Christian Dior Couture v Dior Investments Pty Ltd

[2008] ATMO 18

TRADE MARKS ACT 1995

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

Re:      Opposition by Christian Dior Couture to registration of trade mark application 996911(36) DIOR - in the name Dior Investments Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: Khajaque Kortian of Spruson & Ferguson Applicant: No appearance or written submission
Decision:	2008 ATMO 18 Section 52 opposition: Grounds under subsection 44(2) and section 60 – identical trade marks, the same services, services of the same description, section 44 established; reputation of opponent’s DIOR trade mark; discussion of issues – applicant’s brochure lends support to opponent’s arguments – use of the opposed trade mark DIOR likely to confuse when used in respect of real estate services. Costs Ordered against applicant

Background

1. This application proceeds in the name of Dior Investments Pty Ltd, of Mosman, Sydney, and seek registration in Australia of the following trade mark, current details of which are:

   Appn No996911

   Priority Date                7 April 2004

   Services  Class: 36 Real estate agents; sales, leasing and management

   Trade MarkDIOR

2. The application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade marks on 12 August 2004.

3. Christian Dior Couture, (‘the opponent’), of Paris, France, filed notice of opposition to the registration of the above trade mark, (‘the opposed trade mark’), reciting five of the grounds contained or referred to in Division 2 of Part 5 of the Trade Marks Act 1995, (‘the Act’), being those under:

   ·    Subsection 42(b) – That use of the opposed trade mark would be contrary to law

   ·    Section 43 –the opposed trade mark contains a connotation, the use of which would be likely to confuse or deceive

   ·    Section 44 – relying on the opponent’s Australian trade mark registration 975960

   ·    Section 58 – the applicant is not the owner of the trade mark

   ·    Section 60 – that because of the reputation of the opponent’s trade marks, the use of the opposed trade mark would deceive or confuse.

4. As a delegate of the Registrar of Trade Marks I heard the arguments of the opponent at a hearing in Sydney on 14 August 2008.  The opponent was represented by Khajaque Kortian of Spruson & Ferguson.  The applicant was not represented at the hearing, did not appear, or put in written submissions.  However, where material in the evidence of the applicant might be taken as submission I will address this in my reasons, below.

   Other

   5.   Details of the registration at paragraph 3, above, on which the opponent relies are:

   Reg No:  975960

   Priority Date:               12 February 2003

   Services:Class: 35 Advertising; rental of advertising space; dissemination of advertising matter; advertising mailing; dissemination of advertising matter (leaflets, pamphlets, printed matter, samples); newspaper subscription services for third parties; publishing of advertising texts; business management; commercial administration; office tasks; distribution of brochures and samples; business consulting, information or inquiries; research for business purposes; commercial or industrial management assistance; evaluations relating to commercial or industrial matters; accounting; document reproduction; employment agencies; computer file management; data input and processing services, computer file rental; organisation of exhibitions for commercial or advertising purposes; modelling for advertising or sales promotion; bill-posting, shop-window dressing; import-export agency; sales promotion for third parties; market research; auctions; promotion of products via television with sales offers; organisation of events for commercial events; administrative management of exhibition sites; assorting for third parties of various leather goods, jewels, jewellery, timepieces, eyewear, stationery, pens, umbrellas, glassware, porcelain, sports articles, household linen, smokers' requisites, clothing and shoes (excluding their transport), enabling consumers to see and purchase the above goods conveniently in stores; rental of vending machines; gathering for third parties of various leather goods, jewels, jewellery, timepieces, eyewear, stationery, pens, umbrellas, glassware, porcelain, sports articles, household linen, smokers' requisites, clothing and shoes, enabling consumers to see such goods on a website and purchase them conveniently

