Advance Magazine Publishers, Inc v Louver-Lite Limited

Case •

[2015] ATMO 62

•

30 June 2015

TRADE MARKS ACT 1995



DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Advance Magazine Publishers, Inc to registration of trade mark application 1153195(6, 9, 20) - SLIMLINE VOGUE - filed in the name of Louver-Lite Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions by Ashurst Australia

Applicant: Written submissions by Morcom Pernat

Decision:

2015 ATMO 62

s52 opposition: grounds under section 42, 43, 44 and 60 not established.

Background

  1. In this matter Louver-Lite Limited (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:

Application No: 1153195

Priority Date:  20 December 2006

(‘the Relevant Date’)

Goods:Class 6: Blind systems; headrail fitting kits for blinds; components, parts and fittings for blinds and blind systems

Class 9: Remote control units for blinds; parts and fittings for the aforesaid goods; timers for operating blinds at pre-programmed times

Class 20: Blind systems; headrail fitting kits for blinds; components, parts and fittings for blinds and blind systems

(‘the Goods’)

Trade Mark:  SLIMLINE VOGUE

(‘the Trade Mark’)

  1. The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 22 January 2009.

  2. On 22 July 2009, after seeking and receiving an extension of time in which to do so, Advance Magazine Publishers Inc. (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice includes all of the grounds available to oppose a standard application and thus includes the grounds argued by written submissions under subparagraph 42(b) and sections 43, 44 and 60 of the Act.

  3. The parties have filed evidence as allowed by the Trade Marks Regulations 1995 (‘the Regulations’) as is further discussed below.

  4. A hearing was scheduled before me, a delegate of the Registrar of Trade Marks, on 14 October 2011; however, the parties deferred the hearing and ultimately chose to proceed by written submissions by their legal representatives: Ashursts (for the Opponent) and Morcom Pernat (for the Applicant).

Onus & Relevant Date

  1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

    [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26].

  2. The relevant date at which the grounds must be considered is the filing date of the Trade Mark (‘the Relevant Date’).[2]

    [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

  1. The evidence in this matter is comprised of the following Statutory Declarations:

    In Support

    John W. Bellando, the Vice President of the Opponent, made on 3 November 2009 with annexures A-P

    In Answer

    Andrew Burford, the General Manager of the Applicant in Australia, made on 15 October 2010 with annexures 1-16

  2. Mr Bellando explains that the Opponent publishes a number of magazines in Australia, these being:

    The women’s fashion magazine VOGUE and the associated magazines:

    (a)VOGUE AUSTRALIA, which is published on a monthly basis and features fashion, beauty, health and lifestyle information for women;

    (b)VOGUE LIVING, which features home decorating, home furnishing, interior design, architecture, furniture, household accessories, gardens and landscaping. VOGUE LIVING is published on a bi-monthly basis;

    (c)VOGUE APARTMENT LIVING, which is published annually and features the same types of products and services as VOGUE LIVING with a focus on apartment living;

    (d)VOGUE LIVING BEFORE & AFTER, which is published annually and features the same types of products and services as VOGUE LIVING with a focus on renovations;

    (e)VOGUE ENTERTAINING & TRAVEL (formerly VOGUE ENTERTAINING), which is published on a bi-monthly basis. VOGUE ENTERTAINING & TRAVEL features trends and new ideas in food, wine, entertaining, lifestyle, kitchen design and products and travel products and services; and

    (f)VOGUE ENTERTAINING SEASONAL which will be launched in 2009 and will feature recipes featured in VOGUE ENTERTAINING & TRAVEL.

  3. Mr Bellando states that the Opponent has also published a number of other publications in Australia:

    (a)VOGUE ENTERTAINING COOKBOOK, which was published annually and featured recipes taken from VOGUE ENTERTAINING & TRAVEL;

    (b)VOGUE WINE & FOOD COOKBOOK, which was published annually and featured innovative recipes and information regarding wine and food; and

    (c)VOGUE GIRL, which featured fashion, beauty, health and lifestyle information for teenage girls.

  4. I gather that the publications listed immediately above are no longer published in Australia.

  5. The trade mark VOGUE was first used in Australia by the Opponent in 1959 when the VOGUE AUSTRALIA magazine was launched.  Mr Bellando gives the successive dates of the launch of the Opponent’s various publications as follows:

    VOGUE Australia   1959

    VOGUE Living  1967

    VOGUE Children   1976

    VOGUE Real Life Guide                 1981

    VOGUE Wine & Food Cookbook 1981

    VOGUE Entertainment Guide      1978

    VOGUE Entertaining & Travel      1978

    VOGUE Girl   2005

  6. Mr Bellando states the overseas use of the Opponent’s trade mark VOGUE:

    The Opponent publishes the VOGUE magazine title in the United States of America, the United Kingdom, France, Italy, Germany, Spain, Russia, Portugal, Greece, Mexico / Latin America, Brazil, Japan, China, India, Taiwan and Korea. The Opponent also publishes associated VOGUE magazines and supplements relating to interior design and decorating, men’s fashion, children’s fashion, jewellery, weddings / bridal fashion and beauty in a number of countries.

