Advance Magazine Publishers Inc v Tags & Accessories Pty Ltd

[2004] ATMO 15

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 861216 (14, 16, 18 & 25) - GLAMGIRL - filed in the name of TAGS & ACCESSORIES PTY LTD.

Delegate:	Mary Skivington
Representation:	Opponent: Brian Elkington, Special Counsel, Blake Dawson Waldron. Applicant: Unrepresented at the hearing. Written submissions supplied by Tony Riddell, Director of the applicant.
Decision:	Section 52 opposition - Opposition unsuccessful - grounds of opposition under the provisions of sections 42, 44 and 60 of the Act not established. Registration alllowed.

Background

1. Tags & Accessories Pty Ltd, ('the applicant'), filed an application to register the trade mark, GLAMGIRL, on 20 December 2000.  The application was duly examined and on 7 June 2001 its acceptance for registration was advertised in the Australian Official Journal of Trade Marks. The goods are as described below:

   Class 14

2. Amulets; bracelets; brooches; buckles; chains, being jewellery; charms, being jewellery; earrings; imitation gold; jewellery; costume jewellery; medallions; necklaces; rings, being jewellery; clocks; watches; wristwatches; straps for wrist watches; watch bands; watch cases; purses of precious metal; hat and shoe ornaments of precious metal; buckles of precious metal; ornamental pins; tie pins; tie clips; cuff links; key rings of precious metal; badges of precious metal; ashtrays of precious metal for smokers; cigarette cases of precious metal; household and kitchen containers of precious metal; silver and gold ware (other than cutlery, forks and spoons);

   Class 16

3. Stationery; albums; photo albums; calendars; covers (stationery); document files (stationery); folders; greeting cards; loose leaf binders; lever arch folders; ring binders; manifolds; pads (stationery); writing pads; scrapbooks; posters; books; cards; greeting and announcement cards; postcards; playing cards; paper and cardboard articles in  this class; pencil sharpeners; pens; pencils; rubber erasers; rulers; stickers; transfers; boxes, cases and  holders for pens, pencils and stationery; kits and sets for

   students containing some or all of the aforesaid goods; artists' requisites in this class; office requisites in this class;

   Class 18

4. Bags; backpacks; bags for travel; suitcases; beach bags; rucksacks; school satchels; handbags; attache cases; briefcases; key cases in this class; purses; wallets; leather and goods made of leather in this class; and

   Class 25

5. Clothing, footwear; headgear; bath robes; bathing suits; swimming caps; beach clothes; caps (headgear); chemisettes (shirt fronts); pyjamas; shoes; socks; underwear; belts in this class.

6. Advance Magazine Publishers Inc, ('the opponent'), following the allowance of a three months extension of time within which to do so, filed a notice of opposition to registration of the trade mark, on 7 December 2001. The opponent filed and served its evidence in support of the opposition on 7 July 2003.  The applicant did not file any evidence in answer, nor did it comply with regulation 5.11 which requires an applicant to give notice that it does not intend to rely on evidence in answer. On 17 November 2003 the opponent applied to be heard.

7. As a delegate of the Registrar of Trade Marks I heard the matter in Canberra on 23 January 2004.  The opponent was represented by Mr Brian Elkington, of Special Counsel, of Blake Dawson Waldron, lawyers.  The applicant was unrepresented at the hearing but written submissions were filed by Mr Tony Riddell, Director of the applicant company.

   The evidence

8. The evidence in support comprises a statutory declaration, with exhibits JB1 to JB8, made by John W Bellando, who declares that he has been Vice President of the opponent since 1 January 2000. Mr Bellando declares that the opponent is the owner of four registered trade marks in Australia.  Details of these registrations are as set out below:

Trade Mark No.      & Priority Date	Trade Mark	Goods
208711, 14 March 1967.	AUSTRALIAN GLAMOUR	Periodical magazine (Class 16)
467265, 18 June 1987.	GLAMOUR	Printed publications and magazines; paper patterns. (Class 16)
746879, 22 October 1997.	GLAMOUR	CD-ROMs, compact discs, prerecorded audio and video cassettes, electronic publications, computer software and  optical apparatus and equipment(Class 9)
844835, 2 August 2000.	GLAMOUR	Retail store services available through computer communication, interactive television, satellite and  wireless featuring fashion and beauty information (Class 35) Entertainment in the nature of an on-going television  program in the field of fashion and beauty (Class 41) Providing fashion and beauty information distributed over television, satellite, wireless and global computer networks (Class 42)

1. Mr Bellando declares that the GLAMOUR trade mark was first used by the opponent in the United States, in respect of a magazine, in 1941 and was first registered there in 1944.  He reports that the opponent's trade mark is registered in eighty-five countries. Mr Bellando asserts that the United States edition of the magazine has a monthly audience of 12.1 million readers and that in the United Kingdom, 'GLAMOUR magazine has recently become the most read women's magazine'. Mr Bellando provides the annual circulation figures in Australia, of the United States edition of GLAMOUR, from 1990 to 2002.  These figures are low and falling. They demonstrate that the magazine has not established a strong base of readership in Australia.  Mr Bellando declares that the GLAMOUR trade mark has been used throughout Australia and the world in advertisements which appear on billboards and in newspapers and  magazines and  on the Internet.  However, there were no exhibits demonstrating use in Australia. As the Internet extracts postdate the subject trade mark's priority date they have no relevance to these proceedings. Mr Bellando declares that through continuous use of the GLAMOUR trade mark, throughout the world, including Australia, the opponent has established a global reputation. He declares his belief that in the minds of consumers in Australia, the GLAMOUR trade mark has come to designate the goods and services of the opponent.

