Hachette Filipacchi Presse v Reitmans (Canada) Limited

[2016] ATMO 113

TRADE MARKS ACT 1995

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

Re:Oppositions by Hachette Filipacchi Presse to applications filed by Reitmans (Canada) Limited for removal of trade mark registrations 514899 (18, 20, 21, 25, 35, 41, 42), 681214 (25) and 1000270 (3, 9, 16, 18, 25) – ELLE - in the name of Hachette Filipacchi Presse

And

Opposition by Hachette Filipacchi Presse to registration of trade mark application 1520416 (25, 35) – ADDITION ELLE – in the name Reitmans (Canada) Limited.

Delegate:	Nicole Worth
Representation:	Opponent: Blake Knowles of Cullens Patent and Trade Mark Attorneys. Applicant: Chris Burgess of Counsel instructed by Thomson Geer Lawyers.
Decision:	2016 ATMO 113 Section 92 of the Trade Marks Act 1995: applications for removal under s 92(4)(b) – non-use established for some goods and services – Registrar’s discretion under s 101 exercised for some goods and services – applications for removal partially established. Section 52 of the Trade Marks Act 1995: opposition to registration under ss 44, 60, and 42(b) – trade marks not deceptively similar – reputation exists but confusion unlikely – use of Applicant’s trade mark unlikely to mislead or deceive – no grounds established – trade mark to proceed to registration.

Background

1. These are proceedings under ss 52 and 92 of the Trade Marks Act 1995 (‘the Act’). They involve the same parties and much of the same evidence, consequently they are being decided together as a matter of convenience and expediency.

2. The proceedings under s 92 of the Act arise from applications filed on 9 October 2013 by Reitmans (Canada) Limited to remove from the Register the trade marks detailed below:

Trade Marks
Registration number	514899	681214	1000270
Registration date	14 July 1989	14 July 1989	3 May 2004
Goods and Services	Classes 18, 20, 21, 25, 35, 41, 42	Class 25	Classes 3, 9, 16, 18, 25
Trade Mark Owner	Hachette Filipacchi Presse	Hachette Filipacchi Presse	Hachette Filipacchi Presse

1. A full list of the goods and services in respect of which the above trade marks are registered is at Attachment A to this decision. I will refer to these registrations collectively as ‘the Opponent’s Trade Marks’.

2. The removal applications were made under s 92(4)(b) of Act and originally sought complete removal of the above registrations, although only partial removal was subsequently pursued. Hachette Filipacchi Presse opposed the removal of its registered trade marks on grounds that there had been use of the trade marks and, if not, that the Registrar ought to exercise her discretion to retain the registrations despite grounds for removal having been established.

3. The proceedings under s 52 arise from an application filed by Reitmans (Canada) Limited to register the trade mark detailed below:

Trade Mark

ADDITION ELLE (‘the Applicant’s Trade Mark’)

Application Number

1520416

Filing Date

17 October 2012

Goods

Class 25: Clothing.

Class 35: Retail services.

1. After the application was examined and advertised as accepted for possible registration, Hachette Filipacchi Presse opposed the application by filing a Notice of Intention to Oppose on 26 April 2013 and a Statement of Grounds and Particulars on 21 May 2013.

2. The parties filed their evidence for each of the matters (described in more detail later) and the opposition under s 52 was allocated to me for hearing. Reitmans (Canada) Limited requested that the s 92 matter be heard and determined together with the s 52 matter, a request which I considered had some merit given the potential for the s 92 matter to affect the outcome of the s 52 matter. To that end I allowed the parties to make representations about whether this should occur, and after considering those representations determined that it should.

3. I heard both of the matters on 23 August 2016. Blake Knowles of Cullens Patent and Trade Mark attorneys represented Hachette Filipachhi Presse. Chris Burgess of Counsel, instructed by Thomson Geer Lawyers, represented Reitmans (Canada) Limited.

4. Given that Reitmans (Canada) Limited is both the applicant for registration and applicant for removal, from here on I will refer to it as ‘the Applicant’. Likewise, Hachette Filipacchi Presse is both the opponent to registration and the opponent to removal so from here on I will refer to it as ‘the Opponent’.

Evidence filed

1. The evidence filed in respect of the proceedings under s 92 consists of the following declarations:

Evidence in support

514899: Fabienne Sultan, Director of the Intellectual Property Department of the Opponent and of its holding company Lagardère Active, with exhibits 1 to 46, dated 27 April 2015.

681214: Fabienne Sultan, with schedules 1 to 15, dated 16 April 2015.

1000270: Fabienne Sultan, with exhibits 1 to 58, dated 28 April 2015.

Evidence in answer

Catherine Chant, lawyer at Thomson Geer Lawyers, with exhibits CC-1 to CC-6, dated 3 September 2015.

Evidence in reply

Fabienne Sultan, with schedules FS-A to FS-M, dated 22 December 2015.

1. In addition to the above declarations, both parties sought at different times to adduce more evidence under the provisions of regulation 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’) in relation to the s 92 proceedings. The Applicant sought to adduce a declaration by Lesya McQueen, undated but witnessed on 7 October 2015. I indicated on 3 May 2016 that I did not intend to allow it into proceedings, and that unless the Applicant requested a hearing on the matter the declaration would not be considered. The Applicant did not request a hearing and so the declaration by Lesya McQueen has not been taken into account. For its part the Opponent sought to adduce a declaration by Casey Joly, dated 12 May 2016. That declaration annexed a translation into English of documents written in French exhibited in the Opponent’s evidence in support. I indicated that I did not intend to allow it into proceedings, and the Opponent requested that it be heard on the matter of additional evidence. The hearing took place by way of written submissions and I ultimately refused to take the additional evidence into account; see Reitmans (Canada) Ltd v Hachette Filipacchi Presse [2016] ATMO 54.

2. The evidence filed in respect of the proceedings under s 52 consists of the following declarations:

Evidence in support

Fabienne Sultan, with exhibits FS-1 to FS-24, dated 9 December 2013.

Evidence in answer

Janice Leclerc, President of the Addition Elle division of the Applicant, with annexures JL-1 to JL-9, dated 10 March 2015.

Zan Min Lee, paralegal at Thomson Geer Lawyers, with exhibits ZML-1 to ZML-3, dated 13 March 2015.

Evidence in reply

Fabienne Sultan, with exhibits 1 to 5, dated 16 July 2015.

Grounds, onus and standard of proof

1. In respect of the proceedings under section 52, it is the Opponent that bears of the onus[1] of establishing a ground of opposition on the ordinary civil standard of the balance of probabilities.[2] In respect of the proceedings under section 92, section 100 of the Act places the burden of rebutting the allegation of non-use upon the Opponent. I proceed on the basis that the relevant standard here is also the balance of probabilities.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133].

2. It is convenient to begin with the proceedings under section 92.

Opposition to removal under s 92

1. The applications for removal were made under s 92(4)(b) of the Act and are in relation to all of the goods and services for which the Opponent’s Trade Marks are registered. Section 92(4)(b) relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)     An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   […]

   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)        used the trade mark in Australia; or

   (ii)       used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1: For file and month see section 6.

   Note 2: If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

2. Thus, the allegation is that the Opponent’s Trade Marks have not been used in relation to any of the goods and services in respect of which they are registered at any time in Australia in the three year period ending on 9 September 2013 (‘the relevant period’).[3]

   [3] As noted previously, the allegation subsequently changed (in the Applicant’s written submissions for the hearing) to there being no use of the Opponent’s Trade Marks in respect of some of the registered goods and services, as discussed later in the decision.

3. The onus upon the Opponent is articulated in s 100 of the Act which stipulates that it is for an opponent to rebut any allegation made under s 92(4)(b), and that an opponent is taken to have rebutted the allegation if it establishes use of the trade mark (or the trade mark with additions or alterations not affecting its identity) or if it establishes that there was an obstacle to use of the trade mark during the relevant period. A single bona fide use during the relevant period will be sufficient[4] although that use ought to be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.

   [5] ‘Nodoz’ Trade Mark [1962] RPC 1 at 7 (Ch D).

4. There is also a discretion conferred by s 101 of the Act, under which the Registrar may decide to remove a trade mark for all or only some of the goods and services identified in an application for removal, or, if satisfied that it is reasonable to do so,[6] to decide not to remove a trade mark even if the grounds under which the removal applications were made are established. The discretion is a broad one, limited only by the subject-matter, scope and purpose of Part 9 of the Act,[7] and it need not be applied only in exceptional circumstances but rather where it is reasonable.[8] A relevant consideration is whether removal of a trade mark might lead to confusion[9] (because it might open the way for concurrent use of the same or similar mark by others), and the Act specifically indicates that one of the matters the Registrar may take into account is use of the trade mark by the registered owner upon similar or closely related goods and services.[10]

   [6] It is for the party seeking the exercise of the discretion to positively satisfy the Registrar that it is reasonable to do so: Austin, Nichols & Co Inc v Lodestar Anstalt (‘Austin’) [2012] FCAFC 8, [44].

   [7] Austin, [35].

   [8] Kowa Company Ltd v N V Organon [2005] FCA 1282, [98], cited in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) [2016] FCA 138, [222].

   [9] Austin, [33]-[36].

   [10] Section 101(4) of the Act.

The Opponent’s Evidence

1. The following is a summary of what Ms Sultan declares on behalf of the Opponent.

2. ELLE is the name of a well-known fashion and lifestyle magazine, now published both electronically and in paper form. The magazine dates back to 1945 with its first publication in France, which was expanded upon in 1985 with the launch of USA and UK editions. All three of those editions circulate internationally, including in Australia (for which export or distribution figures are provided for years including during the relevant period). The website ‘ was launched in 1995, and it and the related websites ‘ and ‘ (dates of launch not stated) have been accessed by Australians (page view figures, ‘audience’ figures and percentage of traffic by country have been provided for years including during the relevant period).