  7. Mr Bellando supplies circulation figures for the magazines VOGUE AUSTRALIA, VOGUE LIVING, VOGUE ENTERTAINING & TRAVEL in Australia for the years leading up to the Relevant Date.  He also provides various materials which show the promotion of the Opponent’s VOGUE brand in Australia and states:

    Since the VOGUE AUSTRALIA Magazine was first published in 1959, the Opponent and its licensee in Australia have put considerable time, effort and expense into developing promotional material and advertising the VOGUE brand in Australia. In particular, the promotional and advertising activities of the Opponent and its licensee include:

    (a) advertising the VOGUE AUSTRALIA, VOGUE LIVING and VOGUE ENTERTAINING & TRAVEL magazines and related publications in “Metrolites”. Metrolites are the illuminated poster-style advertisements located at bus stops in Sydney, Melbourne and Brisbane;

    (b) producing large posters featuring the cover of each edition of the VOGUE AUSTRALIA, VOGUE LIVING and VOGUE ENTERTAINING & TRAVEL magazines. These posters are designed to be displayed in newsagencies, supermarkets and other outlets which stock the Australian VOGUE Magazines, advertising the magazines to the public;

    (c) creating display units in supermarkets and newsagencies displaying the latest edition of the VOGUE AUSTRALIA, VOGUE LIVING and/or VOGUE ENTERTAINING & TRAVEL magazines;

    (d) advertising the VOGUE AUSTRALIA magazine and related publications in television commercials, including television commercials to promote the September 2004 and March 2008 editions of VOGUE AUSTRALIA;

    (e) VOGUE AUSTRALIA magazine has been the media partner of numerous fashion festivals including Rosemount Australian Fashion Week; L’Oreal Melbourne Fashion Festival; Perth Fashion Festival and Mercedes-Benz Fashion Festival (Brisbane);

    (f) in 2007 and 2008 VOGUE AUSTRALIA was the media partner for the reality TV series “Australia’s Next Top Model” broadcast by Foxtel;

    (g) since September 2008, the Editor-in-Chief of VOGUE AUSTRALIA, Kirstie Clements, has written a weekly fashion column in The Sunday Telegraph newspaper;

    (h) distributing VOGUE AUSTRALIA, VOGUE LIVING and VOGUE ENTERTAINING& TRAVEL branded merchandise, such as branded travel-bags, make-up bags and notebooks, including branded merchandise distributed with newsstand editions of the Australian VOGUE Magazines and branded merchandise offered as a gift with subscription;

    (i) distributing magazine supplements along with editions of VOGUE AUSTRALIA magazine, including annual a “high street fashion” “spring racing fashion” supplements;

    (j) celebrations for the 50th anniversary of VOGUE AUSTRALIA in 2009, including the publication of a limited edition book entitled “In VOGUE 50 Years of Australian Style”, the creation of a handbag in collaboration with Oroton, and various cocktail receptions, media events and parties to celebrate the anniversary; and

    (k) advertising subscription offers and editorial on promotional events conducted in conjunction with the Australian VOGUE Magazines in the VOGUE AUSTRALIA, VOGUE LIVING and VOGUE ENTERTAINING & TRAVEL magazines.

  8. Mr Bellando details the various Internet websites run by the Opponent including an Australian website at ‘ however, he does not provide the number of page visits by Australians to these websites.

  9. Finally, Mr Bellando details what appears to be the basis for the Opponent’s major concern in this opposition:

    The Opponent’s VOGUE AUSTRALIA, VOGUE LIVING and VOGUE ENTERTAINING & TRAVEL magazines are highly respected in their respective industries and attract advertising business from some of the world’s most recognised businesses.

    In particular, the Opponent’s VOGUE LIVING magazine is highly respected in the home furnishing, interior design, architecture and home decorating industries and attracts advertising from some of the world’s most recognised interior design, furniture, home decorating and home appliance businesses. In particular, the Opponent’s VOGUE LIVING magazine regularly features advertising and editorial relating to home furnishing, interior design, home decorating, furniture and window furnishings. Now produced and shown to me and marked “Annexure O” is a collective exhibit of pages from the VOGUE LIVING magazine which demonstrates extensive advertising in relation to home furnishing, interior design, home decorating, furniture and window furnishings as well as editorial relating to these products and services from recent issues of the Opponent’s VOGUE LIVING magazine.

    The Opponent’s licensee has also promoted the Australian VOGUE Magazines through various promotional events and functions over many years, including at Australian Fashion Week, Melbourne Cup Day, the Australian Open and other promotional events held at Australian department stores. These events have generated major publicity through leading Australian press, television and radio outlets. Now produced and shown to me and marked “Annexure P” is a collective exhibit outlining the details of events and functions promoting the Opponent’s Australian VOGUE Magazines since 2004.

  10. In the evidence in answer Mr Burford explains that the Applicant is a branch of Louver-Lite Limited of the United Kingdom. Mr Burford’s evidence details the adoption, background and extent of use of the Trade Mark by the Applicant since 2007 and thus might be regarded as going to support a case for the honest concurrent user of the Trade Mark should the ground under section 44 pressed by the Opponent be established. I will therefore discuss the evidence of Mr Burford further should it become relevant to the section 44 ground of opposition.

Discussion

  1. I will address the grounds of opposition in the order that they are pressed by the Opponent. Where I refer to the VOGUE first tier trade mark (as opposed to, for instance, the trade marks VOGUE AUSTRALIA or VOGUE LIVING) I will designate this as being the VOGUE brand.

Subparagraph 42(b)

  1. Subparagraph 42(b) of the Act provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    […]

    (b)its use would be contrary to law.

  2. The Opponent here in its written submissions asserts:

    The use of the Trade Mark by the Applicant would be contrary to law and would constitute:

    (i) conduct in breach of sections 18 and 29(1) of the Australian Consumer Law [‘the ACL’] contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth);

    and

    (ii) actionable passing off under common law.

