Skyn Pty Ltd v LifeStyles Healthcare Pte Ltd - [2023] ATMO 143

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Skyn Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by LifeStyles Healthcare Pte Ltd to remove trade mark numbers 1413749 (44) SKYN; 1517918 (44) SKYN; 1517919 (35) SKYN; 1664989 (44) LOVE THE SKIN YOURE IN; 1664990 (35) LOVE THE SKIN YOURE IN; 1695191 (44) SKYN LOVE THE SKIN YOURE IN; 1738300 (35) SKYN THE DOCTOR’S CLINIC; 1738301 (44) SKYN THE DOCTOR’S CLINIC; 1738413 (44) SKYN LOOKING GOOD FEELING GOOD; 1793508 (44) SKYN FOR MEN; 1793510 (44) SKYN2SKIN; 1793511 (35, 44) THE SKYN GROUP; 1842519 (44) #SKYN; and 1846459 (44) #SKIN FOR STARTERS - in the name of Skyn Pty Ltd

Delegate:

Louise Tuohy

Representation:

Removal Opponent: Shauna Ross of counsel instructed by Meyer West IP

Removal Applicant: Megan Evetts of counsel instructed by Gadens

Decision:

2023 ATMO 143

Trade Marks Act 1995 (Cth) – applications under section 92 – sections 92(4)(a) and 92(4)(b) grounds for removal - partial removal established for trade marks 1413749, 1517918, 1517919, 1664989, 1664990, 1695191, 1738300, 1738301, 1738413 and 1842519 – partial removal not established for 1793508, 1793510, 1793511 and 1846459 – discretion not exercised

Background

Skyn Pty Ltd (‘Removal Opponent’) is the registered owner of the following trade marks:

Registration Number

Trade Mark

Filing Date

Registered Services[1]

Short Title

1413749

SKYN

24 March 2011

Class 44

749

1517918

SKYN

3 October 2012

Class 44

918

1517919

SKYN

3 October 2012

Class 35

919

1664989

LOVE THE SKIN YOURE IN

17 December 2014

Class 44

989

1664990

LOVE THE SKIN YOURE IN

17 December 2014

Class 35

990

1695191

SKYN LOVE THE SKIN YOURE IN

21 May 2015

Class 44

191

1738300

1 December 2015

Class 35

300

1738301

1 December 2015

Class 44

301

1738413

SKYN LOOKING GOOD FEELING GOOD!

1 December 2015

Class 44

413

1793508

SKYN for Men

31 August 2016

Class 44

508

1793510

SKYN2Skin

31 August 2016

Class 44

510

1793511

The SKYN Group

31 August 2016

Class 35

Class 44

511

1842519

4 May 2017

Class 44

519

1846459

22 May 2017

Class 44

459

[1] See Annexure A for table including Registered Services.
(collectively the ‘Trade Marks’)

On 23 February 2021 LifeStyles Healthcare Pte Ltd (‘Removal Applicant’) applied under the provisions of s 92(4)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) seeking partial removal of all of the Trade Marks and under provisions of s 92(4)(b) seeking partial removal of the first nine of the Trade Marks being trade marks 749, 918, 919, 989, 990, 191, 300, 301 and 413.
The services that are sought to be removed from the specifications are as follows:
Trade Marks 919, 990, 300 and 511
Class 35:
·     All services in class 35 other than “Retailing of non-medicated products for beauty, cosmetic, and skin protection purposes, being facial and skin creams, moisturisers, cleaners, serums, masks, scrubs, and sun screens”.
Trade Marks 749, 918, 989, 191, 301, 413, 508, 510 and 511
Class 44:
·     All “Medical services” other than “Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)”.
·     All “Health spas (health, hygiene and beauty care services)” services other than “Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments”.
·     All “Personal care services (medical nursing, health, hygiene and beauty care)” services other than “Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments”.
·     All “Therapeutic treatment of the body” services other than “Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)”.
Trade Mark 519
Class 44:
·     All "Health spas (health, hygiene and beauty care services)" services other than "Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments".
·     All "Hygienic and beauty care for human beings" services other than "Hygienic and beauty care for human beings in the field of aesthetics, beauty and cosmetic treatments".
·     All "Personal care services (medical nursing, health, hygiene and beauty care)" services other than "Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments".
·     All "Providing information, including online, about hygienic and beauty care for human beings or animals" services other than "Providing information, including online, about hygienic and beauty care for human beings in the field of aesthetics, beauty and cosmetic treatments".
·     All "Advisory services relating to medical services" other than "Advisory services relating to medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
·     All "Consultancy and advisory services in relation to medical services" other than "Consultancy and advisory services in relation to medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
·     All "Medical services" other than "Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
·     All "Providing information including online, about medical services and veterinary services" services other than "Providing information including online, about medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
·     All "Provision of medical services" services other than "Provision of medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
·     All "Therapeutic treatment of the body" services other than "Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
Trade Mark 459
Class 44:
·     All "Health spas (health, hygiene and beauty care services)" services other than "Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments".
·     All "Personal care services (medical nursing, health, hygiene and beauty care)" services other than "Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments".
·     All “Medical advisory services” other than “Medical advisory services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)”.
·     All “Medical advisory services” other than “Medical care services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)”.
·     All “Medical treatment services” other than “Medical treatment services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)”.
·     All "Therapeutic treatment of the body" services other than "Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations)".
On 1 May 2021 the Removal Opponent filed Notices of Intention to Oppose the partial removal of the Trade Marks, followed by its Statements of Grounds and Particulars (‘SGPs’) over the course of 31 May 2021 to 1 June 2021. On 23 July 2021 the Removal Applicant filed Notices of Intention to Defend the Applications.
The Removal Opponent filed the following declarations as evidence in support (‘EIS’):
·Declaration of Catherine Mary Lee, founding owner, Managing Director and Director of the Removal Opponent, made on 26 October 2021, with Annexures CML-1 to CML-142 (‘Lee’).
·Declaration of Kristian Kammann, Creative director at AnotherAgency, made on 28 May 2020, with Annexure KK-1 (‘Kammann 1’).[2]
·Declaration of Kristian Kammann, made on 26 October 2021, with Annexure KK-2 (‘Kamman 2’).
[2] The Kammann 1 declaration was filed in support of an opposition by the Removal Opponent to trade mark numbers 2000331 and 2000333.
The Removal Applicant filed the following declaration as evidence in Answer (‘EIA’):
- Declaration of Nicole Hillier, Senior Director Sales and Marketing APAC of the Removal Applicant, made on 28 January 2022, with Annexures A to R (‘Hillier’).
The Removal Opponent did not file evidence in reply.
Once time for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. Both parties requested a hearing. I heard the matter, as a delegate of the Registrar of Trade Marks on 18 August 2023. Shauna Ross of counsel, instructed by Meyer West IP, made oral and written submissions on behalf of the Removal Opponent. Megan Evetts, instructed by Gadens made oral and written submissions on behalf of the Removal Applicant.
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register due to non-use.
Sections 92(4)(a) and 92(4)(b) of the Act provide (notes omitted):
92 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:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(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.
Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[4]
[4] Mark Davison and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off sixth edition, 2016 Thomson Reuters, [70.510]. See also Per 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 current s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.
Under the relevant version of the legislation 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 applications. I can confirm that five years have passed since each of the applications to register trade marks 749, 918, 919, 989, 990, 191, 300, 301 and 413 were filed.
Under s 94(4)(b) the relevant period during which the Removal Opponent must establish use of trade marks 749, 918, 919, 989, 990, 191, 300, 301 and 413 is the three year period ending on 23 January 2021 (‘Relevant Period’).
Under s 92(4)(a) the relevant date (‘Relevant Date’) is the filing date of the trade mark registrations as shown in the table below:

