Victoria Beckham v VB Skinlab Pty Ltd

[2020] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by Victoria Beckham to registration of trade mark applications 1914421 (44) – VB SALON (Fancy) and 1914422 (44) – VB SKINLAB (Fancy) – in the name of VB Skinlab Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Media Arts Lawyers Applicant: Self-Represented
Decision:	2020 ATMO 36 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Victoria Beckham (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subject of the applications detailed below in the name of VB Skinlab Pty Ltd (‘Applicant’): 

Application Number:

1914421

Filing Date:

26 March 2018

Services:

Class 44: Beauty salon services; Beauty salons; Hair dressing salon services; Hairdressing salons; Nail salon services; Slimming salon services; Sun tanning salon services; Tanning salon services

(‘Applicant’s Services’)

Trade Mark:

(‘Salon Mark’)

Application Number:

1914422

Filing Date:

26 March 2018

Goods:

Class 3: Almond milk for cosmetic purposes; Aloe vera preparations for cosmetic purposes; Anti-sun preparations (cosmetics); Body creams (cosmetics); Colour cosmetics for the skin; Cosmetic bath products; Cosmetic cotton wool; Cosmetic creams; Cosmetic creams for firming the skin; Cosmetic creams for toning the skin; Cosmetic creams for wrinkles; Cosmetic dyes; Cosmetic dyestuffs; Cosmetic eye gels; Cosmetic eye pencils; Cosmetic face powders; Cosmetic goods for care of the skin; Cosmetic kits; Cosmetic masks; Cosmetic milks; Cosmetic moisturisers; Cosmetic oils; Cosmetic pencils; Cosmetic powder; Cosmetic preparations; Cosmetic preparations for application to the nails; Cosmetic preparations for baths; Cosmetic preparations for cleansing the mouth; Cosmetic preparations for cleansing the skin; Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations for slimming purposes; Cosmetic preparations for use in the bath; Cosmetic preparations for use on the body; Cosmetic preparations for use on the face; Cosmetic preparations for use on the skin; Cosmetic products for skin care; Cosmetic skin care products; Cosmetic soaps; Cosmetics; Cosmetics for animals; Cosmetics for bronzing the skin; Cosmetics for eyebrows; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics for protecting the skin from sunburn; Cosmetics for the treatment of dry skin; Cosmetics for the use on the hair; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of eye shadow; Cosmetics in the form of gels; Cosmetics in the form of mascara; Cosmetics in the form of milks; Cosmetics in the form of non-medicated lotions; Cosmetics in the form of oils; Cosmetics in the form of powders; Cosmetics in the form of rouge; Cosmetics preparations; Cosmetics to remove pigmentation marks; Facial masks (cosmetic); Facial moisturisers (cosmetic); Facial scrubs (cosmetic); Facial washes (cosmetic); Moisturising skin creams (cosmetic); Moisturising skin lotions (cosmetic); Natural oils for cosmetic purposes; Night creams (cosmetics); Non-medicated cosmetic preparations; Non-medicated cosmetics; Non-medicated facial lotions (cosmetic); Non-medicated skin care lotions (cosmetic); Oil for cosmetic use; Oils for cosmetic purposes; Oils for the body (cosmetics); Oils for the breasts (cosmetics); Oils for the skin (cosmetics); Skin care creams (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Skin cleaners (cosmetic); Skin cleansing cream (cosmetic); Skin cleansing preparations (cosmetic); Skin creams (cosmetic); Skincare preparations (cosmetic); Slimming aids (cosmetic), other than for medical use; Slimming preparations (cosmetic), other than for medical use; Slimming products (cosmetic), other than for medical use; Sprays for use on the body (cosmetics); Sun skin care products (cosmetics); Toning creams (cosmetic); Cosmetics for children

(‘Applicant’s Goods’)

Trade Mark:

(‘Skinlab Mark’)

1. Following the advertisements on 9 and 16 August 2018 in the Australian Official Journal of Trade Marks of the Trade Marks’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose on 9 and 10 October 2018 respectively.  The Opponent then filed Statements of Grounds and Particulars on 3 August 2017 (‘SGPs’). The SGP in respect of the Salon Mark raised grounds of opposition under ss 42(b), 60 and 62A of the Act. The SGP in respect of the Skinlab Mark raised the same grounds and in addition the ground of opposition under s58 of the Act. The Applicant filed a Notice of Intention to Defend in respect of both oppositions on 11 December 2018.

