Opposition by Advance Magazine Publishers Inc to registration of trade mark application number 1838932 (class 11) - VOGUE - in the name of Paul Rigo

[2020] ATMO 200

TRADE MARKS ACT 1995

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

Re:Opposition by Advance Magazine Publishers Inc to registration of trade mark application number 1838932 (class 11) - VOGUE - in the name of Paul Rigo

Delegate:	M Cooper
Representation:	Opponent: Ashurst Applicant: Alan Jacques and Kevin Lord of Lord & Co
Decision:	[2020] ATMO 200 Trade Marks Act 1995 (Cth) – s 52 opposition – ss 42(b), 43, 44, 58, 60 and 62A grounds considered – no grounds established – trade mark to proceed to registration.

Background

1. This matter concerns an opposition by Advance Magazine Publishers Inc (‘Opponent’), under s 52 of the Trade Marks Act 1995 (‘Act’), to registration of the trade mark detailed below in the name of Paul Rigo (‘Applicant’):

Application no.	1838932
Filing date:	18 April 2017
Trade Mark:	VOGUE (‘Trade Mark’)
Goods:	Class 11: Apparatus for sanitary purposes including vanity tops and basins; water supply and or distribution apparatus, including taps, faucets, temporising taps, mixer taps, bath and shower fixtures and fittings, sink units, basin units, bath tubs, toilet bowls, toilet cisterns, toilet lids, toilet seats, toilet seat lids, plumbing fixtures and fittings, enclosures for showers, apparatus for water heating, water heating installations; bathroom furniture (sanitary ware) including vanity tops and basins; apparatus for water supply or sanitary purposes in this class; coffee machines (electric), domestic coffee machines (electric), electric coffee machines, electric coffee machines for commercial use, espresso coffee machines. (‘Goods’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 22 March 2019 in the Australian Official Journal of Trade Marks.

3.     On 17 May 2019, the Opponent filed Notice of Intention to Oppose (‘NIO’). On 17 June 2019 it filed a Statement of Grounds and Particulars (‘SGP’) which cited opposition grounds under ss 42(b), 43, 44, 58, 60 and 62A. The Applicant filed a Notice of Intention to Defend on 6 August 2019.

Evidence

4.     The following evidence was filed in this opposition:

·     Evidence in Support comprising the declaration of David Geithner, the Opponent’s (then) Vice President, dated 6 November 2019, with Annexures A – W (‘Geithner declaration’), filed on 7 November 2019.

·     Evidence in Answer comprising the declaration of the Applicant dated 7 February 2020, with Exhibits A and B (‘Rigo declaration’), filed on 8 February 2020.

·     Evidence in Reply, filed on 30 April 2020, comprising the declarations of Fiona Brittain, solicitor, dated 30 April 2020 with Exhibits FB-1 and FB-2 (‘Brittain declaration’) and Mike Goss, the Opponent’s current Vice President, dated 29 April 2020 (‘Goss declaration’).   

5.     Both parties filed written submissions. As a delegate of the Registrar, I heard the matter on 9 November 2020. The Opponent elected not to appear. The Applicant was represented by Alan Jacques and Kevin Lord of Lord & Co, who appeared by telephone.

6.     In summary, the Geithner declaration outlines the history of VOGUE,  ‘a world famous iconic brand’, from its creation as a weekly journal of society and fashion news in 1892, to its evolution into the fashion and beauty magazine “VOGUE’, launched in 1909 and published in Australia since 1959. VOGUE LIVING magazine, featuring home decorating, furnishing, interior design, architecture, furniture, household accessories, gardens and landscaping has also been published in Australia since 1967. The several other VOGUE-badged magazines and publications distributed in Australia are listed and examples of various media kits are annexed. Circulation, social media, sales and revenue figures, as well as evidence of significant promotional and advertising activities are also annexed. Geithner notes the Opponent has a webpage devoted to bathrooms and kitchens, and he attaches various VOGUE magazine articles on bathroom designs and products and coffee, coffee machines and coffee products.

7.     The Rigo declaration outlines the Applicant’s understanding of the Trade Mark’s history and his involvement in related businesses since 1988. He attaches documents relating to a previous opposition by the Opponent to his predecessor’s application for the Trade Mark for class 20 and (the same) class 11 Goods[1].