  3. At the Relevant Date the Competition and Consumer Act 2010 was not in force and therefore cannot be relied upon by the Opponent. Sections 18 and 29(1) of the ACL mentioned by the Opponent correspond with sections 52 and 53 in its legislative predecessor, the Trade Practices Act 1974 (‘the TPA’), which did apply at the Relevant Date These sections respectively (and relevantly) provide:

    52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

    (2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of sub-section (1).

    53. A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services-

    […]

    (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

  4. Both section 52 and 53 of the TPA are assessed at the standard ‘mislead or deceive’[3] which is a higher standard than that under the Act which is ‘confuse or deceive’: McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (‘McWilliams’) [1980] FCA 159; (1980) 49 FLR 455; (1980) 33 ALR 394; [1980] TPRS 31461; 134 ATPR 40-833. Accordingly, conduct which might cause a person to wonder whether there might be a connection between the Opponent and the Goods or whether there might be some approval of the Goods by the Opponent, will not lead to a finding for the Opponent under sections 52 or 53 of the TPA.

    [3] See generally Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461.

  5. In Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; [1990] ATPR 40-994; (1989) 16 IPR 431 Hill J said at [41]:

    While there remain many areas of difficulty in the application of s.52 of the Act to the facts of a decided case there have been established a number of propositions, relevant to the determination of the present case, which are no longer in dispute:

    1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

    2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.

    3. Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

    4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

    5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

    6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.

  6. The logical start-point is a consideration of the reputation of the Opponent’s VOGUE brand and other VOGUE trade marks and how they have been used by the Opponent.

  7. Concerning a trade mark’s reputation, in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said at [81]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

  1. The reputation may be assessed by evidence of sales revenue and advertising expenditure provided by an Opponent.  In McCormick, Kenny J said at [86]:

    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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

  1. There is no doubt that the evidence establishes that the Opponent’s VOGUE brand, VOGUE AUSTRALIA and (to a somewhat lesser extent) its VOGUE LIVING trade marks have reputations in Australia.  However, those reputations extend only to magazines and it is likely in my estimation that the readership of the magazines is likely to be predominantly but not exclusively female.  The Opponent has claimed confidentiality for the numbers of magazines it prints in Australia; however, as regards VOGUE AUSTRALIA, a public source states a current circulation of 51,677 and claims a readership of 449,000.[4]  The same source states a current circulation of 41,983 and claims a readership of 307,000 for VOGUE LIVING.  These claims appear to be based upon the proposition that 7 or 8 people read each copy of the magazines.

    [4] >

    The Opponent has not evidenced any brand extension or licensing of its VOGUE brand to those in the interior decorating or furnishing trades although I note that it has collaborated with Oroton on the production of a handbag and has also licensed a company (Butterick Company Pty Limited) to use the trade mark “VOGUE” on dressmaking patterns manufactured and sold by it.[5]  The handbag and the dressmaking designs do not, in my consideration, amount to a pattern of brand extension that would be recognized by the public as such and are, in any event, not in the interior furnishing trade where the Goods of the Applicant lie.

    [5] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505; [1998] AIPC 37-628.

  2. In Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177, (‘Taco Bell’) at pages 202-203 Deane and Fitzgerald JJ set out four guidelines for the application of section 52 of the TPA to matters where the misrepresentation is not express:

    First, it is necessary to identify the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is or is likely to be, misleading or deceptive falls to be tested...

    Second, once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations.

    Thirdly, evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The Court must determine that question for itself. The test is objective.

    Finally, it is necessary to enquire why proven misconception has arisen: Hornsby Building Information Centre v. Sydney Building Information Centre (18 ALR at 647; 147 CLR at 228). The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent.

  3. The relevant section of the public here are those seeking to buy the Goods.  The Goods are moderately priced and, being items which visually affect the amenity of interiors of dwellings, are likely to be bought after some careful consideration. 

  4. The final point in Taco Bell reinforces the fact that a real basis for the misconception is central to considerations and it is in respect of this final point that the opposition fails on this ground for the following reasons.

  5. The word ‘vogue’ is not one which is made up by the Opponent but one which is an ordinary dictionary word.  The word ‘vogue’ is defined in the Macquarie Dictionary as:

    vogue  Pronunciation of vogue /voʊg/ (say vohg)

    noun 1.  the fashion, as at a particular time: a style in vogue fifty years ago.

    2.  popular currency, acceptance, or favour: *rhyming slang had a vogue in World War II, but an influence delaying its demise has been the large postwar intake of English migrants. –sidney j baker, 1966.

    [French, from voguer row, from Italian vogare,? from Latin vocāre call (through use in sailors’ shanties)]

  6. Accordingly, the word ‘vogue’ is one which is apt for use for its ordinary meaning in relation to interior furnishings such as the Goods and is more likely to be apprehended by the public as such, rather than signaling some endorsement by, or connection with, the Opponent.  In the words of Burchett J in Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505; [1998] AIPC 37-628:

    At the same time, it should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders.

  7. Further, there is, as I have observed above, no evidence that the Opponent has licensed its trade marks VOGUE AUSTRALIA or VOGUE INTERIORS such that the public (being aware of such licensing) would naturally conclude that goods sold under the Trade Mark have the approval or endorsement of the Opponent.  The Opponent has not evidenced other magazines in its area of interest licensing or endorsing furnishing products (or, indeed, any goods) such that the public would assume that this is a common practice amongst magazines and conclude on this basis that the Goods sold under the Trade Mark are licensed or endorsed by the Opponent: Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 23 FCR 553; (1989) 87 ALR 14; (1989) 14 IPR 398; [1989] ATPR 40-948; [1989] AIPC 39-044.