   Evidence, submissions and hearing

2. The Opponent filed the following evidence in support of both its oppositions:

   ·Declaration made on 18 April 2019 by Paolo Riva, the Chief Executive Officer of Victoria Beckham Limited, with Annexures 1 to 21 (‘Riva declaration’).

   ·Declaration made on 23 April 2019 by Tania Michelle Petsinis, Senior Lawyer and Trade Mark Attorney at the Opponent’s Representative, with Annexures 1 to 20 (‘Petsinis declaration’).

3. The Applicant did not file any evidence in answer.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 5 September 2019 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 5 February 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 6 November 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  On 16 January 2020 the Opponent indicated that it no longer sought an oral hearing in this matter, and, as the Applicant had not sought to attend such a hearing, the hearing was cancelled.  The Opponent then filed written submissions on 22 January 2020 (‘Opponent’s Submissions’).  The Applicant did not file any submissions. 

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

6. The Opponent is an individual from the United Kingdom who is a well-known figure in the fields of music (being a former member of the Spice Girls) and fashion.    

7. The relevant claims/statements in the Riva Declaration can be summarised as follows:

   ·     The Opponent operates, under the word mark ‘VB’ (the ‘VB Mark’), businesses in fashion apparel, accessories and cosmetics.  The Opponent launched a range of luxury womenswear in 2008, her own e-commerce site in 2013 and a flagship fashion apparel retail store in London in 2014.

   ·     The Opponent promotes her businesses via her substantial social media presence including 12.8 million followers on Twitter, 24.9 million followers on Instagram and 3.1 million followers on Facebook.  The Opponent’s business, including its cosmetic and non-cosmetic products, has been valued at over 100 million GBP.

   ·     The Opponent has continuously used the VB Mark in relation to cosmetic goods in Australia and internationally since September 2016.  In that month the Opponent launched a cosmetic goods collection with Estee Lauder, with the cosmetic products bearing the VB Mark.  The Opponent’s Estee Lauder Cosmetics range has been made available through the Estee Lauder distribution network including at prestige point of sales counters at department stores, mobile websites, websites operated by the Opponent and duty-free shopping areas in major international airports.

   ·     Sales figures for the Opponent’s Estee Lauder Cosmetics range in Australia between 1 July 2017 and 31 December 2017 was $557,491 AUD.  The Opponent does not provide sales figures between September 2016 and July 2017 or after December 2017.

   ·     The launch of the Opponent’s Estee Lauder Cosmetics range received significant media and public attention including articles in Harper’s Bazaar Australia and Vogue UK.  The Opponent has also promoted the Opponent’s Estee Lauder Cosmetics range through her social media platforms.

   ·     The Opponent also has a significant reputation in the VB Mark for fashion apparel and accessories, having used the VB Mark in Australia since the launch of the 2016 Autumn Winter Collection, approximately 2 years before the filing date of the Trade Marks.

   ·     The Opponent has launched her fashion brand under her own name since 2008 with her products stocked in over 400 stores in 50 countries internationally.  It is the subject of considerable free media interest and is extensively promoted through the Opponent’s social media presence. 

   ·     It is common for fashion apparel and accessory brands to expand into cosmetic products as they are sold through the same or similar trade channels to similar consumer demographics.

   ·     The Applicant uses the Trade Marks through its website at which contains a subscribe box that features a slim brunette with long hair similar to the image of the Opponent.

8. The Annexures to the Reid Declaration display various marketing material that use the VB Mark.  I note however, that while the VB Mark is used on the cosmetic products themselves, much of the promotional material refers to the products as the ‘Victoria Beckham Collection’ and/or under the Estee Lauder Mark.  An example of the promotion is at page 86 of the Riva Declaration in which the products are displayed under a large photograph of the Opponent (that the Opponent is posing in front of) below the words ‘Victoria Beckham Estee Lauder’.

9. The relevant claims/statements in the Petsinis Declaration can be summarised as follows:

   ·     The term salon means a fashionable business, establishment and shop.  The term skinlab is used among practitioners and traders in cosmetics, beauty and skin treatment industry.  Both terms are descriptive and are common in the beauty and cosmetics industry.

   ·     It is common for traders to offer cosmetics and the retail service of providing cosmetics under the same trade marks.

   The Applicant

10. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

    Grounds of Opposition, Onus and Standard of Proof

11. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 60 and 62A of the Act for both Trade Marks and s 58 for the Skinlab Mark. To successfully oppose an application the Opponent needs to establish one of the grounds nominated against it.

12. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 26 March 2018 (‘relevant date’), being the priority date of the applications in Australia.[3]

    Discussion

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

    Section 58 – Applicant not owner of trade mark

13. Section 58 of the Act is reproduced below:[4]

    [4] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

    Section 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.

    Note:For applicant see section 6.

14. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Skinlab Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Skinlab Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Skinlab Mark by the Applicant (‘the third factor’).[7]

    [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [6] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

15. The ground based on s 58 of the Act was particularised in the SGP as follows:

    Since the Opponent’s First Use the Opponent has used trade marks comprised of the letters VB in Australia (Opponent’s Marks) in relation to, inter alia, cosmetics goods (Opponent’s Goods)

    At the time of the Opponent’s First Use, no other person had used or applied to register in Australia a trade mark comprised of the letters VB, or substantially identical trade mar, in relation to cosmetics goods or goods of the same kind.

    Therefore at all relevant times, including the Filing Date, the Opponent has been the Owner of the Opponent’s Marks in relation to, inter alia, cosmetics goods and goods of the same kind

    In comparing the Opponent’s Marks and the Opposed Mark side by side there is a total impression of resemblance between the marks such that the differences between them are slight, having regard to their common essential elements or dominant cognitive cues, specifically the letters VB.  For this reason the Opponent’s Marks are substantially identical to the Opposed Mark.

    The Opponent’s Goods, insofar as they include cosmetics goods, are the same kind of thing as the Opposed Goods.

    By reason of the above, the Applicant is not the owner, within the meaning of section 58 of the Act, of the Opposed Mark in respect of the Opposed Goods.

16. I am satisfied that the Opponent has used the VB Mark in Australia in respect of goods that are the same kind of thing as the Applicant’s Goods, being cosmetics.  I am satisfied that the Opponent’s use of the VB Mark precedes both the relevant date and the 2017 date in which the Applicant set up its website at  As such, I find that the second and third factors have been established.

17. I will now consider whether the Skinlab Mark is substantially identical to the VB Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be 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.[8]

    [8] (1963) 109 CLR 407, 414.

18. The Skinlab Mark and the VB Mark are set out below:

    VB

19. On a side by side comparison there are clear differences between the respective trade marks, namely the stylization of the VB element in the Skinlab mark, the presence of the horizontal line, and the addition of the word ‘skinlab’.  I do not accept the Opponent’s Submissions that each of these differences should be discounted, with the only essential element being the letters VB.  In particular while the term ‘skinlab’ has some use in the cosmetics industry, it is not descriptive of the Applicant’s Goods and thus it is not appropriate to be ignored for the purposes of comparison.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.

20. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

    Section 60

21. Section 60 of the Act is reproduced below:

    Section 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.

22. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[9]

    [9] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

23. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[10]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[11]

    [10] [2000] FCA 1335, [81].

    [11] (1992) 33 FCR 302, 343.

24. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[12]

    [12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

1. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[13] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[14]

   [13] (2000) 50 IPR 1.

   [14] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

2. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[15]

   [15] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

3. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   As at the Filing Date, the Opponent has acquired a substantial, valuable and, further or alternatively, exclusive reputation and goodwill amongst a significant section of the Australian public, particularly consumers of cosmetics goods, in and with respect to the Opponent’s Marks for the Opponent’s Goods (Opponent’s Reputation)

   The Opponent’s Reputation has been acquired by extensive use of the Opponent’s Marks for the Opponent’s Goods within Australia and Internationally.

   By reason of the Opponent’s Reputation the use of the Opposed by Mark by the Applicant for any and all of the goods and services for which registration is sought would be likely to deceive or cause confusion within the meaning of section 60 of the Act.

