Hearst Communications, Inc v Unitel Corporation Limited

[2002] ATMO 92

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 831329 for the trade mark SHE in class 38 filed in the name of Unitel Corporation Limited.

Date of Decision:                  22 October 2002
Delegate:  Hearing Officer Mary Skivington
Decision:  Section 52 Opposition: registration allowed s55(b)

Background

Unitel Corporation Ltd, ('Unitel'), filed trade mark application 831329 on 11 April 2000.  The trade mark is the word SHE in plain upper case typescript and the services specified fall within class 38.  They are described as:

Broadcasting and telecommunication services in this class; including radio and television broadcasting and telecasting; broadcasting of radio and television programming; telecommunication services provided by the Internet

Acceptance of the trade mark was advertised in the Official Journal of Trade Marks on 4 January 2001.

On 2 April 2001 Corrs Chambers Westgarth, lawyers, filed a notice of opposition to registration of the trade mark on behalf of Hearst Communications, Inc., ('Hearst'). Seven grounds of opposition were listed in the notice, however, the evidence filed related only to sections 44 and 60 of the Trade Marks Act 1995 ('the Act').

Hearst's evidence in support was served and filed by 4 January 2002.  Unitel did not serve and file evidence in answer.  Neither party has requested a hearing and the matter has been referred to me, as a delegate of the registrar, to decide the opposition on the written record.

Evidence

Hearst's evidence in support consists of:

• A statutory declaration dated 24 August 2001 with annexures A, B, and C and exhibit TM1, from Terry Mansfield, the managing director of The National Magazine Company Limited ('National Magazine'), in the United Kingdom; and

• A statutory declaration dated 30 November 2001 with exhibits NB1 to NB10, from Nicky Briger the editor of SHE magazine in Australia.

National Magazine, which publishes SHE magazine in the U.K., and the opponent, Hearst, are subsidiaries of Hearst Holdings, Inc.  National Magazine is the owner of trade marks registered in the U.K in classes 16, 9 and 25 for the trade mark SHE and Hearst is the owner of registrations 220362 and 508742 for the same mark in Australia.  These class 16 registrations cover, respectively:

Periodical printed publications. (220362); and

Books, diaries, magazines, printed publications, journals,

printed matter, writing implements, (508742).

SHE magazine is published in Australia under licence from Hearst.

Mr Mansfield declares that SHE magazine, published in the U.K. was first published in 1955 and that the trade mark has been used continuously since that time in respect of the magazine.  He says it is distributed in the United Kingdom and abroad in Europe, United States of America, the Caribbean, Asia, Canada, Africa, the Middle East and South America and it has a few Australian subscribers.  The magazine is extensively promoted in the U.K. and is targeted at women in their thirties, declares Mr Mansfield.  In support of the reputation of the trade mark in Australia Mr Mansfield declares that in addition to the subscribers in Australia travellers may have purchased the magazine while in the U.K.

Ms Briger declares that SHE was first published in Australia in September 1993 and that it has been published on a monthly basis since that time.  The magazine, she says, is sold throughout Australia and is advertised in newspapers and on radio, the Internet and television as well as by means of bus stop signage and billboards.  The target market is women in their mid twenties to late thirties.

Ms Briger declares that SHE magazine has featured "one off" stories relating to computers or the Internet.  (It is not clear to me if by this she means that a close relationship exists between class 16 goods and class 38 services). 

She states her belief that the trade mark has become well known to consumers and that because of the opponent's reputation in the trade mark, SHE, any use by Unitel in respect of telecommunication services is likely to cause confusion.

Grounds of opposition.

Section 44, to the extent that it relates to this opposition provides:
Identical etc. trade marks

(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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Because it is unclear to me from Ms Briger's declaration whether or not she is claiming that a close relationship exists between the goods in these registrations and the services provided by Unitel I believe I should consider the subject application under the provisions of section 44 of the Act. As Unitel's trade mark is identical to the registered trade marks owned by Hearst the matters of substantial identity and deceptive similarity are not in dispute. It follows that I must determine if periodical printed publications, books, diaries, magazines journals, printed matter and writing implements are goods closely related to Broadcasting and telecommunication services including radio and television broadcasting and telecasting, broadcasting of radio and television programming and telecommunication services provided by the Internet.

Hearing Officer I Thompson in Re Aussat Pty Ltd (1993) 27 IPR at 309, adopted criteria similar to those from John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 at 372, where goods of the same description were under consideration, in order to determine if goods and services were closely related.
These included:

• Are the services performed directly upon or by means of the goods?

• Are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

• Are the goods and services of matching technical complexity?

• Is the technical training of the people who make the goods or provide the services the same?

• Do the people who make the goods or provide the services belong to the same unions or associations?

• Are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?

• Is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?

• Are the goods and services commonly offered by the one company or organisation?

Telecommunication is the science or technology of transmitting messages, sound and images from one place to other places and is a means by which information regarding the content of the opponent's printed matter may be brought to the attention of consumers.  However the trades concerned with the provision of telecommunications are quite different from those of the writers, artists, graphic designers and printers involved in the production of printed matter.  These trades require different skills and aptitudes and ordinary consumers would not consider that they belong to the same trade.  Telecommunication providers belong to different unions and associations and their services are not offered by the same companies that specialise in printed matter including magazines.  The opponent's trade existed long before the advent of telecommunications and both are capable of independent co-existence.  Although SHE publishes stories about the Internet and computing and features a section devoted to online shopping this does not establish that a close relationship exists between these goods and services.  The sort of services that Unitel provides allow users to access television and radio programs and the Internet but they are not services that provide the content of the programs so accessed.  Those who provide the content for magazines and newspapers are in similar trades to those who provide the content for television, radio and the Internet but they are not closely related in any practical sense to the access providers even though telecommunication services play a vital role in allowing users to see, hear and interact with programs produced by the content providers.

This ground for opposition has not been established.

Reputation

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) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.

As the relevant trade marks are identical the requirements for subsection 60(a) have been met and I must only consider if Hearst's reputation in the mark SHE at the priority date, (11 April 2000), was such that use by Unitel of the same mark would have been likely to deceive or cause confusion.

Sales of the English edition of SHE are modest, even though the magazine is widely distributed for sale and sales of the Australian editions are similarly quite modest and have significantly decreased in the nine years since it was first published.  Lifestyle magazines aimed at one small sector of the community, in this case women in age range 25 - 39, may well be profitable especially if well focussed, but their owners face considerable difficulty in establishing that they have acquired a reputation to the extent that use of a substantially identical or deceptively similar trade mark by another person would be likely to deceive or cause confusion.

Reputation of course relates to more than the number of sales made.  Reputation may be enhanced by the means of television and Internet advertisements and displays at purchase points.  Sponsorship of charities, sporting and other community events, as well as sponsorship of individual sports persons or teams may very significantly enhance reputation.

I am not satisfied on the evidence before me that at the relevant date the opponent had acquired a reputation in Australia. Hearst Communications, Inc has therefore not established its ground of opposition under section 60.

Decision

The opponent has not established either of the grounds pursued.  The application may proceed to registration one month from the date of this decision, subject to the payment of the appropriate fee, unless before that time the Registrar has been served with a notice of appeal.  If the Registrar has been served with a notice of appeal before that time the application should remain pending until the appeal has been decided or discontinued.

Mary Skivington
Hearing Officer
Trade Marks Hearings
22 October 2002