Trade Marks

Relevant Date

508, 510, 511

31 August 2016

519

4 May 2017

459

22 May 2017

Under s 92(4)(a) I must also be satisfied that the Removal Opponent did not use trade marks 508, 510, 511, 519 and 459 in good faith in Australia in relation to the unamended services any time before 23 January 2021.
Pursuant to s 100 of the Act, the Removal Opponent bears the onus of rebutting an allegation made under ss 92(4)(a) and 92(4)(b).
I proceed on the basis that the burden of proof is the ordinary civil standard of the balance of probabilities.[5]
[5] 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 of the Act, if the grounds for partial removal are established, I may decide to partially remove the Trade Marks from the Register in respect of any or all of the services identified in the partial removal applications, or if satisfied it is reasonable to do so, decide not to partially remove the Trade Marks from the Register.
Discussion
Use of Trade Marks 749, 918, 919, 989, 990, 191, 300, 301 and 413 during the Relevant Period
Before proceeding I note that the matter under s 92(4)(b) concerns nine trade marks. For the sake of brevity, if I am satisfied that use of one of these nine trade marks constitutes use of the other trade mark/s in the same class with additions or alterations that do not substantially affect their identity[6] then those trade marks will be dealt with together. In addition, I will confine my discussion to the evidence dated within the Relevant Period.
[6] Act s 100(3)(a).
The evidence must demonstrate ‘use as a trade mark in good faith’. 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 of the Act, namely it is ‘real, as opposed to token, use in a commercial sense’. [7] 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.[8] Little weight is to be given to assertions of use which are not supported by documentary evidence.[9] 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.’[10]
[7] [2001] FCA 261, [16].
[8] Ibid [17].
[9] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno).
[10] (1962) RPC 1, 7.
Trade Marks 749 and 918
I will deal with trade marks 749 and 918 together as both trade marks are the plain word SKYN solus and the specification in class 44 is the same. The Removal Applicant seeks the following amendments to 749 and 918:
Class 44: Beauty services; medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage
In Lee, Ms Lee states that the Removal Opponent’s class 44 services have been provided at its principle SKYN clinic in Subiaco, Perth, since 2014 and at third party’s clinics in Pinjarra, Mandurah and Mundaring since 2013. Ms Lee deposes that each of the doctors performing services under 749 and 918 over the last 18 years has been a medical practitioner registered by the Australian Health Practitioner Regulation Agency (‘APHRA’). Ms Lee claims that in some cases, the Removal Opponent’s clients may be entitled a rebate for some or all of the service costs from the Australian Government Medicare scheme. Ms Lee also states that all doctors working for the Removal Opponent were general practitioners and could be consulted on a variety of issues. Annexure CML43 to Lee comprises abstracts of Registration Details from APHRA of the doctors employed by the Removal Opponent.
The Removal Opponent submits that the services offered under 749 and 918 extend well beyond the scope of ‘aesthetics, beauty and cosmetic treatments’ into the fields of sexual health and well-being products. The Removal Opponent highlights its procedures using Petit Lady, which is a laser device for resurfacing treatments, which it claims has a variety of aesthetic indications and gynaecological approaches including vaginal rejuvenation which has sexual health, wellness and performance benefits, and Platelet Rich Plasma (‘PRP’) Shots which it claims assists with sexual dysfunction. Other examples of areas in which the Removal Opponent argues sit outside the amended services is its Lipolysis service which involves an injection of Phosphatidylcholine (‘PPC’) which reduces fatty deposits and may also be used for the treatment of cholesterol level disorders, and wrinkle relaxer treatments for teeth grinding and hyperhidrosis.
Annexure CML-31 to Lee is a copy of an email from Anna the Aesthetic Concierge at the Removal Opponent to a client dated 25 July 2019. The email discusses the Removal Opponent’s Petit Lady treatment and invites the customer to come in for a consultation.
Annexure CML-44 to Lee comprises screenshots from the Removal Opponent’s website featuring 749 and 918, dated 26 October 2018. The screenshots list profiles of the doctors employed by the Removal Opponent and the treatments performed by them. The profiles indicate that these doctors are cosmetic and/or aesthetic physicians and some of the profiles indicate the doctors are also general practitioners. The doctors are available for specific cosmetic and/or aesthetic treatments offered by the Removal Opponent, including Wrinkle Relaxers, Dermal Fillers, Plump Lips, Liquid Facelifts, Skinboosters, Silhouette Soft Face Lift, Angle PRP, Feminine Rejuvenation, Lipodissolve Fat Lipolysis, Hyperhidrosis, Scarless Mole Removal, Collagen Stimulators, Laser Resurfacing, INFINI, Tattoo Removal, Carbon Laser Spectra Peel, Collagen Stimulator and Ultra Lips.
Annexure CML-45 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring 749 and 918, dated 18 February 2020. The post promotes the Removal Opponent’s skilled and experienced doctors who administer injections.
Annexure CML-47 to Lee comprises undated copies of the Removal Opponent’s consent forms provided under 749 and 918. The forms request consent from consumers for Belkyra injections for double chin.
Annexure CML-90 to Lee comprises a published article from ‘Maker’ featuring 749 and 918 dated 20 November 2020. The article discusses the Removal Opponent’s new premises at Subiaco, Perth, and describes the clinic as a Medical Aesthetics Clinic which provides premium cosmetic injectables, medical-grade skincare treatments and aesthetic services.
In my assessment of the evidence, I note that while the doctors employed by the Removal Opponent are medical practitioners registered by APHRA, there is no evidence these doctors provide all general practice services to clients outside of their clinical specialty of aesthetics and/or cosmetic medicine. There is no evidence that demonstrates the Removal Opponent offers services that extend into the fields of sexual health and wellbeing products. The evidence put forward shows that treatments using Petit Lady or injectables such as PRP Shots are advertised and sold as novel cosmetic or aesthetic procedures. This is the same for the Removal Opponent’s Lipolysis treatments, the evidence does not show the Removal Opponent offering Lipolysis treatments for disorders such as cholesterol rather it is described as a ‘treatment for body sculpting and contouring’.[11] In summary although the treatments provided by the Removal Opponent may have mental and/or physical benefits in relation to sexuality or disorders such as cholesterol or teeth grinding, I agree with the Removal Applicant that these outcomes are merely incidental to the provision of the actual services that are provided, namely the cosmetic procedure.[12]
[11] Lee Annexure [CML-17] 123.
[12] See MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 [243], (Burchett, Sackville and Lehane JJ) (‘MID Sydney’).

