Tahi Oils Limited v Tahi Estate Limited

[2023] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Tahi Oils Limited to registration of trade mark application 2010612 – TAHI - in the name of Tahi Estate Limited.

Delegate:	Bianca Irgang
Representation:	Opponent: L.E. Davis of Counsel instructed by Davies Collison Cave Pty Ltd Applicant: C Hadlee of Hudson Gavin Martin
Decision:	2023 ATMO 100 Trade Marks Act 1995 - Section 52 opposition: section 58 ground of opposition established for some goods – no other ground of opposition established – amendment requested - registration to proceed for limited goods.

Background

1. Tahi Estate Limited (‘the applicant’), filed trade mark application number 2010612 on 21 May 2019 in classes 3, 5 and 30 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  TAHI (the ‘Trade Mark’)

   Trade mark application no: 2010612

   Filing Date:  21 May 2019

   Convention details:              New Zealand
     1110270 20 December 2018
     Classes 5 (Partial) and 30 (Full)
     EUIPO
     17992891 28 November 2018
     Class 3 (Full)

   Specification:  Class 3: Cosmetics; skin care preparations; hair care preparations; sun care preparations; beauty care preparations; oils for cosmetic purposes; skin cleansing lotion, creams, foams; soap; creams, lotions and balms for cosmetic purposes; skin masks for cosmetic purposes; make-up removing preparations; non-medicated preparations for the relief of sunburn; perfume

   Class 5: Lozenges for pharmaceutical purposes; herbal honey throat lozenges; propolis for pharmaceutical purposes; propolis dietary supplements; dietary supplements in the form of liquids, capsules or tablets; tinctures; oral sprays; medicinal teas; balms, creams and lotions for pharmaceutical purposes; pharmaceutical preparations for skin care; pharmaceutical preparations for treating sunburn; adhesive plasters; adhesive tapes for medical purposes; sticking plasters for medical purposes; medical dressings

   Class 30: Lozenges (confectionary); herbal honey lozenges (confectionary); propolis; tea; tea-based beverages; herbal honey; honey

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 22 October 2019. Subsequently Tahi Oils Limited (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth)(‘the Regulations’). The applicant has not filed any evidence in these proceedings.

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 20 April 2023. The opponent was represented by L.E. Davis of Counsel instructed by Davies Collison Cave Pty Ltd. The applicant was represented C. Hadlee of Hudson Gavin Martin.

   Grounds of Opposition

5. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’). Those grounds being under sections 58, 60 and 42(b) were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Jackie Nicole Lee, sole director and shareholder of the opponent, dated 26 June 2020 (the ‘Lee declaration’) with Exhibits JNL-1 to JNL-8.

   Opponent’s Evidence

7. The Lee declaration states that in late 2015 and operating as a sole trader, Ms Lee’s business commenced the sale in New Zealand of "skin care cosmetics; non medicated oils for application to the skin, lips and hair including those for cosmetics, cleansing, moisturising, make up removal, protection and rejuvenation of skin, hair and lips" (‘the opponent’s goods’) under its TAHI trade mark. Ms Lee states that she commenced sales of the opponent’s goods under the TAHI trade mark into Australia in June 2017 through Ms Lee’s company, as an authorised user of its TAHI trade mark. According to Ms Lee, on 3 March 2019 all trade mark rights in TAHI were assigned to Ms Lee’s company, including all rights to the opponent’s trade mark and related New Zealand trade mark  number 1110270 or the word TAHI. As such, all references to the use of the TAHI trade mark by the opponent in this decision includes a reference to Ms Lee’s company use as an authorised user prior to the acquisition of the opponent’s TAHI trade mark in March 2019 and all subsequent use. 

