Hearst Communications, Inc v Toyota Motor Corporation Australia Ltd

[2015] ATMO 36

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 1375070 (2; 12) - COSMOPOLITAN - filed in the name of Toyota Motor Corporation Australia Limited.

Delegate:

Heath Wilson

Representation:

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

Applicant: Mr Ed Heerey of Counsel instructed by Kelly Hazell Quill Lawyers

Decision:

2015 ATMO 36

Opposition under section 52 of the Trade Marks Act 1995 – grounds pressed under sections 43, 59, 60 and 62A of the Act – s62A ground of opposition established – trade mark refused registration.

Background

1. On 12 August 2010, the Toyota Motor Corporation Australia Limited (‘the Applicant’) applied to register as a trade mark the word ‘COSMOPOLITAN’ (‘the Trade Mark’) in the following classes:

   Class 2: Automotive Paints

   Class 12: Motor vehicles, and parts and accessories for motor vehicles

2. Following examination of the above trade mark application, the Trade Mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 December 2010.

3. On 14 March 2011, registration of the Trade Mark was opposed under section 52 of the Trade Marks Act 1995 (‘the Act’) via a notice of opposition filed by the US company Hearst Communications, Inc (‘the Opponent’). The notice of opposition nominated most grounds of opposition available under the Act.

4. The following evidence was subsequently filed by the parties:

Evidence

Evidence in Support

• Statutory declaration of Bridgette Fitzpatrick (Legal Counsel for the Opponent) dated 4 October 2011 with exhibits 1 to 8 (‘Fitzpatrick 1’)

Evidence in Answer

• Statutory declaration of Adrian Weimers (Corporate Manager – Brand Communications of the Applicant) dated 12 June 2012 with exhibits AW-1 to AW – 5 and AW-8.

Evidence in Reply

• Statutory declaration of Kimberley Jade Evans (Trade Marks Attorney with Davies Collison Cave) dated 15 July 2013 with exhibits KJE-1 to KJE-5.
• Declaration of Bridgette Fitzpatrick dated 10 July 2013 with exhibits 19 to 28 (‘Fitzpatrick 2’).

Further Evidence of the Opponent

• Declaration of Natalie Bettini (General Manager of Marketing at Bauer Media Pty Ltd) dated 28 July 2014 with exhibits NB-1 to NB-4 (‘Bettini 1’).

Applicant’s Response to Further Evidence

• Declaration of Peter Hampson (Corporate Manager - Brand Management and Communications of the Applicant) dated 28 September 2014 with exhibits PH-1 to PH-6.

Further Evidence of the Opponent

• Declaration of Natalie Bettini dated 24 December 2014 (‘Bettini 2’).

Hearing, Grounds and Onus

1. The parties requested to be heard on the opposition and the matter was set down for 16 February 2015 in Canberra. I heard the opposition as a delegate of the Registrar of Trade Marks. Ms Siobhan Ryan of Counsel appeared on behalf of the Opponent and Mr Ed Heerey appeared on the Applicant’s behalf. Ms Ryan made submissions for grounds of opposition under sections 43, 59, 60 and 62A of the Act. Accordingly, I consider the remaining grounds of opposition nominated in the notice of opposition to have been abandoned.

2. The rights of the parties are to be determined as at the date of application[1] which is generally, but not always, the filing date.[2] The Opponent bears the onus of establishing a ground of opposition.[3]  The standard of proof is the balance of probabilities.[4] 

Reasons

[1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

[2] See sections 6, 12 and 72 of the Act.

[3] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].

[4] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Section 43

1. Section 43 of the Act provides:

Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. To establish a ground of opposition under section 43 of the Act, there must be an inherent connotation within the trade mark applied for. As Gyles J in Pfizer Products Inc v Karam (‘Pfizer’) commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]).

   …

   In my opinion, there is no relevant secondary meaning connoted by the mark HERBAGRA. An implication of sponsorship or association might qualify as such a secondary meaning or connotation, but I am not persuaded that the mark itself has that secondary meaning here. [5]

   [5] Pfizer Products Inc v Karam supra at [53, 55].

2. I have highlighted in bold above the type of secondary meaning or connotation that the Ms Ryan argues is inherent in the Trade Mark. She submits that there is an implication of sponsorship or association on the basis of its own use and reputation in COSMOPOLITAN, the name of the women’s fashion and lifestyle magazine distributed in Australia since 1973. On its face, this particular argument appears to be at odds with the earlier decision in Winton Shire Council v Lomas[6] (the decision overturned on appeal, but not on this point) where Spender J referred to reputation of another trade mark and said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

   [6] Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 at [19].

