Opponent: Samuel J. Hallahan of Counsel instructed by Wallington-Dummer

2025 ATMO 146

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 41, 44 and 60 pursued - no ground of opposition established - trade mark to proceed to registration.

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by RV Skincare Brands LLC ('Opponent') to registration of the following trade mark:

('Trade Mark')

Class 3: Facial cleansers; Skin toners; Non-medicated face cream; Non-medicated face lotion; Moisturisers (cosmetics); Masks for the face (cosmetic); Beauty gels; Cleansing gels; Exfoliants for the care of the skin; Body lotions (other than for medical purposes); Moisturising body lotion (cosmetic); Non-medicated creams for the body; Soap free washing emulsions for the body; Non-medicated foot balms; Non-medicated lip balms; Baby shampoo; Baby lotions, not medicated; Non-medicated baby care products; Nappy cream (non-medicated); Babies' bath preparations (non-medicated); Non-medicated creams for personal care; Bar soap; Cosmetic creams; Serum (cosmetic preparations); Skin care preparations (cosmetic); Cosmetic preparations; Cosmetic skin care products; Cosmetic soaps; Moisturising creams (cosmetic); Moisturising preparations (cosmetic); Skin cleansing preparations (cosmetic); Sun screen preparations (cosmetics)

Class 5: Skincare preparations (pharmaceutical); Skin care oils (medicated); Skin care preparations (medicated); Skin care products (medicated); Skin cleansers (medicated); Skin care creams for medical use; Skin creams (medicated); Skin emollients (medicated); Skin care lotions (medicated); Skin lotions (medicated); Sun blocking preparations for medical use; Sun creams for medical use; Preparations for the treatment of the skin; Preparations for application to the body (pharmaceuticals); Preparations for the care of the skin (medicated); Preparations for the skin (medicated); Pharmaceutical preparations for use in the treatment of skin blemishes; Pharmaceutical preparations containing essential oils; Preparations for application to the skin (pharmaceuticals); Pharmaceutical preparations for application to the skin; Moisturising preparations (pharmaceutical); Moisturising preparations for use on the skin (pharmaceutical); Moisturising skin creams (pharmaceutical); Medicated preparations for the regeneration of the skin; Medicated creams for protection against the sun; Medicated creams for protection of the skin; Medicated creams for softening the skin; Medicated creams for soothing the skin ('Applicant's Goods')

It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

1. The Trade Mark was examined and advertised as accepted for possible registration on 26 February 2024.
2. On 15 March 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 4 April 2024, the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicant filed a Notice of Intention to Defend the opposition on 22 April 2024.
3. The Opponent filed Evidence in Support ('EIS') on 6 August 2024. The Applicant filed Evidence in Answer ('EIA') on 12 November 2024. The Opponent filed Evidence in Reply ('EIR') on 24 December 2024.
4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent requested a hearing by video conference. The Applicant did not ask to be heard. As a delegate of the Registrar of Trade Marks, I heard this matter via video conference on 7 July 2025. Prior to the hearing, the Opponent filed a written summary of submissions. At the hearing, Samuel J. Hallahan of Counsel instructed by Peter Dummer of Wallington-Dummer (observed by Jennifer Song and Sharon Yu of Wallington-Dummer) appeared on behalf of the Opponent. The Applicant was not represented at the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the Opponent.

1. The SGP nominates grounds of opposition under ss. 41, 44, 58 and 60. In the Opponent's written submissions, the Opponent indicated it was not pressing the s 58 ground of opposition. I therefore treat this ground as abandoned.
2. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

1. The parties filed the following evidence in this matter:

Declaration of John D Elmer, Chief Financial Officer and Chief Operating Officer of the Opponent ('Elmer')

JDE-1 to JDE 28 including Confidential JDE-14 to JDE-21

Declaration of Jennifer Yun-Jung Song, solicitor at Wallington-Dummer, the Opponent's legal representatives ('Song')

Declaration of Theresa Tobin, Founder and CEO of the Applicant ('Tobin')

TT-1 to TT-23 including Confidential TT-20 to TT-22

Second declaration of Jennifer Yun-Jung Song ('Song 2')

