Influencers and media celebrities are increasingly launching new businesses and product lines, some of which under names closely tied to their personal identity. Recent decisions from the Australian Trade Marks Office (ATMO) have highlighted how brand reputation is assessed when an influencer or celebrity is at the centre of the brand.
Background to the PAULLIE decision
Paullie Skin IP Pty Ltd v Amy Ventures Pty Ltd [2025] ATMO 208
On 1 September 2023 (the Filing Date), Amy Ventures Pty Ltd (Ventures) sought to register PAULLIE (the Application) in relation to clothing-related goods. Following acceptance of that mark, Paullie Skin IP Pty Ltd (Paullie Skin) opposed registration on the basis of sections 60, 42(b), 62A and 59 of the Trade Marks Act 1995 (Cth) (the Act). The director of the opponent is media personality Anna Paul who considered that she had prior rights to the trade mark PAULLIE, being a cosmetic brand that she announced via social media on 29 August 2023. In particular, Paullie Skin claimed:
- The PAULLIE mark had acquired a reputation in Australia and Ventures' use would likely cause confusion;
- Ventures' use of the PAULLIE mark would be contrary to law, namely being misleading or deceptive conduct under the Australian Consumer Law and passing off;
- The Application was made in bad faith, allegedly to benefit from Paullie Skin's publicity and redirect traffic via a similar domain name; and
- Ventures lacked a genuine intention to use the trade mark as at the Filing Date.
The 'PAULLIE' evidence timeline
Paullie Skin claimed that first use of the PAULLIE word was on Anna Paul's Instagram, through her username 'anna_paullie' in October 2022, when the account had millions of followers. Plans to launch the cosmetic brand progressed by December 2022, and Paullie Skin was incorporated in May 2023 as a member of a group of multiple companies co-directed and half owned by the influencer, self-referenced as 'Paullie Skin Group' that designs and retails cosmetics, skin care products, and hair accessories all sold under 'PAULLIE'. Paullie Skin presented evidence that included copies of internal communications, mock-up products, and confirmation of an initial order to the lead up to the official brand announcement on 29 August 2023. The brand was announced via social media, including posts to the influencer's personal social media pages as well as the brand's own accounts, all containing the word 'PAULLIE'. Anna Paul also asserted the existence of a six-figure waitlist for the brand, which was argued without proof to have begun in May 2023. Paullie Skin declared a small amount of sales between 5 September 2023 and 9 September 2023, with products officially launched for sale on 10 September 2023 which sold out within minutes. Paullie Skin claimed Anna Paul was party to extensive promotional activities in the lead up to the launch and the first week of sales, including social media posts on all social media accounts, in-person promotion of the products, and interviews with fashion and news websites.
Ventures' evidence outlined their history and business activities of selling leggings bearing the words 'PAULLIE PAWS', with the evidence dated well before Paullie Skin's launch and prior to the Filing Date. Paullie Skin responded with screenshots of Ventures endorsing their social media page in September 2023.
High sales, low reputation
In evaluating the reputation of Paullie Skin's use of 'PAULLIE', the Delegate highlighted that a strong reputation can be inferred from high sales figures combined with significant advertising and promotional efforts, even without direct evidence that consumers recognise the trade mark. The use must be use as a trade mark. On assessment of the evidence presented by Paullie Skin, the Delegate concluded that while the product launch generated notable sales, these figures did not automatically indicate a reputation in the PAULLIE trade mark. The Delegate found that a substantial portion of the sales may have stemmed from Anna Paul's personal reputation, rather than from recognition of Paullie Skin's trade mark or its presence on her social media platforms. The Delegate found that Paul's celebrity status was likely leveraged to facilitate the initial product launch, which contributed to the volume of sales.
Even assuming widespread visibility of the posts, the Delegate found it difficult to determine what Paullie Skin's PAULLIE mark was being used to promote. Reference was made to the recent Full Federal Court's decision in Killer Queen, LLC v Taylor [2024] FCAFC 149 where reputation was established based on a significantly longer period of use than the three days prior to the Filing Date. In comparison, the Delegate held that a handful of social media posts were insufficient to establish a clear association between Paullie Skin's use of PAULLIE and Anna Paul's status as at the Filing Date and therefore did not support a finding of reputation in the trade mark. It was acknowledged that while reputation may be established over a short promotional period, such cases are uncommon and require a high standard of evidence, which was not met in this instance. Accordingly, Paullie Skin failed in establishing the section 60 ground.