[1] Trade Mark 1179749, initially opposed by the Opponent but the opposition was later withdrawn.

8.     The Goss declaration states the Opponent’s current policy is to oppose the registration of trade marks comprising the word ‘Vogue’ alone. The Brittain declaration contains the results of her search of the Australian Register for use of ‘Vogue’ in relation to class 11 goods only. She also records the Opponent’s opposition to registration of trade mark 1701438 for Vogue Splashback and Panels.

Onus and standard of proof

9.     In respect of proceedings under s 52, an opponent bears the onus of establishing one or more of the grounds of opposition in relation to the goods and services of an opposed trade mark. The standard of proof required is on the balance of probabilities.[2]

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

10. As noted above, the opposition grounds particularised in the SGP are those under sections 42(b), 43, 44, 58, 60 and 62A of the Act. The time at which a ground of opposition must be established is the date of filing of the application for registration.[3] In this case that date is 18 April 2017 (‘the relevant date’), also referred to as the ‘priority date’ in ss 44 and 60.

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].

Consideration and reasons

11.     The Opponent’s grounds of opposition are discussed below.

Section 44

12.     To succeed on this opposition ground an opponent must establish that, subject to subsections (3) and (4), the trade mark applied for is substantially identical with or deceptively similar to another registered trade mark (or one sought to be registered); is in respect of similar goods or closely related services (s 44(1)(a)); and has a priority date not earlier than that other mark (s 44(1)(b)).

13. The Opponent relies in this regard on 23 of its Australian registered trade marks (‘Opponent’s marks’, see Attachment A). It notes all the Opponent’s marks (except for no. 1854190) pre-date the priority date and contends that their designated goods and services under classes 7, 10, 11, 17, 19, 21 and 37, including ‘furniture, household and kitchen utensils and containers including glassware, porcelain and earthenware’, are similar or closely related to the Goods. It submits that the ‘only issue for the Delegate in respect of section 44 is whether or not the respective marks are substantially identical or deceptively similar’.

14.     The Applicant rejects the Opponent’s claims that its goods are similar to the Goods, contending that they are neither similar nor overlapping because the nature of the goods, the respective uses, and the trade channels through which they are sold are all clearly different. It submits that the Goods are only used in wet areas of the house, primarily the bathroom, and are sold through specialist plumbing supply stores. They would be purchased by home renovators or plumbing professionals and would be carefully considered purchases made very infrequently. In relation to coffee machines, both domestic and commercial, the Applicant contends that they are also specialist items and are typically sold through dedicated suppliers. They would also be carefully considered infrequent purchases. Therefore, it submits, the use of the Trade Mark is not likely to cause and deception or confusion.

Consideration

15. Except for trade mark 1854190, all the Opponent’s Marks have an earlier priority date than the Trade Mark. Therefore s 44(1)(b) is satisfied. In relation to s 44(1)(a), self-evidently the Trade Mark is identical or substantially identical to many of the Opponent’s marks however it is unnecessary to consdier this further given my findings below.

16. Section 14(1) of the Act provides that goods are ‘similar’ to other goods if they are the same, or of the same description, as the other goods. The High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, in summarising Romer J in Jellinek's Application[4]  said this assessment requires consideration of ‘the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself…’[5]

[4] (1946) 63 RPC 59.

[5] Southern Cross v Toowoomba Foundry (1954) 91 CLR 592, 606.