1. Elmer states that the Opponent is the owner of a business specialising in the development and sale of luxury skincare and premium beauty products ('Business'). The house brand of the Business is RéVive. The Opponent markets and sells RéVive branded skincare products ('RéVive Goods') including in Australia.
2. Elmer provides details of use of the RéVive mark in the United States of America such as how the goods are packaged and states that the RéVive Goods are sold in retail and department stores around the world, exhibiting screenshots dated in January 2024 from the websites of well known retailers overseas namely Saks Fifth Avenue, Neiman Marcus, LookFantastic, SpaceNK, Harvey Nichols, Net-A-Porter and Harrods.
3. Elmer claims that the Opponent has sold and continues to sell the RéVive Goods throughout Australia since at least 17 October 2000 and presently the RéVive Goods are sold into Australia including online through the retailers Harrods, Harvey Nichols, Net-A-Porter, Strawberrynet and kogan.com. Elmer exhibits screenshots from the websites of these retailers dated January 2024 which indicate an Australian shipment address. Elmer claims that the RéVive Goods are sold online via Australian online retail stores The Beauty Club and Harvey Norman exhibiting screenshots from the websites of these retailers dated January 2024.
4. Elmer attests that the largest distributor of the RéVive Goods in and throughout Australia is the beauty retailer Mecca exhibiting undated photographs claimed to be from June 2023 of the RéVive Goods in various Mecca stores in Melbourne and Sydney. Elmer provides a list of ninety four Mecca stand-alone stores and Mecca outlets in Myer department stores throughout Australia in 2024 which sell the RéVive Goods as well as screenshots from Mecca's Australian online store at www.mecca.com/en-au/ dated July 2024.
5. Elmer provides sales figures for each of the RéVive Goods sold to Mecca in Australia from 2019 to June 2024 in United States dollars ('USD'). I assume these figures are wholesale figures. Elmer states that the total annual retail revenue figures pertaining to Australia cannot be ascertained.
6. Elmer exhibits confidential copies of the following documents prepared for the Australian market:
   • presentation for H1[5] 2023 of the RéVive brand for Mecca prepared by the Opponent.
   • presentation of the 2023 6 month joint business plan for the RéVive brand for Mecca prepared by Mecca.
   • an undated Internal Training Document claimed to be from December 2023 regarding the RéVive brand circulated within Mecca.
   • an undated Internal Training Document claimed to be from January 2024 regarding the RéVive brand circulated within Mecca.
   • presentation in respect of new product launches planned for 2024 for the RéVive brand for Mecca prepared by the Opponent. I note that prices in this presentation are only in USD, United Kingdom ('UK') pounds, Canadian dollars and Euros.
   • presentation for H2 2024 of the RéVive brand for Mecca prepared by the Opponent. I note that prices in this presentation are only in USD, UK pounds, Canadian dollars and Euros.
   • presentation of the 2024 Joint Business Plan for the RéVive brand for Mecca prepared by Mecca. I note this presentation refers to 17 Mecca stores.
7. Elmer states that the RéVive Goods are available for sale at the Opponent's website www.reviveskincare.com including into Australia. The website was created in 2002. Elmer exhibits screenshots from the website dated January 2024 which indicate shipment to an Australian address and payment in Australian dollars.
8. Elmer provides details of the Opponent's social media presence as of 31 July 2024 on Facebook with 15,000 followers and Instagram with 53,000 followers. Elmer exhibits screenshots from these social media sites taken on 31 July 2024.
9. Elmer provides details of the Opponent's registered trade marks in Australia,[6] which appear below:

Class 3: Non-medicated skin products, including, creams, lotions, gels, toners and peels but not including soaps or cleaners or shampoos or hair preparations for conditioning of the hair or scalp

Class 5: Medicated skin products, including, creams, lotions, gels, toners and peels but not including soaps or cleaners or unguents or medical products for the scalp or hair

Class 3: Non-medicated skin products, namely, creams, lotions, gels, toners, cleaners and peels

Class 3: Personal care products, including skin care preparations, soaps, perfumery, essential oils, cosmetics and hair care products

1. Elmer states that the Opponent's Marks are registered in twenty one countries/jurisdictions exhibiting a list of these registrations.

