Victoria Osborne v Luxelabel Pty Ltd

[2023] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Victoria Osborne to registration of trade mark application number 2173528 (class 26 & 44) - LUXELABEL - in the name of Luxelabel Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: LegalVision ILP Pty. Ltd.

Applicant: OpenLegal Pty Ltd

Decision:

2023 ATMO 120

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41 and 44 – none established - trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Victoria Osborne (‘Opponent’) to registration of the following trade mark:

   Trade mark number:      2173528 (‘Application’)

   Trade mark:  LUXELABEL (‘Trade Mark’)

   Applicant:  Luxelabel Pty Ltd (‘Applicant’)

   Filing Date:  23 April 2021 (‘Relevant Date’)

   Specification:  Class 26: Hair extensions (‘Applicant’s Goods’)

   Class 44: Hair care services; Hair colouring services; Hair cutting services; Hair dressing salon services; Hair styling; Hairdressing (‘Applicant’s Services’)

   collectively (‘Applicant’s Goods and Services’).

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2. The Trade Mark was examined and advertised as accepted for possible registration on 24 September 2021.

3. On 22 November 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 21 December 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicants on 16 February 2022. The Applicants filed a Notice of Intention to Defend the opposition on 18 February 2022.

4. The Opponent filed Evidence in Support (‘EIS’) on 23 May 2022. The Applicant filed Evidence in Answer (‘EIA’) on 22 August 2022. The Opponent filed Evidence in Reply (‘EIR’) on 24 October 2022.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard on the basis of written submissions and both filed written submissions. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written submissions of the parties.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 41, 44 and 59. However the Opponent’s written submissions state that the Opponent will not press s 59. For completeness I find the s 59 ground has been abandoned.

2. The Opponent carries the burden of establishing one or more of the remaining grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

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

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133].

Evidence

1. The following evidence was filed:

   Evidence in Support

   Declaration of Sahil Verma, legal counsel of the Opponent, made on 23 May 2022 (‘Verma 1 Declaration’) with Annexures SV-1 to SV-6.

   Evidence in Answer

   Declaration of Krystal Donaldson, Director and Company Secretary of the Applicant, made on 22 August 2022 (‘Donaldson Declaration’) with Exhibits 1 to 11.

   Evidence in Reply

   Second declaration of Sahil Verma made on 24 October 2022 (‘Verma 2 Declaration’) with Annexures SV-1 to SV-4.

2. I note that the Verma 1 Declaration does not contain any specific claim to confidentiality.  Rather each page of the Verma 1 Declaration contains the word Confidential at the bottom.

3. It is clear to me that the entirety of the evidence contained in the Verma 1 Declaration including the Annexures is comprised of publicly available material, such as screen shots and printouts from the internet, dictionary definitions, Instagram® and Facebook® posts and searches of the Trade Marks Register.

4. I also note that the Donaldson Declaration claims that the information disclosed in the Declaration and its Exhibits concerning her company's business, and commercial affairs is information which is commercially sensitive and strictly confidential.

5. It is clear to me that much of the evidence contained in the Donaldson Declaration including the Exhibits is comprised of publicly available material, such as screen shots and printouts from the internet and Instagram® and Facebook® posts and likes.

6. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[4]

   [4] [2008] ATMO 17 [5]-[6] (Hearing Officer Thompson).

7. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence and my decision, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

EIS

1. Ms Verma begins by referring to the online use by the Applicant of various trade marks and asserts that the Applicant has used all of the following trade marks to promote their goods and services: ‘Luxe’; ‘Luxelabel’; ‘Luxelabel Hair’; ‘Luxelabel.Hair’; ‘Luxelabel Hair Extensions’; ‘Luxelabel Hair Extension Collection’ and ‘Luxelabel_Haironline’. Annexure SV-1 shows online use of most of these trade marks other than the word ‘luxe’ alone.

2. Ms Verma goes on to provide dictionary definitions for the words ‘LUXE’ and ‘LABEL’ as follows:

   ‘luxe’ is defined in the Oxford Dictionary as “expensive and of high quality; luxurious”

   ‘label’ is given a number of definitions in the Cambridge English Dictionary, including “a company that produces goods for sale, the goods themselves, or the company's name or symbol”

3. These dictionary definitions are proffered by Ms Verma to support an assertion that when LUXE and LABEL are used in conjunction, the result is descriptive of luxurious fashion products or services. I note at this point that the word LABEL also has a number of other meanings.