8. The evidence demonstrates some limited use of the opponent’s trade mark on very limited set of goods in Australia, namely, an oil that can be used as a moisturiser and cleanser for the face or body. To this end, exhibits JNL-5 and JNL-6 demonstrate sales of the opponent’s TAHI oil goods within Australia in the form of orders placed on 23 June 2017 and 20 July 2017 respectively through the opponent’s online website to be delivered to Australian addresses. Additionally, exhibit JNL-7 is a copy of a post from “Home State Hobart” which has an Australian web address and directly mentions being the first store in Australia to have three different TAHI oils available for sale in store and online. The post is dated 26 September 2017.

9. The remainder of the opponent’s evidence is not so helpful for establishing the opponent’s use of its TAHI trade mark in Australia. Exhibit JNL-1 contains a copy of print outs from the WaybackMachine which demonstrate pages of the opponent’s website from 2017 and 2018 that show the TAHI trade mark prominently displayed on the website and on the oil goods being offered for sale. Ms Lee states that around six percent of the hits on the website are from Australian based addresses but there is nothing in the evidence to substantiate these claims. The same can be said of exhibit JNL-2 which contains copies of pages from a social media account called “rubytakessnaps” which has a New Zealand based web address. While it does show some promotion of the opponent’s TAHI branded oil goods, there is no substantiation of claims that there is an Australian readership or any Australian engagement.

10.  Similarly, exhibit JNL-3 is a copy of the opponent’s advertisement in the Autumn 2020 edition of Natural Parent magazine and there is no evidence of Australian readership or distribution. Exhibit JNL-4 follows the same pattern. It is a copy of Kia Ora magazine dated January 2020 and contains an advertisement for the opponent’s TAHI oil goods along with a discount voucher. But again, there is no evidence of Australian readership. Ms Lee also claims to have attended trade shows to promote the TAHI mark however those trade shows all appear to have all taken place in New Zealand so this does not amount to evidence of use in Australia.

Discussion

Section 58 – Applicant not the owner of the trade mark

1. Section 58 of the Act provides:

   58             Applicant not owner of trade mark

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

2. In order to make out a ground of opposition under section 58, the opponent must establish that:

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical,[3]

   ·   the respective goods on which the trade marks have been or are to be used  are the ‘same kind of thing’; and[4]

   ·   the opponent has the earlier claim to ownership based on authorship[5] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.[6]

   [3] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375 (Gummow J).

   [4] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 (Holroyd J).

   [5] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]( Fullagar J).

   [6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413] (McGarvie J).

3. In regards to the first point, it is clear that the opponent’s TAHI trade mark and the Trade Mark are substantially identical according to the side-by-side test where the trade marks:

   compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[7]

   [7] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414]

4. The respective trade marks to be compared are as follows:

Trade Mark	opponent’s TAHI trade mark
TAHI	tahi

1. A comparison of the opponent’s TAHI trade mark and the Trade Mark creates an impression of total resemblance.[8] The trade marks are comprised of the same essential features being the word TAHI regardless of whether or not the word is rendered in capital letters or not.

   [8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (Gummow J).

2. I just need to determine whether or not the opponent is able to satisfy the remaining two requirements in order to establish the section 58 ground of opposition in relation to any or all of the applicant’s claimed goods.

3. The applicant has not put forward any evidence in these proceedings. Therefore, the opponent must demonstrate use of a substantially identical trade mark before 28 November 2018/20 December 2018 which are the convention priority dates claimed for the Trade Mark across all the goods. To this end, the opponent’s evidence demonstrates minimal use of its TAHI trade mark in Australia before the 18 November 2018 in the form of the online sales to Australian customers listed in exhibits JNL-5 and JNL-6. Therefore, the opponent has satisfied the first and third requirement in establishing section 58. All that remains for me to determine is whether the sales of the goods branded with the opponent’s TAHI trade mark in 2017 and early 2018 are ‘the same kind of thing’ to the relevant goods.

4. To establish whether or not the goods are the ‘same kind of thing’ I turn to the description of the opponent’s goods in exhibit JNL-7 which states that the opponent’s TAHI branded goods are:

   “Tahi means ‘one’ in Maori and this oil is made to be your ‘one’ skincare ritual. It can be used on the face & body as both a cleaner & moisturizer.

