The Purist Company Pty Ltd v Parfums Rochas

This decision concerns an opposition by The Purist Company Pty Ltd to an application by Parfums Rochas to remove the trade mark ALCHEMY (registration number 606935) from the Register. The trade mark is registered for all goods in class 3, including skin and hair care products, toiletries, perfumes, and colour cosmetics. Parfums Rochas sought removal on the grounds of non-use, excluding herbal hair shampoo, herbal hair conditioner, and herbal body wash from its application. The matter was heard by the Registrar of Trade Marks.

The legal issues before the Registrar were whether the grounds for removal under section 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth) were established, and if so, whether to exercise the discretion under section 101(3) to allow the trade mark to remain on the Register. Specifically, the Registrar had to determine if, at the time of filing the application for registration, the applicant had no intention in good faith to use the trade mark for the relevant goods, and if the trade mark had not been used in Australia during the three years preceding the removal application.

The Registrar reasoned that while Parfums Rochas had established that The Purist Company had not used the ALCHEMY trade mark for all goods within class 3, particularly for general cleaning, polishing, or scouring preparations, the evidence demonstrated a clear intention from the outset to develop a range of personal care products. The Registrar noted the gradual expansion of the product range, the business's development, and the clear plans for future brand extension, which are consistent with industry norms. Crucially, the Registrar found that the *nerit* case, relied upon by Parfums Rochas, was factually distinguishable as there was no evidence that ALCHEMY was a "ghost mark." Considering the relatively short period the trade mark had been registered and the ongoing development of the business, the Registrar was satisfied that it was reasonable to exercise the discretion under section 101(3) to prevent removal.

Consequently, the Registrar ordered that trade mark number 606935 be removed from the Register for all goods in class 3 except for skin care preparations, hair care preparations, cosmetics, toiletries, dentifrices, soaps for personal use, sunscreens, deodorants, essential oils, perfumery, and fragrances. The Purist Company was also ordered to pay half of Parfums Rochas' costs.