Advance Magazine Publishers Inc v Provogue (India) Pty Limited

[2012] ATMO 33

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 1307823(25) - PROVOGUE - filed in the name of Provogue (India) Pty Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Julian Cooke of counsel instructed by Blake Dawson

Applicant: no appearance

Decision:

2012 ATMO 33

Reg 5.15 request for further evidence by opponent  allowed in public interest – no prejudice to applicant

Section 52 Opposition – ss 44, 59 & 60 pressed – ss 44, 59 & 60 grounds not established – application to proceed to registration – applicant at liberty to apply for costs

Background

1. This is an opposition brought by by Advance Magazine Publishers Inc (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of Provogue (India) Pty Limited (“the Applicant”) for the following trade mark:

Application number:	1307823
Filing date:	1 July 2009
Advertised accepted:	5 November 2009
Goods:	Class: 25 Clothing
Trade Mark:

1. Following examination and acceptance of the application the Opponent filed Notice of Opposition (“the Notice”) to the registration of the trade mark on 5 November 2010.

2. The Notice canvassed most of the grounds of opposition allowable under the Act. However, at the hearing, counsel for the Opponent advised that the Opponent would only be pursuing grounds under the provisions of sections 44, 59 and 60 of the Act. For completeness, as they were neither pressed by the Opponent nor supported by evidence, I find that none of the other grounds claimed on the notice have been established.

3. The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities.[1] Therefore, the grounds remaining for my consideration are those under sections 44, 59 and 60 of the Act. Should the Opponent establish any one ground of opposition, there is no requirement for me to consider the other ground(s) of opposition.

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

4. The Opponent served and filed evidence as shown below:

• Declaration of John W Bellanto, Vice President of Advance Magazine Publishers, Inc, declared 28 February 2010 and comprising Annexures A to P (“Bellanto”)

1. The applicant did not serve or file any evidence.

Preliminary Matter

1. By facsimile message of 7.29 pm on Friday 14 October 2011, the Opponent’s legal representatives requested permission to serve further evidence in the proceedings. I became aware of this request immediately prior to the hearing of the matter on 17 October 2011. The further evidence is a declaration by Elizabeth Ireland, a senior associate employed by Blake Dawson, made on 14 October 2011 and comprising Annexures A to E (“Ireland”).

2. I commenced hearing the matter as delegate of the Registrar of Trade Marks on 17 October 2011 in Sydney.  Julian Cooke of counsel, instructed by Blake Dawson, appeared for the Opponent. The Applicant did not appear at this hearing, nor make any written submissions.

3. I noted that such requests are to be dealt with in accordance with Trade Marks Regulations 1995, relevantly as follows:

5.15 Extension of period to serve evidence and service of further evidence

(1) A party to the opposition proceedings may apply to the Registrar:

(a) …; or

(b) for permission to serve a copy of further evidence on the other party.

(2) The Registrar may grant an application on reasonable terms specified by the Registrar.

(3) The Registrar must not grant an application unless the Registrar:

(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b) has given the parties a reasonable opportunity to make representations concerning the application; and

(c) is reasonably satisfied that:

(i) …

(ii) in the case of an application to which paragraph (1) (b) applies—permission to serve a copy of further evidence;

is appropriate.

(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

1. While I was unable to decide whether or not to grant permission until the Applicant had been given an opportunity to be heard on the issue, I decided to hear submissions from counsel for the Opponent on the substantive issues since the further evidence requested was relevant only to the section 59 ground.

2. At the conclusion of the hearing, I adjourned the matter pending the receipt of submissions on the further evidence by the Applicant. The Applicant was also to be given an opportunity to serve evidence in reply to further evidence if permission was granted.

3. The Applicant, through its legal representatives, provided submissions on 31 October 2011objecting to the serving of evidence. The Applicant contended that there is little public interest to be served by raising an issue previously unsupported by evidence at such a late stage of proceedings. The Applicant referred to relative inconvenience to parties and the public interest as discussed in Lyons and Anor (Trading as Mitty’s Authorized Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416.

4. The Applicant’s legal representatives quite rightly pointed out that there is no explanation why the evidence could not have been filed and served earlier in the proceedings and that considerable inconvenience was caused by such a late request for permission.