17.     In respect of the goods specifically identified in the Opponent’s submissions in this regard, i.e. ‘furniture, household and kitchen utensils and containers including glassware, porcelain and earthenware’ any similarity to the Goods is far from clear. The Opponent did not elaborate further in submissions and there is nothing in the evidence that demonstrates it. Consequently, I am not satisfied that there is any relevant similarity. I note the Opponent’s trade mark 1774811 for ‘VOGUE LIVING’ designates class 11 goods however it specifies ‘Apparatus for lighting; desk lights; electric bedding and blankets’. Again, there is no apparent or evidenced relevant similarity to the Goods. I note however that this mark also designates, among other things, ‘bathroom furniture’ in class 21 and ‘bathroom containers’, ‘bathroom accessories, soap holders, soap dishes toothbrush containers’ in class 20. On the face of it, they might be seen to encompass or be similar to the Goods. The Opponent did not address this, and the evidence did not persuasively demonstrate any connection.  At the hearing the Applicant reiterated its submissions that the apparatus and sanitary ware embraced by class 11 are different in nature to ‘bathroom furniture’ in class 21 and the other bathroom items in class 20 which, it contended, are produced and traded through different trade channels. I have no personal knowledge of bathroom products and their trade channels and, in the absence of submissions or evidence from the Opponent in this regard, particularly given its onus, I accept the Applicant’s submissions that the Goods are not relevantly similar to the class 20 and 21 goods designated in the Opponent’s mark 1774811.

18.     It follows that I am not satisfied that the Goods in class 11 are relevantly similar to any of the goods designated by the Opponent’s marks.

19. I also observe that the Opponent’s marks 1393118 and 1773831 for VOGUE CAFÉ and 1773830 for VOGUE, each designate class 43 services for, among other things, coffee shops and cafes. A question therefore arises under s 44(1)(a)(i) whether the Opponent’s marks designating, in particular, the provision of coffee shop services, are services closely related to the Trade Mark’s ‘coffee machines (electric), domestic coffee machines (electric), electric coffee machines, electric coffee machines for commercial use, espresso coffee machines’. Neither party addresses this issue in submissions, however I note the finding in Notaras v Barcelona Pty Ltd that, for the purposes of s 44(1), coffee machines are not closely related to cafes or coffee shop services.[6]  

[6] [2019] FCA 4 [339].

20.     On this basis I am not satisfied that any of the Goods are closely related to the class 43 services, or any of the services, in the Opponent’s marks.

21. The section 44 opposition ground is therefore not established.

Section 58

22.     As identified by the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[7], to succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark; that this mark has been used in respect of goods or services that are ‘the same kind of thing’ as claimed by the trade mark; and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.[8]

[7] [2017] FCAFC 83; 251 FCR 379.

[8] Ibid [50].

23. The test for the ‘same kind of thing’ is narrower than the assessment undertaken under s 44 for ‘similar goods’ or ‘closely related services’[9]. Given my findings above regarding the lack of similarity in the relevant goods or of a close relationship between the Goods and the services, and in the absence of evidence of use of the Opponent’s marks for anything other than their designated goods and services, it follows that the section 58 ground is not established.

[9] Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 [89]; Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103 [14].

Section 60

24.     To succeed on this ground the Opponent must establish that the trade mark/s on which it relies has/have a reputation in Australia amongst a significant section of the relevant public at the relevant date and, because of that reputation, the notional use of the Trade Mark would be likely to deceive or cause confusion.

25.     In particularising this ground, the Opponent relies on the Opponent’s marks (Attachment A), noting that it has used the ‘VOGUE’ trade mark in Australia since at least 1959. It submits it has acquired a significant Australian reputation in relation to a wide range of goods and services, including interior design, architecture, home furnishings, household accessories including bathroom fittings, fixtures and accessories and coffee machines, such that use of the Trade Mark is likely to deceive or confuse consumers by causing them to associate it with the VOGUE trade marks.

26.     The Applicant rejects the Opponent’s submissions, contending that any reputation in its marks does not extend beyond magazines and publishing, none of which ‘claim or imply’ the Opponent provides the Goods. The bathroom products and other Goods displayed in the Opponent’s evidence do not demonstrate use of the Opponent’s marks as trade marks in relation to the Goods but simply describe the products of other people under other trade marks. 

27.     The comments of Kenny J in McCormick & Co Inc v McCormick in relation to s 60 and the assessment of reputation are relevant:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product… This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[10]

[10] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].

28.     In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[11]

[11] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].

