Esprit International v Ilona Komesaroff

[1999] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Esprit International. to registration of trade mark application 723875 in the name of Ilona Komesaroff.

Background
This application was filed on 13 December 1996 by Ilona Komesaroff (the applicant) in Class 16 for registration of the trade mark ESPRIT DE VIE in respect of the goods:

Newspapers periodicals, books, pamphlets & magazines all relating to the care of hair and body and issues relating to beauty, health & lifestyle; but not including books pamphlets leaflets & printed matter relating to the education & training of business users or to the training of management staff and computer personnel and not including periodicals books pamphlets relating to the manufacture importation and wholesale & retail sale of clothing & clothing accessories

Thereafter, the application was advertised as accepted on 17 July 1997, subject to the endorsement:

The applicant has advised that the translation of the French words ESPRIT DE VIE appearing in the trade mark is SPIRIT OF LIFE.

On 16 Jan 1998, having sought and received extension of time in which to do so, Esprit International (the opponent) lodged Notice of Opposition to registration of the application.  Evidence was filed and served by the opponent and applicant as allowed by the regulations.

The issue came before me to be heard, as delegate of the Registrar, on 16 June 1999 in Canberra.  The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, patent and trade mark attorneys of Sydney.  The applicant was represented by Mr Tom Nelson of Law Partners in Melbourne who made his submissions by telephone.

Before I give my reasons, I will first summarise the evidence and the submissions of the parties' legal representatives.

The evidence
The evidence in support of the opposition consists of a statutory declaration and exhibits 1 - 10 by Ronald J Lehrman (the Lehrman declaration).  The applicant's evidence in answer comprises a statutory declaration by Ilona Komesaroff (the first Komesaroff declaration).  The applicant's evidence in reply consists of a statutory declaration by Clement William Martin (the Martin declaration).  The applicant's further evidence consists of statutory declarations (each with one exhibit) by Geoffrey S Beaumont (the Beaumont declaration), Sasha Hawes (the Hawes declaration) and Frank Breen (the Breen declaration).  The balance of the applicant's further evidence is a declaration by Ilona Komesaroff (the second Komesaroff declaration) with appendices A and B.

The Lehrman declaration
Mr Lehrman is assistant secretary of the opponent.  He gives details of the corporate structure of the opponent company and the ownership of the opponent's trade marks.  The deponent goes on to state that his company is a fashion and lifestyle company that designs, produces and markets a wide variety of casual fashion clothing, footwear and related items such as bedding, towels, carrying cases, handbags, purses, belts, wallets, eyewear and watches for women, men and children under their ESPRIT trade mark.  Mr Lehrman goes on to state that his company also designs, produces and markets other goods under the ESPRIT trade mark which include bath and shower gel, fragrances, shampoos and lotions, paper bags, portfolio cases, memo pads, gift boxes.  Exhibit 2 to the Lehrman declaration shows various samples and copies of advertising for paper products.

Mr Lehrman goes on to give details of the registrations and history of the opponent's trade marks in Australia, commencing with first use in 1982, and he gives details of the turnover and advertising in relation to goods sold under the trade mark.  Among the registrations of the ESPRIT and ESPRIT DE CORPS trade marks to which his declaration refers are:

Number          Mark               Priority date

1. ESPRIT          10/11/1981

Goods: Paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, pamphlets and leaflets, all relating to the manufacture, importation and wholesale and retail sale of clothing and clothing accessories; but not including books, pamphlets, leaflets and printed matter relating to the education and training of business users or to the training of management, staff, business and computer personnel

Number          Mark               Priority date

1. 
   09/12/1986

Goods: Paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, pamphlets and leaflets, all relating to the manufacture, importation and wholesale and retail sale of clothing and clothing accessories; but not including books, pamphlets, leaflets and printed matter relating to the education and training of business users or to the training of management, staff, business and computer personnel

The deponent then avers to the considerable use of the ESPRIT trade mark throughout the world.  It is not clear from the declaration when first use of the ESPRIT trade mark occurred, but it is plain that this was in the United States by or during 1964 - when the trade mark was first registered in that country.  Since then, use of the trade mark by the opponent has spread around the world with annual turnover reaching close to one billion dollars a year by 1995.

While Mr Lehrman next attests to his opinions about the opposed application and the merits of his company's opposition to the application, these are ultimately statements only of his opinion and are issues that I must decide in these reasons.