3. An Australian edition of ELLE magazine was launched in 1990 and a website at ‘ was launched ‘as early as 1999’. The first Australian edition sold a substantial number of copies, which lessened considerably by the period 1999 to 2002 (for which figures are provided) but were still nonetheless commercially significant. (It appears the Australian edition was no longer produced after 2002, during which year only two issues were produced). A new Australian edition of ELLE magazine has been in the working for some time: a Memorandum of Understanding between the Opponent and an Australian licensee was concluded in November 2011 and a subsequent License Agreement was concluded in August 2012 (a partially redacted copy of the agreement is in evidence which refers to both hard copy and digital versions of the magazine). In April 2013 the impending launch of the new Australian edition was promoted via a runway fashion show during the Mercedes Benz Fashion Week Australia 2013 as well as a media campaign (reflected in an article upon the website ‘ dated 13 April 2013). Further articles in Australian press dated 20 September 2013 and 30 August 2013 note the coming of the Australian edition. (The actual date of the re-launch is not stated, however from statements within Ms Sultan’s declarations and various press articles exhibited it appears that an October 2013 edition of ELLE magazine was released on or about 23 September 2013, shortly after the relevant period). Subscription services to the magazine were available as at 5 September 2013 (as shown on an extract of that date from the ‘ website).

4. The re-launch of the magazine amounted to a ‘3-million investment’ (currency not stated), with the new local edition selling at AUD $8.50 and ‘a total circulation of 100,000 copies monthly corresponding to a reach of over 300,000 readers’ of the print version (no explanation of ‘circulation’ or ‘reach’ is provided nor is there corroborating evidence for the figures provided).

5. Worldwide, ELLE magazine has 46 editions and 21 million readers. ‘Advertising space’ in the magazine represents approximately 35% of the relevant market (although it is not stated what the relevant market is). A major part of the advertisements appearing in the magazine are for fashion, beauty and lifestyle items. In respect of the re-launch of the Australian magazine, in November 2012 Australian staff developed a pre-launch ‘communication strategy’ aimed at parties who might wish to advertise in the Australian edition of ELLE magazine. It envisaged various actions to be taken to attract advertisers, including at the runway fashion event in April 2013. The first edition of the re-launched Australian magazine attracted considerable interest from parties wishing to advertise in it, such that its size was increased to ‘book size’ (described further as ‘400+ pages and 150+ ad pages’). The activity associated with attracting that interest took place from November 2012 and more actively from April 2013, and a ‘2014 Media Pack’ indicates that the due date for parties to have placed their material in the magazine was 30 August 2013. A further marketing plan of 2013 envisaged various actions to take place during that year, including social media promotion in June/July 2013, a ‘digital engagement-website’ in August 2013 and media communication in September 2013 (it is not entirely clear whether some or all of these actions took place).

6. Various outdoor advertisements promoting the magazine launch were placed around Sydney, Melbourne and Brisbane shortly after the relevant period, from 22 September 2013 to 20 October 2013, coinciding with the release of the October 2013 edition. Page views upon the ‘ website for September 2013 are substantial (although the figures are for the entire month and the relevant period ended prior to the release of the re-launched magazine), and interest was shown upon the social media sites ‘Facebook’, ‘Twitter’ and ‘Instagram’ during August and September 2013 (which I would characterise as relatively modest from the figures provided of ‘friends’, ‘likes’, ‘followers’ and so on).

7. The ‘2014 Media Pack’ is said to further corroborate use of the Opponent’s Trade Marks online by its presentation of the electronic and digitalised versions of the magazine and the ELLE app (although this is not clear to me from the ‘Media Pack’ exhibited, which refers to ‘a multichannel approach’ listing the categories ‘Print’, ‘Web’, ‘Mobile’, ‘Social Networks’ and ‘Event’ and displays only an image for each).

8. Ms Sultan also declares that use is shown in relation to various other services specified in the Opponent’s Trade Marks. Rather than list each of those other services here, I will do so in the ‘Finding and Reasons’ section below wherein use class-by-class is discussed.

9. The following is a summary of what Ms Sultan declares on behalf of the Opponent in respect of goods in classes 25, 18, 9 and 3.

10. The Opponent has licensed use of its trade marks to more than 140 licensees around the world. In particular, in relation to goods in class 25 the Opponent has licensed the ELLE trade mark to Children’s Worldwide Fashion (‘CWF’) for use in Australia since ‘the third Addendum to the License Agreement’ (it is not clear when this might have been, the copy in evidence being in French, however it appears to have been some time prior to 2004). The License Agreement covering Australia was first renewed on 16 December 2004 and again in 2008, with effect up to 31 December 2012 (a partially redacted copy of the License Agreement as renewed in 2008 is exhibited, written in French. It lists the parties as the Opponent and CWF, ‘Australie’ under ‘Territoire’ and ‘le logo ELLE’ under ‘Marque’).

11. CWF made a presentation to the Opponent regarding use of the ELLE trade mark in Australia on 3 September 2010 (shortly before the relevant period) listing sales made to Australian retailers including the 2009 Autumn/Winter Collection. Included in the presentation are references to various items of clothing and footwear for children and babies. (A copy of the presentation is exhibited, also written in French, which lists amounts in AUD for ‘Année 2004’ to ‘Année 2008’, a number of Australian business addresses including MON BEBE in Melbourne, COMMO in QLD and a DAVID JONES store in Sydney, and images of various items of clothing, footwear and headgear alongside catalogue numbers).

12. CWF has supplied the Opponent with selections of invoices it issued to Australian retailers including during the relevant period. Those invoices list various items under the trade mark ELLE as well as their catalogue numbers. The catalogues to which they relate show the items to include a range of clothing, headwear, footwear and clothing accessories for children and babies. (The invoices and catalogues are exhibited and show this to be the case). Also listed in the invoices are promotional items provided to the Australian retailers including paper bags, signage and point of sale material.

13. In relation to the goods in class 18 of registrations 514899 and 1000270, included within the catalogues distributed by CWF are references to handbags, schoolbags and umbrellas (2009, 2010 and 2011 catalogues are exhibited, although there is no evidence of sales of those items). Additionally, in the period 1990 to 2002 the Opponent’s Trade Marks were used in respect of class 18 goods as promotional items in connection with the sale of the magazine.

14. The Opponent has since 1996 also licensed the entity Charmant Inc to use its trade marks in respect of eyewear. ‘Renewed and restated’ license agreements of 2008 and 2011 identify Australia as part of the territory in which the license is granted (exhibited to Ms Sultan’s declaration), and invoices issued by Charmant Inc to Australian entities demonstrate sales within the relevant period (I note the invoices list a range of items under catalogue numbers, and the eyewear catalogues to which those numbers relate are also exhibited). Eyewear catalogues also identify point of sale and display material available to retailers who on-sell goods under the Opponent’s Trade Marks.

1. A further license was granted by the Opponent to the entity YSL Beaute in 2007 which provides for use of the ELLE name by YSL Beaute in Australia in relation to perfumes and eau de toilette, perfumed creams, lotions, gels and deodorants (a partially redacted copy is in evidence, however it is written in French). An addendum to the license was signed in 2011 and the license was renewed in 2014. YSL Beaute has provided the Opponent with material pertaining to its use of ELLE, including examples of advertising (prior to the relevant period), a 2012 ‘presentation’ in which it is indicated that approximately 2% of global sales of ELLE perfume are derived from Australia, a list of points of sale in Australia in 2013 (there is no indication whether these were points of sale before or after the relevant period), and invoices to Australian retailers dated shortly after the relevant period (being November and December 2013). On this basis, the Opponent ‘has every reason to believe’ its trade marks had been used during the relevant period in Australia, at the very least in relation to perfumery.

2. The Opponent continues to explore further prospects in the Australian market to enlarge its license base in the same or new categories of goods and services. (A range of communications regarding meetings between representatives of the Opponent and various Australian retailers is exhibited, although it is not clear what goods or services were intended to be discussed). Revenue figures generated under the Opponent’s Trade Marks ‘outside the field of publications in Australia’ for the period 1997 to 2011 provide (so the Opponent’s submission goes) further support that the Opponent has developed its activities in many categories and its interests would be severely damaged if it were to lose its rights even for goods and services for which no specific use has been demonstrated. (The referred to revenue figures are included in the declaration, although they are in US dollars and there is no indication what they are in relation to, other than ‘outside the field of publications’).

The Applicant’s Evidence

1. The declaration from the Applicant’s lawyer, Ms Catherine Chant, provides the following information on behalf of the Applicant.

2. The Applicant has applied to register the trade mark ADDITION ELLE which was opposed by the Opponent. In those proceedings the Applicant has filed evidence of its use of the Applicant’s Trade Mark in respect of women’s clothing and the retailing of women’s clothing.

3. Subsequent to its application for registration, the Applicant applied to remove the Opponent’s Trade Marks from the Register. As mentioned above, the Opponent’s evidence refers to use of the ELLE trade mark in respect of, amongst other things, children’s clothing. In Australia, there are specific marketing and advertising standards that apply in respect of children’s products, including clothing, as compared to the marketing and advertising of such products for adults. They include:

   ·     The Australian Association of National Advertisers (AANA) Code For Advertising and Marketing Communications to Children;

   ·     AANA Code of Advertising & Marketing Communications to Children Practice Note;

   ·     AANA Practice Guideline – Managing Images of Children and Young People;

   · Children’s Television Standards 2009;

   ·     The Commercial TV Industry Code of Practice.

   (Copies of the above documents were exhibited to Ms Chant’s declaration).

4. There are also regulatory differences between children’s and adult’s clothing. Mandatory product standards apply specifically to children’s products in Australia, including nightwear for children and paper patterns for children’s nightwear. (An extract from the Product Safety Australia website is exhibited to the declaration relating to the mandatory standards for paper patterns for children’s nightwear, such as the requirement for fire-hazard labelling on clothing).

Opponent’s response to Applicant’s evidence

1. Ms Sultan’s response to the Applicant’s evidence declares the following summarised information. The Opponent’s fashion magazine is principally directed at women, but never exclusively so. The Opponent regularly publishes special issues specifically dedicated to children or men (an internal document of ‘ELLE AROUND THE WORLD’ is exhibited which indicates there have been 155 supplements and 60 spin-offs under such categories as ‘beauty’, ‘fashion’, ‘marriage’, ‘men’, ‘kids’ and ‘other’).

2. A 2009 edition (therefore prior to the relevant period) of the French magazine included a special issue directed at children, which was circulated in Australia per the Opponent’s previously provided circulation and distribution figures of the French edition in Australia. It also contained a casting advertisement by the licensee CWF for readers’ children to appear in catalogues worldwide, including Australia. Thus (so the submission goes) the brand extension to children’s wear is intended to appeal to women and readers of the magazine, including in Australia.

