Jessica Bell, Kalus Kenny Intelex, Melbourne Australia
A recent trade mark stoush in the eyelash extension market highlights the importance of registering trade marks in all states of Australia, and ensuring that trade marks that intend to be used are registered as soon as possible.
The Australian Trade Marks Office (ATMO) recently dismissed two related actions for removal brought by beauty salon Whiplash’d Pty Ltd (Whiplash’d) against two registered trade marks owned by Mae Watson (Watson) for beauty-related services including eyelash extensions. Both of Watson’s marks, ‘Whiplash’ and ‘WHIPLASHED’ remained on the register.
Background
Since May 2020, Watson has operated a business providing beauty treatments, salon services, beauty consultancy services, education and training. These services expanded in June 2020 to include services such as fat cavitation, skin tightening treatment, teeth whitening, and makeup application. Watson, based in Western Australia, had intentions to expand nationally, however, the COVID-19 pandemic interfered with the broader use of the Whiplash brand in Australia.
Action against ‘WHIPLASH’
Mae Watson v Whiplash’d Pty Ltd [2024] ATMO 168
Whiplash’d filed an application for the removal of ‘Whiplash’ from the Australian Trade Marks Register on the grounds that the mark had not been used in Australia for a continuous period of three years, ending one month prior to the filing of the non-use application (the relevant period).
Whiplash’d sought to qualify its removal application in having the ‘Whiplash’ mark be removed with the view that the mark wasn’t being used for services outside of Western Australia, therefore the ‘Whiplash’ mark should only be in relation to services within that state. However, the ATMO determined that a state-based limitation cannot be made on such an application – rather, the claim for removal must be based on non-use throughout the entirety of Australia. Therefore, the ATMO was satisfied that Watson had used the mark in during the relevant period in at least Western Australia and the mark was allowed to remain on the register.
Relevantly, the Registrar does have the discretion to impose a geographical restriction on the registration of a trade mark (including limiting it to a particular state or territory). This discretion is subject to certain criteria, however Whiplash’d did not request for this power to be invoked, and the evidence submitted was insufficient to trigger the discretion.
Action against ‘WHIPLASHED’
Mae Watson v Whiplash’d Pty Ltd [2024] ATMO 169
Whiplash’d also filed an application for complete removal of Watson’s ‘Whiplashed’ trade mark from the Australian Trade Marks Register on the grounds that Watson had no intention in good faith to use the trade mark in Australia, and had not used the mark in relation to the relevant goods and/or services (being beauty-related services) for the relevant period.
In its decision the ATMO noted that the threshold to rebut a lack of intention to use is very low. It is sufficient for the trade mark owner to have simply filed for registration, as well as making a positive statement to the effect of “I have a clear intention to use…” or “I actually used… the trade mark in good faith.” This shifts the evidentiary onus to the party seeking removal, which must in turn cast doubt on the owner’s intention.
Ultimately Whiplash’d was not able to prove that Watson’s intention was anything other than a genuine intention to use the ‘Whiplashed’ mark, and Watson was able to prove that it had used the trade mark in connection with beauty-related services during the relevant period.
The ATMO therefore allowed Watson’s ‘Whiplashed’ mark to remain on the register.
Key takeaways
· When submitting a non-use application against another person’s mark, you need to be sure that the trade mark is not being used in the whole of Australia. It is not sufficient that a trade mark is only used in one state or territory (or other geographical area).
· If your intention is to limit the geographical location of another person’s mark you should consider whether there are grounds to invoke s 102 of the Trade Marks Act 1995. That is, can you argue that the mark in question is substantially identical or deceptively similar to your registered trade mark and the use of the other mark should be restricted to a specific geographical area, which is not an area in which you use your mark?
· The preservation of Watson’s ‘Whiplashed’ mark is another timely reminder that entities should register any relevant marks they intend to use as soon as possible. This prevents competing marks from receiving higher priority – it is also much more difficult for an opponent to prove a lack of intention to use mark after it has been registered.
If you have questions about trade marks or brand protection, the KKI Commercial Team can help.