  8. It is thus not likely in my consideration that the use of the Trade Mark by the Applicant in relation to the Goods would mislead or deceive in terms of sections 52 and 53 of the TPA.

  9. It necessarily follows, in terms of the Opponent’s alternative ground under subparagraph 42(b) of ‘passing off’ that, in keeping with my discussion in terms of section 52 and 53 of the TPA, there is no misrepresentation by the Applicant which amounts to a passing off.

  10. The Opponent has not established its Opposition under subparagraph 42(b) of the Act.

Section 43

  1. Section 43 of the Act provides:

    43Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

  2. The Opponent here submits that:

    “VOGUE” is the significant and prominent visual, semantic and phonetic element of the Trade Mark.

    The prominence of the “VOGUE” element of the Trade Mark connotes and suggests a connection with the Opponent’s VOGUE brand and VOGUE Trade Marks.

    The other element of the Trade Mark, “SLIMLINE”, is a generic, descriptive word and does not detract from the prominence of the “VOGUE” element of the Trade Mark.

    Further, the “SLIMLINE” element of the Trade Mark connotes the Opponent’s VOGUE Trade Marks, which include the use of the VOGUE trade mark in conjunction with a range of other words, either before or after “VOGUE”, such as “LIVING”, “APARTMENTS”, “APARTMENT LIVING”, “TV”, “SHOP”, “CLUB” and “GIRL”.

    The Trade Mark claims goods in classes 6, 9 and 20 which overlap with the content provided in conjunction with the Opponent’s VOGUE brand, and in particular, the content and subject matter of the VOGUE LIVING magazine title and related website.

    Therefore, the addition of the “SLIMLINE” element to the Trade Mark and the coverage of the class 6, 9 and 20 goods strengthens the connotation within the Trade Mark to the Opponent’s VOGUE and VOGUE LIVING brand and VOGUE Trade Marks.

    Accordingly, we submit that the Delegate should be satisfied that the ground of opposition under section 43 of the TM Act has been established, on the basis that due to:

    (i) the connotation of the Opponent’s VOGUE Trade Marks and the VOGUE and VOGUE LIVING brands within the Trade Mark;

    (ii) the extensive use of, and substantial reputation in, the Opponent’s VOGUE and VOGUE LIVING brands and the VOGUE Trade Marks, as outlined in paragraphs 5(c) to 5(s); and

    (iii) the overlap in the goods claimed by the Trade Mark and the goods and services offered by the Opponent under its VOGUE and VOGUE LIVING brands and covered by the Opponent’s VOGUE Trade Marks, the Trade Mark is inherently likely to deceive or cause confusion when used in relation to the goods claimed by the Trade Mark.

    In particular:

    (i) consumers are likely to be confused that the Applicant’s activities, or possible activities, under the Trade Mark are in some way connected with, endorsed by or associated with the Opponent’s VOGUE or VOGUE LIVING brands;

    (ii) any use of the Trade Mark by the Applicant would constitute a deliberate attempt to trade off the Opponent’s valuable reputation and goodwill in the VOGUE name and the VOGUE Trade Marks; and (iii) use of the Trade Mark by the Applicant would also convey false and misleading representations to the public that:

    (A) the goods provided by the Applicant are associated with, affiliated with, approved or authorised by the Opponent; and

    (B) the Applicant’s goods are of a similar standard, quality or grade as the Opponent’s goods and services provided under the VOGUE brand.

  3. It is well established that to make out this ground there must be some connotation inherent in the Trade Mark itself such that its use was likely to deceive or cause confusion. In Winton Shire Council v Lomas [2002] FCA 288; (2002) 56 IPR 72 at [19] Spender J said:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

  4. In Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [53] Gyles J stated it this way:

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks ...

  5. And in Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358; 173 ALR 127; 48 IPR 513 Wilcox, Kiefel & Emmett JJ said at [43]:

    It is important to note that the right to apply for rectification of the register which is conferred by paragraph (c) is excluded only in relation to deception or confusion that arises for a particular reason specified in section 43 or 44. The paragraph does not exclude a claim for rectification that arises for some other reason. The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

  6. The submissions of the Opponent ultimately invite me to make comparisons of the Trade Mark with the trade marks of the Opponent which consist of or contain the word VOGUE.  Accordingly, the ground as argued does not depend on a connotation within the Trade Mark but its similarity to the Opponent’s registered trade marks.  For this reason, the ground is not established.

  7. Moreover, the Opponent’s evidence has not shown that its trade marks have a connotation in relation to the Goods similar to (for example) the connections between Princess Diana and both ‘roses’ and her endorsement of charities: McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582; [2004] AIPC 92-033; [2005] ALMD 365. The Opponent has not shown a connection between it and the Goods or that it has licensed the use of its trade marks such as the public would apprehend a connotation of sponsorship or association in relation to the Goods.

  8. Put at its highest, the Opponent alleges that because some furnishings (which have not been evidenced to include the Goods) have appeared in its VOGUE branded magazines there is a connotation such that the use of the Trade Mark by the Applicant would confuse or deceive.  However, the same might also be said in relation to any goods or services which have regularly appeared in the Opponent’s magazines such as watches, foodstuffs, travel services, hotels, real estate and yachts or horse racing.  Thus, in effect, the Opponent claims that the word VOGUE carries a connotation in relation to anything that has appeared in its magazines.  However, as the Applicant submits:

    The Opponent, by its evidence and submissions is in effect arguing that they hold a monopoly in the use of the word VOGUE in relation to any and all goods and services of the type which may be advertised or described in their publications published under the trade mark VOGUE. We submit that instead the word vogue has been and remains a word in general use in Australia to describe something which is stylish, and that normal dictionary meaning remains the predominant meaning of the word in Australia.

