Hachette Filipacchi Presse v Kind to Me Pty Ltd

[2024] ATMO 204

TRADE MARKS ACT 1995

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

Re:Opposition by Hachette Filipacchi Presse to registration of trade mark application number 2204266 (class 3) - ELLE & HARPER - in the name of KIND TO ME PTY LTD

Delegate:

Sheona Robertson

Representation:

Opponent: Spruson & Ferguson

Applicant: W3IP Law Pty Ltd

Decision:

2024 ATMO 204

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 42(b), 44 and 60 – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Hachette Filipacchi Presse (‘Opponent’) to registration of the trade mark the subject of application number 2204266 (‘Application’) in the name of KIND TO ME PTY LTD (‘Applicant’). The relevant details of the Application are as follows:

Trade Mark:

ELLE & HARPER (‘Trade Mark’)

Filing Date: 

25 August 2021 (‘Relevant Date’)

Goods:

Class 3: Body moisturisers; Cosmetic moisturisers; Moisturising lotions (cosmetic); Moisturising preparations (cosmetic); Bath preparations, not medicated; Cosmetic bath products; Bubble bath preparations; Bubble bath; Hair care preparations; Hair care products; Hair cosmetics; Hair conditioners; Conditioners for treating the hair; Bath oils, not medicated; Bath oil concentrates, not medicated; Baby oil; Body oil; Oils for babies; Cosmetic oils; Essential oils; Blended essential oils; Essential oils for personal use; Essential oils for cosmetic purposes; Facial moisturisers (cosmetic); Facial oil; Facial care products (cosmetic); Facial preparations (cosmetic); Facial packs for cosmetic purposes; Facial cleansers; Cleansing facial masks; Facial masks (cosmetic); Non-medicated moisturisers; Babies' bath preparations (non-medicated); Lotion for the eyes (non-medicated); Non-medicated balms; Non-medicated creams for the eyes; Non-medicated lip balms; Non-medicated baby care products; Non-medicated preparations for the care of babies; Non-medicated massage preparations; Non-medicated preparations for sun screening; Sun screen preparations (cosmetics); Sun-screening preparations; Bath shampoo; Hair shampoo; Shampoos; Shampoos (non-medicated); Baby shampoo; Soap free washing emulsions for the body; Body powder, not medicated; Cosmetic powder; Serum (cosmetic preparations); Beauty masks; Cosmetic eye gels; Toothpaste; Hand cleansers; Liquid preparations (non-medicated) for cleaning the hands; Cleaning preparations for the hands; Non-medicated cream for the hands; Hand cream; Babies' body milks; Baby lotions, not medicated; Cocoa butter in the form of creams; Cocoa butter in the form of lotions; Vaginal washes for personal sanitary or deodorant purposes; Massage oils, not medicated; Cologne; Fragrance preparations; Fragrances

(‘Goods’)

2. The Application was examined as required by s 33 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 January 2022.

3.     The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 23 March 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 April 2022. The Applicant filed a Notice of Intention to Defend on 3 June 2022.

4.     The Opponent filed the following evidence in support of its opposition:

·Declaration made on 2 September 2022 by Céline Coevoet, Trade Mark Legal Manager of the Opponent’s Industrial Property Department, with Exhibits 1 to 28 (‘Coevoet 1’).

5.     The Applicant filed the following evidence in answer:

·Declaration made on 12 December 2022 by Hannah Tran, Chief Executive Officer of the Applicant, with Exhibits HT-1 to HT-4 (‘Tran’).

6.     The Opponent filed the following evidence in reply:

·Declaration made on 13 February 2023 by Céline Coevoet with Exhibits 1 to 3 (‘Coevoet 2’).

7.     Once the period for filing evidence had ended, a request for hearing by way of written submissions was filed. The Opponent filed its written submissions, written by Francesca Colubriale and Fabiola Dos Santos of Spruson and Ferguson, on 4 July 2024 (‘Opponent’s Submissions’). The Applicant did not file any written submissions. However, the evidence filed by the Applicant contains statements in the nature of submissions rather than evidence. Such statements will be treated as submissions for the purpose of this decision.

8. This matter has been allocated to me as a delegate of the Registrar of Trade Marks for a decision based on the written record. I have decided this matter as required by s 55 of the Act on the basis of the materials identified above.

Grounds of opposition, onus and standard of proof

9. The SGP nominates grounds of opposition under ss 42, 44, 58A, 59 and 60 of the Act. The Opponent advised in the Opponent’s Submissions that it was not pressing the s 58A and s 59 grounds of opposition.

10. In the Opponent’s Submissions the Opponent identified s 62A as an additional ground of opposition. This ground was not identified in the SGP and at no stage did the Opponent seek to amend the SGP under reg 5.12 of the Trade Marks Regulations 1995 (Cth) to raise s 62A as an additional ground of opposition. Consequently, I have only considered the grounds of opposition under ss 42, 44 and 60 which were identified in the SGP and pressed in the Opponent’s Submissions.