   Class: 38 Telecommunications; interactive broadcasting services relating to product presentation; news and information agencies; communications by radio, telegraph, telephone or videophone, by television, broadcasting; transmission of data by telematic means; transmission of messages, transmission of telegrams and computer-assisted transmission of images; transmission of data by teletypewriter, television programmes, rental of apparatus for message transmission; communications via computer terminals; communications (transmissions) on closed and open global computer networks; information on telecommunications; provision of access to a computer network; downloading of videogames, digitized data, financial services and stock exchange services; consulting in telecommunications; leasing of access time to telecommunications networks
   Class: 42 New product research and development for third parties; biological research; geological research; technical research; engineer's office services, professional consulting in computing; professional consulting for environmental protection; professional consulting in copyright; professional consulting in intellectual property; professional consulting in for authentication works of art; engineering works (not for building purposes); geological prospecting, oil prospecting, testing of materials; technical research in laboratories; software design, development, updating and rental; consulting in computers and computing; computer programming, computer rental; copyright management, technical standardisation services; styling services; weather forecasting services; electronic message authentication (research of origin) services; certification services (quality and place of origin control); rental of access time to database server centres

   Trade Mark:                

   Evidence

   6.   The parties have served and filed evidence in support, answer and reply as indicated in the table below:

Declarant	Position	Date made	Exhibits
Evidence in Support
#1	Khajaque Kortian	Solicitor, Spruson & Ferguson	12 May 2005	KK-1
#2	Khajaque Kortian	Solicitor, Spruson & Ferguson	2 September 2005	KK-1 to KK-4
#3	Khajaque Kortian	Solicitor, Spruson & Ferguson	14 November 2005	A to E
#4	Francoise Yon	CEO of opponent	8 December 2005	FY-1 to FY-4
Evidence in Answer
#5	Geoff McDonald	Director of applicant	12 September 2006	AA
Evidence in Reply
#6	Khajaque Kortian	Solicitor, Spruson & Ferguson	KK-1 to KK-6

1. Kortian #1 exhibits a schedule of the opponent’s trade marks which are registered in Australia.  As this decision is one which fairly falls under section 44 (in relation to the opponent’s trade mark detailed above) and also section 60 of the Act, I will not list these in full except to note that the schedule reflects the opponent’s status as a well-known purveyor of fashion articles and designer goods, including clothes, footwear, and personal accessories bags, jewellery, watches, sunglasses and other eyewear, and certain household items such as linen goods.  The opponent also has registrations which reflect its reputation as a design house, including interior design services in relation to fabrics and fabric items, and new product research and development.

2. Kortian #2 exhibits relevant pages of the opponent’s 2004 annual report; further records of the opponent’s Australian trade mark registrations; records of Australian trade mark registrations and applications of Giorgio Armani and Hermes International, two other relatively well-known fashion houses who are known for providing designer goods or services; and, an unsigned declaration of Gerard Bouet filed in relation to the opposition to application 738555(18).  The annual report reveals revenue of over €10 billion a year and licensing revenues of over €20 million under the opponent’s DIOR and associated trade marks.

3. Kortian #3 exhibits articles from Time Magazine, dated Fall 2005 titled The Road To the Top and Mover & Shaper concerning the opponent and its activities; a printout from brandchannel.com; a printout from the French Foreign Affairs website called The Great Names of French Haute Couture – Christian Dior; and, a printout of an Electronic White Pages search.

4. Yon #4 goes to establish the reputation in Australia of the opponent’s DIOR trade marks.  While the expenditure by the opponent on advertising and its revenues from goods sold under the trade marks are not particularly high, I will note now that the trade mark is one which was very well known and recognized in Australia at the priority date.

5. McDonald #5 states that the opponent does not have a registration in Class 36 (of the International (Nice) Classification of Good and Services) (‘the Nice Classification’) in Australia and that the opponent has had ample opportunity to register a trade mark in Class 36 if it intended to carry on business as a real estate agent.

6. The declarant avers that the word DIOR is in capital letters on the application and stands for Domestic Industrial Office Retail, representing the classes of real estate that the applicant sells, leases or manages.