I also note that the Removal Opponent’s Perth clinic is referred to as a Medical Aesthetics Clinic which provides premium cosmetic injectables, medical-grade skincare treatments and aesthetic services. As such I do not consider that the Removal Opponent has used 749 and 918 in relation to the unamended services.
I find that the Removal Opponent has not used 749 and 918 in relation to the unamended services in the Relevant Period.
Trade Mark 919
The Removal Applicant seeks the following amendments to 919:
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; advertising; marketing; promotional services; business consultancy; business consultancy relating to franchising
Annexure CML-65 to Lee comprises screenshots from the Removal Opponent’s Instagram and Facebook accounts featuring 919 and dated between 2018 to 2020. The posts offer ZO SKIN HEALTH’s hydrating cleanser, exfoliating polish and serum and ASPECT DR’s moisturiser products for sale.
Annexure CML-67 to Lee comprises a screenshot from the Removal Opponent’s Facebook account featuring 919, dated 14 December 2020. The post promotes the Removal Opponent’s Gift Card which is available online or via the telephone.
In my assessment, the evidence before me demonstrates that the Removal Opponent has used 919 in good faith in Australia on or in relation to moisturisers, cleansers, and serums. However, the evidence does not make direct therapeutic claims about these products and without evidence I am not convinced they are therapeutic goods rather than cosmetics.
Further, I do not consider that the Removal Opponent’s evidence in relation to the sale of gift cards demonstrates use of 919 in relation to retail services. The Removal Opponent is issuing a voucher or token in the form of a gift card for the supply of its own services rather than providing a service in the retail of gift cards.
I find that the Removal Opponent has not used 919 in relation to the unamended services in the Relevant Period.
Trade Mark 989
The Removal Applicant seeks the following amendments to 989:
Class 44: Beauty services; medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage
Annexure CM-70 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring 989 dated 21 October 2018. The post promotes wrinkle relaxers. Annexure CML-55 to Lee is a screenshot from the Removal Opponent’s Instagram account featuring 989 dated 28 May 2020. The post is a note to clients.
Outside of the Annexures above the remainder of the evidence presented shows use of trade mark 191 which consists of the word SKYN and 989. I do not believe that use of 191 constitutes use of 989 because the additional element SKYN in 191 is an addition or alteration that substantially affects the identity of 989.[13]
[13] See, eg, Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ); Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238, [20] (Raper J).
In my assessment the Removal Opponent has only used 989 in relation to cosmetic and/or aesthetic treatments. Although the wrinkle relaxer treatments promoted by the Removal Opponent may have mental and/or physical benefits in relation disorders such as teeth grinding, this outcome is merely incidental to the provision of the actual service that is provided, namely the cosmetic procedure.[14]
[14] MID Sydney (n 10) [243].
I am not satisfied that the Removal Opponent has established use of 989 in relation to the unamended services during the Relevant Period.
Trade Mark 990
The Removal Applicant seeks the following amendments to 990:
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Advertising; Marketing
The Removal Opponent has not provided evidence of use of 990 in relation to the unamended services.
I find that the Removal Opponent has not used 990 in relation to the unamended services during the Relevant Period.
Trade Mark 191
The Removal Applicant seeks the following amendments to 191:
Class 44: Beauty services; medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage
Annexure CML-29 to Lee is a screenshot from the Removal Opponent’s Instagram account featuring 191 dated 17 June 2019. The post advertises a sale on Erbium Laser (also known as Petit Lady) resurfacing treatments which are used ‘to reduce the appearance of wrinkles and scars, even pigmentation, tighten skin and remove lesions’.
Annexures CML-17, CML24 to 26 and CML-70 comprise copies of pages from the Removal Opponent’s website posts from its Instagram account and invoices featuring 191 dated between 2018 and 2020. The services offered under 191 included Double Chin Injections Wrinkle Relaxers, Dermal Fillers, Silhouette Soft Thread Lift, Lipodissolve Fat Dissolving Injections, Mole Removal and PRP Shots.
In my assessment there is no evidence that demonstrates Removal Opponent uses 191 in relation to sexual health and wellbeing services, or into other areas of general practice. The evidence put forward shows that treatments using Petit Lady or injectables such as PRP Shots are advertised and sold as novel cosmetic or aesthetic procedures. Moreover, the evidence does not show the Removal Opponent offering Lipolysis treatments for disorders such as cholesterol rather it describes the service as cosmetic injections for reducing small, localised fat deposits on the face and body.
I find that the Removal Opponent has not used 191 in relation to the unamended services in the Relevant Period.
Trade Mark 300
The Removal Applicant seeks the following amendments to 300:
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Sales promotion services; Advertising; Marketing
In Lee, Ms Lee states that the services of retailing necessarily involves the sale and dealing in pharmaceutical goods. Annexure CML-122 to Lee comprises a photograph of signage featuring 300 and lists three procedures. Ms Lee deposes that the signage was visible from the Stirling Highway, Perth where the Removal Opponent’s Nedlands clinic was located between 2013 to 2019. The three procedures listed were: liquid facelifts; dermal fillers; and wrinkle relaxers. Ms Lee states that the procedures involve the application or injection of products such as liquid facelifts, dermal fillers, and wrinkle relaxers and that these are pharmaceutical preparations which are used in the delivery of the service.
In my assessment, the evidence shows use of 300 in signage advertising the Removal Opponent’s clinic then located in Nedlands. The signage advertises three cosmetic and/or aesthetic procedures and while Ms Lee states that the procedures listed involve the application or injection of goods, there is no evidence that the Removal Opponent sells these pharmaceutical goods separately to the procedure/service provided. For example, if the Removal Opponent offers dermal fillers as a procedure, the consumer is paying for the service rather than the pharmaceutical good which is just a mechanism that assists in performing that service.