1. Song exhibits photographs taken in July 2024 of the RéVive Goods in the cosmetic retailer Mecca in Sydney.
2. Song exhibits screenshots of six Australian websites taken in March 2024 showing eleven skincare products which contain a reference to the letter C on their packaging. Apart from the primary brands on the packaging which are not the letter C, the letter C only appears on the packaging as Triple C Cell, C-Capsule Serum, Essential C Firming, C 15, C 5, C+, C Cream and C+ and C Serum.
3. Song exhibits screenshots of ten Australian websites taken in March 2024 to demonstrate that skincare products are sold under or by reference to various trade marks which contain REVIVE.

1. Tobin states that the Applicant was incorporated on 19 July 2023 and is a skincare research, development and manufacturing company. The Applicant manufactures and sells various skincare products specifically aimed at consumers who experience a high level of skin sensitivity and other difficult-to-manage skin problems as a result of e.g. cancer treatment, rosacea and eczema. The trade marks used by the Applicant are CelRevive and the Trade Mark.
2. Tobin claims the Applicant adopted and first used the Trade Mark in relation to its skincare products primarily through its website at www.celrevive.com, which has been in operation since December 2023. Tobin annexes screenshots from the website dated November 2024.
3. The Trade Mark has been used on the Applicant's first and only product, the B-Restore Barrier Cream ('Product') and on the Applicant's CelRevive Instagram account to announce the upcoming launch of the Product. Tobin annexes a copy of the Instagram postdated 6 December 2023 and undated photographs of the Product where I note use of the Trade Mark.
4. Tobin declares that the Trade Mark was adopted as a visual badge of origin for CelRevive. The 'C' element in the Trade Mark was chosen to represent the reference to 'celebration' or 'cel' in CelRevive, the 'Revive' element to represent the latter part of the overarching CelRevive brand and the visual 'cross' element between the 'C' and 'Revive' as an abstract visualisation of the microbiome of the skin. Tobin continues that the 'C' element was not chosen as a reference to Vitamin C and Vitamin C is not an ingredient in the Product. Tobin annexes an ingredients list for the Product.
5. Tobin claims that at the time the Trade Mark was adopted, the Applicant was not aware of any competitor using the same or similar mark in respect of the Applicant's Goods and nor is the Applicant also aware of any instances of confusion between the Trade Mark and the Opponent's Marks.
6. Tobin annexes:
   • examples of a business card, a price list and promotional material which all feature the Trade Mark and are either undated or dated in 2024, together with examples of electronic direct mail advertising. Tobin states the Applicant has sent over 1,500 electronic direct mail advertising messages to customers and potential customers dated between 1 December 2023 to 8 November 2024.
   • copies of various online articles dated in 2024 which refer to the trade mark CelRevive and/or the Trade Mark.
   • screenshots from the Applicant's Facebook, Instagram, YouTube, Pinterest and TikTok websites dated in 2024. Follower numbers are provided which range from zero to very low.
   • examples of undated advertisements of the Product featuring the Trade Mark on third party websites Look Good Feel Better and Hope Cancer Care.
7. Tobin provides total revenue for the period 1 January 2024 to 31 October 2024 which is very low and sample invoices in the same period which feature the Trade Mark. Tobin also provides advertising expenditure for Google and Meta for the period 24 March 2024 to 30 October 2024 which is also very low.
8. Tobin comments on the differences in the marketplace and demographic between the Applicant's Goods and the Opponent's Goods and that the Opponent's Goods are sold at a significantly higher price point, annexing screenshots of the price points of the Opponent's Goods and the Applicant's Goods.

1. Song 2 states that the word Revive is commonly used in relation to skincare products exhibiting screenshots dated 27 November 2024 from eight Australian skincare websites.

Section 41**

1. Section 41 relevantly provides:

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.

(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.

(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;

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).

1. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks ('Clark Equipment'):

[The] ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others ... the question whether a mark is adapted to distinguish [is to] be tested by 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.[7]

1. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court conveniently summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment") [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods": Cantarella Bros Pty Limited v Modena Trading Pty Limited ("Cantarella") [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the "possible impairment" of the rights of "honest traders" and from the "point of view of the public": Cantarella at [59].

(7) In determining whether a word contains (or words contain) a "direct reference" to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a "covert and skilful allusion" to the relevant goods or services (and thus prima facie registrable as a trade mark), the "ordinary signification" of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the "legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods": Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are "allusive or metaphorical": Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of "any person in Australia concerned with the goods or services to which the trade mark is to be applied": Cantarella at [70].

(11) Consideration of the "ordinary signification" of any word or words said to constitute a trade mark is "crucial": Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the "ordinary signification" of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[8]

1. It is 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.[9]

1. The first step is to consider whether the Trade Mark has an ordinary signification and, if so, what that ordinary signification is. The determination of the ordinary signification of the Trade Mark must be the ordinary signification if the sign were to be used in connection with the Applicant's Goods. If the Trade Mark is found to have an ordinary signification it is then necessary to consider the second step, namely the likelihood of the Trade Mark being needed by other traders.
2. The Opponent submits that the Trade Mark has no inherent adaptation to distinguish the Applicant's Goods from those of others under s 41(3). Both the letter C and word Revive are directly descriptive with respect to the Applicant's Goods and the device element of the mark namely ('Device') is a minor element which merely serves to break up the letter C and the word Revive. C is commonly used by other traders to refer to the presence of Vitamin C as an ingredient and Revive is commonly used by other traders to identify that a skincare product can revive the user's skin. As a consequence, the Trade Mark is directly descriptive. In support, the Opponent refers to screenshots of Australian skincare websites.[10]
3. In the alternative, the Opponent submits that if the Trade Mark is considered to have some degree of inherent distinctiveness, the evidence does not demonstrate that the Trade Mark does and will distinguish the Applicant's Goods from the goods of other persons under s 41(4).
4. In Re Diamond T Motor Car Co Lawrence J observed:

[I]n 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.[11]

1. The combination of elements and the manner in which they are arranged, rather than the constituent parts of the Trade Mark must be considered, and only then can one assess the ordinary signification of the Trade Mark and whether there is a direct reference to the character or quality of the Applicant's Goods. That is the Trade Mark must be considered as a whole as it is the whole that is sought to be registered, not only a part.[12] For this reason, mere presence of a descriptive term(s) within the Trade Mark is by no means fatal to its overall capacity to distinguish the Applicant's Goods.
2. Justice Dodds-Streeton stated in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) that:

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive.

1. Based on the definition of the word Revive,[13] I agree with the Opponent that the word REVIVE describes an attribute and intended effect of skincare goods in that they allegedly 'revive' your skin, but I do not agree with the Opponent that the letter C in the mark is a reference to Vitamin C. The evidence upon which the Opponent relies to support this submission[14] is dated after the Relevant Date and is therefore not an indication of what was happening in the Australian marketplace at the Relevant Date. Further, six websites is far from compelling evidence given the size of the skincare market and the vast number of brands in that space.
2. I am not satisfied that when the letter C is used in a trade mark for skincare goods, that consumers and traders would automatically view this letter as referring to Vitamin C. The letter C is not prefaced by the word Vitamin and nor is there any other matter in the trade mark that infers the letter C represents Vitamin C. The letter C could just be the letter C and represent nothing more than the letter, or it could represent several different words starting with C used in the skincare industry such as collagen, ceramide, clear, clean or cell.
3. Here, the Trade Mark is a composite of three elements: the letter C, the word Revive and the Device between the two. The issue is not whether these individual constituent elements are capable of distinguishing, but whether the Trade Mark in its entirety is capable of distinguishing the Applicant's Goods from those of other traders. In my view, the Device is distinctive and visually conspicuous, and in combination with the adjacent letter C and word Revive, I am satisfied that it creates an impression distinct from any ordinary meaning of the word Revive. A consumer, when looking at the Trade Mark as a whole applied to the Applicant's Goods is unlikely to read the REVIVE element by itself and ignore the rest of the mark.
4. Further, I do not consider it likely that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Applicant's Goods.
5. I find that the Trade Mark is inherently adapted to distinguish the Applicant's Goods from the goods of other persons and as such the Opponent has failed to establish the ground of opposition under s 41.