11.    The onus of establishing at least one of the grounds of opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and

Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

and Edelman JJ).

12.    The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and priority date of the Trade Mark.

Evidence

Opponent’s evidence

13.    The Opponent is a French fashion and beauty company and the owner of the ‘ELLE’ trade mark, which has been used internationally as the name of a fashion and beauty magazine first published in 1945. The Opponent is a wholly owned subsidiary of the French media conglomerate Lagardère Group.

14.    At the time of filing the opposition, the Opponent was the owner of the registered trade marks in Australia listed in Annexure A to this decision (‘Opponent’s Trade Marks’), which have an earlier priority date than the Trade Mark.

15.    The ELLE magazine is “principally a fashion and beauty magazine with a strong focus on women’s issues, fashion, beauty and lifestyle themes”.[3] Coevoet 1 claims the ELLE magazine ranks number one internationally for its advertising market share. Readership of the ELLE magazine is highest amongst professional, highly educated, wealthy, fashion-conscious women.[4]

[3] Coevoet 1, [7].

[4] Demographics provided in Exhibit 5 to Coevoet 1.

16.    The ELLE media brand encompasses 45 international magazine editions, magazine supplements and spin-offs (including ‘Elle Decoration’, ‘Elle Girl’ and ‘Elle Travel’), 30 websites, newsletters, mobile apps, the ELLE Beauty Awards, the ELLE Style Awards and television programs. Exhibit 6 to Coevoet 1 contains extracts from the “ellearoundtheworld.com” website (‘ELLE Global Website’) including a timeline of international expansion of the ‘ELLE network’, which includes more than 40 countries across Europe, North America, South America and the Asia Pacific. Coevoet 1 claims an international readership of approximately 21 million and global sales in excess of 6 million copies each month.

17.    The French edition of the ELLE magazine has been distributed to Australia since 1969. Exhibit 2 to Coevoet 1 contains French language documents which are purported to contain global distribution figures for the French edition of the ELLE magazine, including to Australia, between 1993 and 2021.

18.    The UK and US editions of the ELLE magazine have also been distributed in Australia since at least 1991. Exhibits 3 and 4 to Coevoet 1 detail international distribution of the US and UK editions of the ELLE magazine, including to Australia. Total international sales for the US edition between 1993 and 2010, and 2014 to 2020, numbered in the tens of thousands annually. International distribution of the UK edition and associated spin-offs between 2009 and 2020 numbered in the hundreds of thousands per year.

19.    The Australian edition of the ELLE magazine was first published in February 1990 and was heavily promoted, including by way of national television, radio, magazines and newspapers.  Examples of articles and media schedules for promotion of the Australian ELLE magazine are contained in Exhibits 7 and 8 to Coevoet 1. In 2002 the Australian edition of ELLE magazine was discontinued, before being relaunched in 2013 in both digital and print form. The relaunch was accompanied by substantial marketing activity. Press articles relating to the relaunch are shown in Exhibit 10 to Coevoet 1. Exhibit 9 to Coevoet 1 includes information regarding the circulation, approximate revenue and total promotional expenditure in relation to the Australian edition of the ELLE magazine between the years 1999 to 2002. The figures provided are substantial. It is declared that monthly readership of the relaunched Australian magazine was over 300,000 per month.

20.    Exhibit 28 to Coevoet 1 is a webpage extract from 2016 showing ELLE was the winner of Australia’s Cover of the Year at the Australian Magazine Awards in 2015.

21.    The Opponent’s use of the ELLE mark has expanded to goods such as clothing, footwear, jewellery, leather goods and bags, perfumes, cosmetics, beauty products and hair accessories. The Opponent has approximately 180 licensees worldwide in the fashion and beauty industry. Exhibit 11 to Coevoet 1 contains invoices issued by the Opponent’s licensee to an Australian distributor for thousands of units of eau de parfum and body mist in 2020 and 2021. Exhibit 12 is a summary of wholesale figures relating to thousands of units of eau de parfum, body lotion and body mist sold into various countries, including Australia, by another of the Opponent’s licensees between April and June 2021.

22.    In 2007 the Opponent licensed the ELLE trade mark to Yves Saint Laurent (‘YSL’) worldwide for perfume, eau de toilette, perfume waters and cosmetics such as creams, lotions, gels and deodorants. According to Coevoet 1 the YSL products were widely advertised in Australia. Exhibit 13 to Coevoet 1 is a summary of a media campaign relating to the YSL perfume and cosmetic products in Australia during February and October/November 2008 for advertising on pay television, outdoor panels in cities and online on news websites.

23.    Exhibit 14 to Coevoet 1 is an advertisement for the YSL ‘elle’ perfume published in the December 2008 edition of the UK Elle magazine, which was also distributed in Australia. The word ‘elle’ is emblazoned across the advertisement in stylised lettering. A photograph of the perfume bottle featuring large overlapping letters ‘YSL’ underscored by the word ‘elle’ and, in smaller font, the words ‘YVES SAINT LAURENT’. The bottom of the advertisement reads ‘elle. the new fragrance YVES SAINT LAURENT’.

