The Purist Company Pty Ltd v Parfums Rochas

[2000] ATMO 60

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by The Purist Company Pty Limited to the application to remove trade mark registration number 606935(3) - ALCHEMY- by Parfums Rochas.

Trade mark number 606935 is registered as of 15 July 1993.  The application was filed in the name of William John Evans trading as Ultra Natural.  On 16 April 1998 this trade mark was assigned to the joint ownership of William John Evans and Catherine Louise Langoulant.  Then on 17 April 1998 the trade mark was assigned again, this time to The Purist Company Pty Limited (The Purist Company) of 19-23 Bridge Street, Pymble, NSW.  

The trade mark is the word alchemy and it is registered for:

All goods in class 3 including, skin and hair care products, toiletries, perfumes and colour cosmetics.

On 27 April 1999, Parfums Rochas,  of 33 rue Francois 1er, 75008 Paris France, filed an application for the removal of this trade mark from the Register.  Parfums Rochas claims standing as a person aggrieved by the registration of 606935 and, under the provisions of section 92, paragraphs (4)(a) and (4)(b), seeks removal for all of the goods for which 606935 is registered except herbal hair shampoo, herbal hair conditioner and herbal body wash.

The Purist Company opposes the removal. 

Both parties duly filed evidence and The Purist Company then applied to be heard. On 13 March 2000 the hearing took place in Sydney before me.  The opponent was represented by Mr Wayne Willis  of F.B.Rice & Co of Sydney. The applicant was represented by Ms Louise Steer of the Sydney office of Griffith Hack, Lawyers.  

Evidence

The Purist Company  relies on two declarations, the first  from William John Evans (filed as evidence in support of the opposition) the second from Stephen John Booth (filed as evidence in reply to Parfums Rochas’ evidence).

Parfums Rochas relies on an affidavit from G.P.Zambeaux — general secretary of Parfums Rochas (filed as evidence in answer to the Evans declaration).

Background

The opponent’s history

William John Evans is now the managing director of The Purist Company Pty Limited. Mr Evans is a chemist.  He commenced business in 1979 aiming to establish, he says, an internationally successful personal care products business. Between 1979 and 1991 he worked on developing a range of naturally based products to be promoted for their gentle properties and natural perfumes. The range initially consisted of shampoos and conditioners and, in August 1994, these goods were launched in Perth under the trade mark alchemy. As funds became available, Mr Evans intended to develop a full range of cosmetic and toiletry products, and the range, he says, was to include moisturisers, cleansers and toners, shaving cream and toothpaste, lipsticks and hair gels, and natural perfumery products in the form of perfume concentrates, eaux de toilettes, body mist and vanishing creams.

On 15 July 1993 Mr Evans applied to register the trade mark alchemy for all goods in class 3.  The application succeeded.  The goods were nominated broadly in order, says Mr Evans, to provide long term protection for the trade mark alchemy while the product range was progressively built up. He expected that the trade mark alchemy had the potential to evolve in harmony with the continuing evolution of the product. In 1996, three aromatherapy body washes were developed and, by 1997, a number of skin care products.  These goods were all designed in a style consistent with the initial alchemy image of naturally based perfumes with gentle properties

The first significant sales of alchemy hair care products followed the Perth launch of 1994.  Mr Evans at this point was selling through a company called Vida Pty Limited. The first goods, a collection of six alchemy shampoos and four alchemy conditioners, were sold through pharmacies.  In 1995, sale of the shampoos and conditioners was extended to New South Wales, Victoria and Queensland.  In 1996, national distribution rights were granted to department store chains, notably Myer Grace Bros. and David Jones Limited.

In 1996, the alchemy range was extended to include three high quality pure and natural aromatherapy body washes.  These too were sold though pharmacies and department stores. 

In 1997, The Purist Company Pty Limited became the new legal owner of the alchemy trade mark.  This development, says Mr Evans, secured additional finance for the development of the business and the extension of product lines.  Retailers of the alchemy range now include health food and “life style” stores.

From the advent of the 1994 launch, the alchemy products have been advertised.  The first promotions were in Western Australian newspapers and magazines. During 1995-1997, alchemy products were promoted through sales representatives dealing directly with retailer.  From late 1997, considerable advertising was taken out in a range of widely circulated national magazines and newspapers, including Marie Claire, Cosmopolitan, Sunday Telegraph, New Woman, Woman’s Day and Women’s Weekly.  In 1998 Mr Evans participated in a prime time SBS television discussion on cosmetics and this in itself, he says, led to broad public interest and enquiries about the alchemy products. 