3. Brand extension from women to children is also submitted to be apparent apparent through the simultaneous promotion of both women’s and children’s clothing under the Trade Mark. Examples from 2004 to 2005 in the French and UK editions show this simultaneous promotion (six examples from those magazines are exhibited). Further extension from women to children and men are demonstrated by advertisements in the Chinese and Taiwanese editions of the magazine during 2012 to 2015 (examples in evidence, although there is no indication that any of these were available or circulated in Australia). Advertising campaigns for eyewear, by the licensee Charmant Inc, display eyewear for children alongside eyewear for women (it is not stated whether these campaigns took place in Australia). ELLE shops in India sell a women’s clothing line alongside a children’s clothing line. Even in the absence of the women’s line of clothing from the market, as in Australia, consumers (so the declaration states) still perceive the children’s line as a brand extension of the magazine, as seen in four advertisements in the French and Australian editions over the period 2010 to 2015. (I note that the example from the Australian edition, which contains an advertisement for a limited edition of seven dresses for girls, is undated but would appear to be from 2015 given the tagline is ‘Let’s Celebrate the ELLE 70 Years of Style!’ and the magazine began in 1945. The remaining examples appear in the French edition of the magazine and are dated 2010, albeit outside of the relevant period, and 2015). Further brand extension is submitted to be apparent from examples of the ELLE trade mark used in connection with electronic grooming devices, and the previously mentioned eyewear collection and perfume (the examples exhibited in relation to this point are dated 2014, 2000 and 2008, all outside of the relevant period).

4. Lastly, an investigation report commissioned by the Opponent reveals that 63 companies in Australia offer both adult and children’s clothing via online sales, 14 of which also offer mail order catalogues, including ‘Country Road’, ‘Rivers’ and ‘Target’. (The report does not appear to be confined to the relevant period, nonetheless I accept it is illustrative of the potential for businesses to diversify from adult to children clothing).

Findings and reasons

1. The parties made submissions class-by-class, and so for convenience and clarity I have done likewise, beginning with class 25.

Class 25

1. The Applicant asserts that of the various items specified in class 25 of the Opponent’s Trade Marks, use has not been shown in respect of the following specific items:

   Jumpers, petticoats, underpants, shirts, short-sleeved shirts, long-sleeved shirts, sweat shirts, smocks, pullovers, knitted jerseys, vests, waistcoats, topcoats, overcoats, duffle-coats, gabardines, blazers, kimonos, capes, fur clothing, shawls, sashes, stockings, pantyhose, panties, hosiery, lingerie, leotards, corsets, underclothing, aprons, dressing gowns, pyjamas, bath robes, clothing belts, clothing ties, neckties and clothing collars, boots, skiboots, after-skiboots, sports footwear and sports boots, caps, skull caps, berets, cowls, headbands, hoods, earmuffs, visors and head scarves.

2. The Applicant further submits that in so far as the Opponent’s Trade Marks were allegedly used by the licensee CWF in relation to clothing, the Opponent has not established that such use was authorised within the meaning of s 8 of the Act and therefore the Opponent cannot rely upon use by CWF to rebut the ground for removal. Section 8 of the Act specifies that use of a trade mark is authorised ‘to the extent only that the user uses the trade mark under the control of the owner of the mark’. In Lodestar Anstalt v Campari America LLC (‘Lodestar’)[11] the Full Court of the Federal Court of Australia determined that control was not established by the mere granting of a license to use a trade mark. Rather, actual control must be demonstrated and is a matter of substance involving questions of fact and degree and a sufficient connection. The Applicant argues that even if capacity to exercise control is demonstrated by the Opponent’s evidence, actual control is not.

   [11] [2016] FCAFC 92, [97].

3. Additionally, the Applicant submits, to the extent that CWF has used the Opponent’s Trade Marks in relation to clothing such use has been in respect of children’s clothing only. Children’s clothing is submitted to be different to adult clothing because: some types of clothing (such as ‘lingerie’) are ‘adults only’ and some are children’s only (such as a baby’s jump suit); there are functional and aesthetic differences between adult and children’s clothing (such as size and style); mandatory product standards exist for children’s clothing that do not exist for adult clothing; and marketing and advertising standards that are applicable to children’s clothing differ from those applicable to adult clothing.

4. For its part the Opponent submits that although the license agreement with CWF was submitted in French (and the admission of a translation was subsequently refused), the mere inclusion of the document is at least consistent with Ms Sultan’s declared statements that the license existed. Moreover Ms Sultan is an unimpeachable declarant and her statements as to the existence and nature of the license bear weight. The Opponent also submits that the other licenses in evidence contain stringent conditions and quality control provisions,[12] and are illustrative of the nature of licensing arrangements entered into by the Opponent. Licensees regularly report to the Opponent and licenses are granted for set period of time, not in perpetuity. As such, it is reasonable to infer that the Opponent exercised control over CWF in the provision of clothing under its trade marks.

   [12] I note that specific clauses in the license agreements deal with standards of quality that the licensees are obligated to maintain under the agreements.

5. As to the comparison between adults’ and children’s clothing, the Opponent argues that it may reasonably be assumed that women purchase the majority of children’s clothing, and given the significant reputation of ELLE amongst women, the use of ELLE in relation to children’s clothing creates instant brand recognition (further reinforced by the same ‘iconic’ stylisation of the word used in relation to both the magazine and the clothing range).

6. I consider it is the case that use of the Opponent’s Trade Marks has not been shown in respect of every specific item listed in class 25 of its registrations, but has nonetheless been shown in respect of a variety of clothing for children including dresses, skirts, trousers, tights, blouses, t-shirts, footwear and hats. This is reflected in the invoices issued by CWF to Australian entities and corresponding catalogues identifying the items sold; and the sales reports provided by CWF to the Opponent. I bear in mind also Drummond J’s comments regarding the issue of fine distinctions between goods in McHattan v Australian Specialised Vehicle Systems Pty Ltd[13]:

   The statute now makes clear that a mark can be limited by an order made on a non-use application to exclude goods in respect of which the mark was originally registered, but in respect of which specific goods the proprietor has not used his mark, while leaving his registration otherwise intact. ...

   But in contrast to the position under s 23 of the 1955 act, it is the registered proprietor who bears the onus of rebutting allegations of non-use of his mark in relation to the specific goods to which the non-use application relates. See s 100(1). As is clear from s 100(2) and (3), the registered proprietor will only rebut an allegation of non-use of specific goods covered by his registration by proving use of his mark in relation to those specific goods: proof of use of his mark in relation to different goods but which are goods of the same description as the goods the subject of the non-use application is no longer sufficient to defeat a non-use application in relation to particular goods covered by the original registration. The registered proprietor of a mark was thus better placed to defeat a non-use application brought under s 23 of the 1955 Act in reliance on his non–use of some of the goods covered by his registration than is the registered proprietor of a mark who is faced with a non-use application under s 92 of the 1995 Act.

   But, in my opinion, the restricted scope the registered proprietor of a mark has to defeat a non-use application brought under s 92 of the 1995 Act compared with the position under the 1955 Act shows that there is a real question as to the proper interpretation to be placed on the expression "any or all of the goods ... in respect of which the trade mark ... is registered" in s 92(1): if that provision is construed to permit fine distinctions to be drawn between two items, eg, between a sedan motor car and a utility motor car or the sort of distinction implicit in the second of the respondents’ non-use applications, viz, that between armoured military vehicles of greater than eight tonnes and smaller armoured military vehicles, the value of trade mark registration under the new Act is potentially capable of very great erosion.

   ... The potential for fragmented ownership of the same or a very similar mark in respect of very similar goods to cause confusion, in my opinion, further illustrates the difficulties in identifying the construction that should be placed on the range of goods that s 92(2) permits to be made the subject of a non-use application.

I am therefore inclined to treat use shown in respect of various items of clothing as use in respect of other items of clothing, and to not make distinctions between such goods as ‘T-shirts’ and ‘shirts’ or ‘jackets’ and ‘overcoats’.

[13] [1996] 48 FCA 1.

1. As to whether the use by CWF is authorised use within the meaning of s 8 of the Act, I am satisfied that it was. This is not a case wherein mere capacity to control is demonstrated by the bare existence of a license, without any other connection or communication between the Opponent and the licensee CWF. Firstly, as to the existence of the license agreement, I am prepared to infer that a license to use the Opponent’s Trade Marks did exist, given: the declared statements from Ms Sultan; the provision of invoices and catalogues from CWF to the Opponent; the sales reports given by CWF to the Opponent; the existence and nature of the license agreements relating to other types of goods; and to some extent the document placed into evidence purporting to be the license agreement that is nonetheless written in French. Secondly, as to whether the Opponent exercised the kind of control envisaged by s 8 of the act and discussed in Lodestar, I am similarly prepared to infer that it did. A reporting obligation by CWF to the Opponent is apparent from the sales report in evidence (albeit it is dated six days before the relevant period) which also shows the styles of clothing sold, and from a ‘status report’ of sales for the 2010 calendar year (from which the Opponent’s royalty fees were apparently calculated). I bear in mind also the advertising of the children’s clothing line in the Opponent’s French edition of its magazine (albeit shortly before the relevant period).

2. In relation to the use being in respect of children’s clothing only, such is the case and the question therefore arises as to whether the Opponent’s goods ought to be restricted to children’s clothing or the Registrar’s discretion exercised to maintain the registrations as they stand in class 25. As already stated the Registrar’s discretion is broad and may take into account use upon similar goods and potential confusion should an impugned mark be removed from the Register. Here, I consider there are a number of factors that weigh in favour of maintaining the Opponent’s Trade Marks as they stand. Firstly, I accept that there is a convergence between adults’ and children’s clothing: as indicated in the Opponent’s investigation report it is not unusual for adult clothing brands in Australia to also offer children’s clothing (although I acknowledge the reverse, being dedicated children’s clothing brands diversifying into adult’s clothing, is less common). Secondly, I consider that there is a potential for confusion to arise should other parties use trade marks deceptively similar to ELLE in respect of clothing for markets other than children. To that end, I am satisfied that it is reasonable to maintain registration of the Opponent’s Trade Marks in respect of all the goods in class 25.