I am not satisfied that the Removal Opponent has established use of 300 in relation to the unamended services during the Relevant Period.
Trade Mark 301
The Removal Applicant seeks the following amendments to 301:
Class 44: Beauty services; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Beauty salons; Beauty treatment services; Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Massage
Annexure CML-36 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring the words SKYN DOCTORS dated 11 April 2019. The post introduces Dr Mandana Arshi a Cosmetic Doctor, Researcher and Medical School teacher. The post lists Dr Mandana’s availability for consultation on Monday’s and Friday’s and includes her contact details as @DRMANDANA.AESTHETICS.
Annexure CML-39 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring the hashtag #SKYNDOCTORS dated 27 October 2018. The post includes a photograph of Dr Jess, Dr Mandana and Dr Mo Jaggard under the heading LIP MASTERCLASS and provides contact details for: @DRJESS_COSMETICDOCTOR and @DRMANDANA.AESTHETICS.
Annexure CML-40 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring the words SKYN TALENT OUR DOCTORS and the hashtag #SKYDOCTORS dated 12 March 2018. The post includes a photograph of Dr Jass Narulla, Dr Mo Jaggard, Dr Jane Lucas, Dr Jessica Johnson and Dr Mandana.
Annexure CML-70 to Lee comprises a screenshot from the Removal Opponent’s Instagram account featuring the words SKYN DOCTORS, dated 24 September 2018. The post promotes Aesthetic procedures such as Dermal Fillers, Wrinkle Relaxers, Collagen Stimulators, PRP, Medical Needling and Cosmeceutical Skin Care.
Annexure CML-122 to Lee comprises a copy of a photograph of signage displayed on the Stirling Highway, WA, featuring 301. Ms Lee deposes that this signage was displayed between 2013 to 2019 and lists three procedures: Liquid Facelifts; Dermal Fillers; and Wrinkle Relaxers.
In my assessment of the evidence, I am not satisfied that Annexure’s CML-36, 39, 40 and 70 constitute use of 301 in the Relevant Period in relation to the unamended services. In this respect, these Annexures show use of the words SKYN DOCTORS, SKYN TALENT OUR DOCTORS or #SKYNDOCTORS, and it is well established that determining whether ‘additions or alterations’[15] substantially affect the identity of a trade mark involves the same principles as those underpinning the test for substantial identity.[16] The terms SKYN DOCTORS, SKYN TALENT OUR DOCTORS or #SKYNDOCTORS all refer to personnel, in comparison 301 is for the words SKYN THE DOCTORS CLINIC which refers to a type of facility. The inclusion of the words THE and CLINIC results in a total impression of dissimilarity emerging from a side by side comparison of the trade marks. Therefore, use of these trade marks does not assist the Removal Opponent.
[15] This expression appears in ss 7 and 100 of the Act.
[16] See, eg, Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ); Symphony Holdings Limited v Skins IP Limited [2022] FCA 1238, [20] (Raper J).
For completeness, the evidence at Annexure’s CML-36, 39, 40 and 70 do not show the Removal Opponent has used 301 to promote services outside of novel cosmetic and/or aesthetic procedures. The evidence does promote the doctors on staff and their expertise in cosmetic and/or aesthetic medicine. In relation to the use shown in Annexure CML-122 the services advertised are cosmetic procedures and do not demonstrate use of 301 in relation to the unamended services.
I am not satisfied that the Removal Opponent has established use of 301 in relation to the unamended services during the Relevant Period.
Trade Mark 413
The Removal Applicant seeks the following amendments to 413:
Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services
The evidence of use of 413 in Lee and Kamman 1 is dated outside the Relevant Period.
I find that the Removal Opponent has not used 413 in relation to the unamended services during the Relevant Period.
Intention in good faith to use Trade Marks 508, 510, 511, 519 and 459
Under s 92(4)(a) the onus of rebutting an allegation lies with the Removal Opponent. Though this onus is not particularly arduous. In Aston v Harlee Manufacturing Co, Fullagar J observed:
[,,,] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meanings an intention to use immediately or within any limited time. [17]
[17] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALIR 242, [21].
While this observation was made in a proceeding under the Trade Marks Act 1955 (Cth), where the onus was on an applicant for removal, the principle has been held to be sound under the Act. In Structureco Inc v Starite Distributors Pty Ltd, Hearing Officer Forno said:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92 (4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case – perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[18]
[18] [2000] ATMO 31.
I have assessed the evidence of use provided by the Removal Opponent in relation to trade marks 508, 510, 511, 519 and 459 and found no use in relation to the unamended services.
Trade Mark 508
The Removal Applicant seeks the following amendments to 508:
Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services; Depilatory waxing
In Lee, Ms Lee states that on the day that the Removal Opponent filed the application for trade mark 508 it had an intention in good faith to use 508 in Australia for the services for which it was applied and is registered.
In the matter of 508 the Removal Opponent has filed the application for registration, and Ms Lee has made a clear statement that the Removal Opponent had an intention in good faith to use 508 as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.
The Removal Applicant argues that the evidence is insufficient to establish that, at the time of applying for 508 the Removal Opponent had a real or definite intention to expand its services to cover the unamended services. The Removal Applicant submits that Ms Lee has provided no explanation or documentary evidence as to how the Removal Opponent intends to expand the business to be able to provide the unamended services.
In my view, since its establishment in 2005 the Removal Opponent has continually added to the services it provides, including laser hair removal, PRP shots and Petit Lady, particularly as new technology enters the market. Moreover, the Removal Opponent employs a number of general practitioners and there is no reason why it could not expand its business and offer new services including a comprehensive range of general practice services under 508.
Noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use 508 for the unamended services.
Trade Mark 510