24.    Exhibit 15 to Coevoet 1 are extracts from the US YSL beauty products website ( in 2008 and 2020 and the Australian equivalent ( dated to 2020 showing advertisements for the YSL ‘elle’ fragrance, shower gel and body lotion. Product images on the US website show the word ‘elle’ on bottles of products underneath the YSL branding. Although the word ‘ELLE’ appears in the description of the products on the Australian website it is not visible on the products themselves.

25.    Exhibit 16 to Coevoet 1 contains evidence of sales of YSL ‘elle’ eau de parfum and eau de toilette products to Myer and David Jones stores between November 2013 and January 2014. Exhibit 17 to Coevoet 1 provides annual turnover figures for ‘elle' cosmetic and beauty products sold by the Opponent’s YSL licensee in Australia between 2009 and 2019.

26.    In 2018 the Opponent entered into a license agreement with an Australian company, The Giving Brands Company (‘Giving Brands’) for the use of the Opponent’s ELLE trade mark in relation to colour cosmetics, skin care products and related accessories. Pursuant to the agreement, the holding company of Giving Brands approved the design, manufacture and retail of product ranges for planned release in 2019. Exhibit 18 to Coevoet 1 contains a heavily redacted copy of a license agreement dated September 2018 between the Opponent and Giving Brands in relation to use of the ELLE trade mark alone or in association with the word ‘KIDS’. Exhibit 19 to Coevoet 1 is a copy of an ASX announcement relating to approval granted to Giving Brands to launch cosmetics and skincare products under the ranges ‘ELLE Colour Cosmetics’, ‘ELLE Kids’ and ‘ELLE Baby’ in a number of countries, including Australia, across more than 85 individual product lines.

27.    Exhibit 20 to Coevoet 1 is a copy of an article on the website dated June 2019 relating to the launch of the ELLE Colour Cosmetics range. Exhibit 21 is a product information sheet from Giving Brands for the ‘ELLE Colour Cosmetics’, ‘ELLE Kids’ and ‘ELLE Baby’ product ranges. It is clear from the product images that the word ‘ELLE’ features prominently on the product packaging for each product. The product information sheets are not dated. Exhibit 25 includes extracts from the Australian websites ELLE Baby (ellebabybathcollection.com.au), ELLE Kids (ellekidsbathcollection.com.au) and ELLE Makeup (ellemakeup.com.au) containing images of ELLE branded products. The ELLE makeup products are clearly branded with the ELLE trade mark, while the ELLE Kids and ELLE Baby products are labelled with the ELLE trade mark in conjunction with the words ‘Kids’ and ‘Baby’ respectively. Exhibit 22 to Coevoet 1 is a summary of the revenue figures relating to the sale of ELLE branded beauty and cosmetic products by Giving Brands in Australia in 2020.

28.    In addition to the Opponent’s Trade Marks, the Opponent is the owner of trade mark registrations in Australia with priority dates after the Relevant Date, as well as an extensive global portfolio of trade marks containing or consisting of the word ELLE, such as ELLE DECO, ELLE GIRL and CAFE ELLE. Exhibits 23 and 24 to Coevoet 1 contain details of the Opponent’s trade mark applications and registrations in Australia and internationally.

29.    The ELLE brand has a moderate following on social media, in particular on Facebook and Instagram where followers of the ELLE Australia accounts numbered in the hundreds of thousands as of the Relevant Date. The Opponent has maintained numerous accounts on these platforms, as well as numerous accounts on other social media platforms including Facebook, Instagram, Twitter (as it was formerly known), Pinterest and YouTube. Exhibit 25 to Coevoet 1 contains screenshots of the Opponent’s ‘elleparfums’ Instagram account, which includes images of ELLE branded perfumes and related products.

30.    The Opponent’s events include the ELLE International Beauty Awards, where beauty editors from ELLE magazines around the world select their favourite make up, face care, body care, hair care and ‘green care’ products, and the ELLE Style Awards which honour excellence in fashion and style. Exhibit 26 is an extract from the website elleinternationalbeautyawards.com providing information about the ELLE International Beauty Awards and photographs relating to the award ceremonies between 2013 and 2021.

31.    The ELLE trade mark has been promoted in Australia by way of advertisements on buses, trams, bus shelters, billboards and in airports and shopping centres. Exhibit 27 to Coevoet 1 provides two examples of these advertisements on, respectively, a bus shelter and a tram.

32.    Coevoet 2 contains, respectively:

·Exhibit 1, a list of class 3 goods from the fifth edition of the Nice Classification discussed below, in response to the Applicant’s assertion that the Opponent had not provided any information regarding the overlap between the Applicant’s and the Opponent’s goods in class 3.