Class 18

1. According to the Applicant there is no suggestion of use of registrations 514899 and 1000270 in respect of the goods in class 18 (identified at Attachment A), with the exception of ‘handbags’, ‘school bags’ and ‘umbrellas’. The Applicant also submits that the alleged use in relation to handbags, school bags and umbrellas suffers from the same flaw as that identified in relation to clothing (namely that the use by CWF is not authorised), and further that the alleged use is demonstrated only by the depiction of those goods in catalogues (there is no evidence of actual sales of those goods). The relevant catalogues are dated 2009 (therefore before the relevant period), 2010 and 2011, and the Applicant asserts that there is no evidence any of the catalogues were in fact distributed in Australia and if so, to whom and when.

2. The Opponent points to the 2009, 2010 and 2011 catalogues which depict the handbags, school bags and umbrellas, and to sales made to Australian entities (albeit of other goods) pursuant to those catalogues. It also submits that in the period 1990 to 2002, during which the Australian edition of ELLE magazine was originally published, the Opponent’s Trade Marks were used in respect of tote bags and make-up bags as promotional items, and it is therefore reasonable to infer that the Opponent may use its trade marks in relation to such goods in the future.

3. Despite the lack of actual sales[14] of the Opponent’s goods in class 18, I consider that use occurred during the relevant period by virtue of their depiction in at least the 2011 catalogue - catalogues from which a number of Australian entities made purchases, albeit of other goods, that are evidenced by invoices. For the same reasons identified in relation to class 25, I am prepared to infer that the use by CWF was authorised within the meaning of s 8 of the Act. Additionally, it is not uncommon for clothing fashion brands to produce bags and luggage sets under the same trade mark. This is then another factor weighing in favour of maintaining the Opponent’s registrations in class 18. Once again, their removal may lead to confusion should other parties use deceptively similar marks in respect of class 18 goods. I reiterate also Drummond J’s comments regarding fine distinctions between goods in the context of removal applications.

   [14] Which are not required to prove use: see Dick Smith Investments v Ramsey [2016] FCA 939, [125].

1. I am accordingly satisfied that it is reasonable to maintain the Opponent’s registrations 514899 and 1000270 in respect of all of the goods in class 18.

Class 3

1. The Applicant asserts there is no suggestion of use in respect of the goods in class 3 of the Opponent’s registration 1000270 (see Attachment A), with the exception of ‘perfumery’ and ‘cosmetics including toilet and cosmetic creams and powders’. In relation to perfumery and cosmetics, the Applicant argues that the use by the licensee YSL Beaute (‘YSL’) is not authorised within the meaning of s 8 of the Act: the license agreement with YSL is in French, Ms Sultan does not make any statements about any quality control provisions in the license and there is no evidence of actual control by the Opponent. Additionally, according to the Applicant, there is no evidence of use within the relevant period, such as sales invoices, and the 2% of sales of ELLE perfume allegedly attributable to Australia[15] is submitted to be in relation to ‘YSL’ perfume rather than ELLE (noting that upon packaging the name ‘elle’ is used always in connection with the name Yves Saint Laurent and is in a different font to that of the Opponent’s registration). Lastly, the Applicant submits that the examples of promotion of the perfume in evidence date from 2008 and 2009, outside of the relevant period.

   [15] Referred to in the description of evidence at paragraph 33 of this decision.

2. In support of use in class 3 the Opponent points to promotion of ELLE perfume that took place between 2008 and 2009, the sales of products in major retailers including David Jones and Myer stores, and the contested 2% of global sales of ELLE perfume that derived from Australia in 2012 according to the ‘presentation’ provided to the Opponent by YSL.

3. There is little evidence of use in the relevant period in respect of perfumery and cosmetics. The only evidence dated within the period is the ‘presentation’ by YSL to the Opponent which indicates in a pie chart that 2% of the global sales of ELLE perfume by YSL in 2012 was attributable to Australia (and sales of ELLE perfume accounted for 5% of total perfume sales by YSL); and the apparent amendment to the existing license agreement between the parties signed on what appears to be 10 December 2010 (within the relevant period). The remaining evidence is either undated or dated shortly before or after the relevant period.

4. In terms of authorised use, I am prepared to infer that a license agreement existed between the Opponent and YSL (from the filing of the document written in French which identifies the parties, ‘Australie’ as part of the territory and ‘parfum’ and ‘eau de toilette’ as at least some of the ‘Produits’). As to control by the Opponent, I acknowledge that the circumstances are less clear than that in respect of class 25. Only one ‘presentation’ has been made regarding sales under the license agreement, and so a reporting obligation is less clearly illustrated. Additionally the presentation shows images of the perfume and perfumed creams sold by YSL, an example of which is below, that I do not consider make clear any association with the Opponent (the font is different to that of registration 1000270 and there is no apparent reference to the Opponent as opposed to YSL). To that end I do not as readily infer that the products are made under the control of the Opponent or for the Opponent’s benefit.

1. Nonetheless, the ‘presentation’ was provided to the Opponent by YSL, the license agreement is declared to have provided for the payment of a fixed royalty fee, and invoices of sales (albeit dated shortly after the relevant period) of perfumes and perfume ‘sets’ were provided to the Opponent apparently at its request. Although finely balanced, I am prepared to infer that the use was authorised in the terms envisaged by s 8 of the Act, but only in respect of ‘perfumery’ and ‘cosmetics being toilet and cosmetic creams and powders’ (there being no use shown of any other cosmetics). I am not satisfied that the Registrar’s discretion should be exercised in relation to the remaining class 3 goods, either because they are so disparate from the goods of interest that confusion is unlikely, or because there is no apparent plan to diversify into those goods in the foreseeable future.

2. I am accordingly satisfied that the Opponent’s registration 1000270 should be maintained on the Register for the goods ‘perfumery, cosmetics being toilet and cosmetic creams and powders’, and removed from the register in respect of all of the remaining goods in class 3.

Class 9

1. The Applicant asserts there is no suggestion of use in respect of the goods in class 9 of the Opponent’s registration 1000270 (see Attachment A), with the exception of ‘electronic and digitalised publications’ and ‘spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords; optical frames and sunglasses; parts and accessories in class 9 for spectacles’. Nonetheless, it accepts that the Opponent is a magazine publisher and it is now commonplace for magazines to be published in electronic and digital form. To that end the Applicant does not press for removal of the Opponent’s Trade Marks in relation to ‘electronic and digitalised publications’. In relation to the identified eyewear goods, however, it submits that the alleged use was not authorised by the Opponent within the meaning of s 8 of the Act because although license agreements are in evidence, pivotal clauses in them have been redacted, and because there is no evidence of actual control by the Opponent.

2. The Opponent’s submissions focus on ‘electronic and digitalised publications’ and ‘spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords; optical frames and sunglasses; parts and accessories in class 9 for spectacles’, although it also briefly submits that eyewear catalogues distributed by Charmant Inc. display accessories such as cases and cleaning cloths (as well as point of sales material such as counter cards, posters and banners, which do not fall within class 9 in any event). It does not make any submissions in relation to the remaining class 9 goods except that it requests the exercise of the Registrar’s discretion in maintaining them.

3. I mention firstly that it is the Opponent which bears the onus of satisfying the Registrar that the discretion under s 101 ought to be exercised,[16] and broad submissions which do not address the very disparate range of goods in class 9 are unlikely to do so. In the absence of use or persuasive submissions that the Registrar’s discretion ought to be exercised, I am satisfied that the Opponent’s registration 1000270 should be removed for those goods in class 9 other than those specifically identified above (which I will discuss further) and other than ‘eyeglasses, eyeglass frames, eyeglass cases, eyeglass chains, eyeglass cords’ (which I consider to be the same kind of thing as ‘spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords’).

   [16] Optical 88 Limited v Optical 88 Pty Limited (No. 2) [2010] FCA 1380, [273].

4. As to the identified eyewear goods, although I have some reservations I am prepared to infer that the use by Charmant Inc is authorised use within the meaning of s 8 of the Act. A license agreement dated within the relevant period is in evidence, and invoices dated within the relevant period as well as the relevant catalogues to which the invoiced item numbers pertain have been provided to the Opponent apparently at its request. I note the redaction of clauses in the license agreements, and whilst the redactions render some provisions unclear there is no reason presented to seriously doubt what Ms Sultan declares regarding the nature of the relationship. I note also that the font of the ELLE trade mark used in the catalogues distributed by Charmant is the same as that used upon the Opponent’s magazines, and the ELLE Eyewear Collection 2011 catalogue is prefaced with a short blurb regarding ELLE magazine:

   ELLE. With 42 editions and 19 million readers worldwide, ELLE is the reference in fashion trends and news throughout the world. That special relationship with independent young and openminded women around the globe has now been developed into a collection of licensed products distilling the unique ELLE style…

5. Accordingly, I am satisfied that the Opponent’s registration 1000270 should be maintained in class 9 in respect of ‘electronic and digitalised publications; spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords; optical frames and sunglasses; parts and accessories in class 9 for spectacles; eyeglasses, eyeglass frames, eyeglass cases, eyeglass chains, eyeglass cords, but excluding the following goods namely - clothing for protection against accidents and fire’,[17] and removed for all remaining goods in class 9.

Class 16

[17] As the registration stands prior to any amendment, it contains the exclusion ‘…but excluding the following good namely – clothing for protection against accidents and fire; phonographic styli and cartridges’. As a general principle, and matter of logic, goods which do not fall within the scope of specified goods cannot then be excluded from them. Nonetheless the exclusion relating to clothing for protection against accidents and fire has been maintained because it may be argued that the various eyewear goods are the same or similar to them. Rather than disrupt the exclusion I consider it more prudent to maintain its status quo.

1. Both parties are brief in respect of goods in class 16. The Applicant asserts that of the goods specified in class 16 of registration 1000270 (see Attachment A), use is suggested only in connection with ‘printed matter, magazines, publications, catalogues, paper and products made thereof in class 16’. The Applicant does not press for removal of these goods, but submits that the ground is made out in respect of the remaining goods.

2. The Opponent specifically identifies the same goods and asserts use in relation to them, and also asserts use in relation to paper bags and display stands. There is no use in respect of the remaining goods in class 16, but the Opponent requests the exercise of the Registrar’s discretion (although as with class 9 above, it does not make any submissions specific to the more disparate goods in class 16).

3. Given that ‘printed matter’ and ‘publications’ (for which the Applicant does not press removal) encompass all of ‘newspapers, periodicals, reviews, illustrated reviews, magazines, books, catalogues, prospectuses, albums, photo albums, calendars, posters, diaries, address books, atlases, photographs’, the registration will also remain on the Register for those goods. I consider additionally that ‘cardboard and products made thereof’ is of the same description as ‘paper and products made thereof’ (for which the Applicant does not press removal), and therefore that registration in respect of those goods should also be maintained.