The Purist Company Pty Limited has now ventured into international marketing with distributors arranged in the United Kingdom and New Zealand; distributors being sought in Taiwan, Hong Kong, Singapore, Malaysia, Thialand and the Middle East; and correspondence being conducted with interested parties in the United States of America, South Africa and Zimbabwe.

From mid 1998 The Purist Company Pty Limited has been implementing a long term plan for products expansion built, says Mr Evans, from quantitative and qualitative surveys of the market. In September 1999, the plan was to launch alchemy body moisturising milk, moisturising lotion, moisturising gel, moisturising cream, and hand cream.  In March-June 2000 it was planned to launch alchemy moisturising sunscreen, deodorant, cleansing bar and natural toothpaste. In October-December 2000, The Purist Company intends to launch alchemy face moisturiser, face cleansers, face wash/scrub, face toner and natural fragrances.

The applicant’s history

The applicant’s history is set down in the Zambeaux declaration.

Parfums Rochas is well known as a French fashion house.  It was established in 1925 by Marcel Rochas who gained a word-wide reputation as a couturier.  In 1945, the word rochas was adopted as a trade mark in relation to perfumery and cosmetics. Since that time rochas has been used both alone and in combination with other words, as a trade mark for Parfums Rochas’ perfume products. rochas has been used as a trade mark in Australia since 1946 and rochas is variously registered in a number of Parfums Rochas’ Australian trade marks.

Parfums Rochas now has an interest in the trade mark alchemie de rochas.  This mark was adopted in 1998 and Australian sales commenced in April 1999. There has been some advertising in the national press.  World-wide sales of alchemie de rochas have been significant, and world-wide advertising has been undertaken in a number of high profile international magazines (Elle, Hala Mag., Cosmopolitan, Biba). As the general secretary declares, the name rochas is famous throughout the world. He also says that since its release, the alchemie de rochas trade mark has acquired a significant reputation.

Submission

The opponent’s arguments

Mr Willis, for The Purist Company, says that the evidence supporting the opponent’s case demonstrates use of alchemy in respect of a range of class 3 goods, and testifies moreover to an intention, at 15 July 1993, to use that trade mark in respect of these goods.  Mr Willis concedes at the outset, however, that The Purist Company (and its predecessors) have not used alchemy in respect of all of the goods in class 3, and that it is appropriate to restrict the goods specification.  There are a number of goods, however, which, he says, should remain and Mr Willis has it that in respect of the provisions of section 101(3), I should determine the extent of these goods in terms of:

a)   the length of time the trade mark alchemy has been registered

b)   the history of the use of the trade mark

c)   the expressed intention of the registered owner regarding future use

d)   the nature of the industry relative to the goods in question

e)   whether trading in the goods pre-dates the filing of the trade mark application

f)   whether, subsequent to filing the trade mark, the business has developed

Mr Willis made the following submissions in respect of these criteria.

First, he pointed out that the subject trade mark, registration 606935, was less that six years old when, on 27 April 1999, Parfums Rochas filed its removal application. 606935 has a filing date of 15 July 1993. The removal application is thus nine months beyond the five years set by subsection 93(2) of the Trade Marks Act 1995 as the minimum time after which an applications under 92(4)(b) may be filed. Second, Mr Willis says that the history of The Purist Company and its predecessors shows a gradual but steady expansion of its range of goods.  Intentions to expand are signified by the extension of product lines already achieved, and by the assignment of the trade mark to The Purist Company – a move intended to secure additional finance for further development of the business. Third, these intentions are given specific form in Mr Evans’ statement that in September 1999, The Purist Company intended to launch body moisturising milk, moisturising lotion, moisturising gel, moisturising cream and hand cream; that in March-June 2000 it intended to launch a moisturising sunscreen, a deodorant, cleansing bar and toothpaste, and that in October-December 2000 it intends to launch moisturisers, face cleansers, a face wash/scrub, face toner and natural fragrances. Fourth, in respect of the nature of the industry, Mr Willis says brand extension along the line foreshadowed by Mr Evans is consistent with the norm in the cosmetics and toiletries industry.  The opponent’s brand extension followed a normal trend and has been carried out in a responsible and prudent manner. Its business decisions have been based on market research and public response.  Fifth, the product was under development well before the trade mark application was ever filed. Development commenced in 1979 and was well under way when the application for the trade mark registration was filed in July 1993.  The launch of the first hair products then followed, in Perth, in 1994.  Sixth, since filing, the trade mark owners have continued to apply themselves to the task of expanding their business and extending their product lines.  Growth of the business has been continuous. 

