Shiseido fails to defend its TUNING COLOR GROUP registration against removal for non-use.
Dr. Kurt Wolff GmbH & Co KG applied for removal of the TUNING COLOR GROUP registration owned by Shiseido Co Ltd on the basis that the mark had not been used in Australia for all the registered goods during the relevant three-year non-use period.
Wishing to defend its registration, Shiseido opposed its removal and filed evidence attesting to the use of the TUNING COLOR GROUP trade mark in Australia in the following ways:
- Brochures and colour charts for hair colourants in the PRIMINENCE range with colours in this range referred to as either TUNING COLOR GROUP or MULTI COLOR GROUP though this was not shown on the brochures and colour charts
- Screenshots from Shiseido's website and the website of an Australian distributor of Shiseido's hair colourants which show use of TUNING COLOR GROUP dated within the relevant non-use period
- Invoices corresponding to supply of the PRIMINENCE range of hair colourants to an Australian distributor dated within the relevant non-use period
Unfortunately for Shiseido, the invoices it sought to rely on were filed out of time with their omission from the Evidence In Support only brought to its attention by submissions filed by Dr Kurt Wolff. Nevertheless, the Delegate has a broad discretion to consider all relevant evidence given the public interest and gave due regard to these invoices but determined that they had limited probative value as these contained no reference to the TUNING COLOR GROUP trade mark.
The brochures and colour charts provided by Shiseido were also found to not be evidence of use of the TUNING COLOR GROUP trade mark as they only referred to Shiseido's PRIMINENCE trade mark. In addition, the Delegate noted that these materials were undated and there was no supporting evidence to show that these materials had been distributed in Australia within the relevant period.
The Delegate agreed that there were references to TUNING COLOR GROUP on the screenshots from Shiseido's website and its Australian distributor but ultimately held that this was not use "as a trade mark". Instead, it was held that this kind of use was descriptive of colours available within the PRIMINENCE range of hair colourants. Alternatively, even if this had constituted use of TUNING COLOUR GROUP as a trade mark, the Delegate noted that Shiseido had not provided evidence that this use by a distributor was authorised by Shiseido or that Shiseido's website had been accessed by any consumer in Australia within the relevant non-use period.
Shiseido therefore failed to discharge its onus of showing use of the TUNING COLOR GROUP trade mark in Australia within the relevant non-use period and the Delegate was not persuaded by the evidence to exercise discretion to keep the trade mark registered.
This decision is a good reminder to file evidence of your trade mark being used "as a trade mark" and demonstrate a link between any third party use with the registered trade mark owner in non-use removal proceedings.
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