4. Ms Verma then asserts that marketplace research she has conducted has located many similar businesses in Australia that use “LUXE” (or “LUX”) and “LABEL” to refer to their haircare or fashion goods and services, some of which combine “LUXE” / “LUX” with “LABEL”. She provides examples of this research at Annexure SV-3.

5. Ms Verma concludes from the assertions above, the words “luxe” (or near identical variations) and “label” are generically and commonly used in the haircare, fashion and beauty industries to describe luxurious products or services, or to reference particular ranges of products. Therefore, other traders, without improper motive, are using, and would need to be able to continue to freely use, the words “luxe” and “label” (or words so nearly resembling these), either on their own or in combination, in the ordinary course of trade in respect of the same or similar goods and services to those of the Applicant.

6. Ms Verma provides full details of the marks to be considered under the s 44 ground at Annexure SV-5. At Annexure SV-4 she provides details of other searches conducted in the Australian marketplace to show that many businesses provide both beauty-related goods and services and at Annexure SV-6 provides details of trade marks from the Australian Trade Marks Register to show that many trade mark owners claim a range of beauty-related goods and services in classes 3, 21, 26, 35 and 44 (or class 42 for older registrations).

EIA

1. Ms Donaldson asserts that the Applicant was incorporated in July 2018 and uses the names ‘Luxelabel’ and ‘Luxelabel Hair Extensions’. She also asserts that she coined the trade mark LUXELABEL and started using the ‘Luxelabel’ and ‘Luxelabel Hair Extensions’ names in August 2016 in respect of providing hair extensions, colour corrections and other hairdressing goods and services.  She claims to have provided these goods and services to over 5000 clients.

2. Ms Donaldson asserts continued use of the Trade Mark for at least 5 years for the goods and services. She asserts that the Trade Mark has a substantial reputation in Australia among a significant portion of consumers.

3. For the most part, Ms Donaldson shows use of LUXELABEL by providing details of online examples on Facebook and Instagram dated between August 2016 and April 2021 including on social media tags.

4. Ms Donaldson asserts that the Applicant’s Goods and Services are promoted via a number of online means namely a website at an online booking system at (although I note that other than providing these web site addresses, no examples of the content of the web site or the online booking system have been provided) and the social media platforms Facebook and Instagram. The numbers in 2022 of Facebook likes and followers and Instagram followers are also provided.

5. Ms Donaldson asserts that details and pictures of the Applicant’s goods and services provided under the Trade Mark are accessible online including via Instagram at “luxelabel_haironline” and “luxelabel.hair” and Facebook at “>

   Ms Donaldson also asserts that prior to the date of filing the Trade Mark she has invested substantially in marketing materials and merchandise in the form of hair capes, hair care products, hair extension products, hair extension protectors, signage for the Applicant’s hair dressing salon and a photography shoot.

6. Finally, Ms Donaldson refers to a separate matter with the Opponent which has no relevance to the present matter and will therefore not form part of the consideration of this matter.

EIR

1. The Verma 2 Declaration addresses some content of the EIA, in particular Ms Verma:

• refers to the separate matter with the Opponent referred to above as not being relevant.

• asserts that the domain link appears to be inactive and/or does not exist. I note that the date of the screenshot at Annexure SV-2 is 12 October 2021.

• asserts that the Facebook link “Facebook.com/LUXELABLEHAIR” leads to a page stating “This Page Isn’t Available. The link may be broken, or the page may have been removed”. Again, I note that the date of the screenshot at Annexure SV-3 is 12 October 2021 but also the Facebook link has a spelling error in the word LABEL, which may account for the page not being available.

• asserts that the Instagram handles “@luxelabelhairextensions” and “@luxelabel_hairextensions” are also inactive. Again, I note that the date of the screenshot at SV-4 is 12 October 2021.

1. Ms Verma concludes that the opposed trade mark does not appear to have ever been used as a standalone trade mark, which is at odds with her claim in Clause 7 of the Verma 1 Declaration.