  9. I agree with the Applicant and the Opponent has not established its ground under section 43 of the Act.

Section 44

  1. Section 44 of the Act relevantly provides:

    44Identical etc. trade marks

    (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).

    Note 3:For priority date see section 12.

    Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

  2. The Opponent here relies on 33 registered trade marks all of which have priority dates earlier than the Relevant Date. 

  3. In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 (‘Woolworths’) French J said:

    The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

  4. Similar logic applies to the determination of whether the Goods are similar or closely related to the goods and services of the 33 registered trade marks on which the Opponent relies.

  5. The expression ‘similar goods’ is defined within section 14 of the Act:

    14Definition of similar goods and similar services

    (1)For the purposes of this Act, goods are similar to other goods:

    (a)if they are the same as the other goods; or

    (b)if they are of the same description as that of the other goods.

  6. The term ‘goods of the same description’ within section 14 has been discussed in, for example, McCormick, where Kenny J said at [18]:

    The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

    The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case ... the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application ..., Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”‘: In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: `What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

    On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.

  1. In its submissions which assert the Trade Mark is similar to the 33 registered trade marks on which the Opponent relies, the entirety of the Opponent’s argument in relation to ‘similar goods/closely related services’ is that:

    The Trade Mark claims goods in classes 6, 9 and 20 and the Opponent’s trade marks set out in paragraph (c) claim goods and/or services in classes 6, 9, 20 and/or goods and goods and services in classes which are similar or closely related to classes 6, 9 and 20.

  2. The claim is perplexing as the Opponent does not have any registrations in Classes 6 or 20.  Nor does the Opponent make submissions or provide evidence as to how the Goods are similar or of the same description as the Opponent’s goods nominated in its registered trade marks.  Accordingly, rather than engage in the Augean task of detailing all of the Opponent’s registrations, I will proceed by immediately eliminating all 14 of the Opponent’s registrations which are registered only in Class 16 since magazines and other goods in Class 16 are patently not of the same description as the Goods.  That leaves the following trade marks wherein within some I have emphasised goods or services which may arguably be the same or closely related to the Goods:

Registration No:  428933

Defensive

Priority Date:  26 June 1985

Goods:Class 24: Dressmaking and soft furnishing fabrics; manchester including bed and table linen; curtains

Trade Mark:  

Registration No:  428934

Defensive

Priority Date:  26 June 1985

Goods:Class 42: Retail and wholesale services in respect of perfume, essential oils, cosmetics, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, clothing, dressmaking and soft furnishing fabrics, bed linen, table linen and curtains; beauty salon services; photographic services in this class

Trade Mark:  

Registration No:  572242

Defensive

Priority Date:  11 February 1992 (Divisional of 428934)

Services:Class 42: Retail and wholesale services in respect of perfume, essential oils, cosmetics, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, clothing, footwear, headgear, dressmaking and soft furnishing fabrics, bed linen, table linen and curtains; beauty salon services; photographic services in this class

Trade Mark:  

Registration No:  581389

Defensive

Priority Date:  29 June 1992

Services:Class 42: Beauty salon services including hairdressing; photographic services including photographic studios; cafes, restaurants, cafeteria, canteens; provision of food and drink; cosmetic research; industrial design; dress rental; architectural and interior design and decorating services; editing; exhibitions; fashion information; gardening including landscaping design; hotel and housekeeping services; packaging design; printing; hotel and accommodation services; textile testing; retail and wholesale services in respect of perfumes, cosmetics, essential oils, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, none of the foregoing being safety floorcoverings; wall hangings (non-textile), clothing, footwear, headgear, dress-making and soft furnishing fabrics, bed linen, table linen and curtains

Trade Mark:  VOGUE

Registration No:  746880

Priority Date:  22 October 1997

Goods:Class 9: Electronic publications in the form of general interest magazines

Trade Mark:  VOGUE

Endorsements:                Provisions of paragraph 44(3)(b) applied.

Registration No:  844746

Priority Date:  1 August 2000

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines; catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 35: Retail, promotions and marketing of luxury items including but not limited to perfume, essential oils, jewellery, horological and chronometric instruments, cosmetics, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, clothing, footwear, headgear, dressmaking and soft furnishing fabrics, bed linen, table linen and curtains, beauty salon services

Class 42: Photographic services in this class

Trade Mark:  SHOPVOGUE

Registration No:  844837

Priority Date:  2 August 2000

Goods/Services:  Class 35: Retail store services featuring fashion and beauty available through computer communications, interactive television, satellite and wireless

Class 41: Entertainment in the nature of an on-going television program in the field of fashion and beauty

Class 42: Providing fashion and beauty information distributed over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE

Registration No:  854320

Priority Date:  20 October 2000

Goods/Services:  Class 9: Electronic publications in the form of general interest newsletters and magazines

Class 42: Providing fashion and beauty information distributed over television, satellite, wireless and global computer networks

Trade Mark:  CLUB VOGUE

Endorsements:                Provisions of paragraph 44(3)(b) applied.

