The claim for removal for non-use
262 This claim relates to the non-hair care products in respect of which the First and Second Trade Marks are registered, previously defined as the Non-Use Goods.
263 Section 92 of the Trade Marks Act deals with removal of trade marks from the Register for non-use. It provides:
(1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all the goods and/or services in respect of which the trade mark may be, or is, registered.
(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note: For prescribed court see section 190.
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non-use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.
264 Section 101 provides:
101 Determination of opposed application - general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
265 In s 101, all relevant powers are conferred on the Registrar but, having regard to the terms of s 92(3), the references to the Registrar should be read as "or the Court (as the case may be)".
266 Section 102 is irrelevant for present purposes.
267 Aldi's case is relatively straightforward. There is no question that the application is brought in accordance with s 92. On the first day of the trial Aldi abandoned its claim under s 92(4)(a) and the elements of s 92(4)(b) are admitted. Consequently the Court has the power to remove the First and Second Trade Marks from the Register in respect of those goods: s 101(1). The Court may decide otherwise, however, if it is satisfied that it is reasonable not to do so: s 101(3). The effect of these provisions, like those under the former Act, is that "the public interest in the integrity of the Register entitles the applicant to an order for removal from the Register unless sufficient reason appears for leaving the registration there": New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company (1989) 14 IPR 75 at 79 (Gummow J). There is no requirement that Aldi's demonstrate exceptional circumstances: Kowa Co Ltd v NV Organon [2005] FCA 1282; (2005) 223 ALR 27; 66 IPR 131 (Lander J) at [98].
268 Aldi submitted that "[t]he proper exercise of the discretion depends essentially on public interest considerations". To the extent that the submission suggests that the interests of the trade mark owner are irrelevant, it must be rejected. The discretion conferred by s 101(3) is a broad one, limited only by the subject matter, scope and purpose of the Act and, in particular, of Pt 9 of the Act (the Part relating to the removal of trade marks for non-use): Austin Nichols & Company Inc v Lodestar Anstalt (No 2) (2012) 202 FCR 490 at [35]. In that case, the Full Court held at [35] that the Act does not, either expressly or by implication, exclude from consideration the interests of the trade mark owner. Indeed, the Full Court went on to say at [38]:
The purpose of Pt 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.
269 It is true, however, as Aldi pointed out, that the provisions in the Act for removal for non-use reflect a policy to limit trade marks to marks actually in use. It is true, too, as Aldi also pointed out, that the First and Second Trade Marks have not been used in Australia upon (or for that matter in relation to) the Non-Use Goods for much longer than the statutory three year period - in the case of the First Trade Mark for more than eight years and in the case of the Second Trade Mark for more than six years. Weight must be accorded to the public interest in the purity of the Register.
270 It is convenient at this point to recall what the Non-Use Goods are. They are:
skin care products in this class; skin cleansers; skin toners; skin moisturizers; anti-aging cream; eye cream; beauty masks; body creams; hand creams; non-medicated foot cream; eye makeup; foundation makeup; lip liner, lipsticks and lip balms; eyeliners; blushes; eye shadow; nail enamels; toiletries and cosmetics including shaving preparations, shaving creams and soaps, after shave creams and lotions, body massage creams and oils, soaps, bath oils and shower gels, talcum powders; antiperspirants; dentifrices; sunscreen and suntan oils and creams; fragrances in this class, including perfumes, colognes, essences and essential oils.
271 MIL abandoned its case with respect to the skin toners, non-medicated foot cream, nail enamels, talcum powders, antiperspirants, dentifrices and sunscreen and suntan oils (but not creams), following Mr Lampert's concessions in cross-examination that MIL had not supplied any of them anywhere in the world and had no intention of doing so. It follows that there is no reason why the Trade Marks should remain on the Register with respect to those goods and they should therefore be removed to that extent. But what of the other goods in this class?