Discussion and Reasons

Section 41

1. Section 41 of the Act provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:       For goods of a person and services of a person see section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       For applicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

2. Determining the merits of the ground of opposition under s 41 requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods and services. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks this is assessed:

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

[5] [1964] HCA 55 [5].

1. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[6] explained that the test for inherent distinctiveness under s 41 of the Act involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods.[7] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

   [6] [2014] HCA 48.

   [7] Ibid [71].

2. What is crucial is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. Furthermore, in assessing inherent adaptation, consideration is given to the trade mark as a whole.[8] When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable. In Diamond T Motor Car Co’s Application, Lawrence J said:

.... in order to ascertain whether the Applicants’ trade mark is a registrable trade mark, the sole question to be determined is whether it is adapted to distinguish the vehicles of the Applicants from those of other manufacturers, and in determining this question it is, in my judgment, immaterial to consider whether any of its component parts are or are not registrable by themselves...[9]

[8] Re Hudson’s Trade Marks (1886) 3 RPC 155.

[9] (1921) 38 RPC 373, 380.

1. The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services.

2. Further, a word or phrase that is suggestive or allusive in relation to the goods or services will generally be inherently adapted to distinguish. In Mark Foy’s Ltd v Davies Coop & Co Ltd (‘Tub Happy’), Dixon CJ said:

   It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.

   The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.[10]

   [10] (1956) 95 CLR 190, 194.

1. The Opponent submits that the Trade Mark is incapable of distinguishing the Applicant’s Goods and Services under s 41(3) or (4) as:

• The Trade Mark can be phonetically and visually broken into two elements - “LUXE” and “LABEL” and it is likely that consumers will recognise, recall and pronounce the Trade Mark by deconstructing the word into the above two components.

• The word “LUXE” is defined as “expensive and of high quality” or “luxurious” and is therefore directly descriptive that the Applicant’s Goods and Services are expensive, high quality, luxurious, elegant, etc. and the word “LABEL” is defined as “a company that produces goods for sale or the company’s name or symbol” and is therefore directly descriptive of both the Applicant’s business and the Applicant’s Goods and Services that the Applicant’s business is a ‘label’, company or brand, or that the Applicant’s Goods and Services are provided by that particular ‘label’, company or brand.

• Both the elements of the Trade Mark are commonplace English words with ordinary meanings and is unlikely to be viewed or pronounced in any other manner, except as the two words combined.

• As a whole, the ordinary signification of the words in the Trade Mark indicates that the Applicant’s Goods and Services are luxurious or high-end company products or expensive and high-quality services provided by a lavish brand.

• In light of the ordinary signification of the words within the Trade Mark, other persons actuated by proper motives would be likely to want to make honest use of the words.  Here reference is made to the use by other traders of the individual words LUXE and/or LABEL separately and in combination in the Verma 1 Declaration.[11]

• Further, even if the Trade Mark falls under s 41(3) or (4), the Applicant’s use of the Trade Mark, is insufficient because, inter alia, the Trade Mark is not the only trade mark used by the Applicant,[12] therefore any reputation cannot be solely attributed to the Trade Mark, the use of the Trade Mark prior to the date of incorporation of the Applicant is not use by the Applicant, the Applicant’s evidence does not specifically address all of the Applicant’s Goods and Services, the Applicant makes a number of unsubstantiated claims, the Applicant’s use is geographically restricted to Perth, WA and there is undated Facebook and Instagram evidence.

  [11] Clauses 11 and 12 and SV-3

  [12] Verma 1 Declaration and SV-1

1. The Applicant submits that the Trade Mark is inherently distinctive and not indirectly or directly descriptive when considered as a whole as:

• It is an invented word (spoken “LUX-E-LABEL”).

• The word LUXE is a made-up word and would not readily be seen as a descriptor.

• The word LABEL has many different meanings other than that put forward by the Opponent.

• LUXELABEL does not have a meaning that is naturally or immediately apparent and says nothing about the character or quality of the Applicant’s Goods and Services. There is no reason consumers would wish to use that word to refer to those goods and services.

• If the Delegate were to consider the level of inherent adaptability to be insufficient and s41(4) of the Trade Marks Act to apply, the evidence provided by the Applicant is sufficient to satisfy the Delegate that the Trade Mark can and will in the future act to distinguish the Applicant’s Goods and Services.