4. In the absence of use or persuasive submissions that the Registrar’s discretion ought to be exercised in respect of the remaining goods in class 16, I am not persuaded that registration 1000270 should be maintained for them. I am therefore satisfied that registration 1000270 should be removed except in relation to ‘printed matter, newspapers, periodicals, reviews, illustrated reviews, magazines, books, publications, catalogues, prospectuses, albums, photo albums, calendars, posters, diaries, address books, atlases, photographs; paper, cardboard and products made thereof’.

Classes 20 and 21

1. The Applicant points out that the breadth of goods for which trade mark 514899 is registered in classes 20 and 21 is particularly notable, and notes that the Opponent accepts it has not used its trade marks in respect of those goods. The Opponent states that its evidence does not disclose use of the trade marks in relation to those goods, but nevertheless it requests the exercise of the Registrar’s discretion.

2. I am not satisfied that registration of 514899 should be maintained in classes 20 and 21. There is no evident use upon those goods or goods that are similar (from which confusion might arise should the Opponent’s registration be removed). Nor has the Opponent made persuasive submissions regarding the Registrar’s discretion: its submissions are general in nature and focus upon potential confusion arising from use upon goods similar to those of interest such as fashion items and magazines. Given that the goods in classes 20 and 21 are so far removed from those demonstrated to be of interest to the Opponent, I am not satisfied that the discretion ought to be exercised.

3. To that end I am satisfied that registration 514899 should be removed from the Register in respect of all of the goods in classes 20 and 21.

Class 35

1. The Applicant seeks removal of the class 35 services of registration 514899 (see Attachment A) other than ‘advertising services’ and ‘subscription services for magazines’, for which it does not press removal.

2. The Opponent argues that its trade marks have been used in relation to advertising and subscription services, and it gives examples from the evidence where use in respect of them is shown. In respect of the remaining services it requests the exercise of the Registrar’s discretion.

3. I consider that ‘advertising services’ encompasses ‘outdoor advertising services; distribution of product samples; distribution of sales promotional materials for mail order and other services including leaflets, pamphlets, printed matter, prospectuses, signs, and items for the presentation and display of goods; sales promotional and advertising campaign services; advertisement and bargain offer services for mail order and for other purposes; distribution and rental of material for commercial presentation and advertisement’. To that end, given removal is not pressed in relation to ‘advertising services’ the registration will remain on the Register in respect of the specific types of advertising services identified above.

4. In relation to subscription services, I am satisfied that use has been shown in relation to subscription services for magazines. I also consider confusion likely to arise should others be permitted to use similar trade marks in relation to subscription services for periodic publications generally, and so it is appropriate to maintain the registration in relation to ‘subscription services for magazines and periodicals’. I note also that publishers of magazines and periodicals commonly make available electronic and digitalised versions, and so it is appropriate to further qualify this claim to ‘subscription services for magazines and periodicals, including electronic and digitalised magazines and periodicals’.

5. I am therefore satisfied that registration 514899 should be maintained in respect of ‘advertising services, outdoor advertising services; distribution of product samples; distribution of sales promotional materials for mail order and other services including leaflets, pamphlets, printed matter, prospectuses, signs, and items for the presentation and display of goods; sales promotional and advertising campaign services; advertisement and bargain offer services for mail order and for other purposes; subscription services for magazines and periodicals, including electronic and digitalised magazines and periodicals; distribution and rental of material for commercial presentation and advertisement; none of the foregoing services relating to pharmaceuticals, prostheses, tobacco, smokers' articles, matches, phonographic styli and cartridges, clothing for protection against accidents and fire’. However in the absence of use or persuasive submissions regarding the Registrar’s discretion, I do not consider that registration should be maintained in relation to the remaining class 35 services.

Class 41

1. The Applicant asserts no use of the Opponent’s Trade Marks in relation to the class 41 services of registration 514899 other than ‘publication of magazines’ for which it does not press removal. It also submits that although the Opponent makes specific submissions in relation to ‘organisation of contests, [of] games and [of] campaigns for information’, they are misplaced and in fact no evidence of use of the Opponent’s Trade Marks in relation to those services took place in the relevant period. To that end it presses for removal of these services, as well as all of the remaining class 41 services.

2. The Opponent submits that its trade marks were used in relation to ‘publication of magazines’ and ‘organisation of contests, [of] games and [of] campaigns for information’. For use during the relevant period it relies upon a recommendation made in what appears to be an internal document, ‘the 2013 ELLE Australia Launch Strategy and Recommendations’, that at the fashion runway in 2013 event guests would be asked to ‘like’ and ‘share’ the Opponent’s ‘Facebook’ page ‘via an amazing competition’. The Opponent also submits that it is common for fashion and style magazines to organize competitions to increase readership and to promote client’s products. In relation to its remaining class 41 services the Opponent requests the exercise of the Registrar’s discretion to maintain the registration.

3. Although I am not persuaded that the Opponent’s Trade Marks were used in respect of ‘organisation of contests, of games and of campaigns for information’ during the relevant period (despite the reference to the ‘amazing competition’ apparently linked to the Opponent’s ‘Facebook’ page in 2013), I consider the Opponent’s submission that such services are commonly provided in connection with magazines has merit. I know from my own knowledge and experience that such is the case, and it is illustrated further by the examples from the original publication of the Opponent’s magazine in Australia in the late 1990’s.

4. To that end I am satisfied that it is reasonable to maintain registration 514899 in class 41 under the Registrar’s discretion in respect of ‘publication of magazines; organization of contests, of games and of campaigns for information’. However in the absence of use or any persuasive submissions that the Registrar’s discretion should be exercised in relation to the remaining services, which encompass services quite disparate from those reflected in the evidence, I do not consider it appropriate to apply the discretion in relation to any of the remaining class 41 services.

Class 42

1. The parties’ submissions in relation to class 42 are somewhat unclear because they either address services that are not the same as those described in registration 514899, or make assertions based on different parts of composite service claims. For clarity I will address the services in the same form as they are registered and composite claims will be addressed in their entirety.

2. The Applicant asserts there is no suggestion of any use in relation to the class 42 services with the exception of ‘editing of written texts’ and ‘correspondence exchange services including discussion and news groups through computer exchange’ – although the latter service in its entirety is ‘correspondence exchange services including discussion and news groups through computer exchange or through access to computerized networks, being the provision of Internet access; all of the foregoing services relating to landscaping, landscape gardening, beauty, health, fashion, interior decoration, exterior decoration or cooking’. The Applicant also makes submissions that there has been no use in relation to ‘the provision of information services’ although I note that the registered description is actually ‘providing information on fashion and on decoration’.

3. The Opponent asserts use in relation to ‘the provision of information services’ (albeit that is not the description of the service in the registration). Its argument is that information is provided via its magazine, as well as on its websites and ‘Facebook’ pages which are accessible in Australia, and therefore its trade marks have been used in respect of the ‘provision of information services’. It also argues that its websites and ‘Facebook’ pages permit discussion by consumers, and therefore its trade marks have been used in relation to ‘correspondence exchange and computer exchange services’ (albeit that is not the description of the service in the registration). In relation to ‘editing of written texts’ it says it provides those services in the context of production of the ELLE magazine. Lastly, it requests the exercise of the Registrar’s discretion in relation to all of the remaining class 42 services.

1. In relation to ‘providing information on fashion and on decoration’, being the service which is actually specified in the registration, I consider that the Opponent did provide that service during the relevant period via its website and the various editions of magazines that were available in Australia during the relevant period. The Applicant’s submission that the Opponent provides a good, being a magazine, as opposed to a service, does not persuade me otherwise. The service may be delivered via various means, and regardless the Opponent’s provision of such information online is also noted.

2. It is not entirely clear what the service ‘correspondence exchange services including discussion and news groups through computer exchange or through access to computerized networks, being the provision of Internet access; all of the foregoing services relating to landscaping, landscape gardening, beauty, health, fashion, interior decoration, exterior decoration or cooking’ entails. The phrase ‘being the provision of Internet access’ would usually be interpreted as a limiting clause to the words preceding it. At the same time I bear in mind that the registration was filed in 1989, before the advent of the internet as it is known and utilised today, and perhaps what was meant by the description then is not how it would be interpreted now.[18] It appears that the Opponent interprets the service as ‘correspondence exchange and computer exchange services’, as it gives that description and discusses how its ‘Facebook’ pages and websites permit discussion by consumers. Even if it was the case that this is how the service should be interpreted, business owners upon third party social media sites do not actually provide the service of enabling discussion via comments. Rather that ability is provided by the owner of the social media sites. It is possible that the same may be said of websites, although arguably if a website owner decides to allow comments and discussion upon its own website then it provides some kind of discussion and news group service (albeit not one that is qualified as ‘being the provision of Internet access’). In this regard the Opponent refers to advertisements in the US edition of its magazine that were distributed during the relevant period, inviting readers to join the ‘ELLE Inner Circle’ at ‘elleextra.com’.

   [18] I note also that in 1989 the fifth edition of the Nice Classification applied, and most internet services were classified in class 42 at that time.

3. Bearing these factors in mind, I consider that the Opponent has provided a forum via its website(s) wherein consumers may participate in a ‘correspondence exchange service’. Although it is not clear how a ‘correspondence exchange service’ can be qualified as ‘being the provision of Internet access’, I am prepared to infer that that statement was originally included to indicate that the ‘correspondence exchange service’ took place via the internet (which is further supported by the additional description ‘…including discussion and news groups through computer exchange or through access to computerized networks’).

4. In relation to ‘editing of written texts’, I agree with the Applicant’s submission that there is no evidence to establish the Opponent provides this service to third parties. The Opponent edits its own texts for the publication of its own magazines. It is therefore not a service that it provides in trade.

5. I am therefore prepared to maintain registration 514899 in class 42 in respect of the services ‘correspondence exchange services including discussion and news groups through computer exchange or through access to computerized networks, being the provision of Internet access; all of the foregoing services relating to landscaping, landscape gardening, beauty, health, fashion, interior decoration, exterior decoration or cooking; providing information on fashion and on decoration; none of the foregoing services relating to pharmaceuticals, prostheses, tobacco, smokers' articles, matches, phonographic styli and cartridges, clothing for protection against accidents and fire’. However in the absence of use or any persuasive submissions that the Registrar’s discretion should be exercised in relation to the remaining disparate services I do not consider it appropriate to maintain the registration in relation to any of the remaining class 42 services.

