Hearst Communications Inc v H.A.G. Imports Pty Ltd

[2014] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Hearst Communications Inc to registration of trade mark application 1367287 (8, 21) - COSMOPOLITAN - filed in the name of H.A.G. Import Corporation (Australia) Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave

Applicant: Ed Heerey of Counsel, instructed by Minter Ellison

Decision:

2014 ATMO 67

Section 52 opposition – ss 44, 60, 59, 42(b) and 58 pursued – no grounds established – application may proceed to registration.

Background

1. This is an opposition brought by Hearst Communications, Inc. (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’). The Opponent opposes an application by H.A.G. Import Corporation (Australia) Pty Ltd (‘the Applicant’) to register a trade mark, the details of which are below:

   Trade Mark:    COSMOPOLITAN (‘the Trade Mark’)

   Application No.:           1367287

   Filing Date:  17 June 2010

   Convention Priority Date: 10 May 2010

   Goods:Class 8: Hand tools and implements (hand-operated); cutlery; razors; food spreaders; mortar and pestle

   Class 21: Unworked or semi-worked glass (except glass used in building); porcelain and earthenware not included in other classes; household or kitchen utensils and containers (not of precious metal or coated therewith); glassware; dinnerware; cookware; servingware; chinaware; porcelain; earthenware and vases including but not limited to coffee plungers; tea pots; creamers; sugar bowls; kitchen canisters; salt and pepper mills; cups; saucers; mugs; jugs; coffee filters (non-electric); coffee grinders (hand-operated); coffee percolators (non-electric); coffee pots (non-electric); coffee services; non-electric apparatus for making coffee, hot chocolate pots, tea services; hand-operated food grinders

2. The application was examined and a ground for rejection was raised under section 44 of the Act on the basis of two prior registrations owned by the Opponent for the word COSMOPOLITAN, numbered 583034 and 750524. The basis of the ground for rejection was that, as it originally stood, the Applicant’s goods in class 21 encompassed those in class 21 of registration 583034 and were similar to those in class 3 of registration 750524. To that end the Applicant deleted “articles for cleaning purposes”, “sponges” and “steelwool” from its original specification of goods in class 21, and the application was accepted for possible registration. That acceptance was advertised in the Australian Official Journal of Trade Marks on 2 December 2010.

3. After obtaining an extension of time in which to do so, the Opponent filed a notice of opposition (‘the Notice’) on 30 May 2011. The Notice nominated most of the grounds available under the Act to oppose registration. This was followed by a fairly lengthy evidentiary period as well as some ultimately unsuccessful negotiations to settle the opposition. At the conclusion of the filing and service of evidence (discussed in more detail below) the parties requested to be heard.

4. The matter came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 7 May 2014. Siobhan Ryan of Counsel, instructed by Marion Heathcote of Davies Collison Cave, represented the Opponent. Ed Heerey of Counsel, instructed by Shyama Jayaswal of Minter Ellison, represented the Applicant.

Evidence

1. The evidence served and filed by the parties is as follows:

Evidence in support

• Declaration of Bridgette Fitzpatrick, legal counsel for the Opponent, with exhibits 1 to 18, dated 17 October 2011.

• Declaration of Kimberly Jade Evans, solicitor with Davies Collison Cave Patent and Trade Mark Attorneys, with exhibits KJE-1 to KJE-4, dated 27 October 2011.

Evidence in answer

• Declaration of Terry Fitzell, General Manager of the Applicant, with exhibits TF1 to TF11 and confidential exhibits TF3 and TF4, dated 24 August 2012.

• Declaration of Abbie Evans, General Manager, Food & Homewares, Merchandise Head Office at David Jones, dated 17 August 2012.

• Declaration of Luke Driver, buyer at Myer, dated 10 July 2012.

• Declaration of Charles Cohen, owner of Matchbox Australia Pty Ltd and director of Matchbox Franchising Pty Ltd, dated 14 September 2012.

Evidence in reply

• Declaration of Dawn Logan Keeffe, attorney with Davies Collison Cave, Patent and Trade Mark Attorneys, dated 16 December 2013.