The First Komesaroff declaration
I will deal with this declaration in some detail since the issues to which it avers are central to both the way in which this opposition turns out and some fundamental misapprehensions on the part of the applicant.  I have rearranged the order of the matters to which Ms Komesaroff attests to impose a more logical sequence on it.

Ms Komesaroff states that she is a company director and editor.  Currently, she is a director and shareholder of a company called Nezjac Pty Ltd.  Since 1985, this company has produced a quarterly magazine called HB&B, the subject matter of which is health, beauty and lifestyle.  Contributing writers include members of the medical, health and beauty professions.  The magazine is distributed through newsagents and supermarkets, Qantas domestic flights, Qantas Club Lounges and on Lauda International flights in and out of Australia.  There is also a large bank of subscribers.

Ms Komesaroff, with the other directors of Nezjac Pty Ltd, had a meeting which I presume to have been in 1996 (although this is not expressly stated) at which they resolved to change the name of the magazine to something more distinctive.  The name that was selected from a range of possible alternatives was ESPRIT DE VIE, meaning 'spirit of life'.  Why this name was selected is not clear from the declaration.

Prior to the lodgement of this application, and following searches of the trade marks register, Ms Komesaroff became aware of various registered ESPRIT and ESPRIT DE CORPS trade marks.  Ms Komesaroff does not say who carried out the search, whether these trade marks she became aware of are the trade marks of the opponent, their registered numbers, what classes they were in or append the search to her declaration.  I can only infer, therefore, that the registered trade marks were those of the opponent.

In the chain of events, the deponent next sought to ascertain whether these trade marks had ever been used by the opponent.  To this end she "made several phone calls to the offices of Esprit in Melbourne and on each occasion was told that the trademark had never been used on such goods".  The specific goods in relation to which the declarant made inquiries are not apparent from the declaration nor are the people that she spoke with, nor their status in the opponent company and, again, I can only infer that the goods she made inquiries of were magazines in Class 16.  Ms Komesaroff states that she made further enquiries in the trade that confirmed the trade mark had not been used on such goods.  (Again, the fine detail of these enquiries is not clear).

Having assured herself of this to her own satisfaction, Ms Komesaroff lodged the trade mark application with the specification of goods as it now stands. 

Ms Komesaroff attests that her magazine does not contain any items or articles relating to clothing or fashion.  There is no fashion segment and there is no advertising of clothing.

As regards use of the opponent's trade marks, the first Komesaroff declaration also makes mention of the Lehrman declaration, stating that the latter declaration nowhere attests to use of the trade marks ESPRIT or ESPRIT DE CORPS in relation to magazines

Exhibited to the first Komesaroff declaration is a copy of the proposed new masthead for the new Nezjac Pty Ltd magazine.  This new masthead, states Ms Komesaroff is in no way similar to the way in which the opponent's trade mark appears in use.  The declarant goes on to make a detailed comparison of the trade marks as they appear, or are proposed to appear, in use - not as filed or registered.  I will return to this issue later in my reasons.

I will observe that I am not completely satisfied this declaration is one to which I should attach a great deal of weight.  The declarant states that HB&B does not advertise clothing; however, the front cover of the magazine submitted in evidence shows a model wearing a blouse which is promoted on the editorial page as being by Dolce & Gabbana (DAG).  It is my understanding that the shirt is provided by DAG in exchange for the promotional endorsement on the editorial page.  I must conclude that either this is a form of advertising or, at the very least, a product endorsement.  Similarly, the advertisement of a perfume on page 35 of the magazine advertises the trade source of the silk and lace garments worn by the model.  There are other references to clothing or clothing accessories such as sunglasses throughout the magazine, albeit not so overtly.  While I do not think that the declarant has been economical with the truth, it is clear she has been careless and, as I have inferred elsewhere above, less than full in her explanations.  Thus, I do not disregard her declaration but read it in the light of these observations and give it weight accordingly.

The Martin Declaration
Mr Martin is managing director of Pacific Publication Pty Ltd (PP).  PP publish a number of magazines, many of which are household names.  Mr Martin states that he has 30 years of experience in newspaper and magazine management.  He declares that he and his company have no direct connection with the opponent.  He says that he is aware of the ESPRIT trade mark as a brand name for clothing and clothing accessories.  Mr Martin attests that it is his belief that members of the public in Australia on encountering a magazine which deals with health and lifestyle issues under the title ESPRIT DE VIE will associate it with the ESPRIT brand name and clothing company which trades under that brand name.  Finally, Mr Martin avers that it is his opinion that the words ESPRIT DE VIE and ESPRIT are confusingly similar.