Decision

1. Section 101 of the Act relevantly provides:

   (1)Subjection to subsection 3 and section 102, if:

   (a)   The proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)   The Registrar is satisfied that the grounds on which the application was made have been established;

   The Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
   …
   (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

2. I am satisfied that registration of the Opponent’s Trade Marks should be maintained in respect of certain goods and services, and that the Opponent’s Trade Marks should be removed for all remaining goods and services. The specific goods and services for which registration is maintained is indicated at Attachment B, wherein they are in italics and any new words are underlined, and the goods and services to be removed are struck out.

3. I direct that the Opponent’s Trade Marks be removed from the Register in accordance with the amendments set out in Attachment B, after one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, the registrations will not be amended or removed until the appeal is withdrawn or discontinued. Otherwise, the registrations will be subject to the decision of the Court.

Costs

1. Costs normally follow the event. Here each party has had a measure of success in the opposed applications for removal. I therefore consider it most appropriate that each party bears its own costs in the proceedings under s 92, and so I decline to make any award of costs.

Opposition to registration under s 52

1. To reiterate, the relevant details of the opposed trade mark application are:

Trade Mark

ADDITION ELLE (‘the Applicant’s Trade Mark’)

Application Number

1520416

Filing Date

17 October 2012

Goods and Services

Class 25: Clothing.

Class 35: Retail services.

1. In its Statement of Grounds and Particulars (‘SGP’) the Opponent particularises grounds of opposition under ss 44, 60 and 42(b) of the Act. It relies upon its trade mark registrations 514899 and 1000270 as the basis for the ground under s 44, and names ss 18 and 29 of The Australian Consumer Law (in Schedule 2 of the Competition and Consumer Act 2010) as well as the tort of passing off as the basis for the ground under s42(b).

2. A summary of the relevant facts and events in the parties’ evidence is as follows.

The Opponent’s evidence

1. Much of the Opponent’s evidence has already been described in respect of the removal proceedings under s 92. I will not repeat it here, rather I will only mention relevant facts and events that have not already been discussed.

2. In addition to the French, US and UK editions of ELLE magazine distributed in Australia, an Australian edition was launched on 14 February 1990. Publicity for that launch took place via television (on the ‘Gibson Program’ on Channel 10, the ‘Today Show’ on Channel 9 and in various advertisements run during prime time programs), radio (on 6 stations around Australia) and major newspapers of Sydney and Melbourne. 299 685 copies of the first issue were distributed in Australia and New Zealand. The Australian edition ran until 2002, at which time its average circulation was 26 000 copies per month. As already discussed the Australian edition was re-launched in September 2013.

100. As at the date of Ms Sultan’s declaration in 2013 there were local editions of ELLE magazine in 43 countries around the world, totaling 6.56 million copies sold monthly and 21 million readers. It is principally a fashion and lifestyle magazine directed to ‘young and middle-aged urban-based, educated, career-oriented, upmarket women with significant disposable income’. Worldwide revenue for the years 1999 to 2012 is in the order of hundreds of millions of Euros, and advertising expenditure (presumably also worldwide) for the years 1999 to 2008 is in the order of tens of millions of Euros. Similarly significant revenue is also generated from licensing activities, however the nature of the licensed products or services that generated that revenue is not stated.

101. An 86 page document lists the Opponent’s trade mark applications and registrations around the world, which Ms Sultan declares to amount to ‘thousands of registrations’.

1. In the years 2010, 2011 and 2012, the website ‘ recorded respectively 445 130, 650 510 and 5 164 327 page views from Australia. The Australian edition of the magazine is supported by a dedicated website at ‘ and there are now (as at Ms Sultan’s declaration in 2013) 34 local websites. Ms Sultan also declares that the French and UK websites ‘ and ‘ are widely visited by Australians, and provides ‘page view’ and ‘visit’ numbers for the years 2011 and 2012.

103. According to a 2012 ‘presentation’ of ‘ELLE around the world’ (which appears to be either an internal document or a publicity document) there are 10 ELLE applications for iPad® and 18 ELLE applications for iPhone® and ‘mobile’.

104. ELLE magazine has diversified from fashion into other fields. They include ELLE DECORATION and ELLE DECO(R) in relation to home decoration and ELLE CUISINE, ELLE ETEN and ELLE BISTRO in relation to gastronomy. Ms Sultan declares ‘reference can also be made to ELLE GIRL, ELLE ACCESSORIES, ELLE PLUS, ELLE PUI’ although it is not stated whether these are magazine titles or what these names are in relation to. The French edition of ELLE DECORATION magazine is distributed in Australia, and circulation figures are provided for the years 2009 to 2011. There are 40 spin-off titles of ELLE magazine and 170 supplements.

105. Since 2002 ELLE magazine has organized the ELLE STYLE AWARDS in London, and in the UK ‘consumer[s] associate ELLE with fashion and beauty because of the partnerships and initiatives organized and promoted in the magazine with major fashion and beauty companies’. However Ms Sultan does not explain further what these partnerships and initiatives are.

106. Ms Sultan also submits that ELLE has a reputation in the ‘selection, appraisal, offering for sale and selling of fashion items and clothing’, explaining a service run by the Opponent whereby selected and appraised goods are offered for sale (originally by mail order and now through e-commerce) under the names ELLE BON MAGIQUE and ELLE PASSIONS. There is no evidence that this service has ever been made available to, or utilized by, Australian consumers. Licensing activity by various product lines is summarised in a 2008 presentation for an ‘ELLE Sales and Marketing Meeting EUROPE’, however there is no indication in that presentation which of these product lines were offered for sale or made available in Australia. Nonetheless the Opponent provides annual revenue generated by ‘the sale of ELLE products’ in Australia for the years 1997 to 2011, and it appears that the products lines which generated that revenue are children’s wear, watches and eyewear (although data which identifies product lines is only exhibited for the years 1997 to 2000).

107. In addition to the sales of children’s clothing by the licensee CWF, the sales of eyewear by the licensee Charmant Inc., and the sales of perfumery by the licensee YSL, Ms Sultan declares that shoes were sold in Australia under license by the entity JB MARTIN and provides figures for such sales in 2005 and 2006.

The Applicant’s evidence

108. Ms Leclerc declares the following on behalf of the Applicant.

109. The Applicant was founded in 1926 and is one of Canada’s largest women’s fashion retailers operating under a number of store banners, one of them being ‘Addition Elle’. Currently the Applicant operates over 800 stores in Canada, 105 of which are ‘Addition Elle’ stores, and Ms Leclerc declares the Applicant is one of the largest publicly-owned retail companies in Canada.

110. The Applicant’s Trade Mark was created in 1979 by a predecessor in title and rights to it were acquired by the Applicant in 2003. The Applicant’s Trade Mark is used in respect of clothing and retailing of clothing for plus-sized women, primarily targeted to women aged between 20 and 50 years old. First use of the Applicant’s Trade Mark took place in Canada in 1979. Online sales commenced in Canada and the USA in 2007 originally via the website ‘ (through which the Applicant sold all of its plus-sized brands) and then in 2014 via the website ‘ Worldwide revenue figures are provided for the years 2003 to 2014 which are substantial.

111. It is not possible to purchase clothing from Australia via either of the Applicant’s websites. Nonetheless, the websites are accessible to Australians and Ms Leclerc declares that between 2011 and July 2014 there were more than 25,000 visits from Australian IP addresses to the ‘ website, and between July 2014 and February 2015 there were over 7500 visits from Australian IP addresses to the website ‘ In Australia the Applicant sells its goods via a third party distributor ‘Ezibuy’. The first sale under the Applicant’s Trade Mark through Ezibuy occurred in June 2013 and clothing has continued to be sold since then. 2013 and 2014 sales figures in Australia are provided which are somewhat modest but still commercially significant. Ezibuy also distributes a catalogue eight times per year in which the Applicant’s Trade Mark is displayed to approximately 100,000 Australians.

113. The Applicant’s Trade Mark is registered in Canada (since 1996 as ADDITION-ELLE and since 2013 as ADDITION ELLE), the United Stated of America (since 2011 as both ADDITION ELLE and ADDITIONELLE), Saudi Arabia (since 2003 as ADDITIONELLE) and the United Arab Emirates (since 2002 as ADDITIONELLE).

114. The Applicant is aware that the Opponent has registered the trade mark ELLE in classes 25 and 35 in the USA and Canada. Those registrations co-exist with the Applicant’s registrations, and the Applicant is not aware of any confusion between the ELLE and ADDITION ELLE trade marks in Australia or elsewhere.

115. The Applicant’s legal representatives conducted searches of the online database of Australian trade marks, revealing that (as at 13 March 2015, the date of Ms Lee’s declaration) there were 31 trade marks containing the word prefix ELLE owned by the Opponent and 52 trade marks containing the word prefix ELLE not owned by the Opponent. Searches in the Yellow Pages and White Pages online directories also reveal a number of businesses relating to beauty and fashion incorporating the name ELLE, and a Google search of the word ELLE reveals the Opponent’s website plus a number of other websites whose domain names incorporate the word ELLE.

Opponent’s response to Applicant’s evidence

116. Ms Sultan declares that her company has consistently and actively defended the ELLE trade mark all around the world. The Opponent has taken action against the trade marks ELLESSE (the parties are now subject to a coexistence agreement), ELLE MACPHERSON (the parties have agreed to certain manners in which that name will be presented), EMPORIO ARMANI lei/elle/she/ella (the parties have agreed the word ‘elle’ will not be highlighted), JEAN ELLE’S (the parties are subject to a coexistence agreement) and ELLE L’AIME (the parties are subject to a coexistence agreement).

Ground of opposition under s 44

117. It is convenient to begin with a discussion of the ground of opposition under s 44 of the Act.

118. Section 44 relevantly provides:

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.

…

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

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

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

(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

119. Subsections (3) and (4), referred to in the provisions above, relate to use of an applied-for mark or other circumstances which make acceptance of a trade mark proper. As will become clear, it is unnecessary for me to address those subsections.