272 As MIL submitted, the remaining goods can be grouped into four categories:
(1) skin care for the body: skin care products in this class; skin cleansers; skin moisturizers; body creams; hand creams; body massage creams and oils, soaps, bath oils and shower gels; sunscreen and suntan creams;
(2) facial products: anti-aging cream; eye cream; beauty masks; eye makeup; foundation makeup; lip liner, lipsticks and lip balms; eyeliners; blushes; eye shadow;
(3) fragrances: fragrances in this class, including perfumes, colognes, essences and essential oils; and
(4) toiletries: toiletries and cosmetics including shaving preparations, shaving creams and soaps; after shave creams and lotions.
273 First, MIL submitted that:
(1) the skin care products have been on sale overseas "at least under the Second Trade Mark and the name moroccanoil since 2012";
(2) MIL intended to launch the range in Australia at the time it filed its applications to register the First and Second Trade Marks;
(3) MIL has been making plans to launch the range for some time and expects those plans to come to fruition in the near future; and
(4) while MIL has not yet supplied facial products, fragrances or toiletries, either in Australia or overseas, facial products and fragrances are currently in production and toiletries are in the "PD [Product Development] calendar".
274 Secondly, MIL submitted that it has a significant reputation in Australia in respect of its use of the First and Second Trade Marks (and the name moroccanoil) in respect of hair care products and, in view of that reputation, the removal of the First and Second Trade Marks in respect of the remaining Non-Use Goods may cause a degree of confusion especially in circumstances where MIL intends to launch its body skin care products in the near future.
275 Thirdly, MIL argued that consumers are well-accustomed to a variety of hair care and skin care products under well-known brands being sold alongside one another. In particular:
(1) body skin care and facial products, fragrances and toiletries are sold through the same trade channels as hair care products in respect of which MIL has used both the First and Second Trade Marks; and
(2) body skin care and facial products and fragrances, are commonly discussed and promoted to Australian consumers alongside or on the same page as hair care products, particularly in fashion and beauty publications.
276 Fourthly, MIL submitted that, since the Second Trade Mark is used on the body skin care products internationally, the Court can infer that it will likely be used at promotional events for MIL's body skin care products, as it has been in relation to the hair care products.
277 Finally, MIL submitted that the First Trade Mark is used on MIL's website where the Court can infer the skin care products, and ultimately, the facial products, fragrances and toiletries will be promoted, and where hair care products bearing the First Trade Mark are likely to be sold with MIL's body and skin care products.
278 Aldi did not submit that these matters were irrelevant to the exercise of the discretion. Nor did it cavil with most of these submissions. Indeed, apart from the submission concerning MIL's plans to launch the body skin care range in the near future, it barely engaged with them.
279 The evidence bears out most of MIL's submissions.
280 It is beyond question that MIL has a substantial reputation in Australia in both marks. I doubt, however, that removal of either of them in relation to products upon which it has not been used here would be likely to cause confusion, certainly not in relation to those products which have not yet been manufactured. On the other hand, there is no evidence that any member of the public has been deceived or confused by their non-use in relation to the Non-Use Goods. This is a relevant consideration: CA Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561; (1999) 47 IPR 63 at [170] (Finn J); see, too, Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 at 345 (Woodward J). It plainly bears upon the public interest. While the likelihood of deception or confusion is also relevant (see Paragon Shoes), Aldi did not contend that deception or confusion is likely if the First and Second Trade Marks were to remain on the Register.
281 MIL's skin care products are sold in some 23 countries. They were first offered for sale in the United States and Canada in 2012. Mr Lampert listed some 25 products included in the range: Pure Argan Oil; Dry Body Oil; Shimmering Body Oil; After-Sun Milk; Sun Oil SPF 15; Sun Lotion SPF 30; Sun Lotion SPF 50; Cleansing Bar-Fleur De Rose; Body Buff-Fleur De Rose; Body Soufflé-Fleur De Rose; Body Butter-Fleur De Rose; Hand Cream-Fleur De Rose; Cleansing Bar-Fleur D'Oranger; Body Buff-Fleur D'Oranger; Body Soufflé-Fleur D'Oranger; Body Butter-Fleur D'Oranger; Hand Cream-Fleur D'Oranger; Cleansing Bar-Fragrance Originale; Shower Gel-Fragrance Originale; Body Buff-Fragrance Originale; Body Soufflé-Fragrance Originale; Body Butter-Fragrance Originale; Hand Cream-Fragrance Originale; Intense Hydrating Treatment; and Candle-Fragrance Originale,
282 Mr Lampert's uncontradicted evidence is that the packaging for each of these products includes not only the name moroccanoil but also the Second Trade Mark. Mr Lampert referred to these products as MIL's "body line". That evidence was supported by the tender of a luxury pack of moroccanoil products which includes moroccanoil Body Butter and Body Buff where the Second Trade Mark appears on the lid of the jar and on the top of the cardboard carton in which the jar is packaged.