3. Similarly, in the case of Big Country Developments Pty Ltd v TGI Friday's Inc[7], the court commented on the similarity of other trade marks under section 43:

   The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s43.

   [7] Big Country Developments Pty Ltd v TGI Friday's Inc (2000) 48 IPR 513.

4. Ms Ryan firstly made references to “association or sponsorship” decisions from the Trade Marks office[8] and from the Federal Court of Australia[9] which all predate Pfizer. However, there has also been some later recognition of the implication of sponsorship or association under section 43 by the courts and by the Trade Marks Office. For example, references can be found in office decisions such as LD&D Foods Pty Ltd v Fantasyonice Limited[10] and Hasbro Inc v Imagination Holdings Pty Ltd.[11]

   [8] Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services v Pickard (1998) 48 IPR 133 (SUMMER BAY).

   [9] McCorquodale v Masterton (2004) 63 IPR 582 (DIANA’S LEGACY IN ROSES).

   [10] [2012] ATMO 105 at [40]

   [11] [2005] ATMO 43 at [45].

5. In the courts, the broader view of section 43 was mentioned in Winnebago Industries, Inc v Knott Investments Pty Ltd (No.2)[12] where it was alleged that the trade mark Winnebago connoted an American campervan and that Winnebago Industries, Inc had made out a case for relief under section 88(2). Section 43 of the Act is not explicitly mentioned in the finding, however, in the appeal of that decision to the Full Bench of the Federal Court, Allsop CJ said:

   The cancellation was supportable at least under s88(2)(a), and through it, ss57 and 43. The mark would be likely to deceive or cause confusion because of the existence of the reputation of Winnebago in 1997. A similar argument would be available under s88(2)(c) as at 2010.[13]

   [12] [2012] FCA 785.

   [13] Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 at [74].

6. In Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited section 43 was one of the grounds of appeal. The matter was ultimately decided under section 41 of the Act. However, Murphy J stated:

   Should the registration of the YELLOWBOOK Trade Mark be refused under section 43 of the Act on the basis that it has the same idea or connotation as the YELLOW PAGES Trade Marks such as to cause a real and tangible danger that consumers will be deceived or confused?[14]

   …         

   Sections 43 and 60

   While it is strictly unnecessary to decide, registration of the YELLOWBOOK Trade Mark must also be refused under ss 43 and 60 because:

   (a) consistently with the analysis above, the mark conveys the misleading or confusing connotation that Yellowbook’s services are Telstra’s. The YELLOWBOOK mark is sufficiently similar to the YELLOW PAGES to connote that its services are Telstra’s. It is likely to deceive consumers or cause them confusion; and

   (b) there can be no question that as at the Lodgement Date the YELLOW PAGES Trade Marks had acquired a reputation in Australia in respect of online directories. Yellowbook did not contend to the contrary.[15]

   [14] Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [367].

   [15] Op.cit.[at 423].

7. While it may be arguable that the comments above are inconsistent with the approach in previous court decisions it is evident that the comments were obiter dicta and I note the above decision is also currently subject to an appeal.

8. Turning to the opposition before me, I am not in any event, satisfied that an inherent connotation on the basis of an implied sponsorship or association with Cosmopolitan magazine exists within the Trade Mark. While the extent of the reputation of the Opponent’s trade mark in its particular industry is accepted, that industry is far removed from the claimed goods of the Trade Mark. This fact, when considered in combination with the ordinary dictionary meaning[16] of the word COSMOPOLITAN, creates the result that there is not an immediate and direct connotation within the Trade Mark and neither is there an implied association. The Trade Mark does not connote to all Australians a sponsorship or association with the Opponent.

   [16] 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... (Macquarie Dictionary. Online edition, © 2014, Macmillan Publishers Group Australia.)

9. I will consider in further detail the nature of the reputation of the Opponent’s trade mark under section 60. For this ground of opposition it will suffice to state that I am not satisfied there is an inherent connotation within the Trade Mark such that its use is likely to deceive or confuse Australian consumers.

10. The ground of opposition under section 43 has not been established.

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.

Note:For applicant see section 6.

