While I’m no makeup maven, I recently noticed Revlon’s CUSTOMEYES mascara ad.

What a clever brand CUSTOMEYES is, given the play on words – particularly as the Revlon product allows for customisation of the effects of mascara on eyelashes.

However, Revlon recently faced a wee problem in Australia in the form of a pre-existing registration for “CUSTOMEYES & LIPS”, in the name of a local Australian company, Wow Factor-e Pty Ltd.

Revlon attempted (but lost), in its recent attempt to remove for non-use the CUSTOMEYES & LIPS registration owned by The Wow Factor-e Pty Ltd.

Wow Factor-e was able to furnish evidence of use for cosmetics during the relevant 3-year period of alleged non-use. Ergo, it successfully opposed the removal action.

The evidence can be viewed on the Australian Trade Marks Office decision, Peter Cracknell v Revlon Consumer Products Corporation [2012] ATMO 70 (17 August 2012). Wow Factor-e tendered evidence of use of the challenged CUSTOMEYES & LIPS trade mark on receipts, as well as posters. The Hearing Officer commented that the evidence supported the opponent’s narrative regarding the trial of the product, followed by the launch of the product in relation to which the posters were displayed.

The Hearing Officer also exercised discretion and allowed the entire challenged registration to remain for items such as bath products and body products – even though use was strictly proved in relation to cosmetics. The Hearings Officer commented that “…no good purpose would be served by directing that the … registration be limited in relation to those goods”.

Certainly, this case shows that a small player with relatively limited amounts of use can defeat a mammoth cosmetics giant in the ‘removal action’ arena.

However, it also shows that a successful opposition to non-use will not necessarily morph into further disputes regarding use of the relevant marks, or result in exclusivity of the victor’s mark in the marketplace.

Further to the Trade Marks Office decision, WOW Factor-e’s CUSTOMEYES & LIPS registration remains on the Register.

On the other hand, Revlon has a pending REVLON CUSTOMEYES application on foot. At the time of writing this article, no further progress has been made on the Revlon application. However, Revlon’s CUSTOMEYES product remains available in Australia.

Revlon appears to still promote CUSTOMEYES product on its website. The product physically prominently shows CUSTOMEYES as the brand. See, for example, this image on the Australian beauty news and review site BeautyHeaven.com.au. The ‘REVLON’ brand is almost negligible, once the product is in-hand and out of pack. The mark looks and smells like CUSTOMEYES (on its own, and without REVLON).

As with many such ‘David vs Goliath’ scenarios, it is unlikely that Wow Factor-e will take adverse action against Revlon’s continued use. An adversary with deeper pockets may have.

Likewise, it is anyone’s guess whether Revlon will now approach Wow Factor-e for any sort of arrangement in light of its prior CUSTOMEYES & LIPS mark.

The case certainly highlights the importance of clearing a mark for use and registration in each jurisdiction, for a risk-free launch.

In my view, companies (particularly big players) should ideally be conducting their due diligence pre-launch – particularly with brands intended for global application.

They should also allow a budget to deal with territorial fall outs such as this – for instance, for adopting a secondary brand in some jurisdictions, for acquisition of prior brands which may pose a ‘block’, or for licences or ‘freedom to use’ arrangements in regions where there are prior rights in the way. In other words, they should be prepared to ‘customise’ their trade mark plans…