283 This is the soap featuring the Second Trade Mark:
284 Mr Lampert said (and I accept) that the skin care products have been a success. He attributed the success, unsurprisingly, "primarily [to] consumers recognising and trusting the moroccanoil brand". He said that, at the time of the registration applications for the First and Second Trade Marks, MIL intended to launch a range of skin care products in Australia under the moroccanoil brand name. He maintained that that was still MIL's intention and that the launch would occur "in the near future".
285 In his affidavit Mr Lampert attributed the delay in introducing the skin care products to "extensive research into skin care products and the skin care market". It is difficult to accept this evidence. No documents were submitted to support the assertion. As the skin care line is sold in 23 other countries, I am at a loss to understand what further research would be necessary and why these products are not imported and sold here. Aldi sought discovery of "all Documents which record or evidence any decision by MIL to delay the sale or offering for sale in Australia of any Non-Use Goods bearing any of the MIL Trade Marks by reason of conducting research into skin care products and the skin care market in Australia". No documents answering this description were discovered.
286 Evidence was tendered through Mr Lampert of email communications with executives of Haircare Australia (mostly Geoff Gauvin, the Managing Director and co-founder of the company) to support his statements as to MIL's intention. Those emails begin in August 2011 and end abruptly on 10 April 2013. I interpolate that the index, which is misleading, suggests a much earlier end date. No explanation for the abrupt ending was offered.
287 The initial email was sent by Mr Gauvin on 22 August 2011 to Ofer Tal of MIL. It is entitled "Moroccanoil Body". It reads:
Brad [Gauvin] informed me of this exciting news to Launch in early 2012. I saw the original concept in New York on our visit in April. I confirm that our company is very keen to launch this range into the Australian market via Spa, Departmental Stores and Beauty salons. I would like to meet you either in Israel or New York at your convenience to discuss this opportunity…
288 The enthusiasm for the range is apparent throughout the emails.
289 Mr Gauvin discussed the matter with Mr Lampert in a lengthy telephone conversation on 26 August 2011. Mr Lampert reported on this conversation in an email to Brad Gauvin (copied to Geoff) soon afterwards. He said that the two had reached an agreement to launch the body line in Australia - four to six months after the US launch "somewhere in June-August 2012". He expressed the hope that they could meet in Israel during October or November "to finalise a business plan for the body line".
290 There is no evidence to indicate whether the hoped-for meeting took place but in December 2011 Geoff Gauvin sent an email to Mr Lampert advising that he would be flying to Tel Aviv for a week at the beginning of March 2012 with his "very excited" accountant and his accountant's wife. He also forwarded an email and brochure concerning the Sydney International Spa & Beauty Expo which was scheduled to take place on 11-12 August 2012 and told Mr Lampert that this would be a "perfect platform to launch the Moroccanoil Spa range". He asked whether stock would be available "to international market in June 2012 for ordering".
291 Mr Lampert replied to this question by stating that he would "revert as soon as possible" as he first needed to advise their spa and skin care division. If there was a further email from Mr Lampert responding to Mr Gauvin's question, it was not tendered.
292 The next email in the bundle was dated 28 February 2012. It was from Brad Gauvin to Andrea Garvey, MIL's "Director of Hospitality". Brad informed Ms Garvey that Haircare Australia wanted to develop its business further "in respect of the spa market for MO hair and the new body". He asked her to share with Haircare Australia the marketing strategy and approach in the US "and any other relevant input" she may have. He also thanked her for "connecting with" Kirien Withers of Spa Australasia, which, I gather, is a magazine, and forwarded with his email an email from Ms Withers which suggests that magazine was to have something to do with the proposed launch. Ms Garvey replied with news that MIL was "currently launching the US market and looking at the roll out plan for the International markets". She indicated she would check with Carmen Tal and Mr Lampert "on the rollout for Australia".