Ordinary Signification

1. While the Trade Mark as a whole has no dictionary definition, I agree with the Opponent that it is clearly made up of two English language words. I note that the Macquarie Dictionary indicates that LUXE as an adjective means sumptuous and luxurious and as a noun means luxury. Given this, I disagree with the Applicant’s contention that LUXE is a made-up word. As foreshadowed, LABEL has a number of meanings, 10 to be exact, in the Macquarie Dictionary. The most relevant for these proceedings is that LABEL is a trade name owned by a fashion house or fashion design company. I consider, the individual words LUXE and LABEL would be readily understood by any Australian including a trader or consumer concerned with the Applicant’s Goods and Services.

2. Even though each of the words has a meaning, it is of course not a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable. As Wilcox J acknowledged (despite finding that the trade mark there in question did describe the goods), in Ocean Spray Cranberries Inc v Registrar of Trade Marks:

In reaching the above conclusion, I have not overlooked two matters relied on by Ms Baird. First, she says, a mark need not be "absolutely unsuggestive of qualities" of the goods for which registration is sought, provided it does not amount to a normal description.[13]

[13] [2000] FCA 177 [34].

1. While combining 2 known English words to form a trade mark is common, if this alone were prohibited, the Trade Mark Register would be considerably smaller. What matters here is whether the resulting trade mark is inherently distinctive when considered in the context of the goods and services for which registration is sought.

2. The lack of spacing between the words LUXE and LABEL does not detract from the overall impression of the mark[14] and although the Applicant claims that the Trade Mark is pronounced as 3 syllables LUX-E-LABEL, such a pronunciation is highly improbable. In my opinion, the Trade Mark would clearly be pronounced as 2 syllables LUXE-LABEL, the E being silent. Thus, I agree with the Opponent on the point of pronunciation of the Trade Mark. I do not agree however with the Opponent’s view that visually consumers will recognize or recall the Trade Mark as 2 components - “LUXE” and “LABEL”. I believe it is likely that consumers will visually recognise and recall the mark as one word. A word which is an invented word and as a composite whole, has no dictionary meaning.

   [14] See Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936, [63], where Gummow J determined that there was no material distinction to be drawn between "FUN SHIP " and "FUNSHIP".

3. I also do not agree with the Opponent that because the Trade Mark is made up of two ordinary English language words, each of which have one or more meanings, that the mark as a whole is directly descriptive of either the Applicant’s business or the Applicant’s Goods and Services.

4. The Opponent’s evidence of use by others of the individual words “LUXE” and “LABEL”[15] does not change my opinion. Nor does the Opponent’s evidence that other parties use LUXELABEL,[16] which I note is not in respect of the Applicant’s Goods and Services or similar goods and services. It must be remembered that the Trade Mark is not LUXE or LABEL. It is LUXELABEL.

   [15] Clause 11 Verma 1 Declaration and Annexure SV-3.

   [16] Clauses 11 and 12 Verma 1 Declaration and Annexure SV-3.

5. What therefore is the ordinary signification of the word LUXELABEL in respect of the Applicant’s Goods and Services? I am not satisfied the evidence establishes that a consumer or trader concerned with the Applicant’s Goods and Services would conclude from the Trade Mark that the Applicant’s Goods and Services are, as the Opponent contends, luxurious or high-end company products or expensive and high-quality services provided by a lavish brand. To conclude that the Trade Mark has this meaning and therefore this ordinary signification requires a search for meaning of the kind referred to in Tub Happy. A consumer or trader would indeed be stretching the bounds of their imagination to make such a conclusion. It is more likely that the consumer or trader who views the trade mark LUXELABEL in respect of hair extensions and various hair care services will see the word as a trade mark of the Applicant. The search for meaning infers that the trade mark is suggestive rather than descriptive.

6. In my opinion the fact that the word LABEL appears in the Trade Mark is unlikely to lead to consumers or traders of hair extensions and hair care services to believe that these goods and services are provided by a lavish brand. In the context of the Applicant’s Goods and Services such a conclusion is highly improbable. Were the goods and services clothing and the retailing of clothing, the Opponent may have an argument but for hair extensions and hair care services, it is highly unlikely that a consumer would believe that these goods and services are high end, expensive or high quality because the word LABEL appears in the mark.