Registration No:  857547

Priority Date:  17 November 2000

Goods/Services:  Class 35: Retail store services available through computer communications, interactive television, satellite and wireless featuring fashion and beauty information

Class 41: Entertainment in the nature of an on-going television program in the field of fashion and beauty

Class 42: Providing fashion, lifestyle and beauty information distributed over television, satellite, wireless and global computer networks including the Internet

Trade Mark:  SHOPVOGUE

Endorsements:                Provisions of paragraph 44(3)(b) applied.*

Registration No:  860484

Priority Date:  13 December 2000

Goods/Services:  Class 14: Imitation jewellery and jewellery of precious metal and stones; horological and chronometric instruments

Class 24: Interior fabrics

Trade Mark:  

Registration No:  860485

Priority Date:  13 December 2000

Goods:Class 3: Perfumes, cosmetics, essential oils, hair lotions, shampoos, hair conditioners, toilet soaps, cream, lotions and powder for body care; toiletries, bath and shower gel, perfumed milk

Class 14: Imitation jewellery and jewellery of precious metal and stones; horological and chronometric instruments

Class 24: Interior fabrics

Trade Mark:  VOGUE

Registration No:  866193

Priority Date:  15 February 2001

Services:Class 42: Providing information in the field of fashion, style and beauty over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE CHILDREN

Registration No:  866195

Priority Date:  15 February 2001

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines; catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 41: Providing fashion, entertainment, educational and lifestyle information distributed over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE KIDS

Registration No:  866196

Priority Date:  15 February 2001

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines, catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 39: Providing travel information distributed over television, satellite, wireless and global computer networks.

Class 41: Providing food, entertainment, lifestyle and fashion information distributed over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE ENTERTAINING + TRAVEL

Registration No:  866285

Priority Date:  15 February 2001

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines; catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 41: Providing food, entertainment, lifestyle and fashion information distributed over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE ENTERTAINING COOKBOOK

Registration No:  902232

Priority Date:  4 February 2002

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines; catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 44: Providing beauty information over television, satellite, wireless and global computer networks

Class 45: Providing fashion and style information over television, satellite, wireless and global computer networks

Trade Mark:  VOGUE GIRL

Registration No:  1017651

Priority Date:  26 August 2004

Goods/Services:  Class 16: Printed matter and publications, including but not limited to magazines; catalogues, periodicals, books, newspapers, journals, postcards, paper goods, printed publications and advertising material made of paper or cardboard in this class

Class 44: Providing beauty information over television, satellite, wireless and global computer networks

Class 45: Providing fashion and style information over television, satellite, wireless and global computer networks

Trade Mark:  TEEN VOGUE

Registration No:  1068414

Priority Date:  4 August 2005

Goods/Services:  Class 35:

 Public relations, endorsement and publicity services; representation and agency services for artists, writers, actors, models, performers, photographers and others involved in the entertainment and media industries; distribution of samples; market research services; organisation of fairs and trade shows for advertising and promotion purposes; including, but not limited to, all the aforesaid services provided via the Internet, the world wide web and/or via communications networks 


Class 38:

 Broadcasting, communication, telecommunication and datacasting services including television broadcasting services and interactive services; digital broadcasting, communication, telecommunication and datacasting services (including interactive services); transmission services (regardless of the technological means of transmission); computer aided transmission of messages and images; telecommunication services being the provision of links to databases; facsimile transmission services; information and message sending services including telephone information services; communications via telephone and facsimile; communication by computer via global computer networks including the Internet; transmission of information on a wide range of topics via on-line services (including online, interactive, digital and datacasting information services); on-line visual, audio and audio-visual transmission services; transmission of information on a wide range of topics by means of electronic communications networks including global computer networks; mobile telephone services; telephone alert services; mobile telephone alert services; short message service (SMS), picture messaging (MMS) and text message services, including short message service (SMS), picture messaging (MMS) and text alert services; information services in relation to the foregoing 

Class 41: Publishing; electronic publishing; arranging, organising and conducting competitions, contests, fashion shows and tournaments in this class; arranging, organising, sponsoring and conducting competitions, contests, fashion shows and tournaments for cultural, entertainment, training, culinary, sporting, fashion, recreational, artistic, musical and dancing; information services (including on line information) relating to education, sport, entertainment, recreation, fashion, political news, news programming, current affairs or cultural activities; education services; entertainment services; cultural services; production of television and radio shows and video and audio tapes; production of television programs and television content, including interactive television programs and television content; educational and entertainment services provided via all forms of electronic transmission, including broadcast, narrowcast, multi-point, point-to point, free-to-air, pay and subscription television, datacasting and digital means; interactive games services; publication of information on the global computer networks including the Internet; publication of information in the fields of education, entertainment, sport, recreation, fashion, political news, news programming and current affairs via online services; provision of information in the fields of education, entertainment, sport, recreation, fashion, political news, news programming and current affairs by means of electronic communications networks including global computer networks; interactive games services; advisory services in relation to education, entertainment, publishing and training; arranging and conducting educational seminars and workshops; consumer education services including in relation to restaurants, clothing, cosmetics, hotels and other temporary accommodation, holidays, motor cars, and consumer goods and consumer services; arranging, conducting, creation, production, distribution and presentation of live shows, films, concerts, stage shows, parties, entertainment events, public forums, balls, award ceremonies, discos, dances, award ceremonies, sporting events and other entertainment; entertainment services of a magazine club and mailing list; competitions provided by telephone, short message service (SMS), picture messaging (MMS) and other communications technologies; conducting of phone-in competitions; conducting of competitions by short message service (SMS), picture messaging (MMS) and other communications technologies; information services in relation to the foregoing 