293 The next document chronologically purportedly consists of minutes of a meeting in Bologna in 2012. The document is entitled "Australia March 12th 2012". The "minutes" do not indicate what the meeting was, who organised it, or who was in attendance. They contain no reference to MIL or moroccanoil. Nevertheless, they do refer to "Haircare", "Haim", who I infer is Mr Lampert, and "Geoff", who I infer is Geoff Gauvin, and they refer to hair and "body" products and the Sydney International Spa & Beauty Expo. Another document in the bundle (the email mentioned below) refers to a meeting between Mr Gauvin and Mr Lampert in Bologna. Consequently, I conclude that the minutes refer to that meeting. The relevant part reads as follows:
Spa and beauty show:
• is in August 11-12 (Not October)
• We can use the booth we had in Vegas
• Haim asked to be reminded to see if can create a body line booth in a short (scil.) time - speak to carmen
• Geoff to send business plan
• Department stores buy in cycles
• We can use the same strategy as US in spa and retail
• We can go to the most luxury places and push to spas and combine the hair and body in the spa
• If launch in August then need to do a PR event for the body line
• Can do a different PR event or same for hair and body
• They would like to find a different PR agent
• They need to find an agency that doesn't have a competing luxury brand
294 On 22 March 2012 Gil Serfaty, the International Sales Director of MIL's Skincare Division, introduced himself by email to Geoff Gauvin. He advised that MIL was "happy about [his] plan to launch [MIL's] Skincare products in Australia", adding "I am here to support you". He also said:
1. Further to your meeting with Haim in Bologna, look forward to receiving your Business Plan. As you surely understood, our strategy is to develop the Retail and SPA channels. We should discuss about the structure necessary to support such distribution.
2. Referring Sydney International SPA & Beauty Expo on 11-12 August: we are still discussing this opportunity, and we will come back to you very soon.
3. As to the Strategic Plan of launching Skincare products in US and Internationally: Regis Haberkorn will supply you with the Skincare line Strategic Plan, and Andrea Garvey will share with you how we have successfully approached the Luxury SPA market.
4. We are waiting from you for the dates of your visit in NY. We will arrange for you different meetings, with Regis and Andrea.
I am at your service for any question or request might have.
We believe very much the potential of Australia and in you, to conquer the market with our Skincare Line.
295 On 2 April 2012 Regis Haberkorn sent Mr Serfaty and Geoff Gauvin a document setting out the US strategy and on 8 May 2012 Geoff Gauvin forwarded to Mr Serfaty his marketing plan for the "Moroccanoil Body Range". Geoff Gauvin's proposal included offering the retail range (including shower gel, shower scrub, cleansing bar, and various skincare products) through Australia's "premier department store". The marketing plan listed the proposed date of the launch as August 2012, but then referred to a "Spa" launch in August 2013. In an email to Mr Serfaty commenting on the plan, Mr Haberkorn noted that the timeline was not clear, because it seemed that Mr Gauvin was contemplating sales at the department store as early as August 2012, but not launching the products in spas for a further 12 months, something Mr Haberkorn did not think feasible.
296 On 10 April 2012 Geoff Gauvin wrote to Andrea Garvey asking for assistance with the "new opportunity" and foreshadowing that she would be invited to Australia to help him launch "this new division into the Spa and retail market".
297 On 7 June 2012 Mr Gauvin wrote again to Ms Garvey in an email entitled "Skincare". He said that he was "in Vegas" for a few days and that they needed to "catch up and get the ball rolling in Australia". He said that he was "very excited to put the launch together" and suggested running a stand at "the beauty show in Melbourne normally in April", to be "backed up by the Spa and Beauty Show in Sydney in August". He asked whether she had "selling materials merchandising and suggested opening orders" he could see before their proposed meeting.