   Handmade in NZ with a base of organic sweet almond oil and packed full with vitamins, mineral, antioxidant & essential fatty acids that restore moisture loss and prevent the signs of ageing, all Tahi oils contain ingredients that soothe & soften the skin and are naturally antibacterial. My skin was all red and flared up last week and this has calmed it right down and now feeling lovely and hydrated.

   Three blends available in store (first in Australia!) and online.”

5. With this description of the opponent’s goods as oils for skincare of face and body, I turn to the relevant goods firstly in class 3 being:

   Cosmetics; skin care preparations; hair care preparations; sun care preparations; beauty care preparations; oils for cosmetic purposes; skin cleansing lotion, creams, foams; soap; creams, lotions and balms for cosmetic purposes; skin masks for cosmetic purposes; make-up removing preparations; non-medicated preparations for the relief of sunburn; perfume

6. A consideration of these goods reveals that the opponent’s TAHI trade mark branded oils are the ‘same kind of thing’ as some of the applicant’s class 3 goods. This is because the opponent’s TAHI branded oil is used for cleansing purposes, moisturizing, soothing, preventing the signs of age and generalized skin care and beautification. This is a very broad use cosmetic and body oil which would be considered the same ‘kind of thing’ as a cosmetic (given the broad definition of a cosmetic). Anti-sun preparations (cosmetics), sun skin care products (cosmetics); and cosmetics in the form of oils have already been determined to be the ‘same kind of thing’ as cosmetics[9]. But ‘the same kind of thing’ is harder to meet than whether goods or services are ‘of the same description’ or are ‘closely related’.

   [9] Victoria Beckham v VB Skinlab Pty Ltd [2020] ATMO 36; 156 IPR 259 at [17]

7. In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper [1887] UKLawRpCh 91; 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical... yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same... though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[10]

   [10] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [89] (Kenny J).

8. Following this reasoning, the applicant referred me to the recent Intellectual Property Office of New Zealand (‘IPONZ’) decision where the Delegate considered the goods upon which the opponent had used it’s TAHI trade mark[11]. In the SGP, the opponent has stated:

   “The Opponent has used the trade mark TAHI in Australia in relation to "toiletry preparations (non-medicated); cosmetics; oils for the hair, skin or body; oils for perfumes and scents; skincare preparations; moisturiser; skin and hair cleaning preparations; body wash; massage preparations; hand care preparations".

   [11] Tahi Oils Limited v Tahi Estate Limited [2023] NZIPOTM 5

9. But I am not satisfied from the evidence before me that the opponent has used its TAHI trade mark on such a broad range of goods in Australia. As I stated above in [20], the opponent’s TAHI branded oil is used for cleansing purposes, moisturizing, soothing, preventing the signs of age and generalized skin care and beautification. But it is most definitely an oil. A versatile oil, but still an oil. Which is in line with what the Delegate found in the recent IPONZ decision where the Assistant Commissioner considered that the opponent’s use of its trade mark in New Zealand was in relation to “Oils for use as skincare cosmetics; oils for use as anti-aging skincare preparations; face oils.” I agree that this is what the evidence before me demonstrates of the uses for which the opponent’s TAHI branded oil goods have been applied.

10. Therefore, I am satisfied that the opponent’s oil goods are the same kind of thing as a number of goods in the applicant’s broad claim in class 3 which would include a large number of oil based goods such as Oil for use as cosmetics; oil skin care preparations; oil sun care preparations; beauty care preparations being oils; oils for cosmetic purposes; skin cleansing oils; lotions for cosmetic purposes; oil-based make-up removing preparations; non-medicated preparations made from for the relief of sunburn.