7. Two of the applicant’s brochures are exhibited to the declaration.  I reproduce a part of the back page of one of the brochures below:

8. The two photographs on the applicant’s brochure, above, show the frontages and/or signage of Cartier and Louis Vuitton shops.

9. The declarant lists the goods and services he associates with the opponent and then states:

   With this extensive level of product in the fashion industry promoted over such a long time, HOW COULD ANY MEMBERS OF THE PUBLIC CONFUSE Christian Dior with a real estate service company DIOR Realty that has one full time employee, no products and only operates in Sydney?  [Bold and capitals where indicated in the original].

10. The questions posed above are not the ones that face me – I am not to consider the effect of the concurrent use of the trade marks Christian Dior and Dior Realty.  I am to consider the likely effect of the concurrent use of the opposed trade mark DIOR, and Dior (in the form registered by the opponent) for the full range of services applied for, in any likely manner.

11. Kortian #6 exhibits printouts from the Australian register of trade marks, these being of the trade marks of Giorgio Armani SpA, Gianni Versace SpA, and Guccio Gucci SpA; printouts from the website of the Palazzo Versace on the Gold Coast, Queensland; printouts from various websites concerning the Armani Luxury Boutique Hotel and “Armani Casa”; and, a printout giving a brief history of the “House of Dior.”  These materials show at least one fashion house has registered its trade mark in respect of real estate services in Australia and that two fashion houses have entered the hotel trade.

    Other

    18.  I note that the word ‘Dior’ has an entry in The Macquarie Dictionary:

    Dior

    noun Christian, 1905--57, French couturier; noted especially for the New Look.

12. The word ‘Dior’, arguably at least, hence has a connotation since it is a dictionary word – that connotation is the founder of the opponent company and/or its parent, Christian Dior SA.  The word has no other meaning to Australians that I can ascertain, apart from the fact that it is a rare Australian surname and occurs 11 times on the electoral roll.

    Section 44

    20.  Insofar as it is relevant to these proceedings, section 44(2) of the Act provides:

    (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

    Note 1:For deceptively similar see section 10.

    Note 2:For similar services see subsection 14(2).

    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.

    21.  To make out this ground, it is thus incumbent upon the opponent to establish to my satisfaction that it owns or relies on an application or registration which:

    ·    has an earlier priority date that that of the opposed application, and is

    ·    made or registered in respect of similar services or closely related goods, and is,

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

13. Registration 975960 on which the opponent primarily relies has a priority date of 12 February 2003 which is earlier than that of the opposed application - 7 April 2004.  Additionally, I will note now that the trade marks of the parties are substantially identical according to the tests in, for example, Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1963) 109 CLR 407, where Windeyer J said at 414:

    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.

14. To my eye, the differences between the trade marks are immaterial and they are to all intents identical.

15. Further, it also matters little that the applied for trade mark was coined, as the applicant states, as an acronym from the expression Domestic Industrial Office Retail – there is no evidence before me that this is a recognized acronym, whether it is one in use which the applicant adopted or one that it created, or why the letters occur in the order they do and not, for example, as IROD.  The opposed trade mark does not present itself to the eye as an initialisation, and there is nothing about it to suggest that it is an acronym.[1]

    [1] I note that, by analogy with Waterbed Association of Retailers & Manufacturers Appn ( 1990) 20 IPR 605, (the W.A.R.M. application) this distinction as to whether the trade mark may be more obviously rendered as an acronym may not in itself be important if the source of the trade mark is manifest.

16. I turn now to the question of whether the services specified on the application are similar services to those of registration 975960 on which the opponent relies.

17. The specification of services of the opposed application is, “Real estate agents; sales, leasing and management.”  This specification is problematical for the following reasons.