I will mention here that Tom Nelson, for the applicant, was critical of the Martin declaration.  He observed that undoubtedly PP receives advertising from the opponent and as such there is a "direct connection" between this declarant, or his company, and the opponent.  However, I think that it is more probable that there is an advertising company interposed between PP and the opponent.  Further, I think that it is quite unlikely that the opponent could find anyone with Mr Martin's experience, background and position (which are relevant) who could not be open to the same criticism.

The Beaumont, Hawes and Breen declarations
While these declarations are not 'pro forma' declarations, they all use the same wording and format.  They are 'word processor' declarations with the variables inserted being the declarants' names, positions, experience in their fields and so on.  I will consequently deal with them as a unity except as otherwise appropriate.

Mr Beaumont is managing director of Beaumont & Associates, an advertising and marketing company.  He is a Fellow of the Australian Marketing Institute.  He states that he has worked in the cosmetic and associated industries for 23 years and has been a marketing director in the field of cosmetics and fragrances for over 15 years.

Sasha Hawes has been a fashion and beauty photographer based in Melbourne for the past 20 years and has had photographs published in "a vast amount of magazines" both within Australia and internationally.  Sasha Hawes has had over 10 years experience working as a make-up artist and consultant and 20 years in the women's retail fashion industry including management of several retail shops in Melbourne including Digby's, Seiko and Melissa M.

Frank Breen is managing director of Guerlain Oceania Australia Pty Ltd, a position that he has held for nine years.  He states that he has a comprehensive knowledge of the beauty and fragrance market, especially in Australia and New Zealand and an extensive familiarity with fashion and beauty magazines both within Australia and overseas.  Mr Breen's company advertises its products in most mainstream glossy fashion and beauty magazines including Vogue, Elle, Marie Claire and New Woman.

These declarants state that they are aware that a trade mark application has been made by Ilona Komesaroff in respect of a health and beauty magazine and they have been shown the applicant's proposed trade mark ESPRIT DE VIE and annex a copy of this to their declarations.

The declarants state that they are familiar with the Esprit logo owned by Esprit International and that they are aware that it is associated with fashion and clothing.

The declarants state that it is their belief that members of the public in Australia or elsewhere, when purchasing and/or reading the magazine which deals with health beauty and lifestyle issues under the title ESPRIT DE VIE will in no way associate the magazine with the ESPRIT brand name or the clothing products sold under that brand.

Mr Stevens submitted, for the opponent, that there are a great many problems with these declarations.  I agree.  Firstly, it is obvious that these declarants were shown the ESPRIT DE VIE trade mark, not as applied for but, as it is proposed to be used.  To this extent, their declarations are confined to their opinions of this version of the trade mark (which is not the trade mark here under consideration).

I will go further than Mr Steven's criticisms and observe that these declarants have confined themselves to stating their opinion in relation to the actual goods produced by the applicant whereas the specification of goods of the opposed application is much broader.

Further, the declarants have confined themselves and their declarations to their knowledge of the opponent's trade mark as it appears in use on clothing - not to the opponent's trade marks as they are registered in Class 16.

It is apparent also that the first of these declarants, and the first Komesaroff declaration, refer to differing versions of the proposed trade mark to that exhibited to the latter two declarations.  In these last two, the words ESPRIT DE VIE have the words "Australian Health & Beauty Magazine" in very small print underneath them: in the first of these 'word processor' declarations those words are in larger print; and, in the first Komesaroff declaration, the descriptive words appear above the words ESPRIT DE VIE.  Thus, there are in evidence three slightly differing versions of the proposed trade mark.

In the light of all these factors, I regard these declarations as being of very low probative value.

The Second Komesaroff Declaration
Here the declarant criticises the Martin declaration.  Ms Komesaroff refers to the Martin declaration and says that, because of an example of ESPRIT advertising (annexed to her declaration) in one of the magazines produced by PP, the Martin declaration that his company had no connection with the opponent is incorrect and misleading.  I observe again that the Martin declaration stated that his company had no direct connection with the opponent and I am prepared to accept that.

The submissions
While Mr Stevens made submissions couched in terms of sections 43, 44 and 60 of the Trade Marks Act, I feel that this matter can be best decided in terms of section 44 and will confine my summary of the submissions to that section.