29.     While reliance is placed on the Opponent’s marks for this ground, in submissions, it focused on the VOGUE, VOGUE LIVING and VOGUE ENTERTAINING & TRAVEL marks.[12] Relevantly, the evidence establishes the Opponent’s VOGUE and VOGUE LIVING magazines are well-known and highly regarded, respectively, in the fashion, beauty and lifestyle fields and in the home furnishing, interior design, home decorating and renovation industries, attracting advertising from well-known companies. Substantial Australian circulation, advertising and sale figures are provided as well as evidence of several promotional activities and a strong social media and website presence. In relation to the Goods, several articles in the print magazines and on social media are annexed which feature bathrooms, bathroom products and accessories and coffee machines and products (although there is no evidence that the Goods or services in relation to them are provided under the Opponent’s marks). Confidential revenue figures relating to bathroom product advertising are also provided.

[12] See Attachment A for those marks.

30. Given the Opponent’s significant evidence substantiating its reputation in its VOGUE and VOGUE LIVING marks (‘Opponent’s identified marks’) I accept that, at the relevant date, they had a strong reputation among a significant number of Australians concerned with fashion, interior design, home furnishings, improvements and renovations, being associated in the minds of consumers with publishing and magazines which advertise, sponsor or promote products and merchandise for fashion, beauty and the home. Even so, it does not follow, and the evidence does not establish, that the reputation of the Opponent’s identified marks is such that use of the Trade Mark would cause any relevant confusion or deception as required by s 60(b).

31.     French J’s discussion of the likelihood of deception or confusion in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) is pertinent to the s 60(b) assessment:

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. ..

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.[13]

[13] [1999] FCA 1020 [50].

32.     The delegate’s observations in Advance Magazine Publishers, Inv v Louver-Lite Ltd (‘Louver-Lite’) in relation to the trade mark ‘Slimline Vogue’ for blinds and curtains, are apposite to the circumstances of this opposition:

It is possible that people seeing the Trade Mark on the Goods might recognize the word ‘vogue’ as being the name of the Opponent’s magazines as well as being descriptive of the Goods. However, it is not likely in my estimation that those people would take the further step and wonder whether there is some connection between the Goods and the Opponent..’[2]

[2] [2015] ATMO 62 [81].

33.     Similarly in relation to use of the Trade Mark, even if consumers recognise “Vogue’ as the name of the magazine, nothing in the evidence establishes they would be caused to go the ‘further step’ and wonder whether there was an association or connection between the Goods and the Opponent.

34.     Furthermore, there is no evidence that the Opponent has engaged in any brand extension or licensing of its VOGUE brand to the Goods. While the Opponent relies on Annexure O to the Geithner declaration as evidencing the Opponent’s branded merchandise, it primarily provides examples of the Opponent’s various partnerships/sponsorships with automobile, cosmetic, travel, restaurant and wine companies. The only VOGUE branded merchandise evidenced is a nail polish and ‘Oroton Vogue’ and ‘Vogue Living’ handbags. As also noted by the delegate in Louver-Lite:

The Opponent has not evidenced any brand extension or licensing of its VOGUE brand to those in the interior decorating or furnishing trades although I note that it has collaborated with Oroton on the production of a handbag and has also licensed a company (Butterick Company Pty Limited) to use the trade mark “VOGUE” on dressmaking patterns manufactured and sold by it. The handbag and the dressmaking designs do not, in my consideration, amount to a pattern of brand extension that would be recognized by the public as such and are, in any event, not in the interior furnishing trade where the Goods of the Applicant lie.[3]

[3] Advance Magazine Publishers, Inc v Louver-Lite Limited [2015] ATMO 62 [28].

35.     Similarly, the evidence of brand extension to handbags and nail polish does not establish that the Opponent engaged in brand extension activities in relation to the Goods, or anything similar to the Goods, such that the public would be likely caused to wonder whether they were endorsed or otherwise associated with the Opponent.

36.     In addition, the Goods are generally not inexpensive or regular purchases. The Goods are usually chosen by business or tradespeople who are knowledgeable in their purchases and /or consumers who are likely to have researched and/or carefully chosen such products for their bathrooms or their cafes/kitchens, thus further mitigating any risk of deception or confusion.

37.     Therefore, while I accept the evidence establishes an Australian reputation in the Opponent’s identified marks at the relevant date, I am not satisfied that, because of that reputation, the Opponent has demonstrated a ‘real tangible danger’[14] that use of the Trade Mark for the Goods is likely to deceive or cause confusion amongst a significant number of relevant Australian consumers concerned with them.