1. A summary of the evidence is as follows.

2. The Opponent is a publisher of several magazines including COSMOPOLITAN. In 1886 Schlicht and Field began to publish a women’s interest magazine named THE COSMOPOLITAN. The content included fashion, cooking, household decoration and the care and management of children. The magazine evolved over the years, under different owners and different editors, including when purchased by William Randolph Hearst (a predecessor to the entity that is the Opponent) in 1905. In the 1970’s under the editorship of Helen Gurley Brown the magazine focused upon issues of interest to young women, and today continues to feature articles relating to beauty, fashion, health, relationships and sex.

3. As at the date of the Fitzpatrick declaration, COSMOPOLITAN magazine was published in 35 languages, had more than 64 international editions and was distributed in more than 100 countries, which Fitzpatrick declared made it the largest magazine franchise of its kind in the world. The notoriety of COSMOPOLITAN has been recognised in overseas jurisdictions and the magazine has been referenced in popular culture on numerous occasions. It enjoys significant readership and generates significant revenue from both sales of the magazine and sales of advertising space within it.

4. It is declared that the COSMOPOLITAN trade mark is used under license in relation to a range of goods including various fashion accessories and clothing, cosmetics and make-up accessories, various electrical items for personal grooming, manchester and soft furnishings, and CDs, videos and software, although there is no indication that any of these have ever been made available or sold in Australia. Use in respect of health and lifestyle advice, advertising services, publishing services and radio broadcasting services is also declared, although a number of these appear to be promotions that occurred in the USA.

5. In Australia, COSMOPOLITAN magazine was launched in May 1973 and the name has been used continuously since that date (and is the subject of multiple Australian trade mark registrations across a number of classes). A variation of the magazine, named COSMOPOLITAN BRIDE, is also published in Australia and its content is dedicated to pre-wedding advice for brides, including features on wedding gift registries and homewares. Exhibited are numerous examples of advertisements in COSMOPOLITAN BRIDE for homewares produced by third parties such as Royal Doulton, Wedgewood and Waterford Crystal.

6. On behalf of the Opponent, Kimberly Evans attests that on 26 October 2011 she attended the Myer department store on George Street in Sydney and in it saw that the kitchenware and diningware section was set adjacent to the bedding and manchester section (and in certain instances the two sets of goods were displayed immediately next to each other – particularly where one entity produced both). She noted that certain brands provided both bed linen and kitchenware, and provides exhibits from Myer’s website showing this to be the case. In the course of reviewing Myer’s website, Ms Evans also attests that she became aware that the magazines delicious and Marie Claire had released a range of homewares under those names (examples of which are exhibited).

7. Also on behalf of the Opponent, Dawn Logan Keeffe declares that she searched the Applicant’s website and found under the category “dinnerware” that the Applicant offered a range named WHITE BASICS. Exhibited to her declaration are web pages that detail products under the names WHITE BASICS COSMOPOLITAN, WHITE BASICS EUROPEAN and WHITE BASICS URBAN. Also listed on those web pages are 16 other ranges available under the WHITE BASICS name including WHITE BASICS AMORE, WHITE BASICS BAMBOO, WHITE BASICS CIRQUE and so on, although they do not appear to have been selected for viewing.

8. The Applicant designs, imports, sells and exports homeware, hotelware “(café, hotel, restaurant and catering)”, cutlery, glassware, napery, cookware, servingware, dinnerware and tableware. It is the owner of the house brand MAXWELL & WILLIAMS of which COSMOPOLITAN is a sub-range. MAXWELL & WILLIAMS products are declared to be sold in over 50 jurisdictions around the world, and the COSMOPOLITAN range is declared to be sold worldwide (including such jurisdictions as United Kingdom, Canada and New Zealand).

9. The Applicant commenced using the Trade Mark on 5 August 2002, and declares to have chosen it because it was a word found all over the world that had a glamorous character associated with travel and a mix of cultures. It was first used in respect of stainless steel canisters and cutlery, and this range has since expanded to include crockery, servingware, and cookware. The COSMOPOLITAN range was first launched in the domestic homewares market via retail outlets, and then in October 2005 expanded into the “horeca” sector (being companies which operate in hospitality, restaurant and catering). Examples showing the Trade Mark permanently affixed to the goods (either by engraving or glazing) are exhibited, as are numerous examples of packaging.