18. It is convenient to first observe that, because of the placement of the semi-colon in the specification, the items ‘sales, leasing and management’ cannot be read as being qualified by the expression “real estate agents”.  Those items are thus unqualified and must be read as including, or having reference to, ‘all sales, all leasing, and all management’ – the claim thus includes services of an extremely broad nature and (because of the generality of the claim) includes many more specific services across most service classes within the International (Nice) Classification of Goods and Services.  I do not consider that the number or heading of the Class in which the application is filed qualifies the specification as only including the services of the application inasmuch as they are included in that Class.[2]  If goods or services were to be considered as being included within a specification only insofar as they were so qualified by the Class number or heading, the amendment of applications by the transfer of misclassified goods or services from one Class to another, or the addition of Classes to applications for goods which have been wrongly classified, would not be possible. 

    [2]See, Iceberg The Frozen Drink Company Pty Ltd v Chia Kim Lee Food Industries Pte Ltd [2001] ATMO 8 and Ofrex Ltd v Rapesco Ltd [1963] RPC 169.

19. Further, if one were to read the balance of the specification strictly, it would be observed that ‘real estate agents’ are unclassifiable since they are people and not services.  There is only one entry I can locate in the Australian Trade Mark Office’s on-line version of (and supplement to) the Nice Classification in which the word ‘agents’ appears – it is a local Office Determination finding that “Agents’ services [business management of actors, artists, authors, performing artists, photographers or writers]” occur in Class 35.  ‘Real estate agents’ are thus people rather than services.  At best, therefore, any remaining doubt that the expression ‘real estate agents’ within the specification might qualify the following words is set to rest; and, at worst, the expression ‘real estate agents’ is an empty statement within the specification of the opposed application and may, since it is not a classification error in placing a service into the correct Class, be incapable of remedy in terms of section 65 of the Act which specifies how applications may be amended.[3]

    [3] See the Federal Court approach to the amendment of material that affects the scope of monopolies which appears on trade mark applications – Woolworths Limited v BP plc (No 2) [2006] FCAFC 132.

20. For convenience, however, I will treat the defective expression as if it reads ‘real estate agency services’.

21. In view of the foregoing it is obvious that the opposition under section 44 must succeed for the following reasons.

22. The general and wide expression ‘sales, leasing, and management’ includes many of the specific services contained in the specification of the opponent’s registration 975960.  A few examples will suffice to illustrate this observation.  ‘Business management’ contained within Class 35 of the opponent’s registration is a subset of the wider, unqualified and more general claim, ‘management’ within Class 36 of the opposed application.  ‘Assorting for third parties of various leather goods, jewels, jewellery, timepieces, eyewear, stationery, pens, umbrellas, glassware, porcelain, sports articles, household linen, smokers' requisites, clothing and shoes (excluding their transport), enabling consumers to see and purchase the above goods conveniently in stores’[4] in Class 35 of the opponent’s registration is a subset of the wider and general claim ‘sales’ in the opposed application.  ‘Leasing of access time to telecommunications networks’ in Class 38 of the opponent’s registration is a subset of the general claim ‘leasing’ within the opposed application.

    [4] The Nice Classification includes a description of retail sales in Class 35, “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes;”

1. Thus, as far as the applicant’s services of ‘sales, leasing, and management’ are concerned, I must refuse to register the opposed trade mark as they include services in respect of which the opponent’s trade mark is registered.  I do not believe that it is appropriate to limit the services within the opposed application to those concerning real estate for reasons which will be come apparent.

2. It presently remains to be determined if the ‘real estate agency services’ hypothetically referred to in the opposed specification of services is similar to any of the services contained in the opponent’s specification.

3. Section 14 of the Act defines:

   (2)For the purposes of this Act, services are similar to other services:

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

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

4. Discussing ‘services of the same description’ in Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561 at 567, Burchett, Sackville and Lehane JJ said:

   Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered: s120(2)(c)? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120 (2) (c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (TM Act 1955), although the expression "services of the same description as [services in respect of which the trade mark is registered]'' was used in the earlier legislation: see TM Act 1955 ss 33 (2), 36 (1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592; at 606; 1A IPR 465 the High Court said this:

   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 Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. 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 or distribution they are regarded as belonging to the same  trade  ..."