The Removal Applicant seeks the following amendments to 510:
Class 44: Beauty services; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Beauty salons; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services
In Lee, Ms Lee states that on the day that the Removal Opponent filed the application for trade mark 510 it had an intention in good faith to use 510 in Australia for the services for which it was applied and is registered.
In the matter of 510 the Removal Opponent has filed the application for registration, and Ms Lee has made a clear statement that the Removal Opponent had an intention in good faith to use 510 as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.
The Removal Applicant argues that the evidence is insufficient to establish that, at the time of applying for 510 the Removal Opponent had a real or definite intention to expand its services to cover the unamended services. The Removal Applicant submits that Ms Lee has provided no explanation or documentary evidence as to how the Removal Opponent intends to expand the business to be able to provide the unamended services.
For the same reasons as those given in relation to 508 and noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use 510 for the unamended services.
Trade Mark 511
The Removal Applicant seeks the following amendments to 511:
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Marketing
Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage
In Lee, Ms Lee states that on the day that the Removal Opponent filed the application for trade mark 511 it had an intention in good faith to use 511 in Australia for the services for which it was applied and is registered.
In the matter of 511 the Removal Opponent has filed the application for registration, and Ms Lee has made a clear statement that the Removal Opponent had an intention in good faith to use 511 as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.
The Removal Applicant argues that the evidence is insufficient to establish that, at the time of applying for 511 the Removal Opponent had a real or definite intention to expand its services to cover the unamended services. The Removal Applicant submits that Ms Lee has provided no explanation or documentary evidence as to how the Removal Opponent intends to expand the business to be able to provide the unamended services.
In relation to the class 35 services the Removal Opponent provides retail services in relation to a number of its own and third party products[19] and there is no reason why it does not have the capacity to grow its product range and service offerings in class 35. In relation to the class 44 services, I refer to the same reasons given in relation to 508.
[19] Lee, Annexure CLM-60.
Noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use 511 for the unamended services.
Trade Mark 519
The Removal Applicant seeks the following amendments to 519:
Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultancy; Beauty consultation; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Hygienic and beauty care for human beings in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Providing information, including online, about hygienic and beauty care for human beings in the field of aesthetics, beauty and cosmetic treatments ~~or animals~~; Advisory services relating to medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Consultancy and advisory services in relation to medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Providing information including online, about medical services, in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations) ~~and veterinary services~~; Provision of medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage
In Lee, Ms Lee states that on the day that the Removal Opponent filed the application for trade mark 519 it had an intention in good faith to use 519 in Australia for the services for which it was applied and is registered.
In the matter of 519 the Removal Opponent has filed the application for registration, and Ms Lee has made a clear statement that the Removal Opponent had an intention in good faith to use 519 as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.
The Removal Applicant argues that the evidence is insufficient to establish that, at the time of applying for 519 the Removal Opponent had a real or definite intention to expand its services to cover the unamended services. The Removal Applicant submits that Ms Lee has provided no explanation or documentary evidence as to how the Removal Opponent intends to expand the business to be able to provide the unamended services.
However, Ms Lee deposes that the Removal Opponent has no intention of providing:
- “Providing information, including online, about hygienic and beauty care for …animals”; and
- “Providing information including online, about …veterinary services”[20]
Considering Ms Lee’s statement I see no reason for these services to remain in the specification.
For the same reasons given in relation to 508, and noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use 519 for the following services:
Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultancy; Beauty consultation; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Hygienic and beauty care for human beings; Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings ~~or animals~~; Advisory services relating to medical services; Consultancy and advisory services in relation to medical services; Medical services; Providing information including online, about medical services~~, and veterinary services~~; Provision of medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage
Trade Mark 459
The Removal Applicant seeks the following amendments to 459:
Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultation; Beauty salons; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Medical advisory services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Medical care services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Medical treatment services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services
In Lee, Ms Lee states that on the day that the Removal Opponent filed the application for trade mark 459 it had an intention in good faith to use 459 in Australia for the services for which it was applied and is registered.
In the matter of 459 the Removal Opponent has filed the application for registration, and Ms Lee has made a clear statement that the Removal Opponent had an intention in good faith to use 459 as at the Relevant Date. Taken together, this is sufficient evidence to establish intention and to shift the onus from the Removal Opponent to the Removal Applicant.
The Removal Applicant argues that the evidence is insufficient to establish that, at the time of applying for 459 the Removal Opponent had a real or definite intention to expand its services to cover the unamended services. The Removal Applicant submits that Ms Lee has provided no explanation or documentary evidence as to how the Removal Opponent intends to expand the business to be able to provide the unamended services.
For the same reasons as those given in relation to 508, and noting the low burden placed on the Removal Opponent in an application under s 92(4)(a) of the Act, I find that it has satisfied the onus in showing an intention to use 459 for the unamended services.
Obstacles to use
In respect of the allegations of non-use under s 92(4)(b), the Removal Opponent does not formally submit that there have been any matters that amount to an obstacle to use pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Marks to remain on the Register for the unamended services.
Registrar’s Discretion