11. However, considering the remainder of the applicant’s goods in class 3 and classes 5 and 30, I am not persuaded by the opponent’s submissions that these are the ‘same kind of thing’ as the opponent’s oil goods. The opponent’s oil goods are not the same kind of thing as the sheer quantity of goods which may be considered broadly as ‘cosmetics’. Nor would external oils be considered the same as orally ingested lozenges, oral sprays, pharmaceutical skin preparations, medicinal teas and adhesive bandages in class 5. Nor do I consider a beauty oil for the skin to be the same kind of thing as the applicant’s class 30 goods for Lozenges (confectionary); herbal honey lozenges (confectionary); propolis; tea; tea-based beverages; herbal honey; honey.

12. In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the filing date of the Trade Mark or, arguably, any use by the applicant of its Trade Mark, in relation to some goods in class 3 that are the ‘same kind of thing’. It follows that the opponent, and not the applicant, is the trade mark owner, and the section 58 ground of opposition is established with respect to some of the class 3 goods specified in trade mark application 2010612 being oils for cosmetic purposes and oils for cleansing and moisturising of the face or body.

13. Therefore, I need to consider whether or not the opponent has established either of the remaining grounds of opposition in relation to the remaining goods in classes 3, 5 and 30.

    Section 60 - Reputation in Australia

    Section 60 of the Act provides:

    60 Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

14. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks below:

    TAHI

15. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade mark be substantially identical or deceptively similar to the Trade Mark.

16. It is for me to determine whether the opponent has established that before 28 November 2018/20 December its TAHI trade mark was recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to deceive or cause confusion.

17. To this end I turn to the opponent’s evidence of use of its TAHI trade mark in Australia. As discussed earlier, the evidence demonstrates some limited use of the opponent’s trade mark on very limited goods in Australia, namely, an oil that can be used as a moisturiser and make-cleanser for the face or body. Exhibits JNL-5 and JNL-6 demonstrate sales of the opponent’s TAHI oil goods within Australia in the form of orders placed on 23 June 2017 and 20 July 2017 for a few bottles of the opponent’s goods. While exhibit JNL-7 does contain a copy of a post from “Home State Hobart”  dated 26 September 2017, which advertises the opponent’s TAHI branded goods in Australia, there is no data provided to demonstrate how many sales were made through this third party trader. Other evidence provided by the opponent is dated after the 18 November 2018 and is of limited value in establishing a reputation within Australia sufficient to establish the section 60 ground of opposition.

18. All of the above is not sufficient for the opponent to establish a reputation in Australia before 18 November 2018/20 December 2018 in its TAHI trade mark. The opponent has not established the section 60 ground of opposition.

    Section 42(b) – Contrary to Law

1. Section 42(b) of the Act is reproduced below:

   Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) …

   (b) its use would be contrary to law.

2. I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29 or passing off. I thus find that the opponent has not established the ground of opposition under section 42(b).

   Decision

3. Section 55 of the Act provides:

   55  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.

   Note:          Forlimitationssee section 6.

4. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 58 in regards to some of the goods in class 3. Accordingly, I wrote to the applicant on 7 July 2023 advising them that I would provide them with two weeks in which to request an amendment to the class 3 goods and delete the conflicting goods from the Trade Mark specification. Namely:

   Class 3:Cosmetics; skin care preparations; hair care preparations; sun care preparations; beauty care preparations; skin cleansing lotion, creams, foams; soap; creams, lotions and balms for cosmetic purposes; skin masks for cosmetic purposes; make-up removing preparations; non-medicated preparations for the relief of sunburn; perfume; none of the aforementioned being oils for cleansing and moisturising of the face or body

5. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to Registration pending any appeal from the opponent. The applicant has responded and requested an amendment that deletes the goods in conflict.

6. Accordingly, I accept for possible registration trade mark application no. 2010612 in respect

   of the amended specification for goods in class 3 and all the goods in classes 5 and 30.

   Costs

7. It is usual for costs to follow the event, as both parties have been successful to some degree in their claims, I determined that each of the parties should bear their own costs.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   20 July 2023