This case concerned an application to register the mark ‘CLINIQUE LA PRAIRIE’ under an International Registration Designating Australia (IRDA). The application was broadly in respect of class 5 mineral food supplements and class 32 mineral waters, fruit juices and other beverages.
The mark was opposed on the ground that it was similar to a trade mark that had acquired a reputation in Australia (section 60).
The opponent’s concerned trade mark was ‘CLINIQUE’, used in respect of cosmetic products sold in over 200 stores across Australia. The Delegate described the evidence in respect of the Clinique brand as ‘overwhelming’ and including evidence of ‘consumer appreciation’ of that brand.
However, key to the case for the opponent was that its brand has recently extended into ‘cosmoceuticals’ being the hybrid area of cosmetics and healthcare (being one step closer, logically, to the products within the product specification of the opposed application). All evidence of this extension related only to the United States, and showed no indication of such extension in Australia.
The Delegate found that:
“Australian consumers may be accustomed to seeing skin care brands used together, but they are not currently accustomed to skin care brands extending into the health foods and beverages industry”
The Delegate was not entirely satisfied that there would be sufficient confusion in light of the notional use of the applied mark on beverage bottles.
The opponent also made reference to the mark of its own competitor ‘LA PRAIRIE’, arguing a further and alternate submission of a likelihood of confusion, however the Delegate was not satisfied that La Prairie’s presence was sufficient to warrant such a finding.
Ultimately, the Delegate was satisfied that there would be confusion of certain of the products (being those class 5 goods related to medical purposes, and mineral food supplements), but not on others, and made findings accordingly.