·Exhibits 2 and 3, clearer versions of exhibits earlier filed as part of Coevoet 1, in response to the claim in Tran that in many instances exhibits to Coevoet 1 were illegible.  

Applicant’s evidence

33.    The Applicant’s business is that of supplying non-medicated cosmetics and toiletry preparations to customers in Australia. The Applicant’s company was registered in July 2021. Exhibit HT-1 to Tran is a company extract from the Australian Securities and Investments Commission website.  

34.    The ‘ELLE’ and ‘HARPER’ elements of the Trade Mark are Ms Tran’s daughters’ first names.

35.    According to Tran, the Trade Mark proceeded directly from examination to acceptance without any of the Opponent’s Trade Marks having been cited as an objection to registration. Exhibit HT-4 provides limited examples of Australian trade mark registrations in class 3 which include the name ‘ELLE’ in conjunction with some other prefix or word(s) as evidence that “multiple trade marks have been accepted in class 3 which use the word Elle”.[5]

[5] Tran p 7.

36.    Exhibit HT-2 to Tran contains extracts from the Australian trade marks database for the Opponent’s registered trade marks in class 3. Exhibit HT-3 is a copy of the Opponent’s Statement of Grounds and Particulars.

Discussion

Section 44

37. Section 44 of the Act relevantly provides:

(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.

38. In the SGP, the Opponent identifies the Opponent’s Trade Marks set out in Annexure A to this decision as the basis for the s 44 ground of opposition, however the Opponent’s Submissions rely solely on registration number 514892 filed on 14 July 1989 in class 3 for the following series of trade marks (‘92 Marks’):

39.    To establish this ground, the 92 Marks must satisfy the following requirements:

·it is in the name of a person other than the Applicant (‘first requirement’);

·it has a priority date which is earlier than the Relevant Date (‘second requirement’);

·it is substantially identical with, or deceptively similar to, the Trade Mark (‘third requirement’); and

·it is in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘fourth requirement’).

40.    The 92 Marks are held in the name of a person other than the Applicant, and the priority dates of the 92 Marks are earlier than the Relevant Date. The first and second requirements are satisfied.

Comparison of goods and services

41. Section 14 of the Act provides that goods are ‘similar’ to other goods, and services are ‘similar’ to other services, if they are the same, or of the same description, as the other goods or services. The determination of whether goods are similar, or services are similar, involves the consideration of a number of factors including the nature, use and trade channels of the goods or services.[6]

[6] Jellinek’s Application (1946) 63 RPC 59, 64 (Romer J); MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

42.    The 92 Marks are registered in respect of “all goods in class 3”. The system for classification of goods for the purposes of the registration of trade marks is known as the Nice Classification. The Opponent has correctly identified the fifth edition of the Nice Classification as the edition in place at the time the application for the 92 Marks was filed. Where the classification of a trade mark is worded to encompass “all goods” in a particular class, the goods for which a trade mark is registered do not change over time but remain those that constituted the relevant class at the time of registration of the trade mark.

43.    Tran asserts that the Opponent has not established that their products in class 3 overlap with, or are of the same description, as the Goods. The Opponent submits that there is a direct overlap in the goods covered by the 92 Marks and at least some of the goods covered by the Trade Mark, and that even where there is no direct overlap the respective goods are at least similar.

44.    I agree with the Opponent. The goods of the 92 Marks are broadly worded. The class 3 goods of the fifth edition of the Nice Classification include such goods as cosmetics, skin care (cosmetic preparations), toiletries, soaps, oils for cosmetic or toilet purposes, shampoos, fragrances and perfumes that are clearly the same or of the same description as the goods for which the Trade Mark is sought to be registered.

45.    Accordingly, the fourth requirement is satisfied. The remaining consideration is whether the third requirement is also satisfied.

Substantially identical

46.    The Opponent does not submit that the Trade Mark and the 92 Marks are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the 92 Marks. On a side-by-side comparison of the respective marks there are obvious differences resulting in a total impression of dissimilarity, namely the addition of ‘& HARPER’ in the Trade Mark. The next question is whether the Trade Mark is deceptively similar to the 92 Marks.

Deceptively similar

47. Section 10 of the Act defines “deceptively similar” as follows:

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.

48.    In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on deceptive similarity:

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 [trade mark].[7]

[7] [1963] HCA 66, [13].

49.    In Clark v Sharp it was noted:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[8]

[8] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

50.    In Tivo Inc v Vivo Corporation Pty Ltd, Dodds-Streeton J said:

The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[9]

[9] Tivo Inc v Vivo Corporation Pty Ltd [2012] FCA 252, [163].

51.    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J made the following comments regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[10]

[10] (1954) 91 CLR 592, 594.

