Opposition by Advance Magazine Publishers, Inc. to registration of trade mark application number 1911166 (Class 25) OVV Original Vogue & Value (Composite) - in the name of Shanghai Xingdu Garments Co., Ltd

[2020] ATMO 196

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 1911166 (Class 25) OVV Original Vogue & Value (Composite) - in the name of Shanghai Xingdu Garments Co., Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions by Ashurst, solicitors Applicant: Written submissions by Davies Collison Cave Ltd, attorneys
Decision:	2020 ATMO 196 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 60, 42(b), 43, 58 and 62A pressed – s 60 considered and established - application refused.

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Peter Balthazar (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	(‘the Trade Mark’)
Trade mark application:	1911166
Filing Date:	5 March 2018 (‘Priority Date’)
Specification:	Class 25: Sweaters; Shirts; Ready-made clothing; Trousers; Outerclothing; Knitwear (clothing); Skirts; Top coats; Clothing of leather; Tee-shirts; Underwear; Underpants; Shoes; Hats; Hosiery; Gloves (clothing); Scarfs; Neckties; Girdles (‘the Goods’)

2. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks (‘the Journal’).

3.     Following the advertisement of acceptance of the application for possible registration in the Journal, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars ('the SGP').  The Applicant subsequently filed a Notice of Intention to Defend.

4.     Subsequently, the parties filed evidence under the Trade Mark Regulations 1995 ('the Regulations').  Much of this evidence has no bearing on the decision I have made for reasons that follow and I have referred only to that which is pertinent.

5.     Whilst the parties reminded of their right to be heard in person, in the end both were content to rely on written submissions. 

Grounds of Opposition

1. The SGP nominated grounds of opposition under ss 44, 60, 42(b), 43, 58 and 62A the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

2. The time at which the grounds of opposition must be established is the Priority Date, being the date of the application for registration of the Trade Mark. [2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 95.

   Evidence

3. The evidence consists of the following declarations:

   ·     Evidence in Support comprising the declaration of David Geithner dated 11 February 2019, (First Geithner declaration) together with annexures A to R.

   ·     Evidence in Answer comprising the declaration of Huang Qi dated 17 May 2019, (Huang Declaration) together with Exhibits HQ-1 to HQ -11.

   ·     Evidence in Reply comprising the declaration of David Geithner dated 2 July 2019, (Second Geithner Declaration) together with "Confidential Annexure A".

4. The First Geithner declaration is made by the Vice President of the Opponent. It details the creation and history of the VOGUE trademark, first registered in Australia in 1918, both in Australia and overseas. The first registration and subsequent identical registrations are referred to in the Opponent’s submissions as the ‘VOGUE Masthead’, and appears as follows:

10.  The First Geithner declaration, at [10], states that ‘[t]he Opponent is the publisher of the women’s magazine VOGUE. VOGUE is regarded as a leading and authoritative publication on fashion, beauty, health and lifestyle.’ The declaration also details a number of associated publications and magazines in Australia.

11.  The First Geithner declaration annexes a lengthy list of Australian trade mark registrations for the VOGUE Masthead mark and word VOGUE (‘the VOGUE mark’) and other associated marks incorporating the word VOGUE with other descriptive elements. The majority of the registrations are in Classes 16, 42 and associated services.  Registrations 428936 and 879290 for the VOGUE Masthead and word VOGUE respectively are in Class 25, being in the same class as the Trade Mark in this application.

12.  In both the First Geithner declaration and the Opponent’s submissions use of the VOGUE mark by the Opponent is referred to as use by ‘the VOGUE brand’. Where appropriate, I will also use that terminology.

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

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.

   Note:For priority date see section 12.

2. It is not necessary to show under s 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick,[3] by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [3] (2000) 51 IPR 102.

4. Further, at [86], Kenny J said:

   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.

   17.     The First Geithner declaration provides evidence of a significant reputation in Australia and in rest of the world in both the VOGUE mark and the VOGUE brand for fashion clothing before 5 March 2018. In particular:

   · The VOGUE mark was first used in Australia by the Opponent in 1959, with the launch of the VOGUE Australia Magazine: First Geithner Declaration [14]. Since then that magazine has been dedicated to fashion clothing and other lifestyle information for women: First Geithner Declaration [10(a)]. The magazine has enjoyed significant circulation figures in Australia: First Geithner Declaration [18]: Annexure G.

   ·     The VOGUE mark has been advertised widely in Australia since 1959, including for example on Metrolites at bus stops in Sydney, Melbourne and Brisbane; posters featuring VOGUE magazine covers displayed at retail outlets; television commercials: Geithner Declaration [23(a)]: Annexure K.

   ·     The VOGUE brand has been the sponsor of fashion clothing festivals including the Rosemount Australian Fashion Week, L'Oréal Melbourne Fashion Festival and Perth Fashion Festival and Mercedes-Benz Fashion Festival (Brisbane): First Geithner Declaration [23(e)].

   ·     In 2007 and 2008, the VOGUE brand was media partner for the reality TV series "Australia's Next Top Model" broadcast by Foxtel: First Geithner Declaration [23(f)].

   ·     In 2008, the VOGUE brand was used in connection with a weekly fashion column in the Sydney Telegraph Newspaper: First Geithner Declaration [23(g)]: Annexure K.