Trade Mark:  

Registration No:  1068433

Priority Date:  4 August 2005

Goods/Services:  Class 35: Public relations, endorsement and publicity services; representation and agency services for artists, writers, actors, models, performers, photographers and others involved in the entertainment and media industries; distribution of samples; market research services; organisation of fairs and trade shows for advertising and promotion purposes; including, but not limited to, all the aforesaid services provided via the Internet, the world wide web and/or via communications networks

Class 38: Broadcasting, communication, telecommunication and datacasting services including television broadcasting services and interactive services; digital broadcasting, communication, telecommunication and datacasting services (including interactive services); transmission services (regardless of the technological means of transmission); computer aided transmission of messages and images; telecommunication services being the provision of links to databases; facsimile transmission services; information and message sending services including telephone information services; communications via telephone and facsimile; communication by computer via global computer networks including the Internet; transmission of information on a wide range of topics via on-line services (including online, interactive, digital and datacasting information services); on-line visual, audio and audio-visual transmission services; transmission of information on a wide range of topics by means of electronic communications networks including global computer networks; mobile telephone services; telephone alert services; mobile telephone alert services; short message service (SMS), picture messaging (MMS) and text message services, including short message service (SMS), picture messaging (MMS) and text alert services; information services in relation to the foregoing

Class 41: Publishing; electronic publishing; arranging, organising and conducting competitions, contests, fashion shows and tournaments in this class; arranging, organising, sponsoring and conducting competitions, contests, fashion shows and tournaments for cultural, entertainment, training, culinary, sporting, fashion, recreational, artistic, musical and dancing; information services (including on line information) relating to education, sport, entertainment, recreation, fashion, political news, news programming, current affairs or cultural activities; education services; entertainment services; cultural services; production of television and radio shows and video and audio tapes; production of television programs and television content, including interactive television programs and television content; educational and entertainment services provided via all forms of electronic transmission, including broadcast, narrowcast, multi-point, point-to point, free-to-air, pay and subscription television, datacasting and digital means; interactive games services; publication of information on the global computer networks including the Internet; publication of information in the fields of education, entertainment, sport, recreation, fashion, political news, news programming and current affairs via online services; provision of information in the fields of education, entertainment, sport, recreation, fashion, political news, news programming and current affairs by means of electronic communications networks including global computer networks; interactive games services; advisory services in relation to education, entertainment, publishing and training; arranging and conducting educational seminars and workshops; consumer education services including in relation to restaurants, clothing, cosmetics, hotels and other temporary accommodation, holidays, motor cars, and consumer goods and consumer services; arranging, conducting, creation, production, distribution and presentation of live shows, films, concerts, stage shows, parties, entertainment events, public forums, balls, award ceremonies, discos, dances, award ceremonies, sporting events and other entertainment; entertainment services of a magazine club and mailing list; competitions provided by telephone, short message service (SMS), picture messaging (MMS) and other communications technologies; conducting of phone-in competitions; conducting of competitions by short message service (SMS), picture messaging (MMS) and other communications technologies; information services in relation to the foregoing

Trade Mark:  VOGUE

  1. Viewed in the light of the above goods and services which I have emphasised, the question whether the Goods are similar or closely related to the Opponent’s goods and services resolves itself to an enquiry as to whether the Goods are similar or closely related to ‘curtains’ or the ‘retail of curtains’. I do not consider that any of the other goods and services in the above-mentioned marks are similar or closely related.

  2. Curtains are items of soft furnishing which, as the above listing of the Opponent’s goods indicates, fall in Class 24 of the International (Nice) Classification of Goods and Services.  The explanatory notes for Class 24 state:

    Class 24 includes mainly textiles (piece goods) and textile covers for household use.

    This Class includes, in particular:

    - bedding linen of paper.

    This Class does not include, in particular:

    - certain special textiles (consult the Alphabetical List of Goods);

    - electrically heated blankets, for medical purposes  (Cl. 10) and not for medical purposes (Cl. 11);

    - table linen of paper (Cl. 16)

    - horse blankets (Cl. 18).

  3. The Applicant’s ‘blinds’ occur, inter alia, in Class 20.  The explanatory notes for Class 20 state:

    Class 20 includes mainly furniture and its parts and plastic goods, not included in other classes.

    This Class includes, in particular:

    - metal furniture and furniture for camping;

    - bedding (for example: mattresses, spring mattresses, pillows);

    - looking glasses and furnishing or toilet mirrors:

    - registration number plates not of metal;

    - letter boxes not of metal or masonry.

    This Class does not include, in particular:

    - certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);

    - special furniture for laboratories (Cl. 9);

    - special furniture for medical use (Cl. 10);

    - bedding linen (Cl. 24);

    - eiderdowns (Cl. 24).

  1. The blinds that are included in Class 20 are thus those of plastic, wood, cane or similar, or of substitutes for those materials as suggested by the Class 20 heading: ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.’

  2. The Goods in Class 20 and ‘curtains’ are therefore intrinsically different in their nature: the ‘curtains’ are fabric and the ‘blinds’ are plastic, wood, cane or similar and their substitutes.  As regards the Goods in Class 6, the differences between the intrinsic nature of ‘metallic blinds and blind systems’ and ‘curtains’ are greater.

  3. The Opponent has not adduced evidence of how ‘curtains’ and ‘blinds’ are sold.  Experience suggests that they may or may not be sold in the same place but are unlikely to be sold over the same counter by the same person.  Some people might regard ‘curtains’ and ‘interior blinds’ as substitutes for each other and, indeed, they might be used on the same window.