52.    The notional buyer does not possess any knowledge about actual use of the prior marks, the actual business of the owner of the prior marks, the goods produced by the owner of the prior marks, any distinctiveness acquired through use of the prior marks, or any reputation associated with the prior marks.[11]

[11] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

53.    The Opponent submits that the respective trade marks are deceptively similar for several reasons, which are summarised as follows:

·     the prominent and essential element of the Trade Mark is the first word ‘ELLE’, and the 92 Marks consist entirely of the word ‘ELLE’. The ‘ELLE’ elements of the respective marks are visually and aurally identical and this is likely to cause confusion;

·     the additional word ‘HARPER’ in the Trade Mark does not overwhelm the ‘ELLE’ element to the extent that the visual, aural and conceptual impression is so far removed from the 92 Marks that the overall impression of resemblance is diminished;

·     having regard to the ‘imperfect recollection’ test consumers would be caused to wonder whether the Goods offered under or by reference to the Trade Mark come from the same trade source as the goods offered under or by reference to the 92 Marks;

·     having regard to the overall composition of the Trade Mark, it is likely that the Trade Mark would be viewed as part of a suite of the Opponent’s Trade Marks, and the average consumer would have cause to wonder whether the Trade Mark is a sub-brand or brand extension of the 92 Marks;

·     the Goods are the same as the goods covered by the 92 Marks, are in the nature of low-priced consumables which are unlikely to be subject to a careful visual examination, and are competing products offered to the same class of consumer, which increases the likelihood of confusion.

54.    Tran states that the Opponent has failed to establish that any of the Opponent’s Trade Marks are substantially identical, or deceptively similar, to the Trade Mark.

55.    The Trade Mark incorporates the word ‘ELLE’ in addition to an ampersand and the word ‘HARPER’. When the marks are considered as a whole, it is apparent that they share some aural and visual similarity given ‘ELLE’ forms the first word of the Trade Mark and is the entirety of the 92 Marks. However, the fact that one trade mark incorporates another is not, in itself, sufficient to render the trade marks deceptively similar.[12] The whole of each trade mark must be considered.

[12] Clark v Sharp (n 8); Food Channel Network Pty Ltd v Television Food Network GP (n 1), [92].

56.    Tran states that the ‘ELLE’ component of the Trade Mark is the first name of one of her daughters. Given the statements in the Opponent’s Submissions regarding the French origins of the Opponent’s magazine and the female audience to which the magazine was directed, the word ‘ELLE’ in the 92 Marks may be understood as the French word ‘elle’ meaning ‘she/her’, or alternatively as a female first name. In Australia, ‘ELLE’ is more likely to be recognised as a female first name owing to well-known personalities such as the model and businesswoman Elle Macpherson, actress Elle Fanning, singer Elle King and the fictitious characters Elle Woods (of the ‘Legally Blond’ film series and stage production) and Elle Evans (of the ‘The Kissing Booth’ film series). Accordingly, the ‘ELLE’ components of the respective trade marks are conceptually identical.

57.    The ‘HARPER’ component of the Trade Mark would likely be interpreted as a female first name by a significant proportion of Australian consumers. It is not a word that holds any other obvious meaning in modern Australian English. Based on my personal knowledge ‘HARPER’ has been a particularly popular female given name in Australia in recent years. In my view, the word ‘HARPER’ is an equally prominent and essential element of the Trade Mark as the word ‘ELLE’.

58.    As a whole, the Trade Mark presents as the names of two individuals with the names ‘ELLE’ and ‘HARPER’.

59.    The Opponent submits that for the purpose of assessing deceptive similarity, “the first portion of a word is by far the most important”, citing Conde Nast Publications Pty Ltd v. Virginia Taylor[13] (‘Conde Nast’) and London Lubricants (1920) Ltd’s Application (‘London Lubricants’). [14]  The Opponent further submits the Trade Mark is likely to be abbreviated so as to be virtually identical to the ‘ELLE’ trade mark, citing Lord Evershed in George Ballantyne & Son LD v Ballantyne Stewart and Coy.[15] There are clear points of differentiation between these decisions and the present circumstances. Conde Nast and London Lubricants concerned compound words (respectively, ‘EUROVOGUE’ as compared to ‘VOGUE’, and ‘Tripcastroid’ as compared to ‘Castrol’) and the natural tendency of speakers of the English language to accentuate the first syllable of such words. The Trade Mark does not contain a compound word of which the Opponent’s ELLE trade mark is a part; rather it consists of two distinct words separated by an ampersand (in spoken English, the conjunction ‘and’). It is unlikely that the ‘& HARPER’ elements of the Trade Mark would be slurred, distorted or abbreviated to such an extent that the ‘ELLE’ component of the Trade Mark becomes far more distinctive than the remaining components.

[13] [1998] FCA 864 cited in Opponent’s Submissions, [55].

[14] (1925) 42 RPC 264, 279 (Sargant LJ) cited in Opponent’s Submissions, [55].

[15] 1959 RPC 273 cited in Opponent’s Submissions, [58]. This decision held the marks BALLANTYNE AND STEWARTS and BALLANTYNE STEWARTS OLD ARGYLLE infringed a registration for BALLANTINE.