   Grounds of opposition

2. At the hearing, grounds of opposition under the provisions of sections 42, 44 and 60 of the Trade Marks Act 1995, ('the Act'), were relied on by the opponent.. The remaining grounds stated in the notice of opposition were not pressed and I regard them as not established and dismiss them.

   Submissions and the law

   Section 44

3. Section 44 provides that a trade mark application must be rejected if the applied for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar goods or closely related services. Section 10 of the Act states that a deceptively similar trade mark is one that so nearly resembles another trade mark that it is likely to deceive or cause confusion.

4. The trade marks cited by the opponent have earlier priority dates than that of the subject application.  It was not argued at the hearing that GLAMGIRL is substantially identical with the opponent's trade marks.  Indeed, in a side-by-side comparison the differences are quite obvious. There is 'no total impression of similarity', as is necessary, to establish a claim of substantial identicality.

5. Mr Elkington submitted that the tests for deceptive similarity are to be found in Shell Co of Australia v Esso Standard Oil, (1961) 109 CLR 407, where it was held that the overall impression, based on the recollections of persons of ordinary intelligence and memory, was the basis for determining deceptive similarity, rather than a side-by-side comparison. He argued that GLAMGIRL is deceptively similar to GLAMOUR because both trade marks begin with the same prefix, GLAM, which he said, is the dominant feature of each trade mark. Moreover, he said, the suffix of each is dominated by the letter 'R' which lends a significant visual and aural similarity to the two trade marks. Mr Elkington noted that GLAM is a frequently used slang expression for the words GLAMOUR and GLAMOUROUS. He argued that consumers are likely to look upon GLAMGIRL as equivalent to GLAMOURGIRL. He said that because the word GLAM is the essential feature of the subject trade mark and GIRL merely refers to the target audience, the trade marks are at least deceptively similar and there is a real risk of customer confusion. In support of this claim Mr Elkington referred to the CHILL and CHOC CHILL trade marks, in PB Foods Ltd v Malanda Dairy Foods Ltd, (1999) AIPC 91-531. In that case Carr J found that the trade marks were substantially identical because prospective purchasers would recognise the word CHILL as the badge of origin and the word CHOC as nothing more than the flavour of the goods. This case is different in that GIRL is not descriptive of the goods. It is nothing more than a reference to likely customers for some of the goods.

6. Mr Elkington said that the magazine provides information to young girls, teenagers and young women, on fashion including accessories, lifestyle, beauty and health. He argued that because the trade marks are deceptively similar, if GLAMGIRL were to be used in respect of any of the goods claimed, it would be seen as a brand extension or sub-brand of the opponent's GLAMOUR trade mark. However, the issue of brand extension is not a matter that may be considered under the provisions of section 44 of the Act. Mr Elkington maintained that the trade marks are deceptively similar and the goods are the same or of the same description and the opponent's services are similar so that the application should have been rejected under section 44.

7. Mr Riddell, in his written submissions did not agree with the opponent that the trade marks are deceptively similar.   He said that GLAMGIRL was coined from two words and each element is equally dominant.  Additionally, he said that GLAMGIRL is gender specific whereas GLAMOUR is not.

8. I note that French J, in Registrar of Trade Marks v Woolworths Limited, (1999) 45 IPR 411 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. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second.

9. It follows that the same principle applies in a consideration of trade marks under the provisions of subsection 44 (1). The tests for determining if goods are of the same description were defined in Jellinek's Application (1946) 63 RPC 59. The factors to be considered are the nature of the goods, the uses of the goods and the trade channels employed.

10. The trades of the writers, artists, graphic designers and printers concerned with the provision of the content of and publication of the opponent's magazines are quite different from those involved in the production of goods in classes 14, 18 and 25. These trades require different skills and aptitudes and ordinary consumers would not consider that they belong to the same trade.  Those involved in the production of these goods belong to different unions and associations and their goods are traded through different channels. These are not goods of the same description.

11. While Mr Elkington's submissions focussed mainly on the opponent's magazine being a good of the same description as the goods in the subject application he also maintained that the opponent's other goods are goods of the same description as the applicant's and that its services are closely related to the applicant's goods.  For the sake of completeness I note that the opponent's class 9 goods are different in nature from the applicant's goods and that they are used for different purposes and traded through different channels.  They are not goods of the same description. 

12. Nor can it be said that those who provide retail, entertainment and information services, all in the fields of fashion and beauty are in trades closely related to those of manufacturers of fashion goods or beauty products. The opponent's services are not closely related to the applicant's goods.