1. The Opponent pressed this ground of opposition only in relation to the goods in class 12 stating that the Applicant did not intend to use the Trade Mark in relation to those particular goods. In summary, the Opponent alleges that: (1) The Applicant had been put on notice by the Opponent that section 59 was a live issue; (2) The Opponent has not stated that it intends to use the Trade Mark in relation to the class 12 goods; and (3) The Trade Mark has not been used to date on those particular goods in class 12.

2. As a matter of first principle, the act of filing a trade mark application is prima facie evidence of an intention to use it in relation to the claimed goods and services. While made in the context of the trade marks system where the onus to establish a mark ought to be registered was on the applicant for registration,  Fullegar J in Aston v Harlee Manufacturing Co[17] said:

   There is another element mentioned by Dixon J. in the Shell Co's Case (1949) 78 CLR at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.

   [17] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401.

3. The case law also states that a mere absence of use does not create an inference of a lack of intention to use a trade mark. As Dodds-Streeton J stressed in Suyen Corporation v Americana International Ltd[18]:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.

   [18] Suyen Corporation v Americana International Ltd [2010] FCA 638; (2010) 187 FCR 169; (2010) 87 IPR 262 at [207].

4. In relation to the Applicant’s intention to use the Trade Mark, Fitzpatrick 1[19] states:

   Furthermore, the letter from Mr Andreatidis indicates that “[the Applicant] will apply to register the paint colour name as a trade mark” and there is no indication that the Applicant intended to use or register the opposed mark in relation to vehicles or other goods in Class 12.

   [19] At paragraph 34.

5. There can be no doubt that the Applicant had been put on notice that the intention to use the Trade Mark would be pressed. Ms Ryan argued that the Applicant is therefore required to at least make an affirmative statement as to an intention to use the Trade Mark in relation to the Class 12 goods.

6. The Opponent bears the onus and must establish a prima facie case in order to shift the onus to the Applicant. Simply querying the intention of the Applicant to use the Trade Mark in relation to specific goods does not accomplish this. Evidence is required to shift the onus even if such evidence is slight.   

7. In relation to the evidence placed before me, if the Applicant can demonstrate later use of the Trade Mark in relation to those goods that use will inform the determination regarding the true intention of the Applicant at the time of filing.

8. The Applicant has not applied to register a paint colour name as a trade mark but rather to register the word COSMOPOLITAN as a trade mark to be ‘used upon or in relation to’[20] automotive paint and ‘upon or in relation to’ automotive vehicles and their parts.  

   [20] See definitions provided in ss 7 and 9 of the Act.

9. Mr Weimers declares that the Applicant has used the Trade Mark in relation to a paint colour for its vehicles.[21] More specifically, the Trade Mark is currently used as the name of a paint colour for its Yaris model range (e.g. “Cosmopolitan 3S7”). Since 2010, the Applicant has sold over 1000 vehicles with the new paint colour. While the presentation of a vehicle in a particular colour on a brochure is not sufficient to demonstrate use of the Trade Mark, within the Applicant’s brochures the name COSMOPOLITAN is used as the name of a shade of pink and presented next to a swatch of that colour.   

   [21] Weimers at paragraph 14.

10. If the Applicant has used the Trade Mark in relation to some of the goods and not others this does not by itself establish a lack of intention to use it on all the goods. In terms of actual use demonstrated, I find that it would be artificial to separate the use of the Trade Mark as the name of a colour of a vehicle and use of the Trade Mark in relation to the vehicle itself.  A decision from a consumer to purchase a vehicle coincides with the decision regarding the colour of the vehicle and the Applicant’s brochures are for the purpose of selling a vehicle in a particular colour. In addition, if the colour is particularly noteworthy it may be used to identify the vehicle itself. For example, in the Evans statutory declaration[22] Ms Evans describes entering a Toyota showroom in May 2013:

    Upon entering the showroom on Victoria Avenue, I asked to see “a pink Yaris like I’ve seen driving around Sydney” or words to that effect. The customer service agent said “You mean, the Cosmopolitan Yaris?” and said that they had one in the car yard that I could see and test drive if I wished…

    [22] At paragraph 6.

11. To the extent that it is necessary, I find that the name of the colour of the vehicle constitutes use “upon, or in physical or other relation to, the goods” in class 12 (i.e. the motor vehicle itself). I am not satisfied on the facts presented that the Opponent has discharged the onus of proof upon it. I find that the ground of opposition under section 59 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

Trade 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.