1. Thus, a consumer or trader of the Applicant’s Goods and Services is more likely to believe the Trade Mark signifies nothing in particular or at the most, alludes that the Applicant’s Goods and Services are luxurious.

2. I agree with the Applicant that LUXELABEL when read as a whole does not have a meaning that is naturally or immediately apparent and says nothing specific about the character or quality of the Applicant’s Goods and Services. Given this, it follows that there would be no legitimate need for other traders to use the Trade Mark or a mark nearly resembling it in respect of the Applicant’s Goods and Services. As such, it is unnecessary to proceed to determine consideration of the second step outlined in Cantarella.

3. Consequently, the Opponent has not established the ground of opposition under s 41 of the Act.

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar goods see subsection 14(1).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. Ground 2 of the Opponent’s SGP sets out brief details of the 18 trade marks for consideration under s 44. Annexure SV-5 of the Velma 1 Declaration provides full details of these trade marks. Four of these trade marks (2159817, 1519107, 1506667 and 2107027) have lapsed, ceased or been removed and can no longer form a basis for this ground of opposition. Relevant details of the 14 remaining trade marks (‘14 Marks’) requiring consideration are set out in Annexure A. I propose to consider trade mark numbers 296608, 456027 and 949174 (‘Lux Marks’) separately to the other 11 marks.

2. To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Applicant:

• has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

• is substantially identical with, or deceptively similar to the Trade Mark (‘the second requirement’); and

• is in respect of goods and/or services which are similar or closely related to the Applicant’s Goods and Services (‘the third requirement’).

1. Each of the 14 Marks satisfies the first requirement in that all these marks are in the name of a person other than the Applicant and have an earlier priority date than the Trade Mark.

Substantially Identical or Deceptively Similar

1. The test for whether two marks are substantially identical requires that they 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.[17]

[17] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (‘Shell’).

1. This test requires that the trade marks are considered side by side while having regard to the essential features of the marks. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[18] the Full Court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.

   [18] [2017] FCAFC 83, [52] (Greenwood, Jagot, and Beach JJ).

2. The Opponent submits:

• Whilst both of the elements of the Trade Mark are devoid of distinctiveness, it is still considered that “LUXE” is the more dominant and memorable element of the two, especially given its forefront position.

• All of the 14 Marks contain either the word “LUX”, “LUXE” or “LUXXE”, in conjunction with words that would otherwise be non-distinctive to the beauty industry, such as “BRANDS”, “WHITENING”, “CLINIC”, or “MANE”. Consumers are likely to be deceived or caused to wonder whether the Opposed Mark is associated with the 14 Marks, especially for marks such as “LUXEMANE” and “LUXE LASH CONCEPTS”.

1. The Applicant submits:

• The Trade Mark comprises a new word which has a different cognitive cue and identity to any of the citations raised.

1. In my opinion, there is no one essential feature of the Trade Mark. Each word in the Trade Mark plays a role equal to the other visually and aurally.

2. It is apparent that there are a number of obvious differences between the Trade Mark and the 14 Marks. The Trade Mark LUXELABEL is vastly different visually, aurally and phonetically to the 14 Marks. The only similarity between the Trade Mark and the 14 Marks are the letters L,U and X. The differences far outweigh this similarity. Therefore, there is nothing short of a significant dissimilarity between the 14 Marks and the Trade Mark on a side by side comparison. I am satisfied that none of the 14 Marks are substantially identical to the Trade Mark.

3. I turn now to the question of whether the Trade Mark is deceptively similar to one or more of the 14 Marks, noting that s 10 of the Act provides a definition of deceptively similar being that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

4. Justice Windeyer also outlined the approach for the assessment of deceptive similarity in Shell. His honour observed:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[19]

[19] Ibid, [13].

1. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[20] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[21] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer, allowing for an imperfect recollection of the trade marks.[22] The impression comes from the trade marks as a whole, and involves a consideration of the look, sound and ideas conveyed by the trade marks.

   [20] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [21] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50].

   [22] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196 [74-[75] (‘Crazy Ron’s’).

2. In estimating the effect or impression produced on the mind of potential consumers, I note the comment in Clark v Sharp in relation to the appropriate comparison:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.[23]

[23] (1898) 15 RPC 141, 146.

1. For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser. The mere presence in two trade marks of the same word is not necessarily sufficient for this to happen.