100. Section 101(3) of the Act provides:
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.

101. Section 101(4) of the Act provides:
Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.

102. The Removal Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.[21]
[21] [2010] FCA 1380, [273] (Yates J).
103. 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) of the Act:
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.[22]
[22] [2021] FCAFC 128, [153] (Jagot, Nicholas and Burley JJ) (emphasis altered) (citations omitted).

104. The Removal Opponent submits the potential for consumer confusion if the Trade Marks were removed on the basis of the reputation enjoyed by it in SKYN and SKYN formative trade marks. The Removal Opponent submits it has used its house brand SKYN in various forms since 2004/2005.
105. Ms Less deposes that the Removal Opponent currently has approximately 19,000 clients, mainly from Western Australia (as the business is based in Perth) and a small clientele from across Australia and overseas.[23]
[23] Lee [27], Annexure CML-3.
106. Ms Lee declares that the Removal Opponent has worked with a professional advertising agency named Another Agency and also promoted its goods and services under the Trade Marks via newspaper and magazines,[24] the SKYN website social media including Facebook, Instagram and Twitter,[26] direct marketing and email communications,[27] competitions,[28] events and sponsorship,[29] presentations,[30] uniforms and promotional items,[31]signage,[32] and Yellow Pages and other business listings.[33] Ms Lee deposes that since 2004 the Removal Opponent’s investment and advertising expenditure is in excess of $2 million dollars.
[24] Lee [151]-[173]; Annexures CML-72 to CML-93.
[25] Lee [31]-[37]; [174]-[185]; Annexures CML-4 to CML-8, CML-94 to CML-97.
[26] Lee, Annexures CML- 70, CML-100 to CML-101, CML-12 to CML-105, CML-106.
[27] Lee, Annexures CML-107 to CML-108.
[28] Lee, Annexures CML-109 to CML-110.
[29] Lee, Annexures CML-111 to CML-117.
[30] Lee, Annexure CML-125.
[31] Lee, Annexure CML-118.
[32] Lee, Annexures CML-119 to CML-123.
[33] Lee, Annexures CML-130 to CML-131.
107. The Removal Opponent submits that if its Trade Marks are partially removed and the Removal Applicant’s pending trade marks proceed to registration the Trade Marks Register would reflect fragmented ownership, may prevent the Removal Opponent from continuing to offer the services outside cosmetics, aesthetics and beauty, and allow the Removal Applicant to use its trade marks in the field of sexual health and wellbeing, which would conflict with its reputation.
108. The Removal Opponent argues that similar services will be retained in the trade marks irrespective of the outcome of the opposition.
109. In response the Removal Applicant argues that the Removal Opponent’s services fall outside of the services for which removal is sought; or are readily identifiable and easily separable. The Removal Applicant also contends that Removal Opponent’s reputation is confined to Western Australia, as the Removal Opponent’s evidence indicates that this has occurred mostly in minor publications with small readerships, that are only published in Western Australia.
110. The Removal Applicant also argues that it is likely to suffer prejudice if the Trade Marks are not confined. The Removal Applicant is the owner of trade mark 2171484 for SKYN and trade mark 2176830 for SKYN ARISE, for pharmaceutical goods in class 5 which are presently opposed by the Removal Opponent.
111. My general observations on the evidence are that the Removal Opponent has been operating for 19 years. Trade Marks 749, 918, 919, 989, 990, 191, 300, 301 and 413 were registered between 2011 and 2015. As such the Removal Opponent has had from 6 to 10 years to use these trade marks in relation to the unamended services. It has not done so.
112. The evidence of use shows that the bulk of the promotion and advertising by the Removal Opponent shows use of 749, 918, 919 and 301 and that these trade marks only have a reputation in relation to services as amended. I note that no sales figures have been provided, however the Removal Opponent has a good client base and has made substantial investments in the business. In particular the Removal Opponent has invested in a range of advertising platforms with Australia wide coverage.