5. Mr Kortian pressed his argument here in relation to what I postulate as ‘real estate agency services’ on the one hand and the ‘auction services’ specified in the opponent’s registration 975960 within Class 35 on the other.

6. The ‘auction services’ on which the opponent relies includes auction services of all kinds.  Relevant to this matter, the expression thus includes real estate auction services which have been determined to fall in Class 35.  Both ‘real estate agency services’ and ‘real estate auction services’ are usually offered by the one trader, to the same class of customer, for the same purpose, and involves the sale of the same thing – real property.  I also observe that similar signage is used upon properties by the one real estate agent whether or not they are to be sold at auction and that many real estate agents are auctioneers.  It follows that ‘real estate agency services’ and ‘real estate auction services’ are ‘services of the same description’ and that, if the application had correctly specified ‘real estate agency services,’ rather than ‘real estate agents’, the ground in relation to those correctly specified services would have been established.

7. Accordingly, the opponent has established its ground under section 44 of the Act in relation to all of the applied-for services.

8. It follows as a consequence that it is thus not necessary for me to consider whether the defects in the specification of services on the application are capable of remedy by amendment under section 65 of the Act.

9. The applicant has submitted evidence that suggests that the opposed trade mark has had some very minor use in Sydney – however, this evidence does not address the factors that are to be considered under subsection 44(3) which concern the honest concurrent user of the opposed trade mark, as discussed, for example, in In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

10. As the matter falls out, however, if subsection 44(3) was fully addressed in the applicant’s evidence, even if the applicant was entitled to the benefit of subsection 44(3), this would not preclude the operation of section 60.  The rule enunciated by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 96 means that, notwithstanding the existence of honest concurrent user in terms of subsection 44(3), the establishment of a ground under section 60 by an opponent would mean that the provisions of that subsection could not be applied to the application.

    Section 60

    42.  When this opposition was filed, Section 60 of the Act provided:

    60  Trade 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)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had 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 1:For deceptively similar see section 10.

    Note 2:For priority date see section 12.

11. Thus, to establish this ground of opposition, the opponent is required to satisfy me, on the balance of probabilities, that it has used a trade mark to the extent it has a reputation in Australia, such that because of that reputation in Australia the use of a substantially identical or deceptively similar trade mark in Australia by the applicant would confuse or deceive.

12. Initially I will re-iterate that it matters little whether the trade marks of the parties are rendered as DIOR or Dior.  The one is at least substantially identical to the other.

13. In order to make out this ground of opposition, the opponent need not rely on a registered trade mark and the tests in terms of section 44 concerning whether the goods and/or services of the parties are similar or closely related are not here applied – the sole test is whether, because of the reputation of the opponent’s trade mark, the applicant’s use of the (here) identical trade mark would be likely to confuse or deceive.  The various classifications of the opponent’s trade marks in the Nice Classification referred to by the applicant are thus not germane to my considerations.

14. Reputation is to be assessed in terms of the tests applied by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraphs 81 and 82:

    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?

15. Her Honour also quoted, at paragraph 85 of her decision, an earlier decision of the Registrar, where I said in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that  trade mark  and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a  trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks  with which [the] owner of the  trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

16. My assessment is that the trade mark of the opponent has a very strong reputation – strong enough to be, effectively, worthy of an entry in the Macquarie Dictionary because, I suspect, of the images of esteem, design and fashion associated with the trade mark.  It is thus placed in the company of such trade marks as VEGEMITE and ROLLS ROYCE as connoting the goods and/or services of one business, enterprise, or undertaking.  I note that with the latter example, ROLLS ROYCE, the reputation is remarkably strong notwithstanding a comparatively low number of cars sold under that trade mark in Australia each year.

17. The opponent’s DIOR trade mark is, I consider, in likewise position – the turnover and advertising figures are not large in themselves, but (and I do not wish to overstate this) the trade mark approaches a status, which, if not iconic, is idiosyncratic.  The word is very widely, if not universally, recognized in Australia and is associated with the opponent’s founder and Gallic fashion panache.

