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

This matter concerned an opposition by Advance Magazine Publishers, Inc. (the Opponent) to the registration of the composite trade mark OVV Original Vogue & Value (the Application) in Class 25, filed by Shanghai Xingdu Garments Co., Ltd (the Applicant). The decision was made by Jock McDonagh, Hearing Officer, in the Trade Marks Office.

The primary legal issue before the Hearing Officer was whether the Opponent had established a ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth). This section allows for opposition if, prior to the priority date of the application, another trade mark had acquired a reputation in Australia, and because of that reputation, the use of the applied-for trade mark would be likely to deceive or cause confusion. The priority date for the application was 9 March 1992.

The Hearing Officer considered the evidence presented by the Opponent, which detailed the extensive use and promotion of the VOGUE mark in Australia since 1959 in connection with fashion clothing and related lifestyle information, primarily through the VOGUE Australia magazine. This included evidence of significant circulation, widespread advertising, sponsorship of fashion festivals, media partnerships, and the distribution of VOGUE branded merchandise and fashion supplements. The Hearing Officer was satisfied that this evidence established that the VOGUE mark had acquired a strong reputation in Australia in the field of fashion before the priority date. Applying the principles from *McCormick & Company Inc v McCormick*, the Hearing Officer found that the reputation of the VOGUE mark was such that the use of the Applicant's mark would be likely to deceive or cause confusion.

Consequently, the Hearing Officer found the opposition to be successful under section 60 of the Act and ordered that trade mark application number 1911166 be refused. The Hearing Officer also awarded costs to the Opponent on the official scale.