113. Below I will provide specific comments on trade marks 749, 918, 919, 989, 990, 191, 300, 301 and 413 and whether it is appropriate to exercise the Registrar’s discretion in the Removal Opponent’s favour.
Trade Mark 749 and 918
114. I am satisfied that the evidence of use demonstrates that trade marks 749 and 918 enjoyed a reputation in Australia in relation to the amended services in class 44. However, I am not satisfied that the Removal Opponent’s reputation extends to the unamended services.
115. I do not agree with the Removal Opponent that if 749 and 918 are partially removed from the Trade Marks Register this would reflect fragmented ownership. The Removal Opponent’s original specification in class 44 is very broad and if I were to limit the specification as proposed, the scope of protection that remains would incorporate the amended services and similar services which would be broad enough to prevent consumer confusion. Furthermore, the medical services provided by the Removal Opponent are specialised, representing only a branch of medical practice.
116. Given the importance of the integrity of the Register I do not consider it appropriate to exercise my discretion.
Trade Mark 919
117. I am satisfied that the evidence of use demonstrates that trade mark 919 enjoyed a reputation in Australia in relation to the amended services in class 35. However, I am not satisfied that the Removal Opponent’s reputation extends to the unamended services.
118. I do not agree with the Removal Opponent that if 919 is partially removed from the Trade Marks Register this would reflect fragmented ownership. The Removal Opponent’s original specification in class 35 is very broad and if I were to limit the specification as proposed, the scope of protection that remains would incorporate the services for which use is shown and similar services, which would be broad enough to prevent consumer confusion.
119. I refuse to exercise my discretion.
Trade Mark 989
120. I am satisfied that the evidence of use does not demonstrate that 989 enjoys a reputation in Australia in relation to the amended services in class 44.
121. I am unpersuaded that the proposed limitation of the registered services to the amended services would result in consumer confusion or practically impact on the interests of the Removal Opponent.
122. I refuse to exercise my discretion.
Trade Mark 990
123. I am satisfied that the evidence of use does not demonstrate that 990 enjoys a reputation in Australia in relation to the amended services in class 35.
124. I am unpersuaded that the proposed limitation of the registered services to the amended services would result in consumer confusion or practically impact on the interests of the Removal Opponent.
125. I refuse to exercise my discretion.
Trade Mark 191
126. I am satisfied that the evidence of use demonstrates that trade mark 191 enjoyed a reputation in Australia in relation to the amended services in class 44. However, I am not satisfied that the Removal Opponent’s reputation extends to the unamended services.
127. I do not agree with the Removal Opponent that if 191 is partially removed from the Trade Marks Register this would reflect fragmented ownership. The Removal Opponent’s original specification in class 44 is very broad and if I were to limit the specification as proposed, the scope of protection that remains would incorporate the amended services and similar services which would be broad enough to prevent consumer confusion. Furthermore, the medical services provided by the Removal Opponent are specialised, representing only a branch of medical practice.
128. I refuse to exercise my discretion.
Trade Mark 300
129. I am satisfied that the evidence of use does not demonstrate that 300 enjoys a reputation in Australia in relation to the amended services in class 35.
130. I am unpersuaded that the proposed limitation of the registered services to the amended services would result in consumer confusion or practically impact on the interests of the Removal Opponent.
131. I refuse to exercise my discretion.
Trade Mark 301
132. I am satisfied that the evidence of use demonstrates that trade mark 301 enjoyed a limited reputation in Australia in relation to the amended services in class 44. However, I am not satisfied that the Removal Opponent’s reputation extends to the unamended services.
133. I do not agree with the Removal Opponent that if 301 is partially removed from the Trade Marks Register this would reflect fragmented ownership. The Removal Opponent’s original specification in class 44 is very broad and if I were to limit the specification as proposed, the scope of protection that remains would incorporate the amended services and similar services which would be broad enough to prevent consumer confusion. Furthermore, the medical services provided by the Removal Opponent are specialised, representing only a branch of medical practice.
134. I refuse to exercise my discretion.
Trade Mark 413
135. I am satisfied that the evidence of use does not demonstrate that 413 enjoys a reputation in Australia in relation to the amended services in class 44.
136. I am unpersuaded that the proposed limitation of the Registered Services to the amended services would result in consumer confusion or practically impact on the interests of the Removal Opponent.
137. I refuse to exercise my discretion.
Decision
138. The Removal Opponent has not established its opposition to the applications for partial removal of trade marks 1413749, 1517918, 1517919, 1664989, 1664990, 1695191, 1738300, 1738301 and 1738413. The applications for removal therefore succeed and the specified services of those registrations will be amended as shown below.
139. The Removal Opponent has partially established its opposition to the application for partial removal of trade mark 1842519. The specified services of this registration will therefore be amended as shown below.
140. The Removal Opponent has established its opposition to the applications for partial removal of trade marks 1793508, 1793510, 1793511 and 1846459. The registration of these trade marks as they currently stand will therefore continue.
141. I direct that, one month from the date of the Decision, the following Registrations be amended as set out below (wherein text to be added is underlined and text to be deleted is stuck through):
Trade Marks 1413749, 1517918, 1664989 and 1695191
Class 44: Beauty services; medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage

Trade Mark 1738301
Class 44: Beauty services; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Beauty salons; Beauty treatment services; Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Massage

Trade Mark 1738413
Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services) in the field of aesthetics, beauty and cosmetic treatments; Personal care services (medical nursing, health, hygiene and beauty care) in the field of aesthetics, beauty and cosmetic treatments; Medical services in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the body in the field of aesthetics, beauty and cosmetic treatments (including vaginal rejuvenations); Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services

Trade Mark 1517919
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods being; advertising; marketing; promotional services; business consultancy; business consultancy relating to franchising

Trade Mark 1664990
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Advertising; Marketing

Trade Marks 1738300
Class 35: Retailing of non-medicated products for beauty, cosmetic and skin protection purposes, being facial and skin creams, moisturisers, cleansers, serums, masks, scrubs, and sun screens goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Sales promotion services; Advertising; Marketing

Trade Mark 1842519
Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultancy; Beauty consultation; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Hygienic and beauty care for human beings; Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings ~~or animals~~; Advisory services relating to medical services; Consultancy and advisory services in relation to medical services; Medical services; Providing information including online, about medical services ~~,and veterinary services~~; Provision of medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage

142. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
143. Both parties sought costs. Each party has had a measure of success in this matter and as such each party shall pay their own costs.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 September 2023
Annexure A

Registration Number

Trade Mark

Filing Date

Registered Services

1413749

(‘749’)

SKYN

24 March 2011

Class 44: Beauty services; medical services; beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services); personal care services (medical nursing, health, hygiene and beauty care); therapeutic treatment of the body; therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage

1517918

(‘918’)

SKYN

3 October 2012

Class 44: Beauty services; medical services; beauty treatment services; beauty salons; health spas (health, hygiene and beauty care services); personal care services (medical nursing, health, hygiene and beauty care); therapeutic treatment of the body; therapeutic treatment of the face; cosmetic treatment services; depilatory treatment services; consultancy services relating to personal appearance (hair, beauty, cosmetics); massage

1517919

(‘919’)

SKYN

3 October 2012

Class 35: Retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; advertising; marketing; promotional services; business consultancy; business consultancy relating to franchising

1664989

(‘989’)

LOVE THE SKIN YOURE IN

17 December 2014

Class 44: Beauty services; Medical services; Beauty treatment services; Beauty salons; Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Massage

1664990

(‘990’)

LOVE THE SKIN YOURE IN

17 December 2014

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Advertising; Marketing

1695191

(‘191’)

SKYN LOVE THE SKIN YOURE IN

21 May 2015

Class 44: Beauty services; Medical services; Beauty treatment services; Beauty salons; Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Massage

1738300

(‘300’)

1 December 2015

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Sales promotion services; Advertising; Marketing

1738301

(‘301’)

1 December 2015

Class 44: Beauty services; Medical services; Beauty salons; Beauty treatment services; Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Massage

1738413

(‘413’)

SKYN LOOKING GOOD FEELING GOOD!

1 December 2015

Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services

1793508

(‘508’)

SKYN for Men

31 August 2016

Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services; Depilatory waxing

1793510

(‘510’)

SKYN2Skin

31 August 2016

Class 44: Beauty services; Medical services; Beauty salons; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Personal care services (medical nursing, health, hygiene and beauty care); Health spas (health, hygiene and beauty care services); Therapeutic treatment of the body; Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services

1793511

(‘511’)

The SKYN Group

31 August 2016

Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Marketing

Class 44: Beauty salons; Beauty services; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage

1842519

(‘519’)

4 May 2017

Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultancy; Beauty consultation; Beauty salon services; Beauty salons; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Hygienic and beauty care for human beings; Personal care services (medical nursing, health, hygiene and beauty care); Providing information, including online, about hygienic and beauty care for human beings or animals; Advisory services relating to medical services; Consultancy and advisory services in relation to medical services; Medical services; Providing information including online, about medical services, and veterinary services; Provision of medical services; Therapeutic treatment of the body; Therapeutic treatment of the face; Cosmetic treatment services; Depilatory treatment services; Massage

1846459

(‘459’)

22 May 2017

Class 44: Advisory services relating to beauty treatment; Beauty care services; Beauty consultation; Beauty salons; Beauty treatment services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Health spas (health, hygiene and beauty care services); Personal care services (medical nursing, health, hygiene and beauty care); Medical advisory services; Medical care services; Medical treatment services; Therapeutic treatment of the body; Therapeutic treatment of the face; Massage; Cosmetic treatment services; Depilatory treatment services

Registration Number	Trade Mark	Filing Date	Registered Services[1]	Short Title
1413749	SKYN	24 March 2011	Class 44	749
1517918	SKYN	3 October 2012	Class 44	918
1517919	SKYN	3 October 2012	Class 35	919
1664989	LOVE THE SKIN YOURE IN	17 December 2014	Class 44	989
1664990	LOVE THE SKIN YOURE IN	17 December 2014	Class 35	990
1695191	SKYN LOVE THE SKIN YOURE IN	21 May 2015	Class 44	191
1738300	1 December 2015	Class 35	300
1738301	1 December 2015	Class 44	301
1738413	SKYN LOOKING GOOD FEELING GOOD!	1 December 2015	Class 44	413
1793508	SKYN for Men	31 August 2016	Class 44	508
1793510	SKYN2Skin	31 August 2016	Class 44	510
1793511	The SKYN Group	31 August 2016	Class 35 Class 44	511
1842519	4 May 2017	Class 44	519
1846459	22 May 2017	Class 44	459

Trade Marks	Relevant Date
508, 510, 511	31 August 2016
519	4 May 2017
459	22 May 2017