Playboy Enterprises Inc v Hie Holdings Pty Ltd

[1999] ATMO 68

TRADE MARKS ACT 1995

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

Re:Opposition by Playboy Enterprises Inc. to registration of trade mark application 728198 in the name of Hie Holdings Pty Ltd.

Background

The above mentioned trade mark application was filed on 20 February 1997 by Hie Holdings Pty Ltd (the applicant) for registration of the trade mark PLAYBABES in Class 41 for the services:

Publishing pages and photographs on the internet and other media

Following examination, the application was advertised as accepted on 24 Jul 1997.  On 24 Oct 1997, notice of opposition was filed by Playboy Enterprises Inc (the opponent).

The opponent filed its evidence in support of the opposition as allowed by the regulations; however, the applicant has not filed any evidence in answer.  Moreover, despite both parties been given the opportunity to be heard in this matter, neither party has requested a hearing.  Thus the matter has come to me, as delegate of the registrar, to determine on the basis of the information on the file or otherwise relied on by the opponent.

The evidence
As I am to rely entirely on the evidence of the opponent, it is necessary to discuss this in some detail.  In general terms, first, the evidence shows that the opponent publishes a men's magazine called Playboy.  There are both United States and Australian versions of this magazine which are published on a monthly basis.  The opponent's magazines contain articles on a variety of subjects of interest to men; they also contain pictures of women in various stages of undress and, indeed, some pictures of women wearing no clothing at all.  I also stress, since this will become relevant to my reasons, that the pictures are relatively 'tasteful': the pictures are not such that they would cause offence to most people.

The evidence consists of a statutory declaration with exhibits by Howard Shapiro, Executive Vice President Law and Administration, General Counsel, of the opponent, (the Shapiro declaration).  There is also a statutory declaration, with exhibits, by Khajaque Kortian, a legal practitioner in the employ of Spruson and Ferguson, (the Kortian declaration).

The Shapiro declaration
Mr Shapiro has worked in various capacities in the opponent company for approximately 26 years and has held his current position for ten years.  The deponent attests to considerable sales of the US Playboy magazine in Australia since the 'late 1950's' and gives representational circulation figures for monthly periods in the years 1961 to 1998.  Mr Shapiro also gives circulation figures of the Australian edition of Playboy during the period 1979 to 1996.  I will not discuss these in detail and think that it is sufficient for me to state that circulation is obviously very wide and that I must conclude that most people who have been to a newsagency in Australia would be familiar with both the Playboy and Australian Playboy trade marks.  This evidence shows that the opponent has also been using the trade mark PLAYMATE in relation to these goods.  It has been the opponent's practise to select a particular woman each month and each year and promote its goods or services in relation to this trade mark.

Mr Shapiro then attests as to the other franchised editions of Playboy throughout the world.  He also states that his company operated and franchised a number of Playboy clubs throughout the world.

Next Mr Shapiro avers that Playboy magazine became the first national United States magazine on the Internet World Wide Web and refers me to its website at playboy.com.  The site, he states, is extensive and contains 2000 pages of content which are along the lines of the 'hard-copy' version of the magazine that I described above.  Mr Shapiro also states that the website receives about 15,000,000 'hits' per year.  The opponent also runs a PLAYBOY CYBER CLUB, in association with its website, which has over 27,000 paid members.

I believe that where a URL or Internet website address, or addresses, are entered into evidence, I can properly consider the services offered on the Internet site, or sites, in the evidence.  In coming to this conclusion, I note that the opponent has supplied me with  the URLs and material from both its Internet site and that of the applicant.  The services involved cannot be separated from the URLs referred to and relied on in the evidence: for example, both parties use their trade marks within their URLs.  The evidence must be fully assessed and this necessitates access to the Internet sites of the parties.  I note that it is apparent that Internet sites are subject to change, but if the content of the sites is corroborated by the evidence as lodged I believe that they can be properly considered as part of the evidence.

I have inspected the homepage of the opponent's website, The homepage is a virtual version of the magazine front cover, adapted for the Internet and its technologies.   It does not have pictures of naked women on it. Where links are provided to such pictures within the website, a warning of nudity is given.  The pictures within the website are consistent with the paper version of the magazine - while the women are naked, the poses are such that most people, I consider, would not take offence.  In short, I consider that the opponent is at some pains to ensure that its Internet site - in particular its homepage - are not such they might give offence to those who accidentally stray upon it.

The Kortian Declaration
The Kortian declaration exhibits a business names registration for Playbabe Enterprises.  The declaration also refers me to the applicant's website and exhibits a print-out of a membership application form from the Playbabe Internet site ( Mr Kortian also supplies with his declaration a print-out of the 'meta-tags' (which I will explain, under,) embedded in the Internet site and newspaper or magazine articles which explain meta-tags and how they are used.

On the Playbabe homepage the following words appear:  "Credit Card Transaction Services provided by Imag Pty Ltd."  "Send Certified Cheque or Money Order FOR $9.95 to:  Imag Pty Ltd PO Box 8302 Woolloongabba Qld 4102."

Mr Kortian attests that he has caused a search to be carried out of the then Australian Securities Commission records for the company "Imag Pty Ltd" and that the search failed to reveal any company registered under that name.