2. If a trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[24] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[25]

   [24] Crazy Ron’s [79].

   [25] Ibid [100].

3. Where an element which is present in both trade marks under comparison is descriptive or in common use in the trade, its presence must be to some extent discounted in considering whether the trade marks are deceptively similar. Thus, as Whitford J observed in Frigiking Trade Mark,[26] the court's deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.

   [26] [1973] RPC 739, 752

4. Consistent with its submissions in relation to substantial identity, the Opponent submits:

• “LUXE” is the more dominant and memorable element of the two elements of the Trade Mark especially given its forefront position.

• each of the 14 Marks contain either the word “LUX”, “LUXE” or “LUXXE”, in conjunction with words that would otherwise be non-distinctive to the beauty industry, such as “BRANDS”, “WHITENING”, “CLINIC”, or “MANE”. Consumers are likely to be deceived or caused to wonder whether the Trade Mark is associated with the 14 Marks, especially for marks such as “LUXEMANE” and “LUXE LASH CONCEPTS”.

1. The Applicant submits:

• the Register makes it abundantly clear that the different traders can use (and register) marks notwithstanding they have a common prefix “LUX”.

• a completely different impression is created by presenting a new word comprising “LUXELABEL” which is different in overall appearance, impression and idea. None of the 14 marks have anything in the suffix that would be visually or orally similar to the latter part of the Trade Mark.

1. I do not accept the Opponent’s submissions that the word ‘LUXE is the more dominant and memorable element of the two elements of the Trade Mark.

2. The Opponent has provided examples of businesses in Australia (and elsewhere) that use the terms “LUXE” (or “LUX”) to refer to haircare or fashion goods and services.[27] The Applicant’s submissions made a number of criticisms of these examples, which I have considered. I find that this evidence is only relevant where the words are used in respect of the Applicant’s Goods and Services or similar goods and services. While this evidence alone is not compelling, taken together with the definition of the word LUXE, it supports a conclusion that the terms “LUXE” (or variants such as “LUX”) are common to the trade or used in a descriptive manner. This further reinforces the conclusion that the word ‘LUXE is not the more dominant and memorable element of the two elements of the Trade Mark and each element is as essential as the other.

   [27] Verma 1 Declaration and Annexure SV-3.

3. The Opponent also adduced similar evidence of regarding the word LABEL[28] but this only shows 2 instances of use in respect of the Applicant’s Goods and Services (one after the Relevant Date) and is in no way compelling or sufficient to conclude that the word LABEL is common to the trade or is used in a descriptive manner. As there is insufficient evidence that the word LABEL is common to the hair care trade, the word LABEL should be treated as a distinctive element in the context of the Applicant’s Goods and Services. This further reinforces that LUXE is not, as the Opponent submits, the more dominant and memorable element of the two elements of the Trade Mark.

   [28] Ibid.

4. In respect of the Applicant’s submission that the Register makes it abundantly clear that different traders can use (and register) marks notwithstanding they have a common prefix “LUX”, I refer to the comments of the Delegate in The HD Lee Company Inc v Tracey Taylor where he said:

   I consider it to be well-established that in arriving at a determination of trade mark matters the Registrar can take notice of evidence as to the state of the Register and give appropriate weight to that evidence.

   In this regard, paragraph 28.6 and Exhibit A28 make reference to a list of existing registrations in Classes 18 and 25 which include the components RIDER or RIDERS. I do not consider myself to be precluded or constrained from having regard to that material, and I regard it as a relevant factor to be taken into account that a number of RIDER and RIDERS marks held by different parties are apparently able to co-exist.[29]

   [29] [2013] ATMO 49 [32] (Hearing Officer Spence).

5. The nature of the Applicant’s trade and the class of purchasers is also relevant.  Here the Applicant’s Goods and Services are for personal adornment and are therefore likely to involve attention to detail and consideration with more care than is the case with other goods and services.[30]

   [30] Levi Strauss & Co v Vivat Holdings Plc [2000] ATMO 68; Timex Corporation v International Products Company SA [2001] ATMO 116.

6. In my experience people commonly exercise a degree of caution when they purchase hair extensions and hair care services. The Applicant’s Goods and Services are all about appearance and people will invariably choose carefully what hair extension they buy and who provides their hair care services.