60.    The present matter is analogous to the decisions in Bianca-Moden GmbH & Co. KG v Bianca and Bridgett Pty Ltd[16] and Paige, LLC v Sage and Paige Collective Pty Ltd,[17] in which reference was made to the following excerpt from this Office’s Trade Marks Manual of Practice and Procedure (‘Manual’):[18]

[16] [2021] ATMO 30 (Delegate Lyons).

[17] [2023] ATMO 57 (Delegate Lyons).

[18] The IP Australia Trade Marks Manual of Practice and Procedure Part 26 Annex A1.

When comparing a trade consisting of a given name and a trade mark that consists of two or more given names a real and tangible danger of confusion is less likely to occur between trade marks.

In making this decision examiners should consider:

·The relative commonness of the given name;

·The goods and/or services the trade mark will be used on, and the marketplace in which the goods or services are traded;

·Placement or representation of the name in the trade mark;

·Any other factors relevant to a decision of deceptive similarity.

In limited circumstances confusion may be considered likely when the given name between the marks is extremely unusual, rare, or otherwise memorable, such as an invented given name.

61.    The following examples relevant to this direction are provided in the Manual:

Trade Mark 1	Trade Mark 2	Goods/services claim	Action and Reasons
CAMILLA	CAMILLA AND MARK	Commonplace goods/services	62. No Section 44 Although less common than MARK, CAMILLA is still a relatively common given name. The inclusion of the additional name MARK and use of the trade marks in relation to commonplace goods and services is sufficient to mitigate the danger of confusion between the two trade marks.
SANDRINE	SANDRINE AND LOLA	Commonplace goods/services	63. Section 44 appropriate SANDRINE is a relatively unusual name. In addition, SANDRINE is placed at the front of the second trade mark. Although the second trade mark contains the additional word LOLA, there is still likely to be a tangible danger of confusion between the trade marks.

1. Australian consumers are well-versed in brand names comprising a combination of two first names. I note the comments of the Delegate in Winter Holding GmbH & Co KG v SASS Clothing Pty Ltd.:

   A cursory search of the register indicates that trade marks consisting of given names and surnames, or combinations of the two, or combinations of one or the other with other elements, are relatively common. Personal names are one of the oldest and most popular indicators of trade source. Logically, the more distinctive and unusual a particular name, the greater potential for confusion with other trade marks sharing the same element. Similarly, if a name is more common or recognisable, then there is less likelihood of confusion, as consumers are often exposed to brands consisting of names, many of which share either a given name or a surname.[19]

   [19] [2021] ATMO 55, [22].

   63.    Applying the approach outlined in the Manual, I note that ‘ELLE’ is not an uncommon first name and that the Trade Mark is used or intended to be used in relation to commonplace goods.  The danger of confusion between the Trade Mark and the Opponent’s Trade Marks is accordingly mitigated.

   64.    Even accounting for imperfect recollection, I consider that Australian consumers would be likely to recall the Trade Mark as a combination of two relatively common given names representing a single brand, rather than a sub-brand or extension of the brand ‘ELLE’. ‘HARPER’ is not a descriptive term, but a distinctive and memorable given name. It is separated from the word ‘ELLE’ in the Trade Mark with an ampersand to convey the impression of two girls or women as the face of the Applicant’s brand. Although the word ‘ELLE’ is a common feature of both the Trade Mark and the 92 Marks, there are sufficient visual, aural and conceptual differences between the marks when they are considered in their entirety. Given the importance of the ‘HARPER’ element of the Trade Mark, I am not persuaded that Australian consumers would be caused to wonder whether the Goods and the Opponent’s products share a common trade source.

   65. It is the Opponent that bears the burden of establishing the s 44 ground of opposition. The Opponent has not provided any evidence in respect of industry branding practices, the popularity of the given names ‘ELLE’ and ‘HARPER’ or similar which would support a finding that there is a tangible danger of confusion between the Trade Mark and the 92 Marks.

   66. For the above reasons, I am satisfied that there is no real and tangible danger of confusion between the Trade Mark and the 92 Marks. The s 44 ground of opposition has not been established.

   Section 60

   67. Section 60 of the Act relevantly provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   68. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:

   i.as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and

   ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

   69.    In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[20] The existence and extent of a trade mark’s reputation must be established as a matter of fact by the Opponent.[21]

   [20] [2000] FCA 1335, [81] (‘McCormick’).

   [21] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

   70.    In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[22] 

   [22] [2019] FCA 923, [83].

   71.    Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[23]

   [23] McCormick, [86].

   72.    A trade mark’s reputation must be amongst a ‘significant or substantial’ number of Australian consumers, having regard to the relevant market[24] and the nature of the goods or services in question.[25] The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods the subject of the trade mark application.[26] As the present matter concerns personal care products, cosmetics and related goods in class 3, the relevant market is virtually the entire Australian population but women in particular.

