Skinfix Pty Ltd v Skinfix Inc
[2024] ATMO 131
•23 July 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Skinfix Pty Ltd to registration of trade mark application 2174299 (classes 3, 5, 35) – skinfix derm (figurative) – in the name of Skinfix Inc
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Self-represented Applicant: Clayton Utz |
| Decision: | 2024 ATMO 131 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 58, 60 and 62A pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Skinfix Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: (‘Trade Mark’)
Number: 2174299 (‘Application’)
Owner: Skinfix Inc (‘Applicant’)
Filing date: 28 April 2021
Specification: Class 3: cosmetics (non-medicated) including skin care preparations and exfoliating preparations for skin; skin sprays; skin scrubs; skin mists; wipes and cloths impregnated with a skin cleanser; anti-wrinkle creams; skin cleansers; skin serums; facial masks; skin masks; skin gels; skin moisturizers; skin creams; skin lotions; skin washes; body masks; skin toners; skin peels; hair care preparations; cosmetics; fragrances
Class 5: medicated cosmetics and skin care preparations, medicated skin ointments, medicated skin balms, medicated skin moisturizers, medicated skin creams, medicated skin lotions, medicated skin sprays, medicated skin washes, medicated skin cleansers, medicated skin scrubs, medicated skin mists, medicated skin serums, medicated skin gels, medicated skin toners, medicated skin peels, and medicated wipes and cloths impregnated with a skin cleanser for the treatment of: eczema, dermatitis, diaper rash, skin chafing, cracked skin, skin redness, skin inflammation, skin rashes, skin dryness, skin puffiness, skin scaling, skin flaking, skin itching, keratosis pilaris, laser treatment irritation, insect bites, irritation from poison ivy, poison oak & poison sumac, minor cuts, scrapes, burns, skin infection, chapped skin, acne and for the healing of tattoo treatments; medicated hair care preparations including medicated preparations for treatment of dandruff, seborrheic dermatitis, scalp flaking, dermatitis, scalp psoriasis, and itchy scalp
Class 35: sale of goods by any means including online sales of skincare preparations for human use, including wipes and towelettes for skin care; sales including online sales of carrying bags and cases including for cosmetics and for baby care items, caps, slippers and gloves including such goods for use in relation to skin care preparations or the treatment of skin conditions
The acceptance of the Trade Mark for possible registration was advertised on 29 September 2021. A notice of intention to oppose was filed on 20 October 2021, followed by a Statement of Grounds and Particulars (‘SGP’), later rectified, on 16 November 2021. The Applicant filed a notice of intention to defend on 28 March 2022.
No evidence was filed in this proceeding. The Applicant requested an oral hearing and filed written submissions on 26 June 2024. The Opponent did not file submissions and took no further part in the proceeding. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard the matter by video conference on 3 July 2024. Sonia Stewart of counsel, instructed by Brett Doyle of Clayton Utz, appeared on behalf of the Applicant.
Grounds of opposition, onus and standard of proof
The rectified SGP nominated grounds of opposition under ss 58, 60 and 62A of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 28 April 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
Sections 58, 60 and 62A
In the present matter, the Opponent has not filed any evidence in support of its opposition.[3] Nor has it provided written submissions or appeared at the hearing to present oral submissions. Consequently, the Opponent’s prospects of successfully opposing the Trade Mark hinge on the particulars set out in the rectified SGP.
[3] See Skinfix Pty Ltd v Skinfix Inc [2023] ATMO 32, [24]. The Opponent’s application for an extension of time to file evidence in support of its opposition was refused.
It is well established that the mere filing of a notice of opposition[4] will not discharge the Opponent’s onus of proof under ss 58, 60 or 62A of the Act.[5] Each of these grounds of opposition require documentary evidence to support the allegations made in the rectified SGP.
[4] Trade Marks Regulations 1995 (Cth) reg 5.5(1) provides that the components of a notice of opposition are the notice of intention to oppose and the statement of grounds and particulars.
[5] See, eg, Nautanki Pty Ltd v Nani Babu Pty Ltd [2023] ATMO 133; Emark Analytics Apac Pty Ltd v Martin Kostic [2023] ATMO 107; Murrays Craft Brewing Co Pty Ltd v Artemis IP Limited [2018] ATMO 72, [10]; Andando Pty Ltd v DDT Liners (Australia) Pty Ltd [2017] ATMO 124.
Here, no evidence has been filed to corroborate the Opponent’s claim that it ‘is clearly the owner of the Trade Mark “Skinfix” by commercial usage for over 20 years’.[6] As such, there is no basis to find that the Applicant is not the owner of the Trade Mark
[6] Letter to rectify SGP, 2.
There is also no evidentiary basis upon which I can be satisfied as to the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. Likewise, the mere assertion that the application for the Trade Mark was made in bad faith leads nowhere in the absence of underlying evidence.
Accordingly, the ss 58, 60 and 62A grounds of opposition are not established.
Decision
10. Section 55 of the Act relevantly provides:
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.
11. The Opponent has not established a ground of opposition. Trade mark number 2174299 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
12. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
23 July 2024
and Edelman JJ).
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