Section 44

1. Section 44 relevantly provides (some notes omitted):

(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).

1. The SGP nominates the 783 Mark and the 942 Mark (together the 'RéVive Marks').
2. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
   • at least one of the RéVive Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (the 'first requirement');
   • the Applicant's Goods are similar to the goods of the RéVive Marks being the Opponent's Goods (the 'second requirement'); and
   • the Trade Mark is substantially identical with or deceptively similar to at least one of the RéVive Marks (the 'third requirement').
3. I am satisfied that the priority date of each of the RéVive Marks is earlier than the Relevant Date and that the RéVive Marks are in a name other than the Applicant. Therefore, the first requirement is satisfied for the RéVive Marks.
4. I move then to consider whether the Applicant's Goods are similar to the Opponent's Goods. Goods are 'similar to other goods' if they are the same or of the same description as the other goods.[15] The factors relevant to the consideration of whether goods are similar include their nature including their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[16] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[17]
5. The Opponent's Goods are broad and cover non-medicated and medicated skin products, personal care products, soaps, perfumery, essential oils, cosmetics and hair care products. The Applicant's Goods are either the same or similar to the Opponent's Goods in nature, uses and trade channels. Therefore, the second requirement is satisfied for the RéVive Marks.
6. I now turn to consider whether the Trade Mark is substantially identical with or deceptively similar to the RéVive Marks. In this regard, it is convenient to confine my discussion to the 942 Mark, the rationale being that if I find that the Trade Mark is not substantially identical or deceptively similar to the 942 Mark, logic dictates that the same conclusion will apply to the 783 Mark, given that this mark has additional points of dissimilarity. For present purposes, I will determine substantial identity and deceptive similarity in respect of the 942 Mark. Thus, I will now refer to the 942 Mark as the 'RéVive Mark'.
7. The SGP claims that the Trade Mark is similar to the RéVive Marks. The Opponent's submissions only refer to the Trade Mark being deceptively similar to the RéVive Marks and not substantially identical. For the sake of completeness, I do not consider the Trade Mark to be substantially identical to the RéVive Mark. Compared side by side as a whole,[18] the Trade Mark has obvious visual and aural differences to the RéVive Mark and as a consequence, there is a total impression of dissimilarity.[19]
8. Next, I will consider whether the Trade Mark is deceptively similar to the RéVive Mark. Section 10 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'.
9. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

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].[20]

1. The respective trade marks must be compared as wholes,[21] having regard to essential or distinguishing features,[22] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[23] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and the RéVive Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[24]
   1. In Southern Cross, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[25]

1. Deceived implies the creation of an incorrect belief or mental impression; 'causing confusion' may merely involve 'perplexing or mixing up the minds' of potential customers.[26]
2. In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:

The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[27]

1. Thus, the presence of a common element is not conclusive to a finding of deceptive similarity.[28] Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity[29] and the determination of the question 'must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration'.[30] Therefore it is relevant to take into account whether elements of the rival marks have a descriptive character'[31] and whether the element of a trade mark that is descriptive may call to mind the nature of the product or service, rather than its trade source.[32]
2. In the case of a composite mark, all the elements of the mark must be considered in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other.[33] The Full Court in The Agency Group Australia Ltd v H.A.S Real Estate Pty Ltd ('The Agency') noted:

In undertaking his analysis, the primary judge stressed the importance of considering "the whole of the marks and all of their elements"...

In applying this principle in the present case, the primary judge stressed that the AGENCY Mark is not a word mark but a composite mark in which the stylised "A" cannot be ignored. It is an element of the composite mark which the ordinary consumer would not fail to recall. His Honour noted that this presentation of the letter "A" represents a stylised roof or house device.

His Honour also said that it was relevant to take into account that the words "THE AGENCY" on their own have a strongly descriptive element in referring to the nature of the real estate business. His Honour said that the ordinary consumer would expect the word "AGENCY" to be commonly used in the names of real estate businesses in Australia.[34]

First, understanding the scope of the registered mark, as a sign, is fundamental to the infringement question. Here, the AGENCY Mark is not simply the words "THE AGENCY". Rather, it is those words represented in a particular stylised form.