[14] Woolworths, ibid.

38. It follows that the s 60 ground has not been established.

Section 42

39. Section 42(b) of the Act requires the Opponent establish that use of the Trade Mark would be contrary to law. The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.[15]

[15] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].

40. The Opponent submitted that use of the Trade Mark would constitute contraventions of ss 18 and 29(1) of the Australian Consumer Law (‘ACL’) and passing off. Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth) (‘TPA’)) requires consideration of whether the relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods or that they had some connection with the Opponent. The Court noted in Puxu that ‘conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s 52.’[16] I note my findings above that, notwithstanding the reputation of the Opponent’s identified Marks, use of the Trade Mark would not cause a person to be confused or deceived as to the source of the Goods. It follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL. In relation to s 29, I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.[17]

[16] Custom Built Furniture Pty Ltd vPuxu Pty Ltd (1982) 149 CLR 191 [198].

[17] See also Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104 [107].

41. Where use of a trade mark does not contravene s 18 or s 29 of the ACL, neither will it constitutepassing off[18].

[18] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.

42. It follows I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant’s conduct would constitute passing off or that it would be regarded as having contravened ss 18 or 29 of the ACL.

43. For these reasons I am not satisfied that the s 42(b) ground has been established.

Section 43

44. Section 43 provides that a trade mark must be rejected if, because of a connotation in the Trade Mark, its use in relation to the Goods would be likely to cause deception or confusion. It is therefore necessary for the Opponent to establish that, because of a connotation conveyed by the word ‘Vogue’, the Trade Mark, when used in relation to the Goods, is likely to deceive or cause confusion.

45.     The meaning of ‘connotation’ was discussed by Gyles J in Pfizer Products Inc v Karam (‘Pfizer’) where he 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. [19]

[19] [2006] FCA 1663 [53].

46.     The Opponent’s scant submissions in this regard contend that the Trade Mark ‘connotes and suggests a connection with the Opponent’s VOGUE brand and VOGUE trade marks’ due to an overlap in the Goods with those covered by the Opponent’s marks as well as the Opponent’s ‘extensive use of, and substantial reputation in, the VOGUE brand and Trade marks’. Therefore, use of the Trade Mark is contended to be ‘inherently likely to deceive or cause confusion.’

47.     While ‘[a]n implication of sponsorship or association might qualify as such a secondary meaning or connotation’[20], it has also been held that ‘reputation is irrelevant’ to the assessment[21] as is any similarity between the trade marks.[22] Any connotation must arise from the mark itself and not from any comparison with another trade mark[23].

[20] Pfizer [55].

[21]  Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [140]

[22] Pfizer [53]; Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720 [43].

[23] Ibid.

48.   It follows that I am not satisfied that the evidence establishes there is any relevant connotation in the Trade Mark such that its use is likely to deceive or cause confusion.

49.   Accordingly, this ground is not established.

Section 62A

50. Section 62A of the Act provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith.

51.     Bad faith is to be assessed at the time of the application.[24] It may include dishonesty or fraud but neither is a prerequisite to such a finding.[25] In the context of s 62A, it is a wider concept than dishonesty or fraud and is capable of being applied to a wide variety of conduct.[26] Bad faith ‘irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character’.[27] An intention to use a trade mark in such a way as to gain a benefit by appropriating the indicia and reputation of another trader is a ‘relevant circumstance’ for the purposes of s 62A.[28] While the seriousness of an allegation of bad faith requires correspondingly cogent evidence, it is clear that the standard of proof in relation to such an allegation is the balance of probabilities, not beyond reasonable doubt.[29]

[24] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565; 288 ALR 727; [2012] FCA 81 [145] (‘Fry Consulting’).

[25] Fry Consulting [164].

[26] Ibid.

[27] Fry Consulting [165].

[28] DC Comics v Cheqout Pty Ltd (‘DC Comics’) [2013] FCA 478 [73]-[74].

[29] Fry Consulting [145]; DC Comics [61]-[62].

52.     In Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3), the s 62A principles articulated by Bennett J in DC Comics were summarised in part as follows:

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[30]

[30] [2017] FCA 60 [196].