In short, Mr Stevens argued that the trade marks involved here, particularly those of the opponent that I have listed above, are deceptively similar to the applicant's trade mark and the goods involved here are of the same description if not the same goods.  While Mr Stevens argued strongly that I should consider the opponent's registrations in their totality - including the registrations for clothing and perfumery and cosmetics - I do not think that this course is appropriate.  As I understand his submissions, this course would have me consider the opponent's class 16 registrations in the light of the registrations for clothing, perfumery and cosmetics.  If this course were to be generally adopted, the effect would be to introduce uncertainty about the breadth of existing multiple registrations or exactly how they might qualify each other.  It would make searching the Register a particularly fraught process for prospective applicants.

Unfortunately, Mr Nelson, for the applicant, concentrated virtually his whole submission under section 44 on the marketplace realities - not the trade marks as registered or applied for. I will observe, however, that he came late to the issue and may have felt confined by the evidence that the applicant had earlier submitted. Mr Nelson focussed on the applicant's proposed trade mark - not the trade mark as lodged. He also made argument based on the opponent's trade marks as they appear in the marketplace, not as they are registered. Mr Nelson further concentrated his contentions on the goods of the applicant as they will appear in the marketplace - not the specification of goods for which the applicant has applied. He then went on to suggest that the opponent's trade mark registrations in Class 16 were not relevant since they were unused.

Discussion
It is quite obvious from the applicant's evidence and submissions that she has a fundamental misapprehension of the nature of the considerations that I must, as delegate of the Registrar, apply under section 44 of the Act. The applicant has concentrated in its evidence and thrust of its arguments on what I have previously termed 'the marketplace realities' - however, these issues are largely irrelevant to these particular considerations.

To clarify the issue for the applicant, I adapt to the present matter a passage in the judgment of Evershed J in the case of Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101, making appropriate adjustments to the present trade marks and forum:

… is the [tribunal] satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion among a substantial number of persons; and (b) under s 12: assuming user by the appellants of their marks ESPRIT and ESPRIT DE CORPS in a normal and fair manner for any of the goods covered by the registration of their mark (and including particularly goods also covered by the proposed registration of the mark ESPRIT DE VIE), is the [tribunal] satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the respondents also use their mark ESPRIT DE VIE normally and fairly in respect of any goods covered by their proposed registration.

In other words, what I am to assume (irrespective of what is happening in the marketplace) is that the opponent is using its registered trade marks and that use is for all of the goods for which it is registered in respect of the registrations which the opponent alleges conflict with those goods of this application.  What I am also to assume is that the opponent may be making a use of its trade mark in any number of particular get-ups or differing type-faces - this particularly applies to the plain type-face registration 367913 in Class 16 of the word ESPRIT.

It is curious that the applicant must have concluded that her proposed registration of the hand printed words ESPRIT DE VIE would have captured the get-up in her proposed use of the trade mark.  But she has not made the next logical steps and extrapolated that not only could the opponent's plain type-face registration be presented in exactly the same proposed type-face, but also that the applicant's hand printed words ESPRIT DE VIE may encompass the particular rendering of the word ESPRIT in registration 456844, above.

Thus, it must follow that while evidence (relating to unused trademarks) in the form of explanation of the market-place and opinion as to whether concurrent use of the trade marks at issue would confuse or deceive may be of some assistance to the delegate of the Registrar, that evidence must relate to the trade marks and goods or services as filed or registered.

Reasons
Section 44 allows (in so far as is relevant to these proceedings):

Identical etc. trade marks

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.

Definition of deceptively similar

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.

Definition of similar goods and similar services

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

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

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

(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.

Definition of priority date

12. The priority date for the registration of a trade mark in respect of particular goods or services is:

(a)  if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

(b)       if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

The issues that I must assess are thus:

· whether the trade marks at issue are substantially identical or deceptively similar;

· whether the goods at issue are closely related; and,

· the opponent's trade marks have an earlier priority date than the instant application

Substantial Identity/Deceptive Similarity

The classic statement of the tests of whether trade marks are substantially identical or deceptively similar is that of Windeyer J in The Shell Co. Of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407, at 415 to 416:

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) 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.

(…)

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

In the light of the former test, I think that there is little doubt that the trade marks at issue are not substantially identical.  The question of whether the trade marks are deceptively similar is a little more difficult.

On the question of deceptive similarity Justice Parker in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

Leaving aside the question of whether the goods at issue are closely related, it is apparent that the overlap between the applicant's and opponent's goods are "newspapers periodicals, books, pamphlets & magazines all relating to the care of hair and body and issues relating to beauty, health & lifestyle," on the one hand and "paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, pamphlets and leaflets, all relating to the manufacture, importation and wholesale and retail sale of clothing and clothing accessories" on the other.

