Hearst Communications, Inc. v Bazaar International Holdings Limited

[2014] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Hearst Communications, Inc. to trade mark application 1494782 (14) – Harper’s BAZAAR & Chinese characters - filed in the name of Bazaar International Holdings Limited.

Delegate:

Debrett Lyons

Representation:

Opponent: Dawn Logan Keeffe of Davies, Collison, Cave, Patent & Trade Mark Attorneys

Applicant: Not represented

Decision:

2014 ATMO 25

s52 Opposition: s60 established. Opposition successful.

Costs awarded against Applicant.

Background

1.   Bazaar International Holdings Limited (‘the Applicant’) of Hong Kong has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:

Application No: 1494782

Priority Date:  5 June 2012

Goods:Class: 14 Jewellery; paste jewellery; paste jewellery (costume jewelry (AM.)); key rings (trinkets or fobs); watches; clocks; alloys of precious metal; ornaments (jewellery); precious stones; jewelry cases (caskets); works of art of precious metal

Trade Mark:  

(‘the Trade Mark’)

Endorsement:                  The applicant has advised that the English translation of the Chinese words SHISHANG BASHA appearing in the trade mark is FASHION BAZAAR.

2. The application was examined as mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 6 September 2012.

3.  On 29 October 2012, Hearst Communications, Inc. (‘the Opponent’) filed a Notice of Opposition (‘Notice’) to registration of the Trade Mark.

4.  As a delegate of the Registrar of Trade Marks I heard this matter in Sydney on 12 February 2014.  Dawn Logan Keeffe of Davies Collison Cave, Patent & Trade Mark Attorneys represented the Opponent.  The Applicant was not represented.

Grounds of Opposition, Onus and Relevant Date

5.  The Notice is broad in nature and includes the grounds under 42(b), 44, 58, 59, 60 and 62A which were argued by the Opponent at the hearing.

6.  The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

7.  The date at which the grounds of opposition must be established is the Priority Date: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Evidence

8.  The Applicant did not file or serve any evidence and did not otherwise take any active part in these proceedings.  The Opponent relied on the following evidence:

Evidence in Support:

9.  Statutory Declaration made by Bridgette Fitzpatrick on 24th April 2013 ("the Fitzpatrick Declaration").

Further Evidence

1. Statutory declaration made by Dawn Logan Keeffe on 24 January 2013 ("the Keeffe Declaration").

Sections 60

1. For reasons which follow, the Opponent has established the ground of opposition under section 60 of the Act but I add here that in my assessment it would have succeeded based on any of the grounds it pressed.

2. At the Priority Date, section 60 of the Act provided:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

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

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

   Note:        For priority date see section 12.

3. Concerning the assessment of the likelihood of deception or confusion, in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50] French J said (with references to ‘deceptive similarity’ redacted since this is not a requirement under section 60):

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply […] under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

4. The Opponent has used both of the following trade marks in Australia from a time before the Priority Date:

(‘the Primary Mark’)

(‘the Chinese edition Mark’)

1. The Fitzpatrick Declaration provides evidence of use of the Primary Mark in Australia in connection with the Opponent’s fashion magazine since 1998 with sales of AU$13.85 million between 2008 and 2012 and a daily circulation rate throughout Australia by the Priority Date of 52,250 copies.  The advertising spending by the Opponent in relation to the Primary Mark in Australia since 2008 has been AU$30.9 million.  The evidence is that the Opponent's HARPER'S BAZAAR magazine is the number one selling fashion magazine in Australia.

2. Measured by any standard, there is no doubt that by the Priority Date the Primary Mark had acquired a substantial reputation in Australia.

3. Moreover, the Fitzpatrick Declaration provides evidence of promotion of the Primary Mark at high profile fashion events specifically targeting the jewellery industry.  The Opponent was, by way of example, a major sponsor of the Diamond Guild of Australian Jewellery Awards in 2011; and has co-hosted with Bulgari jewelers several Diamond Appreciation workshops.

4. Additionally, the Opponent's magazine regularly contains information relating to jewellery, including advertisements and the promotion of sale of jewellery.  The Keeffe Declaration exhibits evidence where it is stated that the Opponent has expanded its usage to include a family of publications in China, including BAZAAR Jewelry and BAZAAR Art. 

5. For the purposes of section 60, the trade marks must also be compared. They are very similar. It is observed that the Applicant’s Trade Mark (shown again below for convenience) includes Chinese characters

which are identical to the characters used in the Opponent’s Chinese edition Mark:

1. Those Chinese characters, 时尚芭莎 , have been transliterated by the Applicant as “Fashion Bazaar”.   The  pinyin expression, “shishang basha”, does not mean “fashion bazaar”; “shishang” certainly means “fashion”, but “basha” does not mean “bazaar” and is something of a “feel-good” expression with no precise meaning in Chinese. 

2. Nevertheless, the Keeffe Declaration shows that the Chinese language edition of its magazine which features the Chinese edition Mark has been in circulation in Australia since at least January 2011, before the Priority Date. There is open question as to whether even the essentially identical Chinese edition Mark had a section 60 reputation by that time but I need not explore that issue since the similarities of the Applicant’s Trade Mark to the Opponent’s Primary Mark are overwhelming.

3. Returning to the Woolworths case, supra, there is in my assessment no doubt that use of the Trade Mark on the Goods would be likely to cause confusion since that use would cause a number of persons to wonder whether it might not be the case that the two products – the Goods and the magazines - came from the same source.

4. The Opponent has established its opposition to registration under the provisions of section 60 of the Act.

Decision

1. At the Priority Date, Subsection 55(1) of the Act provided:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:        For limitations see section 6.

2. The Opponent has established its opposition to registration and so I refuse to register application 1494782.

Costs

1. Having been successful in this matter the Opponent is entitled to its costs which I award against the Applicant.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

11 March 2014