  4. However, on the face of it, it appears unlikely that ‘blinds’ and ‘curtains’ would be made by the same trader or come into shops via the same suppliers or distributers.

  5. However, in the absence of evidence these observations are speculative and fall short of a definitive finding that the Goods and curtains are of the dame description.  The onus in this matter is on the Opponent and there is no evidence before me to be able to be satisfied that the Goods and curtains are goods of the same description.  I have insufficient knowledge of the trade or trades involved to be able to decide either way although the Class Headings and explanations suggest that the intrinsic nature of the goods and supply channels are such that they are not of the same description.

  6. The above reservations also necessarily apply to the question of whether the service ‘the retail of curtains’ is closely related to the goods ‘blinds’.

  7. As it has been elsewhere observed, ‘it is not appropriate that the Registrar act as an advocate on [a person’s] behalf”: Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596 at 598. The Opponent in its evidence and submissions has not laid any focus on the question as to whether ‘blinds’ in Class 20 and ‘curtains’ in Class 24 are goods of the same description and has preferred to take a ‘shotgun’ approach citing all 33 of its registrations and not to provide evidence or detailed submissions. It is not appropriate under such circumstances that I advocate on the Opponent’s behalf or carry out research into the question: it is for the Opponent to establish its opposition to registration.

  8. As the Opponent has not established that the Goods are similar, or closely related, to the goods and/or services in respect of which its trade marks are registered, there is no need to consider whether the trade marks involved are deceptively similar.

  9. It follows that the Opponent has not established its opposition under section 44.

Section 60

  1. Section 60 of the Act provides:

    60Trade 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.

  2. I have already discussed the reputation of the Opponent’s VOGUE brand and trade marks at [24] to [27], above.  Thus I am to decide whether because of the reputation of those trade marks, the use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

  3. The test under section 60 is at the standard ‘deceive or confuse’ which is lower than that discussed in relation to the TPA in the grounds under subparagraph 42(b) of the Act: McWilliams.

  4. The meanings of the words ‘deceive’ and ‘confuse’ have been judicially considered.  In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and deception:

    Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

  5. And in Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark  come from some other source and confused to being caused to wonder whether that might not be the case.

  6. Further, in Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

    In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

  7. The assessment of the likelihood of confusion or deception was discussed by French J in Woolworths at [50] in the following passage from which I have omitted reference to deceptive similarity as this is not a requirement under section 60:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i)           […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii)          A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii)         In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv)        The rights of the parties are to be determined as at the date of the application.

    (v)         The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

  8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40] the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

  9. The Trade Mark is SLIMLINE VOGUE and the Opponent asserts that the element VOGUE within the Trade Mark is likely to deceive or confuse by virtue of the reputation of its VOGUE brand and/or its trade marks VOGUE AUSTRALIA and/or VOGUE LIVING in relation to magazines the latter of which in particular has some focus on interior furnishings.

  10. Thus the question becomes whether people who are considering the purchase of the Goods are likely (because of the reputation of the Opponent’s trade marks in relation to magazines) to be caused to wonder whether the Goods are marketed by the Opponent or under the license or approval of the Opponent.

  11. It is necessary to take into account the nature of the trade marks on which the Opponent relies and the likely public perceptions of the use of the corresponding word in the Trade Mark. 

  12. The word ‘vogue’ is, as discussed above, an ordinary English word which is apt for normal description of goods which are designed to be trendy or fashionable.

  13. Additionally, as I have observed, there has been no pattern of licensing or endorsement by the Opponent of its VOGUE trade marks that the public recognizes or has come to expect such that they would then, when seeing the Trade Mark on the Goods, be caused to wonder whether the Goods have the sponsorship or endorsement of the Opponent.

  14. In my consideration, the reputation of the Opponent’s trade marks, in particular its VOGUE brand, VOGUE AUSTRALIA and VOGUE LIVING, is not one which is notorious so that the use by the Applicant of the word ‘vogue’ for the sake only of its ordinary meaning within the Trade Mark is precluded on the basis that the use is likely to cause people to wonder whether the Goods are connected in some way with the Opponent or its magazines.  To put this alternatively, the Opponent’s trade marks are not as notorious and idiosyncratic as are, for example, the trade marks ROLLS ROYCE or COCA COLA so that their mere use by a person other than their owners is likely to cause people to wonder at a connection between the other person and the rightful owners of those trade marks.

  15. It is possible that people seeing the Trade Mark on the Goods might recognize the word ‘vogue’ as being the name of the Opponent’s magazines as well as being descriptive of the Goods.  However, it is not likely in my estimation that those people would take the further step and wonder whether there is some connection between the Goods and the Opponent by way of sponsorship, license or endorsement.  Given the descriptive meaning of the word ‘vogue’, the extent of the reputation of the Opponent’s trade marks and the absence of evidence of public awareness of a prior pattern of licensing by the Opponent (or by similar magazine publishers) there is, in my assessment, no rational basis for such wonderings.

  16. The Opponent has not established its ground under section 60.

Decision

  1. At the Relevant Date subsection 55(1) of the Act provided:

    55Decision

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

  2. The Opposition has not been to any extent established.

  3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

  1. Having been successful in this matter the Applicant is entitled to its costs which I award against the Opponent at the scale set out in Schedule 8 to the Regulations.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

30 June 2015


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Pfizer Products Inc v Karam [2006] FCA 1663
Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58
Registrar of Trade Marks v Woolworths [1999] FCA 1020