7. On the Lux Marks, in my opinion, the overall appearance of the Trade Mark and the impression which is conveyed by it is markedly different from the appearance and impression which is conveyed by each of the Lux Marks. The essential element of the Lux Marks is clearly the word LUX but this is not the case for the Trade Mark. The impression conveyed by the Trade Mark remains LUXELABEL. When considered both visually and aurally, the Trade Mark shows considerable points of differentiation from the Lux Marks. Any reasonable consumer or trader concerned with the Applicant’s Goods and Services who knows of the Lux Marks upon seeing the Trade Mark would not assume this mark identifies the same proprietor or a common trade source or origin.

8. I arrive at the conclusion that there is no “real, tangible danger” of deception or confusion occurring, taking account of all the surrounding circumstances including the marks themselves, the state of the Register, the meaning of the word LUXE, that use of LUXE in the Applicant’s trade, the nature of the relevant trade and the class of purchasers.

9. On the other 11 Marks, , LUXE LASH CONCEPTS, LUXE BRONZE, FRANCE LUXE, LUXXE, , , ,  and LUXEMANE, in my opinion, the overall appearance of the Trade Mark and the impression which is conveyed by the Trade Mark is markedly different from the appearance and impression which is conveyed by each of these 11 Marks, when the marks are assessed as wholes. The only common element of the Trade Mark and each of these 11 Marks is the word LUXE but, in the Trade Mark, this word is not a separate element to the word LABEL. Further, in each instance, the word LUXE is either rendered in a particular and distinct manner or is accompanied by words or device elements which have no visual, aural or conceptual similarity to the Trade Mark. The impression conveyed by the Trade Mark remains LUXELABEL.

10. The other elements in the 11 Marks namely the letter K, the words LASHES, CONCEPTS, BRONZE, FRANCE, COSMETIC CLINIC, HAIR, TRANSFORMATIONS, CROWNED BY BEAUTY, WHITENING and MANE and the devices in the marks, are notably absent from the Trade Mark.

11. I also note that the trade marks , LUXE LASH CONCEPTS, LUXE BRONZE, FRANCE LUXE (1777258),  and cover goods and/or services which bear no relation to the Applicant’s Goods and Services. Where the goods and services are not identical or even closely related, which is the case here, this does not increase the likelihood of confusion based on any commonality of elements in the marks. This is particularly so when the goods and services do not compete in the same market and are not offered to the same class of consumer, further reinforcing that the likelihood of confusion for these marks will be even lower.

12. Any reasonable consumer or trader concerned with the Applicant’s Goods and Services who knows of any of the 11 Marks upon seeing the Trade Mark in normal use would not assume this mark identifies the same proprietor or a common trade source or origin.

13. I arrive at the conclusion that there is no “real, tangible danger” of deception or confusion occurring, taking account of all the surrounding circumstances including the marks themselves, the state of the Register, the meaning of the word LUXE, that use of LUXE in the Applicant’s trade, the nature of the relevant trade and the class of purchasers.

14. After considering those factors and circumstances which are indicated above, having found that the Trade Mark is not deceptively similar to any of the 14 Marks, I find on that basis, the requirements which need to be met pursuant to s 44 of the Act have not been satisfied and the ground of opposition pursuant to that Section is not made out.

Decision

1. Section 55 relevantly 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:          For limitations see section 6.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2127528 may proceed to registration not less than one month from the date of this decision. If the Registrar is 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

1. 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 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