Paullie Skin contended on the section 42(b) ground that use of the Application would breach the Australian Consumer Law (ACL) or constitute passing off based on its claimed reputation in PAULLIE. As the Delegate was not satisfied that a sufficient reputation had been established under section 60, there was no likelihood of deception or breach of the ACL. Consequently, the passing off claim also failed, and the section 42(b) ground was not upheld.
Under the section 62A ground, Paullie Skin needed to establish that the Application was filed in bad faith. They argued that Ventures was aware of the PAULLIE use in relation to cosmetics and its growing reputation, and filed the application to mislead consumers, benefit from the reputation, or restrict Paullie Skin's own use of the PAULLIE word. Further, it was claimed that Ventures used a similar domain name to redirect traffic to its own site. The Delegate found that Ventures' awareness of Paullie Skin's activities did not amount to bad faith. Ventures showed prior use of PAULLIE PAWS for clothing, being unrelated to cosmetic products. The conduct was not found to be commercially improper, and the section 62A ground was not established.
The Delegate highlighted that Paullie Skin's evidence largely focused on a lack of use by Ventures, rather than establishing a lack of intention to use. Accordingly, the section 59 ground also failed.
The STAPLE SWIM Decision - Victor Liang v FAYT The Label Pty Ltd [2025] ATMO 190
A similar approach was taken in the recent case of Victor Liang v FAYT The Label Pty Ltd [2025] ATMO 190. In this case, the trade mark 'STAPLE SWIM' was opposed by Victor Liang, one of the previous owners of a registration for the trade mark 'STAPLE'. The STAPLE SWIM trade mark was applied for by FAYT The Label Pty Ltd (Fayt), with the Director and Founder of that company being Brittney Saunders, a popular Australian influencer. Despite the extensive evidence set forth by Fayt in support of its reputation in STAPLE SWIM, the Delegate found that the reputation presented appeared to be tied more to Ms Saunders' influencer status than the trade mark itself.
Further, it was determined that relying heavily on social media metrics to gauge reputation was problematic in this instance, as it was akin to judging popularity by merely counting people who pass by a shop window, highlighting that social media users may scroll through content without forming any meaningful association with the trade mark. The Delegate found that the trade mark 'STAPLE SWIM' is deceptively similar to 'STAPLE' under section 44 of the Act. In response, Fayt attempted to establish honest concurrent use. The Delegate found it reasonable to infer that the company was aware of the STAPLE trade mark, particularly given it had been cited during examination of a prior STAPLE SWIM application (a topic of discussion in our article on the honest concurrent use defence in trade mark law). The opposition was established in relation to all clothing related goods, with the Delegate offering FAYT the opportunity to amend their application to exclude the sale of clothing in their class 35 claims.
Lessons from the PAULLIE and STAPLE SWIM decisions
The decisions in the PAULLIE and STAPLE SWIM cases underscore the ATMO's firm stance that reputation must attach to the trade mark itself, not merely the individual behind it. While Paullie Skin's PAULLIE launch generated high levels of engagement and sales, the Delegate made clear that these outcomes were largely attributable to Anna Paul's personal reputation, not to consumer recognition of PAULLIE as a cosmetics brand. The Delegate's decision in STAPLE SWIM signals a growing scrutiny of trade marks linked to celebrities, particularly where reputation claims rely heavily on fleeting social media engagement. In essence, commercial success of a brand or product driven by celebrity status cannot substitute for evidence of trade mark reputation under section 60 of the Act. Additionally, the decision made clear that awareness alone (even opportunistic awareness) does not amount to bad faith.
The ATMO's findings have reinforced their approach regarding reputation, particularly when it involves celebrity and/or influential figures that may accelerate brand exposure. The decision emphasised the need for reputation in the trade mark (in relation to the goods and/or services) to be proven through more than just immense one-off sales or promotions with high engagement. Influencers and brand owners need to ensure that marketing clearly links the trade mark to the goods from the outset, and that trade mark protection is sought early before publicity invites opportunistic filings.
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