Susanne Lang Fragrance Inc. v the Lip Lab Pty Ltd

This matter concerned an opposition by Susanne Lang Fragrance Inc. (the Opponent) to the registration of two trade marks by The Lip Lab Pty Ltd (the Applicant). The Opponent, which manufactures and sells cosmetic products including lipsticks under its BITE BEAUTY brand, operates an in-store service in the United States and Canada where customisable lipstick is manufactured in a retail area known as the "Lip Lab". The Applicant sells cosmetic products and offers a service allowing customers to produce their own lipstick products, using products and processes from Colorlab Cosmetics Inc. The Opponent contended that the use of the Applicant's trade marks would be contrary to law, specifically relying on sections 18 and 29(1) of the Australian Consumer Law and the common law tort of passing off.

The primary legal issue before the Hearing Officer was whether the use of the Applicant's proposed trade marks in relation to its services would be contrary to law, as contemplated by section 42(b) of the *Trade Marks Act 1995* (Cth). This required the Opponent to establish, on the balance of probabilities, that such use would be contrary to law. The Opponent argued that the Applicant's use would be misleading or deceptive under section 18 of the Australian Consumer Law by falsely suggesting an association, affiliation, or sponsorship with the Opponent, given the Opponent's alleged reputation in the "Lip Lab" trade mark. The Opponent also relied on section 29 of the Australian Consumer Law and the tort of passing off.

The Hearing Officer found that a fatal flaw in the Opponent's argument was the lack of established reputation in Australia for its "Lip Lab" service at the priority date. While the Opponent had extensive evidence of reputation for its BITE BEAUTY brand, this was considered irrelevant to the "Lip Lab" service, which was only available in North America. Without evidence of a reputation in Australia for the "Lip Lab" service, consumers would not be misled or deceived by the Applicant's use of the trade marks. The Hearing Officer noted that if a trade mark does not contravene section 18 of the Australian Consumer Law, it generally will not contravene section 29 or the tort of passing off, citing relevant case law. Consequently, the Opponent failed to establish its opposition on this ground.

The Hearing Officer decided to refuse the registration of the trade marks, ordering costs against the Opponent. However, costs were awarded against the Applicant in respect of two specific trade marks, under section 221 of the *Trade Marks Act 1995* (Cth) and the relevant regulations. The trade marks were to proceed to registration one month from the decision, unless a notice of appeal was filed, in which case registration would be stayed pending the outcome of the appeal.