53.     The Opponent relies on its goodwill and substantial reputation in its marks, the similarity and close relationship between the Goods and its goods and services, and the previous opposition matters between the parties, as establishing the Applicant’s knowledge of the Opponent’s rights in its marks. It describes the Applicant’s conduct in filing the Trade Mark as part of ‘an ongoing pattern of conduct to misappropriate the Opponent’s VOGUE brand’ in order to gain a benefit by association. Therefore, it submitted, the application was made in bad faith.

54.     The Rigo declaration outlines the history of his predecessors’ use of the Trade Mark for the Goods (except coffee machines) in classes 11 and 20, operating from 1983 initially as Vogue Distributors WA. Prior registrations include 787011 for ‘Vogue Vanities’ (stylised) in 1999, 1032546 for ‘Vogue’ in 2004 and 1179749 for ‘Vogue’ in 2007.[31]All these trade marks designate class 11 goods which are the same or similar to those of the Trade Mark (except coffee machines). Notwithstanding some periods of non-use, the Applicant’s (or his predecessors’) pursuit of the Trade Mark has been consistent over several years and some use is demonstrated.[32] Rigo acknowledges his awareness of the Opponent’s marks but says he was also aware of other brands on the Register which used ‘Vogue’ for other, different goods and services and he did not think it would be a barrier to registration.[33]

[31] The Register records show these trade marks were assigned between various Rigo-owned companies, eventually being assigned to Award Brands Pty Ltd. Trade mark 1032546 was removed from the Register in June 2015 because the renewal fee was not paid. Trade marks 787011 and 1179749 were removed in March 2017 following the Opponent’s successful non-use applications.

[32] See Exhibit A to Rigo declaration, i.e. Michael Rigo’s evidence in answer to the Opponent’s opposition to its registration of trade mark 1179749 (later withdrawn by the Opponent).

[33] Other registrations for ‘Vogue’ solus include 126298 for tobacco, 308941 for paint, 780455 for motor vehicles and 1976388 for sunglasses and glasses.

55.     The Applicant’s conduct in applying for the Trade Mark is consistent with his or his predecessors’ previous applications, pursuit and use of the Trade Mark for the Goods. Nothing in the evidence indicates the Applicant, in making the application, was seeking to falsely indicate a connection with the Opponent or to trade off its goodwill. Overall, there is insufficient cogent evidence before me establishing that the Applicant’s conduct in applying to register the Trade Mark might be said to constitute a ‘falling short’ of acceptable commercial standards or of an ‘unscrupulous, underhand or unconscientious character’.[34]

[34] Fry Consulting [165]– [166].

56. It follows that the s 62A ground of opposition has not been established.

Decision

57. Section 55 of the Act relevantly provides:

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.

58.     The Opponent has failed to establish any of the grounds of opposition nominated in the SGP. The Trade Mark may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

59. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

M. Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
23 December 2020.

ATTACHMENT A: OPPONENT’S MARKS

Trade Mark No.	Class(es)	Status
1774811	VOGUE LIVING	11, 16, 20, 21, 24, 27	Registered / Protected
738360	VOGUE LIVING	16	Registered / Protected
1854190	VOGUE LIVING	35, 38, 41	Registered / Protected
581389	VOGUE	42	Registered / Protected
581390	VOGUE	27	Registered / Protected
756384	VOGUE	18	Registered / Protected
860485	VOGUE	3, 14, 24	Registered / Protected
1393116	VOGUE	43	Registered / Protected
1421016	VOGUE	43	Registered / Protected
1773830	VOGUE	43	Registered / Protected
855600	VOGUE	18	Registered / Protected
428933	24	Registered / Protected
428934	42	Registered / Protected
540569	3	Registered / Protected
572242	42	Registered / Protected
651969	36	Registered / Protected
860484	14, 24	Registered / Protected
1773831	VOGUE CAFE	43	Registered / Protected
1004157	43	Registered / Protected
1393118	43	Registered / Protected
877127	VOGUE APARTMENT LIVING	16	Registered / Protected
844746	SHOPVOGUE	16, 35, 42	Registered / Protected
857547	SHOPVOGUE	35, 41, 42	Registered / Protected