A primary mode of sale of magazines and periodicals, which are included in both sets of goods, is through newsagents.  In such shops, magazines and periodicals are generally sold from sloping racks in which the tops of the lower magazines overlap the bottoms of magazines on the shelves above them so that only the mastheads of the magazines on the upper shelves are seen.  If the mastheads of the upper magazines run over two lines, and if the magazines are not on the bottom shelf, the entire masthead might not be seen by the purchasing public.  Notwithstanding this, the racks in newsagents are frequently disordered so the mastheads are partially obscured.  In a way, the situation is somewhat analogous to that in A. and F. Pears Ltd v Pearson Soap Co Ltd (1925) 37 CLR 340 where the goods in question were bars of soap. Consequently, I believe that it is quite likely that, in the environment that of a newsagent's shop, these trade marks, if used as mastheads, would be confused with each other.

Magazines are not expensive items.  Typically, they range in price from $5 to $10:  accordingly, they are not the sorts of items that people take much time or care in purchasing: LANCER Trade Mark Application [1987] RPC 303, which involved the trade marks LANCER and LANCIA in respect of automobiles.

It is true that the trade marks ESPRIT and ESPRIT DE VIE may have differing meanings.  However, I believe that these meanings will not be foremost in the minds of people who are casually shopping in the newsagents for low priced items or, if the DE VIE part of the applicant's trade mark is obscured (or is on a second line), be apparent at all.

I have considered the declarations put in by the applicant to support its position that the trade marks at issue are not deceptively similar.  However, this consideration is coloured by my previous observations of the merits of the declarations.

Taking these factors into account, I consider that the trade marks ESPRIT and ESPRIT DE VIE are, in the context of these goods and the relevant market, deceptively similar.  For the sake of completeness, I observe that if the applicant had lodged the trade mark in the form in which it was proposed to be used, my finding would have been identical.

Closely related Goods
The applicant's goods are specified as:

Newspapers periodicals, books, pamphlets & magazines all relating to the care of hair and body and issues relating to beauty, health & lifestyle; but not including books pamphlets leaflets & printed matter relating to the education & training of business users or to the training of management staff and computer personnel and not including periodicals books pamphlets relating to the manufacture importation and wholesale & retail sale of clothing & clothing accessories

The opponent's goods are specified as:

Paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, pamphlets and leaflets, all relating to the manufacture, importation and wholesale and retail sale of clothing and clothing accessories; but not including books, pamphlets, leaflets and printed matter relating to the education and training of business users or to the training of management, staff, business and computer personnel

For the sake of clarity, I will focus my discussion on the applicant's goods of interest - beauty, health and lifestyle magazines.  The goods most closely matching these within the opponent's specification are magazines relating to the manufacture, importation and wholesale and retail sale of clothing and clothing accessories - the term 'magazines' being embraced by the general words 'printed matter' or 'periodicals' elsewhere in the specification.

As a brief aside before I proceed, I think that it is apparent that the applicant believed that the exclusion in the opponent's goods was premised upon a pre-existing registration in Class 16.  This explains the applicant's belief that possible conflict with the opponent's registration could be resolved in a similar manner.  However, I believe that it is more likely that the exclusion in the opponent's goods is predicated on avoiding a conflict with a prior application or registration in Class 41 that embraces education and training.

In determining whether these goods are goods of the same description, the tests outlined in Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at 372, by the Assistant Controller, apply:

In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application Romer J classified these various factors under three heads, viz the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”.

Once the above considerations are applied to the goods in question, I think that it must be concluded that they are, if not the same goods, goods of the same description - and hence caught by the expression 'similar goods' within section 44. Both magazines are concerned with the personal appearance, adornment and lifestyle of the purchaser; both are produced by the same types of publishing house; both commonly go onto the market through the same trade channels or distributorship; both are sold through newsagents from a close proximity on the display racks to the same class of customer, and, those engaged in the production and distribution of such magazines are regarded as being in the same trade.

For the sake of completeness, I note that both of the opponent's relevant registrations have a priority date earlier than that of this application.

Decision
It follows that I must refuse, subject to any appeal from this decision, to register application 723875 because the trade mark is deceptively similar to the relevant registered trade marks of the opponent which have an earlier priority date and the goods, if not the same, are of the same description.

Costs
Having been successful, the opponent is entitled to its costs which I so award.

Ian Thompson
A/Hearing Officer

13 Jul 1999