   ·     VOGUE branded merchandise has included handbags, makeup bags and travel bags: First Geithner Declaration [23(h), (j)]: Annexure K.

   ·     The Opponent has distributed magazine supplements including annual "high street fashion" and "spring racing fashion" supplements with editions of VOGUE AUSTRALIA: First Geithner Declaration [23(i)].

   ·     The Opponent's VOGUE AUSTRALIA magazine attracts extensive advertising in relation to fashion, accessories, and clothing, as well as editorial content relating to fashion, style, fashion shows, fashion news, fashion designers, shopping and fashion photo shoots: First Geithner Declaration [27] and Annexure N.

   ·     VOGUE magazine has been promoted at events and functions such as Australian Fashion Week, Melbourne Cup Day, the Australian Open and other promotional events held at Australian department stores: First Geithner Declaration [28] and Annexure O.) Promotional events also include VOGUE ONLINE SHOPPING NIGHTS, VOGUE FASHION'S NIGHT OUT and VOGUE CODE events: First Geithner Declaration [29]- [32] and Annexures P, Q and R.

   18.     The First Geithner declaration annexes confidential exhibits that demonstrate significant advertising and distribution figures for publications sold under the VOGUE mark. I am satisfied that evidence establishes that the Opponent has a strong reputation in Australia and the rest of the world in the VOGUE mark in the field of fashion before the priority date. VOGUE is possibly the acme of fashion and fashion culture Fashion advertising and promotion of the fashion industry are clearly closely related services to Class 25 goods, for which the Opponent holds registrations of the VOGUE mark.

5. But it is also necessary for the Opponent to establish that, because of its reputation in its marks, notional use of the Trade Mark on the specified services would be likely to deceive or cause confusion.

6. The meaning of the words ‘likely to deceive or cause confusion’ were discussed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd, referring to Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[4] where Richardson J, in the New Zealand Court of Appeal, said:

   [4] [1979] RPC 410 at [423].

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[5]

   [5] [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481, 39.

7. It is not necessary to show actual confusion under section 60, but rather a likelihood of confusion. Evidence of confusion is notoriously difficult to procure as those deceived or confused may not realise or report such confusion. Further, as the Full Federal Court stated in Australia Postal Corporation v Digital Post[6] ‘the threshold for confusion is not high’. For a likelihood of confusion to exist, ‘the triggering event need go no further than mere confusion, in the sense of holding a reasonable doubt, while stopping short of actual deception or mistake’.[7]

   [6] (2013) FCAFC 153 at [70].

   [7] McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22 at [26].

8. While the Opponent does in fact have registrations for Class 25 goods and markets them as part of the VOGUE brand, there is no requirement that the competing marks be used, or proposed to be used, in relation to similar goods or services. The assessment of the likelihood of deception or confusion is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.[8]

   [8] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, 40 and Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

9. The Trade Mark and the VOGUE marks have visual and conceptual similarities, in particular to the VOGUE Masthead mark. The other elements of the Trade Mark in the Application are somewhat descriptive and may not be memorable to consumers.

10. It seems to me that the font chosen for the major portion of the Trade Mark has conceptual similarity to that of the VOGUE Masthead that would trigger a consumer to think of the VOGUE brand generally. Added to the use of an identical font is the wording ‘Original Vogue & Value’, which could reassure the consumer to think that although VOGUE is not directly spelled out, the goods are sourced from the ‘original’ VOGUE. Alternatively, consumers would ignore ‘original’ and ‘value’ as being descriptive terms surrounding a VOGUE mark.

11. I take into account the fact that the Opponent is the owner of a family of VOGUE-formative marks (including marks such as SHOPVOGUE, CLUB VOGUE, VOGUE BRIDES, MISS VOGUE and VOGUE FAIR as set out in the First Geithner declaration, Annexure A). Australian consumers are familiar with the practice of trade mark owners adopting and using variations and derivatives of original trade marks

    26.     In that context, it is quite plausible that consumers who see clothing and apparel bearing the Trade Mark will have cause to wonder whether it might denote a clothing line relating to a new VOGUE brand product.

    27.     Further, where the reputation of a mark has been extended from one product or area of business activity into another, through the process of ‘brand extension’, this can also increase the likelihood of deception or confusion.[9] I consider the extensive reputation of the Opponent in the fashion, beauty, health and lifestyle extends to Class 25 goods sold as part of the overall marketing strategy of the VOGUE brand.

    [9] Aussie Home Loans Ltd v Aussie Loans Pty Ltd [2006] ATMO 75 at [34]; Automobiles Peugeot v Viva Time Corporation (2001) 54 IPR 568 at 582.

12. Having regard to the Opponent’s substantial reputation in its trade marks, the conceptual similarity of the competing trade marks and the widespread use by the Opponent of clothing and apparel for both marketing and for sale as products in their own, I am satisfied that relevant consumers will be caused to wonder if there is some connection between the Goods and the Opponent by way of sponsorship, license or endorsement.

13. Therefore, the Opponent has established a ground of opposition under the provisions of s 60. Having found in favour of the Opponent in terms of s 60 there is no need for me to discuss the other grounds set out in the SGP, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

14. Section 55(1) of the Act applicable to this matter provides:

    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.

15. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1911166.

    Costs

    32.     The Opponent has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent is the successful party, I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    18 December 2020