10. Sales figures are provided for the financial years 2002/2003 to 2011/2012 and they are substantial. Advertising expenditure is not recorded separately for goods promoted under the Trade Mark, although an estimate as a proportion of the MAXWELL & WILLIAMS brand as a whole is given.

11. Various forms of promotion are declared including at trade fairs, in show rooms, and in various high profile magazines including Good Medicine, House and Garden and the aforementioned delicious. Exhibited examples of promotion include advertisements in Australian House & Garden, Home Beautiful, Myer Emporium, Real Living and Notebook (ranging in dates from August 2005 to “Summer” and “Winter” 2010); scripts for radio advertisements that were aired on Classic Hits Gold 104.3; web site pages from Facebook® and the Applicant’s own sites; and catalogues from retailers including David Jones and House.

12. Goods sold under the Trade Mark are available from numerous commercial and retail outlets including Chef’s Hat, Hospitality Catering Hardware, David Jones, Myer and House.

13. Lastly the Applicant adduces supporting declarations made by Abbie Evans, Luke Driver and Charles Cohen. Each of the declarants are in positions whereby they have particular knowledge of kitchenware, tableware and cookware brands. Each declares that they have been aware of, and stocked, the Applicant’s goods under the Trade Mark for periods of time ranging from more than 5 or 6 years to since around 2002. They also declare that although they are aware of the magazine COSMOPOLITAN, they do not consider there to be any link between it and the Applicant’s goods provided under the Trade Mark, nor are they aware of any of their customers thinking such.

Grounds and onus

1. In its submissions for the hearing the Opponent indicated that it relied primarily on the grounds under sections 44, 60, 59, 42(b) and 58. For completeness I find that none of the other grounds nominated in the Notice have been established.

2. The Opponent bears the onus of establishing a ground of opposition, and the relevant standard of proof is the ordinary civil one of the balance of probabilities.[1]

   [1] See for example Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [27]; or Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [30] to [37].

Section 44

1. Section 44 relevantly provides:

Identical etc. trade marks

(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.

…

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

1. The Opponent identifies three of its registered trade marks as a basis for its opposition under section 44 (detailed below), although its submissions appear to focus upon the registration in respect of class 24. Each of the registrations has a priority date earlier than that of the Trade Mark.

   ·     COSMOPLITAN, registration number 92206, in respect of “printed publications” in class 16.

   ·     COSMOPOLITAN, registration number 583034, in respect of:

   Class 9: Optical goods, including sunglasses and ophthalmic goods; audio, visual and audio-visual goods including pre-recorded video tapes, videocassettes, video discs, interactive discs, audio cassettes, records, compact discs, motion pictures; computer software including computer games.

   Class 14: Jewellery, including imitation jewellery and jewellery of precious metals and stones, cuff links, tie pins, ornamental pins, rings, bracelets and necklaces; watches and parts thereof.

   Class 16: Printed publications; books; periodicals; paper and paper articles; cardboard and cardboard articles; stationery, including gift cards, note cards, gift wrapping paper; calendars; sewing patterns.

   Class 21: Brushes and combs in this class, including hair brushes and combs; personal grooming articles in this class.

   Class 24: Draperies, curtains; bed linen, including sheets, pillow cases, bed ruffles, duvet covers, pillow shams; blankets, quilts, comforters, bedspreads; bath linen, including towels, wash cloths, bath mats; table linen, including tablecloths, table napkins, place mats.

   Class 25: Clothing, footwear and headwear, including junior dresses, coats, sport and tailored suits, sweaters; women's, misses' and children's dresses, coats, fur coats, fur scarves, fur jackets, fur stoles, fur muffs, suits, hats, gloves made of leather, fabric or combinations thereof, outerskirts, jackets, blouses, playsuits, slacks, outershorts, ski clothes - namely, suits, hoods, parkas, hats, caps, bonnets, mittens, gloves, socks, scarves, jackets, pants, and vests, sweaters, scarves, neckwear, bathing suits, beach robes, halters, negligees, pajamas, nightgowns, slips, petticoats, corsets, girdles, panties, brassieres, raincoats and belts; hosiery made of silk and synthetic fibres resembling natural silk; shoes made of leather, rubber, or fabric or a combination of these materials; belts.