4. As of the relevant date the Opponent had offered cosmetics under the VB Mark in Australia for just over 18 months. The evidence of sales provided by the Opponent of cosmetics sales is scant, simply that the Opponent had made $557,491 AUD in sales in a 6 month period in those 18 months. The Opponent’s failure to provide any evidence of sales before July 2017 or after January 2018 is unexplained but it can be inferred that the provision of that evidence (which would be within the Opponent’s power to provide) would not have assisted the Opponent’s case. Furthermore when reviewing the EIS, it is apparent that, while the Opponent’s cosmetic line does bear the VB Mark and hence the Opponent clearly uses the mark, much of the promotion for the Opponent’s cosmetics line is done under the name of the Opponent or under the well-known Estee Lauder Mark (and I note that any claim in respect of the Opponent’s extensive use of and reputation in VICTORIA BECKHAM is not particularised as the basis of an opposition under s 60). While noting the significant fame of the Opponent and the evidence of substantial promotion of the Opponent’s cosmetics line through free media and the Opponent’s social media presence, the short time of use, limited sales and use of other marks (namely VICTORIA BECKHAM and ESTEE LAUDER) to promote the Opponent’s products satisfies me that the VB Mark had, before the relevant date, acquired at best a very limited reputation in Australia for cosmetic products, sufficient for the requirements under s 60(a) of the Act. Given the longer association between the Opponent and fashion industries (including extensive international promotion via social and free media) I am satisfied that the VB Mark has a more extensive reputation for fashion products and accessories, however I note that the Opponent has only provided fashion goods in Australia for two years under the VB Mark and has not provided any evidence of sales in Australia, which limits the extent of the reputation I can find.

5. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Marks would be likely to deceive or cause confusion. Discussions and decisions on the subject of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[16]

   [16] (1937) 58 CLR 641, 658.

6. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[17]

   [17] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

7. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[18]

   [18] [2012] ATMO 124, [40].

8. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[19]

   [19] [2016] FCA 729, [142].

9. In the present case, while the Trade Marks and VB Mark are similar due to the presence of the common VB element, I am not satisfied that any confusion between the Trade Marks and the VB would arise due to the reputation of the VB Mark.  I reach this conclusion in respect of the Skinlab Mark bearing in mind the limited reputation of the VB Mark in Australia for cosmetics (and only slightly more extensive reputation for fashion goods) and the differences between the respective marks being the stylisation of the Skinlab mark (including the addition of the horizontal line) and the addition of the word Skinlab, which is not a direct reference to the Applicant’s Goods.   I reach the same conclusion in respect of the Salon Mark on the same basis and additionally note the difference between the Applicant’s Services and the goods in which the VB Mark has a reputation.

10. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 42

11. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

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

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

12. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]

    [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

13. The Opponent has particularised the ground of opposition in the SGP by reference to ss 18 and 29 of the Australian Consumer Law (being schedule 2 of the Competition and Consumer Act 2010 (Cth)) and the common law tort of passing off.

14. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[22] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Marks would be contrary to s 18 of the ACL.

    [22] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

15. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[23], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[24] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]

    [23] [2014] ATMO 65, [50].

    [24] [2003] FCA 104, [107].

    [25] [1989] FCA 506, [40] (citations omitted).

16. For these reasons I am not satisfied that use of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

17. Section 62A of the Act is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

18. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

19. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[26]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[27]

    [26] [2004] EWCA Civ 1028; [2005] FSR 10.

    [27] [2012] FCA 81, [147].

20. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[28]

    [28] Ibid [165]-[166].

21. The Opponent has particularised this ground of opposition in the SGP as follows:

    By reason of the Opponent’s Reputation and the fact that the respective goods and services of the Applicant and Opponent are similar, closely related or the same kind of thing, it can be reasonably inferred that the Applicant knew about the Opponent, the Opponent’s Goods, the Opponent’s Marks and or the Opponent’s Reputation as at the filing date

    By reason of the above there is no apparent honest or proper reason as to why the Applicant has sought to register the Opposed Mark.

    In all of the particular circumstances and in light of the reasonable inferences that may be drawn from such circumstances as to the Applicant’s state of knowledge at the Filing date, the Applicant’s decision to apply for registration of the opposed Mark at that time would be regarded as in bad faith by persons adopting acceptable commercial standards.

22. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[29] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register two marks containing the letters ‘VB’ in respect of the Applicant’s Goods and Services, was a decision made to take advantage of the reputation of the VB Mark, which was limited at the time of registration. I am particularly unpersuaded that the Applicant’s use, on its website (which otherwise makes no express or implied reference to the Opponent) of an attractive female model with long dark hair is in any way a reference to the Opponent; given the fame of the Opponent, it would be obvious to most visitors that the model is a completely different women. Furthermore, the mere fact that a cosmetics company has used an attractive female model with long dark hair in connection with their products is hardly a basis to assert bad faith. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the trade mark applications was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [29] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

    Decision

23. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application nos. 1914421 and 1914422 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

24. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs respect of trade mark number 1914421 against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995. In respect of trade mark number 1914422 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[30]

    [30] [2001] ATMO 78.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    9 March 2020