13. The subject application also includes goods in class 16.  Here I find that there are goods listed in the application that fall within the description of similar goods. These are books, calendars, posters, post cards and greeting cards.  Although used for different purposes they are all printed matter produced by the same printing houses and traded through the same trade channels and purchased in the same shops over the same counters by similar end users. Given that some of the goods fall within the description of similar goods I must now determine if the trade marks are deceptively similar.

    It was held in Australian Woollen Mills Ltd v F S Walton & Co Ltd, (1937) 58 CLR 641 that, 'the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.' GLAMGIRL is a single word obviously derived from the words GLAMOUR and GIRL, however, I do not think consumers are given to analysing the derivation of trade marks. Even if some consumers were to go through such a process, it does not seem likely to me that they would then continue on with the process and arrive at a conclusion that there must be a connection between one mark and another mark on the basis that the prefix of one is an abbreviation for a word that constitutes the whole of the other trade mark. I think this is even less likely when, as in this case, the trade marks comprise, or are derived from words that allude to a characteristic of the goods. The online Macquarie Dictionary defines GLAMOUR as, alluring and often illusory charm; fascination; magic or enchantment; spell; witchery.  Glamour may be associated with events such as, for instance, the running of the Melbourne Cup or the launch of a clothing designer's new fashion collection. Sometimes the presence of a famous person at an otherwise ordinary event may bestow it with GLAMOUR. Certain careers and places may be associated with a sense of GLAMOUR.  GLAMGIRL, on the other hand, is more narrowly confined. A glamour girl, or more colloquially, GLAMGIRL, is a female who dresses with style and whose choice in jewellery and make-up contribute to an overall impression of high fashion.  A GLAMGIRL may be seen gracing noteworthy occasions at the right time and always in the company of the 'right' people. The impression or idea left in the mind by each trade mark is different.

14. On the matter of deceptive similarity Parker J in Pianotist Co.'s Appn (1906) 23 RPC 774 set down some rules for comparison of trade marks when he 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.

15. Visually GLAMOUR and GLAMGIRL are clearly different. Both trade marks consist of two syllables. The second syllable of GLAMOUR, 'uh', is short and pronounced softly whereas the two syllables of GLAMGIRL are equally dominant and strongly pronounced so that aurally there are obvious differences in the trade marks.

16. I think that it would be generally acknowledged that the word GLAMOUR, or its obvious abbreviations are commonly used by traders in connection with their goods or the promotion of their goods. Purchasers are therefore accustomed to differentiating between brands that incorporate this word.  Moreover, regular purchasers of magazines are particular in their choice of magazines and exercise care in making their purchases. They are not likely to confuse GLAMOUR with GLAMGIRL. It seems to me that if GLAMGIRL were to be used in respect of any of the goods specified in the subject application consumers will not be 'caused to wonder' if such goods originate from the same source as GLAMOUR magazine. In Registrar of Trade Marks v Woolworths Ltd, supra, at page 426, French J said that under the 1995 Act,

    The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

17. In Blount Inc v Registrar of Trade Marks, 40 IPR 498 at page 504, Branson J observed,

    Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965)112 CLR 517 That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

    The opponent has not reported any instances of confusion and for the reasons I have given I am not satisfied that there is a reasonable likelihood of deception or confusion between GLAMOUR and GLAMGIRL. I find that the ground of opposition under section 44 of the Act has not been established.

    Section 60

18. To satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade marks on which the opponent relies to be registered or the subject of applications for registration.

19. As I have found that the subject trade mark is neither substantially identical with nor deceptively similar to, the trade marks cited by the opponent, this ground of opposition fails at the first hurdle and I have no need to consider the reputation of the opponent's trade marks.  However, I note that the evidence does not demonstrate that the opponent had acquired the requisite reputation at the relevant date.  I find this ground of opposition has not been established.

    Section 42(b)

20. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law.

21. Mr Elkington alleges that the applicant would appear to be seeking to obtain an advantage based on the reputation of the opponent's 'quite famous magazine'. He submitted that because of the similarity in the trade marks, use of the subject trade mark on printed matter would lead consumers into thinking that the applicant’s goods were related to those of the opponent.  This would contravene Sections 52 and 53 of the Trade Practices Act 1975 (TPA).

22. In the Advantage Rent-A-Car case, [2001] FCA 683, Madgwick J confirmed that the test to be satisfied was that use would, rather than could, be contrary to law. The relevant standard to be applied, as was held in Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431, is that there must be a "real or not remote chance or possibility" of a reasonably significant number of people being misled or deceived. On the basis of the evidence and submissions before me, I am not satisfied that use of GLAMGIRL on any of the goods specified in the application would cause, or be likely to cause consumers to be misled or deceived. This ground of opposition is not established.

    Decision

1. The opponent has not been established any of the grounds of opposition on which it relied and as a consequence the opposition has been unsuccessful. I therefore direct that, subject to payment of the registration fee, trade mark application number 861216 may 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

2. It is usual for costs to follow the event but as the applicant's involvement in these proceedings has been at the most, minimal, I make no award of costs.

   Mary Skivington
   Hearing Officer
   Trade Marks Hearings
   22 March 2004