298 Ms Garvey replied the following day expressing her desire to meet in Las Vegas to discuss "launching the hospitality market in Australia". She said that "[w]e have had tremendous success in the US in the luxury hospitality market and have over 300 luxury partners". She indicated that MIL would not be participating in the "Beauty Expo" that August but would like to confirm MIL's participation for the following year.
299 An email from Ms Garvey indicates that the two did meet in Las Vegas but the outcome of the meeting was not the subject of evidence.
300 The next chain of emails in the bundle begins with an email from Ms Garvey addressed to "Garth G" but beginning "Hi Geoff" (presumably Geoff Gauvin). This is dated 29 August 2012. It attaches "marketing tools" created for MIL's Hospitality Division as well as a "room drop card" for review. The so-called marketing tools include a "spa and salon menu" which details various treatments with MIL hair care, facial and skin care products. The email was copied to a number of MIL employees and executives, including Mr Lampert and one Ursula Orsene, who is said to be MIL's "body line marketing manager". Ms Garvey inquired as to how the search was going for "a designated spa consultant" and advised that Ms Orsene might assist.
301 Geoff Gauvin replied the same day, saying that he was currently interviewing and had issued instructions to one of his staff, Hayley Gordon, to contact her with "launch plans and information re the body range for our marketing dept".
302 Hayley Gordon wrote the following day to Ms Garvey and Ms Orsene expressing her delight that MIL would be launching the body range in Australia and, "[t]o get the process started", asked them to send through "collateral" they might have in relation to information on each of the body products, price lists, and "creative concepts" for advertising. She also asked for three samples of each of the products in the body range. She said that they were looking to launch the body range in Australia "around February 2013", which she acknowledged was "an aggressive timeline", and asked whether they were able to receive stock so that they could meet the timetable.
303 The next chain of emails in the bundle begins on 10 April 2013 with an email from Rotem Ravid, Project Manager for MIL, on behalf of Mr Lampert, addressed to Geoff Gauvin entitled "Body line products study". In it Ms Ravid requested a price study of comparable products to 10 named MIL body line products and pleads with him to include in the study six well-known international skin care and makeup brands. The same day Mr Gauvin instructed Ms Gordon to "complete" that task as a matter of urgency. Ms Gordon responded within hours, attaching "the price study for the Moroccanoil Body Range in the Australian market", which Mr Gauvin forwarded to Mr Lampert.
304 What happened then is a mystery. The email from Mr Gauvin is the last in the bundle comprising the exhibit and no questions were asked of either Mr Gauvin or Mr Lampert to bring the email discussion up to date or to explain the absence of further emails on the subject. Having said that, it is highly unlikely that the correspondence or the contact ceased so abruptly at this point and there is nothing to suggest that the plan to sell the products in Australia was abandoned. Moreover, annexed to Mr Lampert's third affidavit was a statement to the effect that MIL was in negotiations with another company with a view to opening a store at Sydney Airport, which "will stock the full range of moroccanoil Skin Care Products", and that the intention was to open the store in the first quarter of 2016. In further evidence given orally Mr Lampert said that the plan has had to be postponed "a few times … for different reasons". One was that MIL did not find "a right partner … in Australia". Mr Lampert stated, however, that MIL was intending to launch the product offer "in the next three or four months duty free and also in department stores". Aldi did not put to Mr Lampert or submit that this evidence was a fabrication. In these circumstances, I accept it.
305 Mr Lampert also gave evidence that the MIL body range of skin care products is available for sale over the internet and that Australians may purchase the products by placing an order on the net. Since some of those products bear the Second Trade Mark, that circumstance is relevant to the question of whether that Trade Mark, at least, should remain on the Register.
306 I conclude that MIL has not abandoned its intention of using the Second Trade Mark either upon or in relation to the skin care products or of using the First Trade Mark, at least in relation to the goods. Furthermore, as the Second Trade Mark has been used at MIL's promotional events for its hair care products and on its price lists, I would infer it is likely to be used at all future MIL promotional events and in other MIL documentation, including when the much anticipated launch of the body line products takes place. In addition, having regard to the contents of the luxury pack and the marketing proposals, once the products come on the market in Australia it is highly likely that they will be sold with MIL's hair care products or, at least some of them, for the most part bearing both the First and Second Trade Marks. Moreover, once available for sale, they are likely to be promoted on MIL's Australian website where the two Trade Marks frequently appear in relation to the hair care products.