Therefore, the exclusive right to use the AGENCY Mark in respect of the designated services that is conferred on the second appellant, as owner of the mark, by s 20 of the Act, is not the right to use the words "THE AGENCY"; it is the exclusive right to use those words represented in the particular stylised form of the mark as registered. To ignore the significance of the particular stylised form of the AGENCY Mark would be to extend its scope well beyond the monopoly that has been granted to the second appellant by registration of the mark under the Act: Australian Meat Group at [78]. This is an important matter to bear in mind, which was recognised by the primary judge.[35]

1. Justice French expressed the view in Registrar of Trade Marks v Woolworths[36] ('Woolworths') that the determination of whether, and to what degree, an applicant's goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is 'logically antecedent to' assessing the similarity of the parties' trade marks. In particular, French J explicitly approved the observation in Wilcox J's first instance decision in Woolworths that, '[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive'.[37]
2. In light of the authorities, I must decide whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that the Applicant's Goods bearing the Trade Mark are from the same source as the Opponent's Goods bearing the RéVive Mark. I must compare the respective wholes with regard to their essential or distinguishing features, and consider them visually and aurally, in the context of the relevant surrounding circumstances. I should account for imperfect recollection of the reasonable person.
3. The Opponent submits as follows:
   • the word Revive in the Trade Mark only differs from the RéVive Mark in 2 ways - the presence of the accent above the letter e and the capitalization of the letter V;
   • allowing for imperfect recollection, the RéVive Mark would be recalled as the word Revive and pronounced as the word Revive; and
   • the letter C is commonly used in a descriptive manner in relation to skincare and beauty products and is insufficient to distinguish the Trade Mark from the RéVive Mark. Consumers would be caused to wonder whether the Applicant's Goods are a new product line or new version of the Opponent's RéVive skincare goods which include Vitamin C as an ingredient.
4. Here the RéVive Mark consists of two words Ré and Vive both in relatively plain font, where the first word Ré contains the French accent mark aigu above the letter e. Importantly, the aigu above the letter e cannot be ignored as it is an element of the RéVive Mark which the ordinary consumer would not fail to note. The simplicity of the RéVive Mark is reason to think that the ordinary consumer's capacity to recall that mark is likely greater than if the RéVive Mark was more detailed and busy. To the ordinary consumer viewing the mark, visually this accent mark instantly gives the RéVive Mark a French feel. I agree with the Opponent however that aurally the RéVive Mark is likely to be pronounced by the ordinary consumer as the English word REVIVE.
5. The Opponent has made a point of emphasising that the word REVIVE in the skincare market is descriptive of an attribute of skincare goods and is a word used by many other skincare traders and the definition of REVIVE supports this view. As such. an ordinary consumer would expect the word REVIVE to be commonly used in the names of skincare brands in Australia. Given the descriptiveness of the element REVIVE, which is likely to call to mind an attribute of skincare products, rather than their trade source, it can to some extent be discounted in comparing the respective marks,[38] although I am cognisant that the word Revive cannot be ignored.[39]
6. The Opponent's exclusive right is to use the RéVive Mark in respect of the Opponent's Goods is not the right to use the word REVIVE. It is the right to use the word RéVive in the particular stylised form of the mark as registered. That is the scope of the RéVive Mark. In the words of the Full Court in The Agency,[40] to ignore the significance of the particular stylised form of the RéVive Mark would be to extend its scope well beyond the monopoly that has been granted. The Opponent does not have a monopoly in the English word REVIVE. In my view, the ordinary consumer would not be confused by the fact that the descriptive English word REVIVE is used by a rival trader, in light of the high degree of descriptiveness in respect of skincare products.
7. The Trade Mark is a composite word and device mark consist of three elements: the letter C and the word Revive both in relatively plain font and between the two the Device which is a highly compressed molecular diagram slightly smaller than the letters C and R in the mark. Visually, the presence of the word letter C and the Device are striking and not likely to be ignored, particularly as they are the first two components of the Trade Mark. Aurally, the Trade Mark will be pronounced as C REVIVE as the letter C is not likely to be ignored.
8. In respect of the relevant surrounding circumstances, the potential purchasers of skincare goods are vast in number, covering both men and women in Australia. In my view, skincare customers take a degree of care in assessing a brand of skincare before purchase. I refer to the following observations of the Hearing Officer in Colgate-Palmolive Co v Unilever Plc:

While the goods involved in the specifications are generally inexpensive, they are ones associated with personal grooming and hygiene, which, in my personal observations of the world, people generally purchase with some degree of care. That is to say, while some of the goods included in the specifications might occasionally be expensive, as far as the run-of-the-mill is concerned the goods are all such as might generally be found on the shelves of pharmacies and/or supermarkets and purchasers often have preferences or personal tastes such as scent, whether they are to select a soap or body gel, the brand image presented to them on the product, and so forth. The selection is not entirely on the same basis as that of, say, spaghetti or white sugar where one is more or less assured that most spaghetti and all white sugar is the same.[41]

1. In my view, in light of the factors discussed above, the Trade Mark is not deceptively similar to the RéVive Mark. The ideas and impressions formed by the two trade marks are dissimilar, visually, aurally and conceptually. The Trade Mark has differentiating features which the ordinary consumer would not fail to recall and would remain in the minds of ordinary consumers with imperfect recollection of the RéVive Mark. Considering the overall differences between the Trade Mark and the RéVive Mark when viewed as wholes, I am not convinced there is a real risk of deception or confusion. Even accounting for imperfect recollection, I do not believe the Trade Mark would be remembered in a way that could be confused with the RéVive Mark, nor would consumers assume any connection between the Applicant's Goods and the Opponent's Goods. Therefore, the section 44 ground of opposition is unsuccessful.

Section 60

1. The provisions of s 60 are reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note: For priority date see section 12.

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
2. In support of this ground of opposition, the SGP identifies extensive use of, and a reputation in, the trade marks RÉVIVE and RÉ VIVE in Australia for a wide range of skincare products including makeup tools and apparatus and massage rollers and that because of that reputation, use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick ('McCormick') as referring to 'the recognition of the [trade mark] by the public generally'.[42]
2. Further, Kenny J stated in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[43]

1. The reputation in the other trade mark must be amongst a 'significant or substantial' number of Australian consumers but this is tempered by the nature of the relevant market.[44] Here the relevant market is the skincare and beauty products market and as such, is likely to include a great deal of the Australian population. Meanwhile, the 'existence and extent of reputation' must be established as a matter of fact by the Opponent.[45]
2. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[46]

