Advance Magazine Publishers Inc v Margaret Anne Bushby and Simone Yvette Bushby

[2004] ATMO 19

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 794529(35) Dogue filed in the name of Margaret Anne Bushby and Simone Yvette Bushby.

Delegate:

Ian Thompson

Representation:

Opponent

Brian Elkington of Blake Dawson Waldron.

Applicant

James Maxwell of  Maxwell & Associates

Decision:

1. Section 52 Opposition: sections 41, 42, 43, 44 and 60: opposition not established.

2. Costs awarded against opponent.

Background

1. Margaret Anne Bushby and Simone Yvette Bushby, ('the applicant') of Woollahra, Sydney, have filed application to register a trade mark, current details of which are:

App No:               794529

Priority Date:     19 May 1999

Services:Class: 35 Retailing of gifts specifically for dogs, including clothing, collars, leads, dog beds, dog houses, dog furniture, dog food, dog bowls, dog toy boxes, dog tags, dog cards, gift packs, dog cosmetics including dog shampoos; retailing of goods for dog parties

Trade Mark:      

1. After grounds for rejection under the Trade Marks Act 1995 ('the Act') were raised against the application during examination, these (which related to the specification of services) were resolved and the application was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 6 January 2000.

2. On 6 July 2000, after obtaining extensions of time in which to do so, Advance Magazine Publishers Inc ('the opponent') filed Notice of Opposition to registration of the trade mark. The opponent relies on grounds under the Trade Marks Act 1995 - being sections 41, 42, 43, 44 and 60. The grounds of opposition thus fall into two groups - those that look to the inherent qualities of the opposed trade mark and those which allege that the use of the opposed trade mark would mislead, deceive and/or confuse because of its alleged similarity to one or more of the opponent's trade marks.

3. Evidence in support was served and filed to which was evidence in answer was served and filed.  The opponent then served and filed evidence in reply. A hearing was held before me, as a delegate of the Registrar, in Sydney, on 19 March 2004.  Mr Brian Elkington of Blake Dawson Waldron, solicitors of Sydney, represented the opponent at the hearing.  The applicant was represented at the hearing by James Maxwell, of Maxwell & Associates, Patent & Trade Mark Attorneys of Sydney.

Evidence

1. I do not intend to discuss the evidence in much detail for reasons that will become obvious.  Suffice it to say that the evidence shows that the opponent is the publisher and owner of the magazine VOGUE and is also the owner of the VOGUE trade mark which is registered in Australia under, inter alia, 16929 in Class 16 for "Periodicals and magazines, but excluding paper patterns”.

2. I put it to the parties at the start of the hearing that the evidence shows that the opponent's VOGUE trade mark had a reputation in Australia at the priority date of this application.  The parties agreed, with Mr Maxwell adding the qualifier that the reputation was in relation to fashion magazines.

3. The applicant runs what might be categorised or characterised as a gift shop at which the owners of dogs may purchase gifts for their pets, posh nosh for their pooches or clothing for their canines.  The applicant had been in business for about three months at the priority date of this opposed application (19 May 1999).

Other

1. I will discuss the grounds of opposition according to whether the grounds look to the inherent qualities of the opposed trade mark or to comparisons of the opposed trade mark with that of the opponent.

Inherent Qualities

1. Section 43 provides:

   Trade mark likely to deceive or cause confusion

   43. 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 submits that the trade mark VOGUE via its semblance to the opposed trade mark VOGUE and the typeface in which its is rendered (both trade marks are rendered in Bidoni Bold) gives rise to the unavoidable connotation that the opponent has endorsed or licensed the services of the applicant.

3. However, any connotation in terms of section 43 must arise from the opposed trade mark itself – not through comparisons to another trade mark: Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513.

4. The opponent has not established this ground.

5. Section 41 provides a scheme for the assessment of the inherent fitness of a trade mark for registration as regards it inherent distinctiveness.

6. Subsection 41(2) of the Act provides that an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If, after consideration under either the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing (41(5)), or does in fact distinguish (41(6)), then the application must be rejected.

7. Mr Elkington points to the applicant's evidence that shows that the word DOGUE is the French for 'mastiff'.  There is, according to the applicant's evidence a French breed of dog called the 'Dogue de Bordeaux'.  Mr Elkington submitted that other traders who supply goods for dogs might naturally require to use the names of breeds such as Chihuahua or Collie in respect of such services.  It is well established law, said Mr Elkington, that words which would attract objections in English should also attract objections in a foreign language.