   ·     COSMOPOLITAN, registration 750524, in respect of “Preparations for cleaning, washing, polishing and for laundry use; soaps; toiletries and cosmetics inclusive of hair preparations; perfumery; essential oils; dentifrices” in class 3.

   (I will refer to the goods listed here as, collectively, ‘the Opponent’s goods’).

2. I turn firstly to the question of whether the Opponent’s goods are similar to those specified in the application. Similar goods are defined in section 14 of the Act as goods that are the same or goods that are of the same description. The Full Federal Court, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[2], commented that the expression “goods of the same description” is a term of art and cited Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd[3]:

   In my opinion, that application of a principle so broadly stated requires some concentration upon the object which s 23(2) [of the 1955 Act] exists to serve. The object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

   [2] [2009] FCAFC 27; (2009) FCR 386.

   [3] [1993] FCA 203; (1993) FCR 227.

3. The test for determining goods of the same description was set out in Jellineck’s application[4] and has been expanded upon in a number of judicial decisions[5]. The principal factors may be summarized as an assessment of the nature of the goods, their use and purpose, and the trade channels through which they are provided. No single consideration is conclusive of itself (although it has been acknowledged that one, but not always the same one, may have greater significance or emphasis than others[6]), nor it is essential that all of them be fulfilled[7].

   [4] (1946) 63 RPC 59, at 70-72.

   [5] See for example John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369 and Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited [1953] HCA 73; (1954) 91 CLR 592.

   [6] Re J Lyons & Co Ltd’s Application [1959] RPC 120.

   [7] George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145.

4. The Opponent submits that the applied-for goods and the goods in class 24 of registration 583034 are “complementary goods, often used interchangeabley for a similar purpose – for decorative effect within the home. They are often lifestyle goods which help consumers to acquire or portray a particular lifestyle”. It further submits: that the trade channels are the same, being that it is common for a department store or homeware retailer to sell both sets of goods, if not side by side, in close proximity on the same floor; that it is commonplace in Australia for a single manufacturer to produce both sets of goods (per the declaration of Kimberly Evans); that the goods are regarded as being of the same description by retailers, in that they are collectively referred to as homewares and are often promoted together in catalogues and magazines to generate an idea of “ideal lifestyle” (especially in the case of bridal registries); and that the goods are sold to the same class of customer, being homewares purchasers.

5. The submitted purpose of being for decorative effect within the home is, to my mind, too broadly framed (otherwise goods as disparate as interior paint and vases could likewise be goods of the same description). Even though such goods may be sold in close proximity in some stores, there is still a level of separation that remains between them – kitchen and diningware is more often than not separated from manchester and linen and stores dedicated to one or the other are common (such as Adairs and House). I tend to agree also with the Applicant’s submission that:

   It is precisely the nature of a department store to sell a wide variety of goods. It does not follow that consumers would be confused, and it is telling that representatives of both Myer and David Jones, two of Australia’s largest department store chains, have given evidence that there has been no reports of confusion arising from the Applicant’s long use of COSMOPOLITAN in their department stores.

Similarly, although some manufacturers produce all types of homewares it is also common that they are dedicated to either manchester and linen or kitchen and diningware, such as Sheridan and Actil as opposed to Royal Doulton and Wedgewood.

1. Additionally the question of deception or confusion is not isolated from the consideration of the nature of the trade marks themselves. All of the marks here are identical, comprising the word COSMOPOLITAN. Such a word is not so unusual that its application as a trade mark to various goods would necessarily cause consumers to wonder whether it was by the same trader. COSMOPOLITAN is defined in the Macquarie Dictionary[8] as:

   1. belonging to all parts of the world; not limited to one part of the social, political, commercial, or intellectual world…3. free from local, provincial, or national ideas, prejudices, or attachments; at home all over the world…

and in the Oxford English Dictionary[9] as:

1. Belonging to all parts of the world; not restricted to any one country or its inhabitants. 2. Having the characteristics which arise from, or are suited to, a range over many different countries; free from national limitations or attachments…

[8] Online edition, © 2014, Macmillan Publishers Group Australia.

