Hachette Filipacchi Presse v Kind to Me Pty Ltd

Hachette Filipacchi Presse (the Opponent) opposed the registration of the trade mark ELLE & HARPER (the Application) by KIND TO ME PTY LTD (the Applicant) in Class 3. The Opponent, a French fashion and beauty company, is the owner of the well-known ELLE trade mark, which has been used internationally and in Australia for many years in relation to magazines and a wide range of fashion, beauty, and cosmetic products. The Applicant's business involves supplying non-medicated cosmetics and toiletry preparations, and the company was registered in July 2021.

The Opponent pursued grounds of opposition under sections 42(b), 44, and 60 of the *Trade Marks Act 1995* (Cth). The primary legal issues before the delegate of the Registrar of Trade Marks were whether the Applicant's trade mark was substantially identical with or deceptively similar to the Opponent's registered trade marks, whether the Applicant's trade mark was likely to deceive or cause confusion, and whether the Applicant's trade mark was identical or deceptively similar to a trade mark that had acquired a reputation in Australia. The delegate also considered whether the Opponent had established that the Applicant's trade mark was likely to mislead the public as to the existence of a connection between the Applicant's goods and the Opponent's trade mark.

In relation to the ground under section 44, the delegate found that the Applicant's trade mark ELLE & HARPER was not substantially identical to the Opponent's registered trade mark (the '92 Marks') but was deceptively similar. The delegate reasoned that the goods covered by the '92 Marks, which encompassed all goods in Class 3 under the fifth edition of the Nice Classification, were similar or of the same description as the goods for which the Applicant sought registration. The delegate applied the principles of deceptive similarity, considering the impression left on ordinary persons of intelligence and memory, rather than a side-by-side comparison. The delegate also considered the extensive use and reputation of the ELLE brand in Australia across various media and products, including cosmetics and beauty items, and found that the Applicant's trade mark was likely to deceive or cause confusion.

The delegate determined that the Opponent had not established the grounds of opposition under sections 42(b) and 60. However, the delegate found that the ground under section 44 was established due to the deceptive similarity between the Applicant's trade mark and the Opponent's registered '92 Marks, and the similarity of the respective goods. Consequently, the delegate ordered that the application for registration of the trade mark ELLE & HARPER be rejected.