8. The start point in terms of subsection 41(3) is Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514: the question whether a mark is inherently adapted to distinguish must in Kitto J’s words:

   “…be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and be actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

9. Or, similarly, in FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555, Kitto J again referred to the general principle:

   “…that the question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods.”

10. The principle that descriptive words in a foreign language are as objectionable as their English counterparts finds support in a line of cases such as Smitsvonk NV's Appn (1955) 72 RPC 117 and Ropeid's Appn [1986] AIPC-342.  However, the issue that I am to consider is whether other traders would without improper motive want to use the word DOGUE in relation to their similar services.  It strikes me as being extremely unlikely that a person would start a shop that caters exclusively to mastiffs - or would specialise in selling goods adapted to that breed.  It is, perhaps, even more unlikely that a French trader would export goods to Australia especially for that breed.

11. For the above reasons, I consider that the trade mark DOGUE has sufficient inherent adaptation to distinguish to be prima facie registrable.  It is in no sense lacking capacity to distinguish as are (for example) the words POUR CHIEN.

12. The opponent has not established this ground.

Comparisons of the Trade Marks

1. The balance of the grounds on which the opponent relies (those under sections 43, 44 and 60) call for an assessment of the similarity of the trade marks.  I think that it was common ground between the parties at the hearing that the trade marks are not substantially identical and that if I find that the trade marks are deceptively similar, the grounds are established by the opponent.

2. As stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

3. Further, the comparison of trade marks is to take place in the context of the goods and services of the parties.  As noted by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 40:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

4. The nexus between the applicant’s services and the opponent’s goods does not, of course, in terms of section 60 or (via section 43) section 52 of the Trade Practices Act 1972 require the same immediacy as that required by section 44; however, there must be some rational basis in the minds of the public for a belief that a similarity of trade marks and the relationship between the goods/services denotes a common origin or that the goods and services of the parties are in some way connected.

5. Here, however, I think that the opponent falls at both steps: the trade marks are not at all similar and there is nothing but the vaguest of connection between the goods of the opponent and the services of the applicant implied or explicit.

6. The word VOGUE is a normal word of the English language and is likely to be remembered and recalled on that basis.  Those seeing the word DOGUE in use in relation to the applicant’s services will see it either as a play on the word DOG or as the French word for ‘mastiff’ – it appears to have no specific English meaning.  It is possible that some people might see the applicant’s trade mark as being a portmanteau word fangled out of the words DOG and VOGUE – however, the mental process of discerning the portmanteau, if it is seen as such, necessarily involves a mental process of distinguishing it from both the word DOG and the word VOGUE.

7. The trade marks are not deceptively similar.

8. In terms of section 44, ‘magazines’ and ‘the retail of goods for dogs’ are quite plainly not at all ‘closely related’ goods and services.

9. In terms of sections 60 of the Trade Marks Act 1995 and 52 of the Trade Practices Act 1972, while the opponent’s magazines have carried advertisements for products associated with dogs, the magazine is not otherwise associated with canines.  The magazine is not sold through pet-shops, or specifically aimed at pet owners. 

10. It is possible that some people might see the applicant’s trade mark as a cheeky reference to the opponent’s trade mark – particularly as it is represented in the same font.  However, making reference to another trade mark is permissible if the end result is that such reference will not mislead or deceive in terms of section 52 of the Trade Practices Act 1972 or will not result in deception or confusion in terms of sections 44 or 60 of the Trade Marks Act 1995.  See for instance, McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design & Anor [1997] 962 FCA (18 September 1997) ('the Tabasco case').

11. As in the Tabasco case, the opponent here appears to have a single line of products which are here magazines.  There is no evidence of brand extension by the opponent and no evidence of brand extension by other publishers of magazines.  The fields of commerce of the parties are so vastly different that there could be no realistic expectation or conclusion on the part of the public that the opponent might diversify (or has diversified) into the running of a pet-shop however up-market that pet-shop is.

12. The opponent has not established grounds of opposition under sections 42, 44 and 60 of the Trade Marks Act 1995.

Decision

1. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

Costs

1. The applicant, having been successful, is entitled to its costs which I order at the official scale against the opponent.

Ian Thompson

Hearing Officer

Trade Marks Hearings

19 April 2004