18. In considering the likelihood of deception or confusion resulting from the applicant’s use of the opposed trade mark I am to consider the following tests extracted from French J’s dicta at paragraph 50 of Registrar of Trade Marks v Woolworths [1999] FCA 1020:

    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.

    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.

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

    [The likelihood of deception or confusion] … 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."

19. Thus, while the applicant protests that it is a business with one employee, this is not what I am to consider – what I must consider is what the applicant can do with its trade mark.  It could, for instance, franchise its business and trade mark and open a branch in every city around Australia and/or the number of its employees could swell to several hundreds.  Equally, there is clear evidence that the applicant can, and does, use its trade mark in close association with the trade marks of other well-known fashion or jewellery houses, Cartier and Louis Vuitton.  I do not think, therefore, that the applicant can be heard to complain if I make due allowance for this possible usage in looking at “what the applicant might do if it obtains registration” as per Woolworths, above.

20. Further, while the concepts ‘deceive’ and ‘cause confusion’ have often been conflated, the word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’  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.

21. 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.

22. Ordinarily, it might be hard to envisage any reasonable risk of confusion arising from the use of the trade mark DIOR in the hands of a real estate agent, any more than in the hands of a plumber or a carpenter.  This, however, is not such a case.  The applicant’s demonstrated use of its mark is such as to satisfy me that its usage of the trade mark, if not actually contrary to law, would certainly cause confusion.

23. The lack of evidence of ‘confusion,’ as that word is used here in its technical sense, is unsurprising – it is a much simpler task to provide evidence of deception – the latter being the state of mind where the error in thinking as persisted to the point of a sales enquiry at least.  Complaints from customers might then be expected.  However, as regards ‘confusion,’ not many people would normally be likely to approach either of the parties to complain or remark that their minds have been mixed up or that they have been caused to wonder at a connection between them.

24. Additionally, I observe, the applicant, in juxtaposing the opposed trade mark with the trade marks CARTIER and LOUIS VUITTON in its brochure, might appear to be sensible to the likelihood of confusion and slow to dispel it.  This evidence, showing the Cartier and Louis Vuitton trade marks on buildings, also neatly illustrates the strong associative force in the opponent’s trade mark DIOR in relation to the opposed services once that is highlighted.

25. In summary, the opponent’s DIOR trade mark is exceptionally well-known.  The opponent is the only owner of DIOR trade marks on the register of trade marks, and the trade mark has warranted an entry in the Macquarie Dictionary.  The opponent’s trade mark is thus not only very well known, but it is also exclusively associated with the opponent, its business activities, and its reputation for design and fashion.  While it may seem a long step from the opponent’s core business of fashion items, designer goods, and design consultancy to ‘real estate services,’ the reputation, if not the notoriety, of the opponent’s trade mark and the exclusivity with which it is associated with the opponent, and the applicant’s association of its trade mark with other well known fashion trade marks CARTIER and LOUIS VUITTON, makes, in my consideration, confusion not only likely but inevitable in a commercial environment where fashion design houses are, as evidenced, stepping outside their core businesses and engaging in businesses such as hotels that are built, furnished and decorated to their design.

26. This is not to say that I consider that the opponent has an unrestricted monopoly on the trade mark DIOR in Australia – obviously there may be a great many goods and services where, if the trade mark is used normally by a person other than the opponent, the public would not wonder at, or infer, some kind of connection, endorsement, or license.

27. The opponent has established its ground under section 60 of the Act.

    Decision

    60.  Section 55 of the Act  provides:

    55 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.

    Note: For limitations see section 6.

1. I refuse to register application 996911.

   Costs

   62.  The opponent is entitled to its costs which I award against the applicant at the official scale.

   Iain Thompson
   Hearing Officer
   Trade Marks and Designs Hearings
   25 February 2008