1. Under section 60 for the present opposition the question is whether Opponent has established that, before 12 August 2010, the Opponent’s trade mark ‘COSMOPOLITAN’ enjoyed a reputation in Australia such that the Applicant’s use of the Trade Mark in relation to motor vehicles and automotive paints would be likely to deceive or cause confusion amongst a significant or substantial[23] number of consumers. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[24] and may depend on the specialised nature of the relevant market.[25]

   [23] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [24] Bali” Trade Mark [1969] RPC 472 per Lord Upjohn at 496.

   [25] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at 20.

2. The Opponent’s COSMOPOLITAN magazine has been distributed in Australia since 1973. I note that the Applicant does not dispute the existence of a substantial reputation at the priority date in respect of the women’s fashion and lifestyle magazine known as COSMOPOLITAN. As a consequence, I will move to the second consideration, namely, whether that reputation would likely result in the use of the Trade Mark deceiving or confusing Australian consumers.

‘Likely to Deceive or Cause Confusion’

1. The nature of the Opponent’s reputation in COSMOPOLITAN is first and foremost as a women’s fashion and lifestyle magazine that advertises a number of other products and services within its pages - all targeted at a particular demographic. The extent of this reputation in Australia is substantial. At the outset, Ms Ryan conceded that the parties are operating in different industries. This does not, however, preclude a finding of deception or confusion under section 60 but it is a factor that should be taken into account in the overall assessment.

2. The presence of advertisements for vehicles (including the Applicant’s) in the pages of the Opponent’s magazine does not, by itself, create a link between these diverse industries. Australian consumers do not assume a trade connection between the wide range of products and services advertised within the pages of a magazine and the magazine itself. Rather, it is seen as a medium for advertising those products and services. One does not, for example, perceive a trade connection between a business offering plumbing services which has an advertisement in the classified section of a newspaper and the business running the newspaper. The respective industries in the current opposition are very different.

3. The trade mark of the parties are substantially identical, both being the word ‘Cosmopolitan’. Ms Ryan argued that the Applicant’s use of the Trade Mark in a similar fashion to the Opponent would increase the likelihood of deception of confusion. The most common representation of the Opponent’s trade mark is that seen below:

1. Mr Heerey argued that use of the Trade Mark in the above fashion would not amount to use in a ‘normal and fair manner’ as contemplated by the authorities.[26] I cannot agree. Additions or alterations that do not substantially affect the identity of a trade mark amount to trade mark use under section 7 of the Act. Such use must constitute use in a ‘normal and fair manner’ and I find that the slightly stylized font of COSMOPOLITAN seen above falls into that category. This is especially so in the context of the findings of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd:

   The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1). [27]

   [26] See Re Smith Hayden & Company Ltd’sApplication (1946) 63 RPC 97 at 101 per Evershed J.

   [27] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 at [69].

2. As such, the above example would constitute use of the Trade Mark in a normal and fair manner. The overarching question is whether the reputation in the Opponent’s trade mark is such that use of the Trade Mark depicted in that fashion on automotive paints and motor vehicles would be likely to deceive or cause confusion. I am not concerned with a mere possibility of confusion but rather a real and tangible[28] danger of confusion in the marketplace.

   [28] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 at [43].

3. Ms Ryan also sought to highlight a reputation of the Opponent in relation to a particular shade of pink, similar to the colour associated with the use of the Trade Mark.  According to Fitzpatrick 2, the favourite colour of Helen Gurley Brown (editor of COSMOPOLITAN magazine in the US from 1965 to 1997) was pink. The Opponent submits that the colour pink therefore became closely associated with the Opponent’s magazine.

4. I am not convinced by the argument. The examples provided by the Opponent simply reinforce the fact that a large variety of women’s fashion and lifestyle magazines present their text and/or backgrounds in the colour pink. The Opponent is undoubtedly one of these magazines, but I am not satisfied that a consumer would (for example) recognize a particular shade of pink as a “COSMOPOLITAN pink”.

5. The Opponent also submits that the particular shade of pink used in its magazine and that used by the Applicant as the name of the colour of its automotive paint is a highly similar shade of pink. This is a moot point, but in any event, is of more relevance for the ground of opposition under section 62A of the Act.