120. In order to establish the ground the Opponent must establish the existence of another person’s trade mark (or trade marks) which has an earlier priority date than that of the Applicant’s Trade Mark, which is in respect of similar or closely related goods and/or services and which is deceptively similar or substantially identical to the Applicant’s Trade Mark. As indicated previously, the Opponent relies upon its registrations 514899 and 1000270 to do so.

121. The Opponent’s registrations have earlier priority dates than the Applicant’s Trade Mark and the Opponent does not contend that its trade marks are substantially identical to the Applicant’s Trade Mark. The issues for determination therefore are whether the Opponent’s registrations and the Applicant’s Trade Mark are deceptively similar, and whether the goods and services of the parties are similar or closely related.

122. ‘Deceptively similar’ is defined in the Act which states at s 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’.

123. In Shell Company of Australia Ltd v Esso Standard Oil Ltd Windeyer J articulated the test for deceptive similarity as:

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 [trade mark].[19]

[19] [1963] HCA 66, [13].

124. I am not persuaded that the impression and potential recollection of the Opponent’s registrations is so similar to the Applicant’s Trade Mark that confusion is likely to ensue. The sole element of the Opponent’s registrations is the word ELLE (with some stylization in registration 1000270 and in the second of the series of trade marks in 514899). This is most likely to be interpreted in Australia as a female name, given that a number of personalities by that name are well-known in Australia, such as Elle Macpherson (a former ‘supermodel’ and now business woman with a prominent lingerie line under her name), Elle King (a singer with a 2016 hit song in Australia), and even the fictitious character Elle Woods (of the ‘Legally Blonde’ series of movies and now stage show). It is also likely that a significant number of Australians will know the word ELLE to be French for ‘she’, a word that therefore lends itself somewhat to goods or services primarily directed at women.

Fancy Series Trade Mark
Registration Number	681214
Goods	Class 25: Clothing in class 25, including waterproof clothing, pants, jumpers, trousers, knickers, petticoats, short pants, bermuda shorts, jeans, underpants, one-piece suits, suits, shirts, bodices, short-sleeved shirts, long-sleeved shirts, tee-shirts, sweat shirts, smocks, sweaters, turtle-neck sweaters, pullovers, knitted jerseys, jackets, cardigans, vests, waistcoats, rain coats, anoraks, coats, topcoats, overcoats, duffle-coats, gabardines, blazers, kimonos, capes, skirts, dresses, blouses, jogging outfits, fur clothing, scarves, shawls, sashes, socks, stockings, pantyhose, panties, hosiery, lingerie, leggings, leotards, tights, corsets, underclothing, aprons, sports wear, swimsuits, clothing gloves, mittens, dressing gowns, pyjamas, bath robes, clothing belts, clothing ties, neckties and clothing collars; footwear namely: shoes, boots, skiboots, after-skiboots, slippers, sandals, sports footwear and sports boots; headgear namely: hats, caps, skull caps, berets, cowls, headbands, hoods, earmuffs, visors and head scarves.

Trade Mark
Registration Number	1000270
Goods	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, talcum powder, antiperspirant sprays and antiperspirant liquid for such sprays, essential oils, cosmetics including toilet and cosmetic creams and powders, hair lotions; dentifrices.
Class 9: Electronic apparatus and instruments for the recording, transmission, reproduction and duplication of sounds and/or images; household electric and electronic apparatus and equipment; television receivers; reading equipment for magnetic and digital recording media; computers and data-processing equipment; computer hardware and software; data-banks, vocal data-bases; pictorial, sound and textual data-banks; photographic equipment; weighing machines, calculators; video recorders, video game consoles, cameras, tape recorders, telephones, video cameras with built-in video recorders, electronic diaries, electronic and digitalised publications, electronic translators; magnetic and audiovisual data-carriers; magnetic cards, electronic cards, electronic game cards; compact discs, video discs, optical discs; magnetic pens and electronic pens; software; spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords; optical frames and sunglasses; parts and accessories in class 9 for spectacles; eyeglasses, eyeglass frames, eyeglass cases, eyeglass chains, eyeglass cords, contact lenses, containers for contact lenses; but excluding the following goods namely - clothing for protection against accidents and fire, phonographic styli and cartridges.
Class 16: Printed matter, newspapers, periodicals, reviews, illustrated reviews, magazines, books, publications, catalogues, prospectuses, albums, photo albums, calendars, posters, diaries, address books, atlases, book-binding material, photographs; stickers, decalcomanias, post cards, stationery, writing instruments, pens, adhesives for stationery and household purposes, artists' materials, paintbrushes, type-writers and office requisites (with the exception of furniture); teaching and educational material (other than apparatus); printing blocks, printers' type, wrapping paper, plastic material for packaging in class 16; printers type, electrotypes, paper, cardboard and products made thereof in class 16, plastic or cardboard boxes for packaging and storage.
Class 18: Game bags, beach bags, backpacks, evening bags, handbags, tote bags, travelling bags, toilet bags, make-up pocket bags, school bags, satchels, shopping bags, sling bags for carrying infants, wheeled shopping bags, waist bags, purses, billfolds, chequebook cases, card cases, key cases, briefcases, unfitted vanity cases, luggage, trunks, valises, attache cases, suitcases, pocket wallets, umbrellas, parasols, canes, walking sticks, animal skins, furs, hides, walking sticks, whips, harness and saddlery; leather and imitations of leather; baggage and goods in class 18 made of leather and/or imitations of leather including - luggage, bags, pouches, envelopes, key cases, travelling sets, cases, soft luggage cases, hard luggage cases, wallets, toilet kits and make-up kits.
Class 25: Clothing, footwear, headgear.

