for TBN Unit Trust

This decision concerns an opposition by Sephora to the registration of a trade mark by Anthony Rechtman as Trustee for TBN Unit Trust. The dispute arose from Sephora's claim that the proposed trade mark was substantially identical to its own trade marks, which it alleged had been used in Australia prior to the relevant date. The matter was heard by Iain Campbell Thompson, a Hearing Officer for Trade Marks Hearings.

The legal issues before the court were whether Sephora had used its trade marks in Australia before the relevant date, and whether Sephora's trade marks were substantially identical to the trade mark sought to be registered by the applicant. Specifically, the court had to determine if a webpage hosted outside Australia, which advertised Sephora products and was accessible to Australian consumers, constituted use of the trade mark in Australia. It also had to consider whether composite trade marks used by Sephora, such as "Sephora Collection Outrageous Volume Mascara in Ultra Black," could be considered substantially identical to the applicant's mark, particularly when analysing the essential features of the marks.

The Hearing Officer reasoned that the Tarazz webpage, which advertised Sephora products and was presented in Australian dollars, was specifically targeted at the Australian market. Drawing an analogy with case law concerning internet use and trade marks, the Hearing Officer found that the webpage constituted a use of Sephora's trade marks in Australia, as it represented a public offer directed at potential purchasers in Australia. Furthermore, the Hearing Officer analysed Sephora's composite trade marks and determined that "Outrageous Volume Mascara" was the essential trade mark material, with other elements being descriptive or sub-branding. Applying the principles of substantial identity, particularly by analogy with cases involving composite marks where a descriptive element is added to a core mark, the Hearing Officer concluded that Sephora's trade mark "Outrageous Volume Mascara" was substantially identical to the applicant's proposed trade mark.

Consequently, the Hearing Officer found that Sephora had established its opposition on the ground of use of a substantially identical trade mark in relation to the same goods prior to the relevant date. The application to register the trade mark was refused, and costs were awarded to Sephora.