307 In relation to the other Non-Use Goods, MIL acknowledged that they were yet to be supplied either in Australia or overseas. In cross-examination Mr Lampert said that MIL has no current plans to supply facial products in Australia. Indeed, no such products presently exist, although Mr Lampert testified that facial products and fragrances have been in product development for about a year and a half. If that were so, then it is surprising that Mr Lampert said nothing about the matter in his evidence in chief, in spite of the fact that he had sworn three affidavits and MIL had been given leave to adduce additional evidence orally. No documentary evidence was adduced to support the statement. Nevertheless, it was not suggested to him that the evidence was false and so I accept it. The lack of detail, however, gives me little confidence that any such products will be available for sale any time soon. Mr Lampert's evidence was that production can take several years and it seems unlikely that they would be offered for sale in Australia before the market is first tested overseas, as in the case of the skin care products.
308 MIL submitted that, although it had not supplied toiletries anywhere, "this category of goods is in the PD [Product Development] calendar". The evidence in support of that submission was said to come from Mr Lampert. The evidence was extremely vague, to say the least, and, as I mentioned earlier, Mr Lampert later said that MIL had no intention of supplying talcum powder, antiperspirants, or dentifrices. He was not asked specifically about shaving preparations, shaving creams, or after-shave creams and lotions.
309 Without limiting the matters the Court may take into account in deciding under s 101(3) not to remove a trade mark, however, the Court may take into account whether the mark has been used by its registered owner in respect of similar goods. For the purposes of the Act, goods are similar to other goods if they are the same as those goods or of the same description: s 14(1). The relevant principles for determining whether goods are of the same description are discussed above at [223].
310 I am satisfied that the remaining Non-Use Goods are all "goods of the same description" as the hair care products in respect of which the MIL marks are registered.
311 First, generally speaking, both the haircare products and the remaining Non-Use Goods can properly be classed as beauty or grooming products.
312 Secondly, the MIL skin care products, at least, like the hair care products (except for the brushes), contain argan oil.
313 Thirdly, the products are commonly sold through the same trade channels.
314 Both Hairhouse Warehouse and Price Attack, for example, sell not only hair care products but also skin care and beauty products. In addition, evidence was adduced that Dermalogica, a well-known American skin care brand, also markets hair care under its trade mark. Moreover, MIL's own luxury pack in the body line range, which it calls "Luxurious Body Essentials", includes a tube of moroccanoil Hand Cream, a jar of moroccanoil body butter, a jar of moroccanoil body buff, and a 50ml bottle of the MIL Oil Treatment.
315 Some hair salons stock both hair care and beauty products. The Valonz group of salons in Sydney, for example, sell the "Miss Frou Frou" brand of nail polish and a range of skii skin products with hair care products. In the last four to five years, Helen Hair Concepts in Arncliffe and Sharron's Hairline in Young, both moroccanoil stockists, have sold hair care and skin care products, including makeup. Barberdollz Hair & Makeup, a Queensland salon where Orla Fogarty works, also sells cosmetics and hair care products.
316 Aesop's range of products includes shampoos, conditioners, hand creams, body lotions, toiletries and the like, including shaving products, sold together in Australia in its eponymous shops and also in department stores. Crabtree & Evelyn and L'Occitane sell skin and body care products and toiletries, including fragrances, oils, and shaving products, in the same way. All three cater for both women and men.
317 Aldi itself sells its hair care items alongside its skin care and facial products. Photographs of the Waterloo, Eastlakes and Bondi Junction Aldi stores taken by one of Aldi's solicitors, Thomas John Kelly, on 25 February 2016 and annexed to his second affidavit, show hair and skin products, as well as toiletries such as soaps and deodorants displayed for sale under a sign reading "health & beauty". A photograph of Aldi's Westfield Eastgardens store taken on 3 May 2016 annexed to an affidavit from MIL's solicitor, Julie Cheeseman, shows hair products displayed with skin products as well as soaps, deodorants, and dental products.
