Hachette Filipacchi Presse v Helen Huynh and Elle Derm Australia

This matter concerned oppositions filed by Hachette Filipacchi Presse (the Opponent) against two trade mark applications by Helen Huynh and Elle Derm Australia Pty Ltd (the Applicant). The dispute arose from the Applicant's proposed registration of trade marks for skincare products, which the Opponent contended were deceptively similar to its internationally recognised "ELLE" trade mark used in relation to beauty and fashion magazines and goods. The hearing was conducted by a delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's proposed trade marks, "ELLÉ" and "ELLÉ DERM" (with additional descriptive words), were deceptively similar to the Opponent's registered "ELLE" trade mark, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). The Opponent also raised grounds under sections 42 and 60, but the delegate considered it necessary to determine only the section 44 ground. The relevant dates for assessing the trade marks were the filing dates of the applications, 4 July 2018 for the 157 Trade Mark and 25 June 2018 for the 161 Trade Mark.

The delegate reasoned that the word "ELLE" was the dominant and most distinctive element in both the Opponent's and the Applicant's trade marks. The delegate was not persuaded that the accent on the "é" in the Applicant's marks would alter the pronunciation or perceived meaning for the average Australian consumer, nor that the additional words "DERM" and "FOR SCIENTIFICALLY BRIGHTER SKIN" were sufficiently distinctive to overcome the similarity with the "ELLE" mark. The delegate found that these additional elements primarily indicated the purpose or nature of the goods and did not detract from the distinctiveness of the "ELLE" element. Consequently, the delegate was satisfied that both of the Applicant's trade marks were deceptively similar to the Opponent's trade mark under section 44.

As the Opponent had established a ground of opposition under section 44, the delegate, acting as the Registrar, refused to register both the 157 Trade Mark and the 161 Trade Mark. The Applicant was also ordered to pay the Opponent's costs.