On the basis of an established intention to use the trade mark alchemy at filing; of established use of the trade mark alchemy in respect of shampoo, herbal hair conditioner and aromatherapy body wash; and on the basis of the evident status of The Purist Company as a prudent and developing business, Mr Willis pleads that I should exercise the provisions of section 101(3) and allow trade mark registration 606935 to remain on the Register in respect of:

Skin care preparations; hair care preparations; cosmetics; toiletries; dentifrices; soaps; sunscreens; deodorants; essential oils; perfumery and fragrances.

The applicant’s arguments

Ms Steer, on behalf of Parfums Rochas, points to the onus on the opponent, as per section 100, to rebut any allegation made under paragraph 92(4)(a) that, on the day on which the application for registration of the trade mark was filed, the opponent had no intention to use the trade mark alchemy in relation to the goods to which the removal application relates – the ‘relevant goods’.  Here the relevant goods are all goods in class 3 except for herbal hair shampoo, herbal hair conditioner and herbal body wash. The onus also lies with The Purist Company to rebut any allegation made under paragraph 92(4)(b) that, during the relevant three years (here 27 March 1996 to 27 March 1999), the trade mark has not used at any time in relation to the relevant goods.

In respect of the paragraph 92(4)(a) ground, Ms Steer submits that the Evans declaration supports the removal application. She says that in order to rebut this ground. The Purist Company must show that alchemy has been used in a genuine commercial sense and the evidence shows the opposite.  It shows that there has been no genuine commercial use in respect of the relevant goods.  Ms Steer here relies on Imperial Croup Ltd v Phillip Morris & Co[1] - the nerit case.  

[1] [1982] FSR 72

In respect of the paragraph 92(4)(b) ground, Ms Steer again points to the Evans declaration. Mr Evans’ account is that from 1993 only three products, herbal hair shampoo, herbal hair conditioner and herbal body wash have been marketed under the trade mark alchemy.  This, she says, is the limit of The Purist Company’s range.  She points to the evidence regarding The Purist Company’s body milk, particularly WEJ4 — a photo of packaging for alchemy body milk — and maintains that this is not evidence of genuine commercial use.  It is, says Ms Steer, merely a ‘mock-up’ of packaging.  There is no evidence that any body milk has been genuinely marketed under the trade mark alchemy.

Ms Steer contends that the opponent, The Purist Company, has not made out its burden under section 100 either in respect of the paragraph 92(4)(a) or the paragraph 92(4)(b) ground, and says that the application for removal should be allowed

Decision

It is common ground that there was an intention at the date of filing to use the trade mark alchemy in respect of herbal hair shampoo, herbal hair conditioner and herbal body wash. It is also common ground that there has been use of that mark in relation to these goods.

Dealing first, with the removal application as it relies on paragraph 92(4)(a) of the Act, this subsection relevantly reads:

(4) An application … (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)      …

in relation to the goods … 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 … at any time before the period of one month ending on the day on which the non-use application is filed;
(b) …

As Ms Steer says, the relevant goods are not the hair shampoos and conditioners, or the body washes - but the balance of the class 3 goods — in short, all goods in class 3 except for herbal hair shampoo, herbal hair conditioner and herbal body wash. And as per the provisions of section 100, the onus lies with the registered owner to rebut Parfums Rochas’ allegation that in applying for registration the applicant had no intention to use the trade mark alchemy for these goods and, up to 27 March 1999, the registered owner has not used this trade mark in relation to any of the relevant goods.

The evidence provided in support of the opposition satisfies me, however, that from the outset, there was an intention to produce a range of products which broadly extend across the scope of toiletries in class 3. This is confirmed by the evidence that since marketing the shampoos, conditioners and body washes, The Purist Company and its predecessors have been engaged in developing and extending this range.  Certainly, I take Ms Steer’s point that there is evidence that no goods other than herbal hair shampoo, herbal hair conditioner and herbal body wash were in production or were offered for sale before March 1999. However, the trade mark has been registered for only a short time, and it seems to me that Mr Willis has strongly made the point that this is a young enterprise with a proven record of production and with clear intentions (confirmed in its 1998 business plan) to extend its brand across a significant range of class 3 toiletries.  I note Ms Steer’s reference to the nerit case but the facts of that case are very different.  It concerned registration of the word nerit, which was filed for the express purpose of protecting the use of the word merit. The intention was to use the word merit as a trade mark (a word which in its own right had failed to achieve registration). nerit is characterised as a ghost mark.  There is no evidence whatsoever that alchemy has been registered for the purpose of ghosting another mark.