[9] Online edition, © 2014, Oxford University Press.

1. It is a word often associated with sophistication, worldliness and glamour, and it is highly likely that both parties adopted it for precisely this reason (for its part the Applicant declares as much). Because of this, and given that the goods in question are commonly made by separate manufacturers and commonly sold in stores, or sections of stores, dedicated to either one group of goods or the other, I am not satisfied that a connection would be assumed or wondered about.

2. The Opponent does not specifically address any of the other goods specified in its registrations. I will only mention that I consider them more dissimilar to the applied-for goods than those discussed above. That, in combination with the nature of the Trade Mark itself, leads me to conclude that the Trade Mark is not deceptively similar to any of the Opponent’s registrations.

3. Accordingly the ground under section 44 fails. I note also that in the event the ground had been established, I consider the Applicant would satisfy the honest concurrent use provisions contained within section 44(3)(a). The Applicant honestly adopted the Trade Mark and has used it widely since 2002. No instances of confusion are in evidence, despite the lengthy period of concurrent use, and merchandise buyers for three large networks of stores attest to a lack of confusion between the parties’ trade marks.

4. For its part the Opponent submits that s 44(3)(a) does not apply because the use is not use as a trade mark, or is not use of the Trade Mark as applied for. This is based on the premise that the word COSMOPOLITAN is used only descriptively and/or is used in combination with other house marks such as MAXWELL & WILLIAMS or WHITE BASICS. I do not consider this to be the case. Firstly, although COSMOPOLITAN is an emotive or suggestive word, it is not one which has a meaning that readily applies to kitchenware, diningware or cutlery. Secondly, if any of the words were going to be discounted by consumers as merely descriptive (absent any acquired distinctiveness) then those words would likely be WHITE BASICS rather than COSMOPOLITAN. Thirdly, there are approximately 19 different sub-brands available under the WHITE BASICS range with names such as AMORE, BAMBOO and CIRQUE (as well as COSMOPOLITAN, EUROPEAN and URBAN, as identified by the Opponent). Use in this manner is likely to identify to consumers that COSMOPOLITAN is one of those sub-brands, rather than a description of the goods. Lastly, in use COSMOPOLITAN is variously positioned separately to MAXWELL & WILLIAMS and/or WHITE BASICS, is in a prominent position upon packaging, is in large font and appears capitalized and in quotation marks in 3^rd party publications (see the discussion of the ground of opposition under section 59 for examples). I am satisfied that such use is as a trade mark and note that it is well established that traders commonly apply more than one trade mark to their goods[10].

   [10] See for example Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; (2009) 83 IPR 210.

Section 60

1. Section 60 of the Act provides:

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

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

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

2. To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 10 May 2010 the use of the Trade Mark in respect of the Applicant’s goods would be likely to deceive or cause confusion.

3. Reputation in this context refers to the recognition of the Opponent’s mark by the public generally[11], although the size and nature of the relevant market must be taken into account.[12] I note further that confusion or deception may still be likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.[13]

   [11] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102.

   [12] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

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

4. The Opponent’s submissions drew my attention to the length of time that COSMOPOLITAN magazine has been published in Australia (since 1973), the significant sales and readership the magazine enjoys, that its trade mark has been held to be well known in overseas jurisdictions, and the numerous references to the magazine in popular culture. To that end I am satisfied that the Opponent’s trade mark had the requisite reputation in respect of a young women’s interest magazine.

5. In respect of a “causal link” between that reputation and potential confusion or deception, the Opponent submits that:

   The evidence filed under both the Fitzpatrick Declaration and the Evans Declaration show that the Opponent has a broad reputation and that this reputation has extended to the homeware market place within Australia, particularly due to the promotional activities undertaken by the Opponent which has aligned its COSMOPOLITAN trade mark with several well known, homeware brands.