318 Fourthly, a combined "hair and body wash" is not uncommon. One such product, produced by Keune, appears in the September/October 2008 issue of the magazine "INhair", annexed to Mr Kelly's affidavit. The facing page promotes a brand called "ecokid", which is described as "an Australian made range of hair and body products specifically created for the hair, scalp and skin of children aged three to 12 years".
319 Fifthly, hair, facial and skin care products are often advertised in the same publications and on the same page of those publications. So, too, are fragrances. In the December 2013 issue of Harper's BAZAAR magazine, for example, the MIL Oil Treatment was promoted alongside Acqua di Parma cologne, St Tropez body and face bronzing mousse and Kiehl's body moisturiser. Mr Gauvin annexed to his affidavit evidence indicating that some authorised online resellers sell both hair care and skin care products and advertise them together, such as the Skincare Store and Fountain Cosmetics.
320 Aldi's evidence included other examples. An Australian issue of Marie Claire magazine in 2013, for instance, depicts the MIL Oil Treatment alongside other "Vacation Essentials", ModelCo Daily Face Mattifying Sunscreen & Lip Balm and Bobbi Brown Pot Rouge being amongst them. On the same page Aveeno Daily Moisturising Lotion, Kiehl's Ultra Facial Oil Free Gel Cream, Biore Blemish Clearing Scrub and Becca Mineral Tint can also be seen.
321 I am satisfied that MIL intends to bring to market in Australia in the near future the skin care products presently offered for sale by MIL under the moroccanoil brand name in 23 overseas countries. While there has been a delay, which has not been satisfactorily explained, there is no apparent reason why MIL would not do so, having regard to the success of its hair care range. I am satisfied, too, that MIL also intends to produce and sell in Australia at some time in the future facial products and fragrances. I am not however satisfied that MIL has any present intention of producing shaving preparations, shaving creams and soaps, after-shave creams and lotions, let alone selling them in Australia. To all intents and purposes it has abandoned the two registered trade marks in this respect. The evidence, however, indicates use of the Second Trade Mark upon the skin care products and use of that mark to promote MIL products generally.
322 MIL resisted the application to remove the First Trade Mark for non-use with respect to the Non-Use Goods, arguing that the Court should infer that both Trade Marks will be used in relation to the goods in that all the MIL products are promoted on its websites and the First Trade Mark adorns most of the hair care products displayed there. The problem with this argument is that, where the First Trade Mark appears on the website, it is on the hair care products and nowhere else. Use of a trade mark upon certain goods is not use of the trade mark in relation to other goods.
323 Aldi submitted that the Court should take into account in the exercise of the discretion evidence that MIL has extensively used the word moroccanoil together with the ® symbol (denoting registration) as part of the marketing and promotion of its hair care products. As the word mark is not registered in Australia, Aldi submitted that the use of the symbol is "plainly misleading", contrary to the Trade Marks Act, and "capable of giving rise to offences under s 151 of [the] Act". While the moroccanoil word mark is registered elsewhere in the world, s 151(1) provides that a person must not make a representation that a trade mark is a registered trade mark unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia. Doing so attracts a maximum penalty of 60 penalty units.
324 There is evidence that MIL used the mark moroccanoil® on various occasions, such as on certain products, hairdressing towels at MIL styling events, a 2015 product guide, and at in-salon promotional displays. Those uses amount to representations that the word mark is registered in Australia (see s 151(5)), when it is not. But Aldi did not bring a claim against MIL for making a false representation in contravention of s 151(1) (assuming it has standing to do so). Nor did Aldi's cross-claim extend to allegations that MIL had contravened the ACL by making false representations or engaging in misleading or deceptive conduct. It merely asserted that MIL's conduct in this regard was relevant, without explaining why. For my part, I see no logical connection between, on the one hand, MIL's use of the ® symbol (whether intentional or unintentional) in relation to the unregistered word mark, concerning as it does a different trade mark, and, on the other, the question of whether the First or Second Trade Marks should be removed from the Register for non-use.