I am satisfied that the opponent, The Purist Company, has discharged the onus under section 92(4)(a) in respect of a range of personal care products in class 3. On the other hand all goods in class 3 comprehends an extensive schedule which goes well beyond the personal care products nominated in the opponent’s evidence, and well beyond personal care products per se. Broadly stated, class 3 includes bleaching preparations and other substances for laundry use, and cleaning, polishing, scouring and abrasive preparations. In respect of these goods, I find no supporting evidence of an intention to use nor any evidence of actual user. 

Turning now to the removal application as it relies on paragraph 92(4)(b) of the Act — this subsection relevantly reads:

(4) An application … (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) …
(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.

Ms Steer’s submissions here are that on the evidence the trade mark alchemy has only been used, in the relevant three years, on herbal hair shampoo, herbal hair conditioner and herbal body wash.  Accordingly, she argues, The Purist Company has not succeeded in discharging its section 100 burden, and consequently the trade mark should be removed in accordance with Parfums Rochas’ application.

Mr Willis, I believes, concedes the lack of use and relies on the provisions of paragraph 101(3).  This subsection reads:

(3)   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. 

I think it is clear from the history given in the Evans declaration that the business of establishing a range of personal care products under the trade mark alchemy has been underway since 1979.  Parfums Rochas has not disputed the facts of Mr Evans’ account.  There is a dearth of information about what was taking place in the 14 or so years leading up to the filing of the trade mark application, and the launch of the first shampoos and conditioners.  However, following on from there, on uncontested evidence, the registered owner, be it The Purist Company or a predecessor, has worked on a plan to diversify the range of alchemy products.   In the context of the time in which the trade mark alchemy has been registered, and the time in which the business of the registered owners has been operating, I think that a number of the points put by Mr Willis are germane to the determination of whether the discretion provided under the terms of section 101(3) ought to be exercised.  I agree with Mr Willis that I should give weight to the evidence that:

·     the registered owner, or its predecessor, was developing the product before it filed its application to register the trade mark

·     the registered owner has shown that, in the relatively short life of the trade mark registration, it has diversified from the initial hair products to line of body washes

·     brand extension is a normal activity for businesses engaged in the production of toiletries cosmetics and perfumes

·     since achieving trade mark registration the registered owner has continued to invest resources to extend the alchemy brand, and currently has a fixed plan to extend the brand further

·     the brand extension programs are progressing and being managed on prudent business principles

·     when the application to remove trade mark number 606935 from the Register was filed, it had been on the Register for less than six years.

Taking these matters into account, and giving them appropriate weight, I am satisfied that it is in order to invoke the provisions of section 101(3) and allow the trade mark alchemy to remain on the Register even though the grounds of the application have been made out.  

In coming to this conclusion, and in determining the scope of the goods which I should allow to remain, I am conscious of the applicant’s desire to have the item perfumes removed.  However, in view of the fact that use of alchemy has been shown in respect of aromatherapy body washes and noting The Purist Company’s intention to launch fragrances in October - December 2000 I have decided that perfumery products should remain.

I direct that trade mark number 606935 be removed from the Register for all goods in class 3 other than:

Skin care preparations; hair care preparations; cosmetics; toiletries; dentifrices; soaps for personal use; sunscreens; deodorants; essential oils;  perfumery and fragrances.

The removal of the goods will proceed after 30 days from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that the removal will not take place until such time as that appeal is decided or discontinued. 

Costs

Both parties have, to some extent, succeeded.  The Purist Company, however, as registered owner, is answerable for the fact that an application was made to register alchemy for a wide statement of goods and with no intention to use the mark in respect of a significant number of those goods.  So far as I can see, there was an absence of any real intention to apply the trade mark alchemy to any of the non personal items in class 3.  Nor, during the life of the registration, has the registered owner shown any use of alchemy in relation to any of those general purpose cleaning, polishing or scouring products. 

In the circumstances, I think it appropriate that The Purist Company pay half of the costs of Parfums Rochas, in the amounts provided for in Schedule 8 of the Trade Marks Regulations. Accordingly, I order The Purist Company to pay half the costs of Parfums Rochas.

The provision for the taxing of costs is set down in regulation 21.13.

Helen R Hardie
Deputy Registrar
21 June 2000