6. Although a successful section 60 ground of opposition is not reliant on the traders operating in the same field, the two industries are so different (women’s magazines and cars, including paint for cars) and the Applicant and Opponent are both very well-known in their respective industries that deception or confusion arising from the use of the Trade Mark is unlikely. While the trade marks are at least substantially identical, the above circumstances when combined with the ordinary dictionary meaning of the word ‘Cosmopolitan’, means that consumers are unlikely to perceive a connection with the Opponent and become confused as a result.

7. The ground of opposition under section 60 of the Act has not been established.

Section 62A

1. Section 62A of the Act provides:

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. This ground of opposition was pursued on the basis of the prior business relationship and advertising campaign involving the Applicant and the Opponent, the reputation of the Opponent’s trade mark and its purported associated reputation in the colour pink, and relevant correspondence between the parties.

2. Ms Ryan argued that the facts before me are analogous to the circumstances in DC Comics v Cheqout Pty Ltd[29]:

   It was Mr Gabrielle’s decision to use the words “superman workout” together with the BG Shield Device. As the sole director of Cheqout, that mental element is attributable to the company. In my view, the inference is clear, from the immediate use of the Trade Mark together with the BG Shield Device that, in making the application to register the Trade Mark, Mr Gabrielle (and therefore Cheqout) intended to use it in combination with the BG Shield Device in order to strengthen the allusion to Superman. The inference can also be drawn that this use was designed to gain a benefit by appropriating Superman indicia and the reputation of the DC Comics superhero, so as to further the viewer’s association between the Trade Mark and the Superman word mark.

   [29] DC Comics v Cheqout Pty Ltd [2013] FCA 478; (2013) 212 FCR 194 at [73].

3. It is evident from Australian precedent that bad faith is a serious allegation and a finding under this ground should not be lightly made. However, the standard of proof is the balance of probabilities and bad faith does not require (although it includes) dishonesty or fraud. In the above decision, Bennett J also found that deception or confusion between the trade marks is not a requirement of section 62A.[30]

   [30] DC Comics v Cheqout Pty Ltd at [76].

4. As mentioned earlier, the Opponent’s trade mark COSMOPOLITAN has been in use in Australia since 1973. At the time Fitzpatrick 1 was made, the Opponent’s trade mark was being used under licence by a joint venture between HMI Australia Pty Ltd and ACP Publishing Pty Limited (‘ACP Magazines’).[31]

   [31] Fitpatrick 1 at paragraph 24.

The Business Relationship between the Parties

1. ACP Magazines and the Applicant partnered for an Australian advertising campaign which commenced in October 2009 carrying over into 2010. The campaign and related contest was named “The Search for Cosmo’s Columnist”.[32] The winner of the contest would receive a 10-month internship at Cosmopolitan Magazine and would be loaned a Toyota Yaris to drive for the length of the internship. During this time, the advertisements for the Toyota Yaris featured on the Cosmopolitan website and many advertisements featured brands from both parties. This is more than the Applicant simply running an advertisement of its Toyota Yaris model within the pages of COSMOPOLITAN magazine. These advertisements highlight a close trade association between the Opponent’s magazine and the goods (i.e. the Yaris) of the Applicant.

   [32] See relevant comments on this evidence in the decision of Hearst Communications Inc v H.A.G. Imports Pty Ltd [2014] ATMO 67 at [39].

2. In addition to the above promotions, the Opponent and the Applicant were involved in a further campaign named “COSMO Style in the City with TOYOTA YARIS” from April to August 2010. Once again, the link between the Opponent’s magazine and the Applicant’s Toyota Yaris is clearly emphasised. Fitzpatrick 2[33] indicates that this marketing campaign was to ‘build desirability for the ‘Toyota Yaris’ among the ‘Fashion Aware’ describing the car as the ‘the ultimate fashion accessory’. The intention was to engage with the similar demographic for the Applicant’s Toyota Yaris and the Opponent’s Cosmopolitan magazine, namely late teens to under 35 year old females (including, particularly for this promotion, fans of the television show ‘Sex and the City’).

   [33] Fitzpatrick 2 at paragraph 10, exhibit 21.

3. It was towards the end of this latest advertising campaign (and, it is open to infer, on the strength of it) that the Applicant wrote to the Opponent regarding its intention to apply to register the Trade Mark. The content of this correspondence to the Opponent is noteworthy.