Attachment B

Fancy Series Trade Mark
Registration Number	514899
Goods and Services	Class 18: Game bags, beach bags, backpacks, evening bags, handbags, tote bags, travelling bags, toilet bags, make-up pocket bags, school bags, satchels, shopping bags, sling bags for carrying infants, wheeled shopping bags, waist bags, purses, billfolds, chequebook cases, card cases, briefcases, unfitted vanity cases, luggage trunks, valises, suitcases, pocket wallets, umbrellas, parasols, canes, walking sticks, animal skins, furs, furskins, hides, whips, harness and saddlery; leather and imitations of leather; baggage and goods in class 18 made of leather and/or imitations of leather including: luggage, bags, pouches, envelopes, key cases, travelling sets, cases, soft luggage cases, hard luggage cases, wallets, toilet kits and make-up kits
Class 20: Furniture, armchairs, beds and water-beds not for medical purposes, beds for household pets, bedding (except linen), bed fittings not of metal, furniture benches, work benches, bottle racks, nesting boxes for household pets, boxes of wood or plastic, chairs, chests of drawers, chests not of metal, chopping blocks (tables), coat hangers, coathooks not of metal, coatstands, counters (tables), covers for clothing, cradles, crates, cupboards, curtain holders not of textile material, curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tie-backs, bead-curtains for decoration, cushions, deck chairs, desks, dinner wagons, fixed towel dispensers not of metal, display boards, display stands, divans, dressing tables, easy chairs, filing cabinets, furniture fittings not of metal, office furniture, school furniture, furniture of metal, furniture shelves, hairdressers' chairs, hat stands, head-rests, keyboards for hanging keys, knife handles not of metal, kennels for household pets, ladders of wood or plastics, library shelves, letter boxes not of metal or masonry, lockers, magazine racks, mannequins, removable mats for sinks, straw mattresses, spring mattresses, bed mattresses, newspaper display stands, flower pot pedestals, pillows, decorative wall plaques not of textile, playpens for babies, furniture racks, seats, seats of metal, showcases, signboards of wood or plastics, removable covers for sinks, sleeping bags for camping, sofas, stands for calculating machines; statues and statuettes of wood, wax, plaster or plastic; stools, table tops, furniture tables, tables of metal, tea carts, tea trolleys, tent pegs not of metal, trays not of metal, furniture trolleys, umbrella stands, furniture washstands, casks of wood for decanting wine, writing desks; air cushions and air mattresses not for medical purposes; picture frames, embroidery frames, silvered glass, identity plates not of metal, jewellery cases not of precious metal, mirrors (looking glasses), nameplates not of metal, plate racks, registration plates not of metal, stuffed animals; works of art, of wood, wax, plaster or plastic; bakers' bread baskets, bamboo, barrels not of metal, fishing baskets, bassinettes, bins not of metal, stuffed birds, slatted indoor blinds, bottle caps not of metal, corks for bottles, caps not of metal, cases of wood or plastic, bottle closures not of metal, clothes hooks not of metal, clothes-pegs, clothes-pins, cork bands, cots, costume stands, drinking straws, fans for personal use, unworked or semi-worked ivory, oyster shells, packaging containers of plastic, reeds (plaiting material), rattan, shells, tortoise shells, unworked or semi-worked whalebone, wickerwork, window fittings not of metal; furniture and works of art or decoration made of wood cork, reed, cane, wicker, horn, bone, shell, ivory, whalebone, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.
Class 21: Clothes brushes, electric toothbrushes, compacts, cosmetic bags and cases, toiletry bags, purses and cases, vanity cases, aerosols dispensers not for medical purposes, baskets for domestic use not of precious metal, basting spoons for kitchen use, beer mugs, heat insulated containers for beverages, dust bins, non-electric blenders for household purposes, ironing boards, bottle gourds, bottle openers, bottles, refrigerating bottles, glass bowls, soap bowls, boxes for sweetmeats not of precious metal, boxes of metal for dispensing paper towels, domestic bread baskets, bread boards, hair brushes, brushes for footwear, material for brush-making, buckets, buttonhooks, cookery molds (moulds) not of precious metal, carpet sweepers, comb cases, ceramics for household purposes, chamois leather for cleaning, clothes racks for drying, coffee filters (non-electric), coffee grinders hand operated, non-electric coffee percolators, coffee services not of precious metal, non-electric portable coldboxes, combs, cooking pot sets, cooking pots, cooking skewers of metal, non-electric cooking utensils, portable coolers, corkscrews, cosmetic utensils, egg cups, fruit cups, cutting boards for the kitchen, deoderising apparatus for personal use, dishes for soap, soap dispensers, drinking flasks for travellers, drinking vessels, egg timers (sand glasses), enamelled glass, epergnes not of precious metal, eyebrow brushes, flasks not of precious metal, flower pots, flower-pot covers not of paper, food cooling devices containing heat exchange fluids for household purposes, non-electric fruit presses for household purposes, frying pans, garbage cans, glass unworked or semi-worked (except building glass), glove stretchers, polishing gloves, gloves for household purposes, glue-pots, grills (cooking utensils), heat insulated containers, holders for flowers and plants (flower arranging), ice buckets, ice cube molds (moulds), ice pails, indoor terrariums (plant cultivation), ironing board covers (shaped), non-electric kettles, non-electric kitchen mixers, kitchen utensils not of precious metal, knife rests for the table, non-electric appliances for removing make-up, menu card holders, nail brushes, paper plates, pepper mills hand-operated, pepper pots not of precious metal, perfume burners, perfume sprayers, perfume vaporizers, fitted picnic baskets (including dishes), pie servers, piggybanks not of metal, cooking pins of metal, pipettes (wine-tasters), plate glass (raw material), polishing material for making shiny (except preparations paper and stone), porcelain ware for decoration and household purposes, pots, pottery, powder compacts not of precious metal, powder puffs, powdered glass for decoration, rolling pins (domestic), salad bowls not of precious metal, salt cellars not of precious metal, salt shakers not of precious metal, earthenware saucepans, scoops (tableware), hand mixers for cocktails, shoe horns, shoe-trees (stretchers), skins of chamois for cleaning, soap boxes, soap holders, spice sets, sprinklers for watering flowers and plants, lemon squeezers, stands for shaving brushes, stew-pans, stretchers for clothing, syringes for watering flowers and plants, dinner plates not of precious metal, tea caddies not of precious metal, tea services not of precious metal, teapots not of precious metal, thermally insulated containers for food, tie presses, toilet paper holders, toilet sponges, toilet utensils, toothbrushes, toothpick holders not of precious metal, toothpicks, trivets (table utensils), trouser presses, utensils for household purposes not of precious metal, fitted vanity cases, vegetable dishes, vessels of metal for making ices and iced drinks, non-electric waffle irons, wash-tubs, water apparatus for cleaning teeth and gums, watering cans, watering devices, non-electric wax-polishing appliances for parquet floors, non-electric wax-polishing appliances for shoes, non-electric whisks for household purposes, wine-tasters (siphons).
Class 25: Clothing in class 25, including waterproof clothing, pants, jumpers, trousers, knickers, petticoats, short pants, bermuda shorts, jeans, underpants, one-piece suits, suits, shirts, bodices, short-sleeved shirts, long-sleeved shirts, tee-shirts, sweat-shirts, smocks, sweaters, turtle-neck sweaters, pullovers, knitted jerseys, jackets, cardigans, vests, waistcoats, rain coats, anoraks, coats, topcoats, overcoats, duffle-coats, gaberdines, blazers, kimonos, capes, skirts, dresses, blouses, jogging outfits, fur clothing, scarves, shawls, sashes, socks, stockings, pantyhose, panties, hosiery, lingerie, leggings, leotards, tights, corsets, underclothing, aprons, sports wear, swimsuits, clothing gloves, mittens, dressing gowns, pyjamas, bath robes, clothing belts, clothing ties, neckties and clothing collars; footwear namely: shoes, boots, skiboots, after-skiboots, slippers, sandals, sports footwear and sports boots; headgear namely: hats, caps, skull caps, berets, cowls, headbands, hoods, earmuffs, visors and head scarves.
Class 35: Business management services; advertising services, outdoor advertising services, distribution of product samples; distribution of sales promotional materials for mail order and other services including leaflets, pamphlets, printed matter, prospectuses, signs, and items for the presentation and display of goods; franchising services being assistance in the operation or the management of industrial or commercial businesses or firms; business administration services, services linked to the operation of an administrative data bank; business information services and business advisory services; sales promotional services including providing user cards, providing magnetic access cards, providing digitalised access cards and providing other access cards; sales promotional and advertising campaign services; advertisement and bargain offer services for mail order and for other purposes; data processing services and data entry services; subscription services for electronic publications and for digitalised publications and for all other publications; subscription services for newspapers, magazines and, periodicals, including electronic and digitalised magazines and periodicals; and reviews; document reproduction and reprography; distribution and rental of material for commercial presentation and advertisement; none of the foregoing services relating to pharmaceuticals, prostheses, tobacco, smokers' articles, matches, phonographic styli and cartridges, clothing for protection against accidents and fire.
Class 41: Educational services, teaching services, training services, entertainment services, cultural activities and sporting activities; services intended for public recreation; correspondence courses; instruction and teaching of beginners and advanced classes in any discipline of general interest; conferences, workshops and courses; organisation of conferences, forums, congresses and colloquiums; production of television and radio programs; publication of books, reviews and magazines; organisation of contests, of games and of campaigns of information. and exhibitions professional or otherwise; production and rental of films and cassettes including video-cassettes and other sound and/or visual media; services relating to the recording and reproduction of sounds and/or images; lending of books and other publications; and staff training.
Class 42: Consulting services in class 42; correspondence exchange services including discussion and news groups through computer exchange or through access to computerised networks, being the provision of Internet access; all of the foregoing services relating to landscaping, landscape gardening, beauty, health, fashion, interior decoration, exterior decoration or cooking; legal services, legal consultancy; services relating to publishing and services relating to selling of goods namely, licensing agreements, making know-how available and transfers of know-how, all relating to use of intellectual property of the proprietor of the mark; copyright management; providing access to computer databases; computer programming, programming electronic apparatus and instruments, programming of telematic and telecomputerised systems, programming of multimedia equipment and mutimedia materials; editing of written texts and translation; videotaping and videotape filming; rental of reading apparatus and instruments for use with multimedia products; design services, interior decor design services, architecture services, landscape gardening services and construction gardening services; technical research in the field of landscaping, landscape gardening, interior decoration and exterior decoration; providing information on fashion and on decoration; services relating to the identification, listing, selection, appraisal and classification of goods in the fields of fashion and decoration; temporary accommodation services; providing temporary housing accommodation; boarding houses, boarding house services, convalescent homes; personal escort services; beauty salon services; beauty salons; hairdressing services, hairdressing salons, marriage bureau services, marriage bureaus; clothing rental, costume rental; dating services; printing services; hotel services, motel services; food services, beverage services, restaurant services, cafe services; reporting services relating to topics covered in magazines; mail order services and retail services including such services rendered by boutiques and by department stores all such services relating to beauty, health, fashion, interior and exterior decoration such as furnishings and furniture, tableware and cutlery, cooking, paper articles, stationery, photographics, gadgets and gift items; none of the foregoing services relating to pharmaceuticals, prostheses, tobacco, smokers' articles, matches, phonographic styli and cartridges, clothing for protection against accidents and fire.

Fancy Series Trade Mark
Registration Number	681214
Goods	Class 25: Clothing in class 25, including waterproof clothing, pants, jumpers, trousers, knickers, petticoats, short pants, bermuda shorts, jeans, underpants, one-piece suits, suits, shirts, bodices, short-sleeved shirts, long-sleeved shirts, tee-shirts, sweat shirts, smocks, sweaters, turtle-neck sweaters, pullovers, knitted jerseys, jackets, cardigans, vests, waistcoats, rain coats, anoraks, coats, topcoats, overcoats, duffle-coats, gabardines, blazers, kimonos, capes, skirts, dresses, blouses, jogging outfits, fur clothing, scarves, shawls, sashes, socks, stockings, pantyhose, panties, hosiery, lingerie, leggings, leotards, tights, corsets, underclothing, aprons, sports wear, swimsuits, clothing gloves, mittens, dressing gowns, pyjamas, bath robes, clothing belts, clothing ties, neckties and clothing collars; footwear namely: shoes, boots, skiboots, after-skiboots, slippers, sandals, sports footwear and sports boots; headgear namely: hats, caps, skull caps, berets, cowls, headbands, hoods, earmuffs, visors and head scarves.

Trade Mark
Registration Number	1000270
Goods	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, talcum powder, antiperspirant sprays and antiperspirant liquid for such sprays, essential oils, cosmetics including being toilet and cosmetic creams and powders, hair lotions; dentifrices.
Class 9: Electronic apparatus and instruments for the recording, transmission, reproduction and duplication of sounds and/or images; household electric and electronic apparatus and equipment; television receivers; reading equipment for magnetic and digital recording media; computers and data-processing equipment; computer hardware and software; data-banks, vocal data-bases; pictorial, sound and textual data-banks; photographic equipment; weighing machines, calculators; video recorders, video game consoles, cameras, tape recorders, telephones, video cameras with built-in video recorders, electronic diaries, electronic and digitalised publications, electronic translators; magnetic and audiovisual data-carriers; magnetic cards, electronic cards, electronic game cards; compact discs, video discs, optical discs; magnetic pens and electronic pens; software; spectacles, spectacles frames, spectacles cases, spectacles chains and spectacles cords; optical frames and sunglasses; parts and accessories in class 9 for spectacles; eyeglasses, eyeglass frames, eyeglass cases, eyeglass chains, eyeglass cords, contact lenses, containers for contact lenses; but excluding the following goods namely - clothing for protection against accidents and fire., phonographic styli and cartridges.
Class 16: Printed matter, newspapers, periodicals, reviews, illustrated reviews, magazines, books, publications, catalogues, prospectuses, albums, photo albums, calendars, posters, diaries, address books, atlases, book-binding material, photographs; stickers, decalcomanias, post cards, stationery, writing instruments, pens, adhesives for stationery and household purposes, artists' materials, paintbrushes, type-writers and office requisites (with the exception of furniture); teaching and educational material (other than apparatus); printing blocks, printers' type, wrapping paper, plastic material for packaging in class 16; printers type, electrotypes, paper, cardboard and products made thereof in class 16., plastic or cardboard boxes for packaging and storage.
Class 18: Game bags, beach bags, backpacks, evening bags, handbags, tote bags, travelling bags, toilet bags, make-up pocket bags, school bags, satchels, shopping bags, sling bags for carrying infants, wheeled shopping bags, waist bags, purses, billfolds, chequebook cases, card cases, key cases, briefcases, unfitted vanity cases, luggage, trunks, valises, attache cases, suitcases, pocket wallets, umbrellas, parasols, canes, walking sticks, animal skins, furs, hides, walking sticks, whips, harness and saddlery; leather and imitations of leather; baggage and goods in class 18 made of leather and/or imitations of leather including - luggage, bags, pouches, envelopes, key cases, travelling sets, cases, soft luggage cases, hard luggage cases, wallets, toilet kits and make-up kits.
Class 25: Clothing, footwear, headgear.