1. While the SGP bases the s 60 ground on the RÉVIVE and RÉ VIVE marks, the Opponent's submissions only refer to a reputation in the RéVive Mark. Given this, I will confine my discussion to the RéVive Mark
2. The Opponent submits that the RéVive Mark had a reputation in Australia by the Relevant Date based on:
   • the Opponent selling skincare and beauty products under the RéVive Mark in Australia since 2000;
   • the availability of the Opponent's Goods in Australia through various online retailers, in-store in over 90 Mecca stores in Australia, and online via Mecca Australia's online retail store;
   • the significant confidential sales figures to Mecca stores since 2019, not including sales through other retailers and noting that the total value of all of the Opponent's Australian retail sales are not available; and
   • the Opponent's sales and promotional strategies employed by Mecca to promote the RéVive Mark in Australia.
3. To assist in my consideration of the Opponent's reputation in the RéVive Mark before the Relevant Date, I make the following observations on the Opponent's evidence:
   • while the Opponent exhibits screenshots from online retailers Harrods, Harvey Nichols, Net-A-Porter, Strawberrynet, kogan.com, The Beauty Club and Harvey Norman, these screenshots are dated after the Relevant Date;
   • Facebook and Instagram follower numbers are from after the Relevant Date and are not high;
   • of the confidential presentations and internal training documents, only two are dated before the Relevant Date. The Presentation for H1 2023 of the RéVive brand for Mecca prepared by the Opponent appears to be a draft document as it contains additions in red text throughout the document. The second presentation is the 2023 6 month joint business plan for the RéVive brand for Mecca prepared by Mecca. The Opponent provides no information as to whether the business plan was implemented and if so, the date of implementation or the success of the implementation;
   • screenshots from the Mecca website and photographs of the Opponent's Goods in a Mecca store in Sydney are dated after the Relevant Date; and
   • a single article on the Mecca website which appears to be dated May 2022 with no indication of how many, if any, customers have interacted with the website page.
4. I am aware from my own knowledge that the Australian skincare and beauty products industry is massive and the number of skincare and beauty product brands on Australian shelves or available to Australians online is huge. The Opponent has been unable to provide any sales figures for the Opponent's Goods under the RéVive Mark other than sales from the Opponent to Mecca. The Opponent has been unable to provide annual retail revenue figures pertaining to Australian consumers, nor has the Opponent provided any indication of the Opponent's market share in the skincare and beauty products industry, which would both assist me in determining the degree of market penetration of the RéVive Mark by the Relevant Date. Further, a list of how many of each RéVive branded product sold to Mecca would also have been beneficial given that the 2024 retail price of the Opponent's Goods varied between $86 to $540.[47]
5. As observed by O'Bryan J in Rodney Jane,[48] the reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimensions here are only evidenced by sales figures from the Opponent to Mecca. There is no indication of the number of products sold to Australian consumers, nor advertising expenditure. Together, I find these figures far from significant when compared to the size of the potential skincare and beauty products consumer base.
6. It is also the evidence relating to the qualitative dimension where the Opponent's evidence is lacking in detail. There is little evidence which concerns the image and values projected by the RéVive Mark, and therefore the esteem or favour in which the RéVive Mark is held by the public generally.
7. In my assessment of the evidence, I am not satisfied that the Opponent had a significant or substantial reputation in the RéVive Mark at the Relevant Date in the skincare and beauty products market. The s 60 ground is not successful.

1. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, the Trade Mark may proceed to registration not less than one month from the date of this decision.
2. If the Registrar is served with a notice of appeal, I direct that registration of the Trade Mark 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.

1. The Opponent has sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

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

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) ('Southern Cross').

[5] Which I understand means the first half of the stated year.

[6] The trade marks which are the subject of the Opponent's registrations are collectively referred to as the 'Opponent's Marks'.

[7] [1964] HCA 55; (1964) 111 CLR 511, 514.

[8] [2017] FCAFC 56, [236].

[9] [2000] FCA 177, [34] (citations omitted).

[10] Song Exhibit JS-2 and Exhibit JS-3 and Song 2 Exhibit JS-A1.

[11] [1921] 2 Ch 583; (1921) 38 RPC 373, 380.

[12] Re Hudson's Trade Mark [1886] UKLawRpCh 79; (1886) 32 Ch D 311 (Cotton, Bowen and Fry LJJ).

[13] Macquarie Dictionary Online includes the following definition: -verb (i) 9. To return to life, consciousness, vigour, strength, or a flourishing condition'.

[16] Re Jellinek's Application [1946] 63 RPC 59 (Romer J).

[18] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (Windeyer J) ('Shell').

[19] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50] ('Woolworths'). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[22] Crazy Ron's Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[23] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[24] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

[26] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[27] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

[28] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[29] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2018] FCAFC 29; (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

[30] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[31] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).

[32] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

[33] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] - [111]; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; [78]; and Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [100].

[34] [2023] FCAFC 203, [18] - [20] (Yates, Markovic and Kennett JJ) ('The Agency').

[37] (1998) 42 IPR 615, 624.

[38] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem [1929] HCA 6; (1929) 41 CLR 475, 477-8 (Know CJ, Gavan, Duffy, and Starke JJ).

[39] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

[41] [2007] ATMO 5, [36] (Hearing Officer Thompson).

[42] [2000] FCA 1335, [81].

[44] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[45] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart, Gummow and French JJ).

[46] [2019] FCA 923; [2019] 142 IPR 275, [83] (O'Bryan J) ('Rodney Jane').