The Letter to the Editor

1. In July 2010, Dimitri Andreatidis (Advertising Manager in the Marketing Division of Toyota Motor Corporation Australia) wrote to Bronwyn McCahon (Editor Cosmopolitan Magazine) informing them of the Applicant’s intention to use the name ‘Cosmopolitan’ as the name of a new colour for the Yaris. He wrote:

   We wish to inform you that as part of the YARIS vehicle line up we will be introducing a new and exciting colour name to compliment our YARIS brand.

   The new colour is a cross between pink and purple. We conducted naming research some time ago and our key demographic audience responded positively to various names however the name ‘Cosmopolitan’ was the wining(sic) candidate. The name ‘Cosmopolitan’ was successful due to the various connotations that the name was associated with.

   Given that your magazine has the same name, we thought we would inform you that we will apply to register the paint colour name as a trade mark. This will not in any way impact your rights to the name ‘Cosmopolitan.’[34]

   [34] Fitzpatrick 1, Exhibit 18.

2. The ‘various connotations’ of the name ‘Cosmopolitan’ were undefined in the above letter. However, Mr Weimers later declares in his evidence that:[35]

   Toyota chose the Trade Mark to distinguish its pink coloured Yaris based on the pink coloured cocktail drink which was interpreted by the National Marketing Department as “pink and fun”. The decision to choose the Trade Mark was not made on the basis of any relationship with the Opponent or the COSMOPOLITAN magazine.

   [35] At paragraph 22 of his declaration.

3. Mr Weimers declares that the Andreatidis letter was provided out of courtesy due to the ongoing business relationship between the parties[36] and Mr Heerey pointed out that the lack of response from the Opponent indicates that the Opponent (or, at least, ACP Magazines) was not of the view that such a trade mark application would be in bad faith. There is some force to that argument as the Opponent is an experienced person best placed to assess the Applicant’s conduct. However, this is not to say that the Applicant is therefore excused from the overall consideration if “a reasonable man in the applicant’s shoes should have been aware that he ought not to apply for the trade mark registration”.[37]

   [36] Weimers declaration at paragraph 36.

   [37] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 referring to Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028; [2005] FSR 10.

4. I also have before me email correspondence making reference to the above letter. It is claimed as confidential and I will not mention its contents here although I note that it was a subject of some debate at the hearing.

5. In any event, I find that the existence of the above letter is undoubtedly an acknowledgement that the Applicant was aware that applying to register the Trade Mark would be of concern to the Opponent.  The time from sending the letter to ACP Magazines and the filing of the Trade Mark was approximately a month. If there were concerns from the Opponent they were not made clear to the Applicant in that time. However, the letter does not make clear that scope of the Trade Mark as it now stands. In particular, it does not mention registering the name in relation to the goods of motor vehicles and their parts and accessories. It simply states that “we will apply to register the paint colour name as a trade mark.”

6. I note that the actual use of the Trade Mark to date has been as the name of the colour of the Opponent’s ‘Yaris’ model vehicle despite the fact that the specification is not limited to any particular model. The Trade Mark has not been used as the name of a colour, for example, of the Opponent’s ‘Camry’ or ‘Prius’ models. When considered in light of the Opponent’s and Applicant’s joint advertising campaigns specifically involving the Yaris this activity supports the inference of an association with the previous advertising campaigns and therefore with the Opponent.   

7. I have referred previously to the Opponent’s purported reputation in the colour pink. While I found that such a reputation is not substantial, pink is undoubtedly a predominant colour used by the Opponent. There is a further inference that can be drawn here that the Applicant’s use of the Trade Mark specifically in relation to a pink coloured Yaris model strengthens the connection between the traders that is likely to be perceived by consumers.  

8. Although I am not satisfied that the conduct of the Applicant amounts to fraud or dishonesty, I am satisfied after considering all the surrounding circumstances that the knowledge of the Applicant was such that the decision to apply to register the Trade Mark and its failure to disclose to the Opponent its intention to use the Trade Mark on motor vehicles, in particular the vehicle model which had been part of the previous joint advertising campaign, would be regarded as bad faith. In other words, “that persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.”[38]

   [38] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at [174].

9. I find that, on the balance of probabilities, the ground of opposition under section 62A of the Act has been established.

Decision

1. At the time the registration of the Trade Mark was opposed, section 55 of the Act relevantly provided:

55Decision

(1)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.

1. As I have found that the Opponent has established the ground under section 62A of the Act, I refuse to register Trade Mark application no. 1375070.

Costs

1. As the Opponent has been successful in this opposition and costs generally follow the event, I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearings Officer

Trade Marks Hearings

4 May 2015