5. However, the evidence appears credible (albeit post-dating the priority date of the trade mark) and relates to a ground nominated in the Notice of Opposition. Furthermore, the evidence provides very useful information by way of the Applicant’s 2011 Annual Report.

6. Most cases of dilatory requests to file further evidence, particularly with an element of ‘ambush’, would tend to militate against the requesting party. However, in this case, allowing permission to serve the further evidence will not prejudice the interests of the Applicant.  It will also allow relevant information to be brought into the proceedings to allow for expeditious determination of the opposition. This will become clearer in my discussions below.

7. Therefore, I have granted permission to serve the further evidence. This grant would usually include the Applicant being granted liberty to file and serve evidence in reply to the further evidence; however, for the reasons that follow, it will not be necessary in this case.

Discussion

1. The first ground of opposition argued by counsel for the Opponent was that under section 59 of the Act, which states:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. The requisite intention is a resolved and settled purpose to use the trade mark[2]. The relevant date for determining the existence of that intention is the filing date of the application[3], although any use or non-use may be relevant for drawing inferences as to that at the filing date[4].

   [2] Ducker’s Trade Mark [1928] 45 RPC 397 at 402, per Lord Howarth MR

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58

   [4] Suyen Corporation v Americana International Limited (2010) FCA 638 (21 June 2010)

2. As a general principle, the act of applying for registration or requesting protection is prima facie evidence of an intention to use the trade mark in relation to all of the goods and services listed in the application.[5]^.  Here the Opponent submits that if a case is made to the contrary, the onus shifts to the applicant to establish the requisite intention.  I note that in order to shift the onus to the Applicant, the Opponent first has to make out a prima facie case[6]. 

   [5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391; Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 at 456

   [6] Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478, being the decision of Jacobson J at first instance

3. In this case, the Opponent submits that the Applicant was on notice that the section 59 ground had been raised against it, that the Applicant was legally represented, and was aware of the opposition proceedings. The Opponent pointed out that the Applicant had elected not to appear at the hearing and had not participated in the process.

4. The Opponent points to its further evidence and submits that there is no mention of Australia on the Applicant’s Indian website or in its 2011 Annual Report, and there is no listing of the Applicant in Australian telephone directories.

5. While section 59 was nominated in the Notice of Opposition, the evidence in support of the opposition was limited to the section 60 ground. Until the request for further evidence was received, effectively immediately before the hearing was due to start, there was nothing to alert the Applicant that the section 59 ground was to be pressed.

6. In Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 , at [161] to [163], Jacobson J said:

   [161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].

   [162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   [163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

7. In Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29 at paragraph 36, Hearing Officer Kirov noted that Jacobson J in the above quoted passage, Dodds-Streeton J in Suyen Corporation v Americana International Limited (2010) FCA 638 (“Suyen”), and the Full Court in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 all appear to agree that lack of intention might be inferred “where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence”. Hearing Officer Kirov suggested that it was clear from all three judgments that such an inference will not be drawn lightly.

8. Hearing Officer Kirov pointed out that two of the cases cited by Jacobson J above - Philip Morris Products SA v Sean Ngu (“Philip Morris”) and Tommy Hilfiger Licensing Inc v Tan (“Tommy Hilfiger”) – involved quite distinctive features.  In Philip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant had not responded to the Notice to Produce, and had not filed written submissions nor appeared at the hearing.  Tommy Hilfiger was decided on the basis that the applicant’s intention had to persist beyond the filing date and thus that investigations exhibited in the opponent’s evidence suggesting there had been no actual use in the 20 or so months since the opposed application was filed required some formal “rebuttal, denial or answer” from the applicant.  However, it is now clear that the relevant date for assessing the applicant’s intention is the date of application.  Moreover, Dodds-Streeton J stressed in Suyen at [207] that:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

9. In Suyen at [212] to [214], Dodds-Streeton J provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere lack of use:

   [212] Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439–40.

   [213] In Food Channel, the Full Court observed that “only a low threshold has been set with regard to intention to use”: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of “cybersquatting” and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).

   [214] Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

10. I am not satisfied that the opponent has established a prima facie case, that is: one where a failure to respond to it can be used to infer that the Opponent’s allegation is correct.  

11. The Applicant’s 2011 Annual Report exhibited as Annexure D to Ireland shows that the Applicant is a retailer of fashion clothing in India, with some 145 stores across India and a further 140 “shops within shops” in major Indian national chain stores. It has entered into a joint venture to build and operate shopping malls in India. It reported a total revenue for the year ended 31 March 2011 of approximately AU$109 million and a profit after tax of approximately AU$6.25 million.