6. The Fitzpatrick declaration includes various exhibits showing that the COSMOPOLITAN trade mark has been applied to various goods including sheet sets, clothing, cosmetics and grooming equipment/appliances, however there is no indication or claim made that any of these goods have ever been made available, or sold, in Australia. Nor is there anything upon which ‘spillover’ reputation in respect of these goods may be based.

7. I do not consider that an alignment with homewares by virtue of promoting them in COSMOPOLITAN magazine has taken place. I note firstly that examples of such use are in COSMOPOLITAN BRIDE rather than COSMOPOLITAN. COSMOPOLITAN BRIDE is dedicated to the interests of people planning a wedding including bridal and bridesmaids’ gowns, wedding crockery and cutlery, invitations, wedding favours and so on. Much of its content is devoted to advertisements placed by producers of these goods, such as Royal Doulton or Waterford Crysal, or to articles in which wedding outfits or wedding table themes (for example) are featured and the makers of their components are identified. There are also numerous advertisements for wedding gift registries. The use of COSMOPOLITAN as the name, or part of the name, of a magazine in which various advertisements and promotions appear is not use as a badge of origin or use in respect of the goods the subject of those advertisements and promotions, and does not create a reputation for them.

8. The Opponent also asserts that it is known to be involved in brand extension. In terms of the range of goods apparently available under the COSMOPOLITAN name overseas, I reiterate that there is no evidence of them being available or sold in Australia. The Opponent also pointed to marketing events, such as the COSMOPOLITAN APARTMENT and THE SEARCH FOR COSMO’S COLUMNIST, wherein COSMOPOLITAN magazine partnered with brands including Revlon, VO5 and Toyota Yaris. Of themselves I do not consider that such isolated marketing events create a reputation for cosmetics, haircare products or cars – in the absence of use as a badge of origin more is required, whether it be the frequency and number of such events or the extent to which they are advertised to the public.

9. The Opponent points out that delicious and Marie Claire magazines have applied their names to homewares, and on this basis asserts that consumers are accustomed to such brand extension taking place. Whilst I consider it is possible that the reputation of magazines may extend to the goods the subject of their content, I distinguish the circumstances before me for the following reasons. I consider the reputation of COSMOPOLITAN much greater than that of COSMOPOLITAN BRIDE (for which there is little information regarding the extent of its readership or sales), and homewares do not appear to have featured in COSMOPOLITAN. Unlike the name Marie Claire which is unique, the word COSMOPOLITAN is an ordinary word in the English language which may be applicable to many goods, so its use is unlikely to be attributed to the one source. Additionally Marie Claire is associated with homewares by virtue of actual extension into them. Similarly delicious magazine has actually extended into kitchenware, and kitchenware is closely related its subject matter of cooking and food.

10. Lastly, although evidence of actual confusion is not a requirement to establish the ground, significant use in the absence of confusion is relevant. Here, the Applicant has used the trade mark in the domestic retail sector since 2002, and the commercial “horeca” sector since 2005. No evidence of confusion has been adduced and three declarants, in positions which give them particular knowledge of kitchenware and homewares, attest that they are unaware of any confusion amongst their customers.

11. Accordingly, I am not satisfied that deception or confusion is likely and the ground under section 60 fails.

Section 59

1. Section 59 of the Act provides:

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

1. A mere allegation of non use is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case against it has been made then it is for the Applicant to rebut the allegation[14]. The time at which the intention must exist is the date the application was filed, in this case 17 June 2010.[15]

   [14] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.

   [15] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437; Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.

2. The premise of the Opponent’s argument under section 59 is that the Applicant’s evidence does not show use as trade mark, but rather “as a descriptor of the nature and design of the product”. The Opponent asserts that it is MAXWELL & WILLIAMS, or WHITE BASICS, that comprise the trade mark(s) under which the Applicant’s goods are sold. Examples of use are below.

1. I am satisfied that such use is as a trade mark for the reasons identified in my discussion of honest concurrent use under section 44(3)(a).