   [24] ConAgra, [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [25] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

   [26] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

   73.    Confusion may not arise solely from reputation; it must involve some degree of similarity between the trade marks in question.[27] Confusion or deception may be likely even where very little nexus exists between the relevant goods, depending on the strength of the reputation and the degree of similarity between the trade marks.[28]

   [27] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

   [28] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

   74.    In the SGP the Opponent nominates the “ELLE mark” and the Opponent’s Trade Marks as the basis for this ground of opposition. The Opponent’s evidence and submissions do not delineate between the Opponent’s Trade Marks but rather focus on the Opponent’s reputation in the “ELLE mark”, which I understand to be a reference to the plain word trade mark ‘ELLE’.

   Reputation

   75.    The Opponent declares that as a result of such “extensive and longstanding use… the ELLE mark has become well-known worldwide, including in Australia”.[29] The Opponent states in the SGP that the Opponent’s Trade Marks have been used in connection with a range of fashion goods including clothing, footwear, jewellery, leather goods and bags, perfumes, cosmetics, beauty products and hair accessories, and that as a result of this use the Opponent has acquired a “significant and valuable reputation in the ELLE trade mark and the [Opponent’s Trade Marks] in relation to such goods”.[30] The Opponent claims that as a consequence of this reputation use of the Trade Mark in connection with such goods would be likely to deceive or cause confusion.

   [29] Coevoet, [42].

   [30] SGP p 3.

   76.    Tran states that the Opponent has not established a sufficient reputation in Australia to support this ground of opposition. Tran notes that the amounts referred to in Coevoet 1, for example magazine sales and exports, “provide no indication or little indication of such amounts in Australia…or how international reputation is connected to Australia for the [Goods].”[31] I note in this regard that it is possible to infer from an extensive international reputation some level of spillover reputation into Australia.[32]

   [31] Tran, [21].

   [32] ConAgra, [115].

   77.    I am satisfied that the trade mark ELLE had acquired a reputation in respect of a women’s fashion and beauty magazine amongst a significant number of Australian consumers at the Relevant Date. Coevoet 1 claims use of the ELLE mark in relation to a French beauty and fashion magazine for more than 65 years prior to the Relevant Date, and first use in relation to an Australian edition of the magazine some 30 years before the Relevant Date. The reputation of the Opponent’s magazines is readily apparent from the scope of the distribution network for the Opponent’s magazines, the variety of editions of the ELLE magazine, the estimated readership of the Opponent’s French and Australian magazines and distribution figures for the Opponent’s magazines as detailed in the Opponent’s evidence. Public awareness of the ‘ELLE’ brand can be inferred from the Opponent’s social media presence, Australian media coverage for the Opponent’s magazine including articles and advertisements in newspapers and magazines, and on websites such as the ELLE Global Website.

   78.    The Applicant submits that the reputation of ELLE is limited to a fashion magazine and “has no bearing to reputation in Australia for the [Goods]”[33] and that the evidence of sales and advertising referred to in Coevoet 1 is “not determinative”.[34]

   [33] Tran, [22].

   [34] Tran, [20].

   79.    There is some merit to the Applicant’s submission. The evidence shows that the Opponent’s reputation in ‘ELLE’ is confined to fashion and beauty magazines. It is apparent from the evidence that the Opponent has, by way of its licensees, used the ELLE trade mark in respect of perfumes, body mists, massage oils and body lotions, shower gels and body washes, cosmetics, barrier creams, and baby powder, sunscreen, shampoo, hair conditioners, moisturisers, hair detanglers and bubble bath products in Australia. However, I am not satisfied on the basis of the evidence provided that such use was sufficient for the Opponent to acquire a reputation in respect of those goods amongst a significant or substantial number of Australian consumers before the Relevant Date, for the following reasons.

   80.    Coevoet 1 contains invoices and wholesale figures in respect of ELLE branded eau de parfums, body lotions and body mists. The earliest of these documents is dated May 2020, being only roughly 15 months before the Relevant Date. In the absence of evidence of widespread awareness of these ELLE branded goods, use for such a short duration of time does not provide a strong basis for a finding that the Opponent has acquired a reputation in respect of such goods.

   81.    As regards the YSL ‘elle’ products referred to in Exhibits 13 to 17 of Coevoet 1, examples provided of advertising and product packaging for these products indicate that the dominant brand is ‘YSL’ or ‘YVES SAINT LAURENT’. The products are distributed by way of YSL licensees and YSL websites. Because of the manner in which these products are presented and distributed, it would not be readily apparent to the ordinary Australian consumer that these products bear any relationship to the Opponent; consequently, the Opponent’s reputation is not enhanced by these goods. I note also that while the turnover figures for the YSL ‘elle’ products circa 2009 are not insignificant, it is apparent those sales steadily declined and in 2019 were very modest.  

   82.    In respect of the Opponent’s license with Giving Brands, I note the launch date for the products developed by Giving Brands was in 2019, being around two years prior to the Relevant Date. The articles exhibited as evidence of pre-launch promotion of these goods are dated March 2019 and June 2019 respectively. The limited sales information provided indicates very low sales volumes in 2020. The information provided is insufficient for me to determine that the Opponent acquired a reputation amongst a significant or substantial number of Australian consumers in respect of the Giving Brands products by the Relevant Date.