12. I do not consider that the lack of reference to a 2009 application for an Australian trade mark in the Applicant’s 2011 Annual report or its Indian website in 2011 proves anything about its intention at the priority date. In any case, I do note that at page 21 of the 2011 Annual Report refers to a “supply chain geared for the next phase of growth” and at 46, in a section headed “Outlook”, the applicant refers to ‘a growing demand from both domestic and foreign retailers.”

13. If the Applicant obtains registration of its trade mark in Australia, it would appear that the Applicant could readily export relevant goods bearing its trade mark to Australia.

14. The Opponent made submissions to the effect that the Applicant had not taken part in the opposition proceedings and that this tended to support the inference that the Applicant did not have the requisite intention. While the Applicant has not filed evidence or submissions, it has participated in the process to the extent that it objected to the Opponent’s request to file further evidence. It is clear that it has maintained its retainer with an Australian legal representative.

15. Therefore, the circumstances are not such as to shift the evidential burden to the Applicant. The Opponent has not established the section 59 ground of opposition.

Section 44 – Identical etc. trade marks

1. Section 44 of the Act relevantly states:

   44.(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.
   […]

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

2. Thus to found its ground under subsection 44(1) the Opponent relevantly has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·has a trade mark substantially identical or deceptively similar to the opposed trade mark.

3. The Opponent cited its registration 879290 for the word VOGUE in Class 25: clothing excluding men’s neckwear; footwear; headgear, with a priority date of 15 June 2001. It is clear that the first two limbs of subsection 44(1) have been established.

4. I turn now to a comparison of the trade marks and firstly consider whether the trade marks of the parties are substantially identical.

5. I refer to Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) where Windeyer J said at paragraph 12:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

1. On a side by side comparison of the trade marks, there are marked and considerable differences in the marks. While PROVOGUE contains the word VOGUE, it creates a new word, and a side by side comparison of the prominent device features of the Applicant’s trade mark and the Opponent’s word mark reveal substantial differences. The trade marks are not substantially identical.

2. The term deceptively similar is defined in section 10 of the Act as follows:

   10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   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. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

4. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said: 

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. The standard which is applied to the assessment of whether the trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:

   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) To show that a trade mark is deceptively similar to another 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 of deceptive similarity 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."

6. Having applied the above tests, as well as taking into account Burchett J’s discussion of the comparison of VOGUE with EUROVOGUE in Conde Nast Publications Pty Ltd v Taylor (1997) 41 IPR 505, I find that I am not satisfied that there is a reasonable likelihood of deception or confusion if the Applicant’s trade mark is registered or that there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of goods in question come from the same source. The ground of opposition under section 44 has not been established.

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   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. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at paragraph 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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Further, at 127, Kenny J said:

   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.

5. The Opponent’s evidence establishes that the Opponent has a strong reputation in Australia and the rest of the world in the VOGUE brand in the field of fashion clothing before the priority date. This reputation is primarily established by the Opponent’s fashion magazine VOGUE, which the evidence in Bellando demonstrates is a leading and authoritative publication on fashion, beauty, health and lifestyle. The Opponent’s various VOGUE trade marks have been used extensively in Australia since 1959.

6. However, I do not consider that the use of the PROVOGUE trade mark would be likely to deceive or cause confusion. Both parties are in the business of selling   stylish ‘up-market’ fashion. The likely consumer will be discerning and knowledgeable of ‘designer labels’. Such consumers would note the great differences between the Applicant’s PROVOGUE device and the Opponent’s VOGUE trade mark.

7. The wide reputation of the Opponent’s various fashion magazines, marketing and associated goods is such as to make it unlikely that consumers would make any association between the applicant’s goods and the opponent. This ground of opposition has not been established.

Decision

1. Section 55 of the Act provides:

   Decision

   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.

1. I find that the Opponent has not met the onus upon it, in terms of the grounds of opposition under sections 44, 59 and 60 argued at the hearing. 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.

Costs

1. The Opponent had sought its costs; however, was unsuccessful in these proceedings. It is usual for costs to follow the event, and I see no reason to depart from that principle here. The Applicant has liberty to apply for its costs.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

4 April 2012