22 August 2023

Annexure A

TRADE MARK	NUMBER	FILING DATE	GOODS / SERVICES
LUX	296608	6 May 1976	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices.
LUX	456027	25 November 1986	Class 3: Detergents (not for use in industrial or manufacturing processes or for medical use); preparations and substances, all for laundry use; cleaning, polishing and scouring preparations; abrasive preparations (not for dental use); soaps; perfumes, cosmetics, essential oils, non-medicated toilet preparations including creams and lotions for the skin, bath and shower gels, bath foam, talcum powder; preparations for the hair; preparations for the teeth; antiperspirants and deodorants for personal use.
949174	3 April 2003	Class 3: Soaps; liquid soaps; bath and shower preparations, including bath foam and shower gels; shaving and after shave preparations; perfumery, essential oils in this class; cosmetics; non-medicated toilet preparations; sachets and sheets for perfuming linen; hair preparations; skin care preparations; deodorants for personal use; anti-perspirants; dentrifices; hand washes; detergents other than for use in manufacturing operations and for medical purposes; bleaching preparations and other substances, all for laundry use; cleaning, polishing, scouring and abrasive preparations.
1672833	4 February 2015	Class 3: Artificial eyelashes; false eyelashes; adhesives for affixing artificial eyelashes; adhesives for affixing false eyelashes. Class 35: Retailing and wholesaling of artificial eyelashes, false eyelashes, adhesives for affixing artificial eyelashes and adhesives for affixing false eyelashes.
LUXE LASH CONCEPTS	1737937	28 November 2015	Class 3: Cosmetics; false eyelashes, eyebrow cosmetics, eyebrow brushes, cosmetic wipes, cosmetic products for the applying, removing and maintaining false eyelashes. Class 41: Beauty training services; Beauty workshop and seminars; training in relation to eyelash beauty care including applying, removing and maintaining false eyelashes; Beauty workshop and seminars in relation to eyelash beauty care including applying, removing and maintaining false eyelashes.
LUXE BRONZE	1745588	11 January 2016	Class 3: Artificial skin tanning preparations for human use; cosmetic preparations for skin tanning; self-tanning creams, lotions, mists and preparations.
FRANCE LUXE	1777258	2 May 2016	Class 26: Hair care accessories, namely, hair bands, hair bows, hair ornaments, hair pins, hair ribbons, side combs, barrettes, ponytail holders, pinch clips.
FRANCE LUXE	1783389	5 May 2016	Class 3: Soaps, namely, bath soaps, bar soaps, and hand soaps; hair products, namely, shampoos, conditioners, hair sprays, and hair styling preparations; lotions, namely, body lotions.
LUXXE	1796421	14 September 2016	Class 3: Cosmetic preparations and products for skincare; cosmetic preparations and products for use on the face, body, skin and nails; cosmetic products for eyebrows and eyelashes; cosmetic preparations and products for protection against the sun; cosmetic soaps, powders, creams, moisturisers, milks, oils, lotions, gels, sprays, serums, dyes, tints, and bleaches; preparations for removing cosmetics; cosmetics for skincare, cosmetics for hair care. Class 21: Applicators for cosmetics; cosmetics brushes; stencils for applying cosmetics; brushes and applicators for applying skincare preparations and products.
1963474	21 October 2018	Class 5: Hyaluronic acid for medical purposes Class 10: Furniture for use in surgery; Implants (prosthesis) for use in facial surgery; Lasers for use in surgery; Lasers for cosmetic purposes; Laser devices for medical application; Lasers for beauty therapy; Lasers for medical purposes; Orthopaedic medical devices. Class 44: Cosmetic surgery; Plastic surgery.
1976448	17 January 2019	Class 26: Decorative articles for the hair; Hair extensions; Hairpieces; Human hair; Human hairpieces; Synthetic hair; Synthetic hairpieces; Wigs
1990698	20 February 2019	Class 3: Cleaning preparations for the teeth; Cosmetic preparations for cleansing the teeth; Gels for teeth cleaning; Non-medicated preparations for the care of the teeth; Pastes for teeth cleaning; Powders for teeth cleaning; Preparations for care of the teeth; Dental bleaching gels; Teeth whitening pastes; Teeth whitening strips. Class 44: Teeth whitening services; Mobile teeth whitening services; Providing advice relating to teeth whitening services; Providing information relating to teeth whitening services; Mobile beauty salon services; Mobile beauty care services; Beauty consultancy services.
2128034	21 October 2020	Class 26: Decorative articles for the hair; False hair; Hair bands; Hair clips; Hair colouring foils; Hair extensions; Hair fasteners; Hair pins; Hair ribbons; Human hair; Plaited hair; Synthetic hair; Tresses of hair; Beads for trimming; Beads, other than for making jewellery.
LUXEMANE	2128033	21 October 2020	Class 26: Decorative articles for the hair; False hair; Hair bands; Hair clips; Hair colouring foils; Hair extensions; Hair fasteners; Hair pins; Hair ribbons; Human hair; Plaited hair; Synthetic hair; Tresses of hair; Beads for trimming; Beads, other than for making jewellery.