The declarant goes on to aver that the applicant and Playbabe Enterprises share the same address as that given for the alleged Imag Pty Ltd.

Further, Mr Kortian appends copies of the Playboy and Australian Playboy magazines to his declaration.  Both the Australian and United States versions of the opponent's magazines make reference to the Internet address, have inspected the applicant's homepage at The homepage graphically depicts in several photographs what I take to be various couples or groups engaged in acts of copulation, oral and anal intercourse or sexual foreplay with very strong emphasis on the genitalia of those involved.  The written content of the homepage is explicit and coarse - most of that which I can understand is unrepeatable.  There is no warning ahead of this page that such content is to follow - the content is not behind a 'closed door'.

The evidence explains that meta-tags are words embedded in the code for homepages on the Internet.  These words are often written in 'white on white' so they are not apparent on the page.  It is common for traders to embed meta-tags in their homepages so that those who are searching on the Internet find those pages via the meta-tags which are located by the search engine that the searcher is using.  Thus a cheese-vendor on the Internet might include the various trade marks or generic names of cheeses as meta-tags on his home page: these words are found by the search engines used by the public.  Thus, these tags are invisible to the person trying to locate the cheese but will bring the merchant's homepage up on the search.

The meta-tag print-out of the playbabe.com homepage entered as evidence by Mr Kortian shows that the applicant uses the word 'playboy' as one of its meta-tags on its home page.

Reasons
I am not sure where the opponent's evidence concerning the status of Imag Pty Ltd may have been leading, although I agree that it does appear to be unusual that an Internet based trader should apparently be inviting the public to send cheques to an allegedly non-existent person.

In the absence of submissions, I have decided that the issue is most conveniently disposed of under the provisions of section 60 of the Act.

Section 60 allows:

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

60. 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.

Section 10 provides:

Definition of deceptively similar

10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Section 12 allows:

Definition of priority date

12. The priority date for the registration of a trade mark in respect of particular goods or services is:

(a)     if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

(b)     if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

The priority date of the application is 20 February 1997.  As I think that it is obvious that the trade marks are not identical, the issues that remain for me to decide are:

• The relevant trade marks of the opponent, whether registered or not,

• The trade marks are deceptively similar to those of the applicant

• The opponent's trade marks had acquired a reputation in Australia before 20 Feb 1997, (and)

• because of that reputation, use of the opposed trade mark would confuse or deceive.

Relevant trade marks
Although the opponent's Internet homepage is based in the United States, it is as freely accessible in Australia as it is there.  It is apparent from the opponent's homepage that the services it offers are pitched at an audience wider than the United States and that anyone in the world can pay a fee to access all of the information or entertainment within the site.  There is nothing on the homepage I can see which suggests that the services are restricted by geographical region.  The trade marks PLAYBOY and PLAYMATE are used on the website in relation to the Internet entertainment and information services offered by the opponent.  Thus, I consider that the relevant trade marks of the opponent are the words PLAYBOY  PLAYMATE and that they are used in Australia in relation to Internet information and entertainment services.

Deceptive similarity
The principles enunciated in relation to deceptive similarity are the familiar ones from Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658 .

On the subject of the comparison of the trade marks involved, Parker J said in re Application By Pianotist Company Ltd 1A IPR 379:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

I will deal with the issues raised in the above quotation piecemeal.  The word 'playboy' means, according to the definition in the Oxford Dictionary:

playboy ("pleIbOI). colloq. Also play-boy.
[f. play n. + boy n.1]
A man, esp. a wealthy man, who sets out to enjoy himself; a selfish        pleasure-seeker (in quot. 1898 used of the devil). Also as v. intr. Hence
'playboyish a., 'playboyishness, 'playboyism.

There is no entry in the Oxford Dictionary for the word 'playbabe'.  There is, however, an entry for 'playgirl':

playgirl ("pleIg3:l). colloq. Also play girl, play-girl.
[f. play n. + girl n.]
A woman who sets out to enjoy herself; a good-time girl. Cf. playboy.

On balance, I think that the word 'playboy' is very much more in common use than the word 'playgirl'.  In my experience the word 'playgirl' is somewhat obscure but it is worthy of note that the definition given in the dictionary makes reference to the word 'playboy'.  I believe that it is probable that a person, encountering the word 'playbabe', will first endeavour to ascribe meaning to the word by reference to the word 'playboy'.  Thus there is an inevitable link in the minds of the people first encountering the applicant's trade mark to the dictionary meaning and hence to the trade mark of the opponent.  To this extent, the trade marks 'playboy' and 'playbabe' are similar.  This on its own, however, does not amount to deceptive similarity.  Nevertheless, I consider that, in the context of the services offered by the parties and the fame of the opponent's trade mark, this similarity is reinforced.

Consequently, one view that I might form is that a person, encountering the word 'playbabe', used in respect of these services, would see it as a subset of the 'playboy' word, used as a trade mark in respect of the same or similar services.  Thus this putative person would conclude that the applicant's services offered under its trade mark were, in fact, those of the opponent, offered under a related trade mark.

