In an appeal from a trademark opposition decision by IP Australia, a specialist IP judge of the Federal Circuit and Family Court of Australia has confirmed that the arguments available to an applicant in defending an opposition based on prior reputation are very limited.
Yey Pty Ltd ("Yey")
- owns registrations for activeskin and in respect of cosmetic retail services and beauty and skin care services; and
- has used ACTIVESKIN since March 2006 in relation to cosmetic retail services, and in relation to beauty salon services since around July 2014.
Yey opposed the acceptance of applications filed by Active Skin Pty Ltd ("Active Skin") for
- activeskin; and
in respect of cosmetics and the distribution of advertising materials.
Active Skin was already the owner of registrations for:
- Active Skin, dating from 22 September 2006, which covers cosmetics in Class 3 and distribution services in Class 35; and
- , dating from 5 August 2006, which covers bath salts and bath bombs.
The Hearing Officer upheld the section 60 ground of opposition, based on Yey's reputation in ACTIVESKIN. Active Skin appealed.
In essence, Active Skin claimed that it would be unreasonable to refuse registration of its present applications having regard to the coexistence of marks on the Register and claimed concurrent historical use.
Section 60 Trade Marks Act 1995 provides that an application can be successfully opposed if, because of the reputation of another trademark existing before the priority date of the opposed application, use of the opposed trademark would be likely to deceive or cause confusion (as at the priority date).
While there are other provisions of the Australian Trade Marks Act that permit an applicant to overcome a conflict with a prior right if they can prove (i) prior and continuous use, or (ii) honest and concurrent use, there is precedent the effect that these exceptions do not apply to an opposition under s60.
In her judgement, Justice Baird confirmed that there is no honest and concurrent, or prior, use defence to an opposition under s60.
Her Honour confirmed that the sole issue for determination is whether, on account of the reputation of the trade mark relied upon by the opponent, use of the applicant's trademark, in respect of goods or services for which it seeks registration, is likely to deceive or cause confusion.
Similarities and Reputation
In this case, the parties' ACTIVESKIN marks are confusingly similar, although there is a difference between their goods and services.
Despite those differences, Justice Baird found that Yey's reputation in respect of its cosmetic retail services was sufficient sustain to its opposition. Her Honour determined that Yey had acquired a significant and substantial reputation in its trademarks in Australia before the priority date of Active Skin's applications, and that the class of consumers of cosmetic retailing services was essentially the same as the class of consumers for cosmetics.
On the issue of assessing the likelihood of confusion, while concurrent use is not of itself a defence to an opposition under section 60, whether it is relevant to consider an applicant's reputation when assessing the likelihood of confusion is debatable. Previous limited precedent suggests that it is not. However, there remains room for argument on that issue and it is noteworthy that Justice Baird carefully considered Active Skin's claims of reputation.
While Active Skin's first use may have predated Yey's first use, "the limits and insubstantiality of Active Skin's evidence of use, and the paucity of the kind and quantum of evidence is commonly adduced where reputation is sought to be established" led her Honour to the conclusion that any consumer recognition existing at the priority date was de minimus.
Consequently, there was no need to consider or determine whether, if Active Skin also had a significant reputation, this would impact upon the assessment of the section 60 opposition. However, the fact that Active Skin's claims of concurrent reputation were carefully considered, suggests that it may have been.
Where a party can establish a sufficient reputation in a conflicting mark as at the priority date of an opposed application, it can be difficult to defend an opposition under s60 Trade Marks Act.
It is never possible to know with absolute certainty whether any third party has acquired a prior relevant and sufficient reputation through use (as this can arise from use of an unregistered trademark). As a consequence, conducting suitable checks and applying for registration at the time of first interest in using a trade mark is advisable, so as to try to reduce the potential for problems arising.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.