2. The Opponent also asserts its opinion that the Applicant filed the Trade mark to take advantage of the Opponent’s reputation, as commercial leverage to secure a commercial agreement with the Opponent, to act as an obstacle to expansion by the Opponent and as a statutory defence to infringement. It does not expand upon these claims and I find them to be without basis.

3. I am satisfied that, at the filing date, the Applicant had the requisite intention to use the Trade Mark, and that it has in fact used it.

Section 42(b)

1. Section 42 of the Act relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   (a)    …

   (b)    its use would be contrary to law.

2. In this regard the Opponent submits that use of the Trade Mark would constitute a breach of Australian Consumer Law, specifically sections 18(1), 29(1)(g) and 29(1)(h) of Schedule 2 of the Competition and Consumer Act 2010. The Competition and Consumer Act 2010 did not come into force until 1 January 2011. Wilcox J considered the relevant date to assess section 42(b) in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd[16] and commented that:

   I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.

   [16] [2003] FCA 1502; (2004) 59 IPR 343 at [47].

3. As such I take the relevant law to be the equivalent provisions in sections 52 and 53 of the now repealed Trade Practices Act 1974 (‘the TPA’), in force at the filing date and reproduced below, and the Opponent’s submissions as being in reference to those provisions (I note the Opponent itself frames its submissions in terms of section 52 of the TPA).

   Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

   Section 53. A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

   …

   (c)     represent that goods or services have the sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

   (d)    represent that the corporation has a sponsorship, approval or affiliation it does not have.

4. The Opponent must satisfy the Registrar that use of the opposed trade mark “would”, not “could”, be contrary to law[17]. It is not sufficient for the conduct complained of to cause mere wonderment or uncertainty[18].

   [17] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at [28].

   [18] See for example Registrar of Trade Marks v Woolworths [1999] FCA 1020; Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.

5. The Opponent has been unable to establish either of its grounds of opposition under sections 44 or 60. The tests for whether the concurrent use of two trade marks is likely to deceive or confuse involve a considerably lower threshold than those for use likely to mislead or deceive. Given the Opponent has been unable to meet the lower threshold, it likewise cannot meet the higher threshold and the ground under section 42(b) is not made out.

Section 58

1. Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the Applicant is not the owner of the trade mark.

2. In order to succeed under this ground of opposition, the Opponent must establish that:

   ·     The respective trade marks of the Applicant and Opponent are either identical or substantially identical[19];

   ·     The respective good or services of both parties are the ‘same kind of thing’[20]; and

   ·     The Opponent’s trade mark use was prior to both the application to register and any actual use of the trade mark by the Applicant[21].

   [19] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) ALR 495

   [20] Re Hicks’ Trade Mark (1897) 3 ALR 75

   [21] Settef SpA v Riv-Oland Marble Co (Vic) Pty LTd (1987) 10 IPR 402

3. The Opponent states that the “COSMOPOLITAN BRIDE magazine publication in Australia contains information relating to homewares and many well known homeware brands are advertised for sale in the magazine”. It goes on to state that “The term ‘goods of the same description’ implies a relationship between the goods such that they would be seen by purchasers as having the same origin if sold under the same mark”.

4. The “same kind of thing” in respect of the goods of the parties does not equate to goods which may be “of the same description”. It is a narrower test that applies in the context of a claim to ownership[22]. I am not satisfied that any of the Opponent’s goods fit the narrow test of being the “same kind of thing” as the Applicant’s goods. The closest nexus is perhaps that identified by the Opponent, being that between goods in class 24 and goods in class 21. However, whilst it might be possible for an opponent to establish such goods are of the same description (and I have not found in this decision that that is the case), I consider it would be quite difficult to establish that they are, for example, close enough to be substitutes for one another. Given I am not satisfied the goods of the parties are the “same kind of thing” the ground fails at this hurdle.

   [22] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

Decision and costs

1. Section 55 provided, at the date the application was filed:

   Unless the proceedings are discontinued or dismissed, 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 not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark application 1367287 may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

4. The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Regulations.

Nicole Worth

Hearings Officer

Trade Marks Hearings

30 July 2014