The countervailing view is that the hypothetical person encountering the word 'playbabe', used as a trade mark in respect of these services, would see it as nothing more than a jocular reference to the 'playboy' trade mark and so readily distinguish between the trade marks and the sources of the services on this basis.

Importantly, I also observe that there is scope within its specification of services for the applicant to produce a homepage and website which is content-wise similar to that of the opponent.

Reputation
As was observed by the delegate in the, as yet, unreported Trade Marks Office decision in Opposition by Hugo Boss AG to registration of trade mark application 636776 in the name of Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG:

I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation.

Undoubtedly, a large part of the opponent's reputation derives from activities I have talked about in my discussion of the evidence, above.  The opponent is well known for its magazines, the promotion of a particular hedonistic lifestyle and its peculiar view of the status of the female species.  However, from the evidence before me, it is apparent that the opponent is careful to stay within the bounds of what could be described as 'soft pornography'.  The photographic content of both the magazines and the website are, for what they are, relatively tasteful.  The magazines sold by the opponent are undoubtedly very well known.  The number of 'hits' on the opponent's Internet site (a proportion of which must be from Australia) tends to indicate that it is as well known in the electronic field as is the printed version of the magazine in newsagents.  The magazines of the opponent add to the reputation of the website and probably bring more visitors to it.

Whether because of the reputation, the use of the applicant's trade mark would deceive or confuse
The case-law is summarised by Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501:

(i) The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection under s 28: Re Arthur Fairest Ltd’s Application (1951) 68 RPC 197.

(ii) However, once this onus is discharged the burden shifts to the party seeking registration:  Eno v Dunn (1890) 15 App Cas 252 at 261; Jafferjee v Scarlett at 119.

(iii) The rights of the parties are to be determined as at the date of application for registration: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; at 594; 1A IPR 465.

(iv) The onus is on the party seeking registration to satisfy the court that there is no reasonable possibility of deception or confusion: Southern Cross at CLR 594–5.

(v) In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing off. While a mere possibility of confusion is not enough — for there must be a real, tangible danger of it occurring — it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at CLR 594–5, 608; Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305.

(vi) In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120.

(vii) A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack’s Application (1940) 58 RPC 91 at 103–4.

(viii) It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94; Southern Cross at CLR 608.

(ix) The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a “jury question” in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-op Ltd v New South Wales Dairy Corp (1990) 24 FCR 370; at 377; 16 IPR 289; at 296.

I note that the opponent has two relevant trade marks - each with a well-known reputation in relation to the services.  The commonality of the word element PLAY in PLAYBOY and PLAYMATE suggests that, in addition to the obviousness of a common derivation of the coinage PLAYBABE in the word PLAYBOY, the public will view the trade marks PLAYBOY, PLAYMATE and PLAYBABE as being related.  In Harrod’s Appn 52 RPC 65 the Comptroller-General stated the relevant principle thus (at 70):

Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those other features. This principle, however, clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.

Thus, I think that the applicant’s mark comes squarely within the circumstances discussed in Beck Koller & Co Ltd’s Appn (1947) 64 RPC 76 because the opponent has demonstrated from use of its marks that it has a reputation the related trade marks PLAYBOY and PLAYMATE for these particular services, and the likelihood is thereby increased that the applicant’s adoption and use of a trade mark containing the element common to that family will cause confusion by being assumed to indicate a connection with the opponent and its PLAYBOY and PLAYMATE trade marks. Further, it is clear that the services in relation to which the opponent’s trade marks are used and well-known and those for which registration of the applicant’s mark is sought are identical.

Therefore. a conclusion that a member of the public will view the use of the trade mark PLAYBABE as being one by the opponent is a conclusion that is strongly suggested by the evidence.  This evidence invites the conclusion that a member of the public, seeing the trade mark in relation to the applicant's homepage would regard it as a raunchier version of the well-known PLAYBOY and PLAYMATE trade marks.  If this situation were to occur, deception or confusion of some dimension must necessarily arise - even if it were to be soon dispelled.  In view of the content of the applicant's homepage, any deception or confusion would, in all likelihood, be dispelled quite quickly.  However, I consider that initially it is likely that some deception or confusion would have occurred: Southern Cross, supra.

I further note that I am to consider all notional uses of the applicant's registration as per Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101. As I have previously observed, it is quite possible for the applicant to remain within the scope of the specification of services of this application and produce a soft-porn Internet site that is similar in appearance to that of the opponent. If this were to occur, I believe that the confusion or deception engendered by the deceptive similarity of the trade marks would be slow to dissipate.

I may be wrong in this conclusion but it is for the applicant to dispel it once it has been established: Eno v Dunn or Southern Cross, supra.  For whatever reason, the applicant has chosen not to do this.

Decision
The applicant's trade marks and those of the opponent are deceptively similar.  The applicant has not discharged the onus on it to show that the conclusion, drawn from the evidence, that the application should be refused in terms of section 60, is not well based.  Accordingly, subject to any appeal from my decision, I refuse to register this application.

Costs
Costs may follow the event - the opponent is entitled to its cost.

Ian Thompson
A/Hearing Officer
Trade Marks

25 Jun 1999