   83.    To the extent the Opponent’s evidence relates to overseas or online advertising or promotion of ELLE branded goods, no indication is provided of the degree of exposure of these advertisements or promotions to Australian consumers, such as the number of page views of the Opponent’s webpages by consumers in Australia.

   84. I am satisfied that the Opponent’s ELLE trade mark had acquired a reputation in respect of fashion and beauty magazines before the Relevant Date. Pursuant to s 60(b) of the Act, I must now consider whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

   Likely to deceive or cause confusion

   85. While I am satisfied that ‘ELLE’ had acquired a reputation in relation to fashion and beauty magazines in Australia before the Relevant Date, I am not satisfied that confusion is likely to arise as a result of that reputation, or that the reputation extends to the Goods in such a way that deception or confusion is likely to arise. I consider the differences between the respective trade marks discussed above in relation to the s 44 ground of opposition mitigate the risk of confusion.

   86.    Tran asserts Coevoet does not provide any evidence of instances of actual deception or confusion, and that Tran is not aware of any such instances or any “likely confusion” about the origin of the Applicant’s products. As Tran does not provide any detail of the Applicant’s trading activities, if any, it is difficult to see how any actual instances of confusion could have been documented. In any case, it is the likelihood of confusion rather than actual instances of confusion that are required to be established by the Opponent.

   87.    The Opponent submits:

   The extension of a fashion and beauty magazine business to include class 3 goods such as cosmetic skincare products and other similar products, is a perfectly natural and common brand extension. Indeed, it is precisely the brand extension undertaken by the Opponent both in Australia and globally. Accordingly, the risk of deception and confusion is significantly increased by the closely related nature of the respective businesses.[35]

   [35] Opponent’s Submissions, [45].

   88.    The Opponent has not provided any evidence in support of its claim that it is common for fashion and beauty magazines businesses to diverge into businesses for cosmetic skincare and similar products. In the absence of such evidence, I am not persuaded that the risk of deception or confusion in respect of the Goods is heightened by the Opponent’s reputation in respect of fashion and beauty magazines.

   89.    Accordingly, I am not satisfied that there is a real and tangible danger that use of the Trade Mark in relation to the Goods would be likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers.

   90. The s 60 ground of opposition has not been established.

   Section 42

   91. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

   92. It is clear that this ground is being made under s42(b) of the Act. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would rather than could be contrary to law on the balance of probabilities.[36]

   [36] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   93. The Opponent states in the SGP that, for the reasons stated in support of the s 60 ground of opposition, the Applicant’s use of the Trade Mark would constitute misleading or deceptive conduct under ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth), and/or the common law tort of passing off. The Opponent submits that use of the Trade Mark by the Applicant would represent that the Applicant or its Goods are related to the Opponent or are sponsored, approved, affiliated or licensed by the Opponent.

   94.    It is declared in Tran that the Applicant “has never sought to represent to consumers that the [Goods] are the same as the Opponent’s products or are derived from sources associated with the Opponent”.[37]

   [37] Tran, [28].

   Australian Consumer Law

   95. Section 18 of the ACL stipulates that there must be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s goods or services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[38]

   [38] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   96. The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,[39] which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL.

   [39] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   Passing Off

   97. Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[40]

   [40] [1989] FCA 506, [40] (French J).

   98. As ss 18 and 29 of the ACL are the equivalents of ss 52 and 53 of the TPA,[41] the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.

   [41] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

   99. The ground of opposition under s 42(b) of the Act is not established.

   Decision

   100. Section 55 of the Act relevantly provides:

   (1)  Unless subsection (3) applies to the proceedings, 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.

   101.The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2204266 may proceed to registration not less than one month from the date of this decision. 

   102.      If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

103. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

23 October 2024

Annexure A

Registration No.	Trade mark	Priority date	Class(es)
413089	ELLE	7 August 1984	5
471761	28 August 1987	16
496144	ELLE	26 September 1988	8, 9, 11, 24, 28
496147	ELLE	26 September 1988	21
514892	14 July 1989	3
514893	14 July 1989	6
514894	14 July 1989	8
514895	14 July 1989	9
514896	14 July 1989	11
514897	14 July 1989	12
514898	14 July 1989	14
514899	14 July 1989	18, 25, 35, 41, 42
514904	14 July 1989	24
514908	14 July 1989	28
514912	14 July 1989	38
660283	ELLE	9 November 1994	39
660284	ELLE	9 November 1994	41
768666	28 January 1998	36
894710	12 November 2001	16
1000270	3 May 2004	3, 9, 16, 18, 25
1201036	19 December 2006	9, 38, 42
1568742	ELLE	15 July 2013	26
1590632	ELLE	11 November 2013	20
2147699	4 September 2020	18, 25