The Giramondo Publishing Company Pty Ltd v Bauer Consumer Media Limited

[2010] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by The Giramondo Publishing Company Pty Ltd to registration of trade mark application 891532 (9, 16, 38, 41) - HEAT - filed in the name of Bauer Consumer Media Limited.

Delegate:	Bianca Irgang
Representation:	Opponent: Phoebe Arcus of Counsel instructed by HWL Ebsworth Lawyers Applicant: Angela Bowne, Senior Counsel, instructed by Addisons Lawyers
Decision:	2010 ATMO 8 s.52 opposition – s.58: opponent’s trade mark is substantially identical to the opposed trade mark – on the balance of probabilities the opponent has demonstrated first use of the trade mark for the goods in class 16 – opponent’s evidence insufficient to establish any other ground of opposition – registration to proceed if applicant deletes class 16 from application – Costs awarded against the applicant.

Background

1. Bauer Consumer Media Limited (“the applicant”), formerly known as EMAP Consumer Media Limited, filed application number 891532 on 9 October 2001 in classes 9, 16, 38 and 41 of the International Classification of Goods and Services (‘Nice’ classification). The applicant claimed a Convention Priority date of 4 July 2001 for the services in classes 38 and 41. Details of the application are set out below.

   Trade mark:   HEAT

   Trade mark registration:      891532

   Filing Date:  9 October 2001

   Convention details:               4 July 2001
     2274403 – UNITED KINGDOM

   Specification:  Class: 9 Computer software, computer programs, data carriers; computer databases

   
   Class: 16 Magazines

   
   Class: 38 Telecommunication services; communication services; television broadcasting services; radio broadcasting; wireless transmission and broadcasting of television programmes; cable, satellite and direct to home transmission and distribution of television programmes; cable television, video, subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services

   
   Class: 41 Organisation of competition and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays and parties; organisation of events for cultural and entertainment purposes; organisation of competitions; advisory and consultancy services relating to the aforesaid; entertainment services; television entertainment services; radio entertainment services; entertainment services provided by radio broadcasting; entertainment services provided by television broadcasting; television programming services; radio programming and production services; rental, leasing or hire of apparatus, installations or components for use in the provision of television programming, radio programming and radio production services; but not including any of the aforesaid services relating to professional wrestling or other sports

   Endorsements:  Convention priority claimed: 4 July 2001, United Kingdom, No. 2274403 in respect of classes 38 and 41.

2. The Giramondo Publishing Company Pty Ltd (“the opponent”) filed a Notice of Opposition (“the Notice”) to the registration of the application on 16 August 2004. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (“the Regulations”).

3. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 23 October 2009. The applicant was represented by Angela Bowne, Senior Counsel, instructed by Addisons Lawyers. Phoebe Arcus of Counsel instructed by HWL Ebsworth Lawyers, appeared for the opponent. Dr Ivor Indyk and Dr Evelyn Juers were present as observers on behalf of the opponent.

   Grounds of Opposition

4. The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (“the Act”). However, only those grounds under subsections 42, 58, 60 and 62 were pursued at the hearing. As a formal matter, I note the remaining grounds listed in the Notice have not been established. Since the opposed application was filed prior to 23 October 2006, (when amendment to section 60 made by the Trade Marks Amendment Act 2006 came into force), the section applies as it stood prior to the 2006 amendment[1].

   [1] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80

5. The onus is upon the opponent to establish one or more of its grounds of opposition.          Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[2] His findings upon that issue, arrived at after a consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[3].

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

   [3] [2009] FCA 891, para 22-27

   Evidence

6. The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Ivor Indyk[4]	Director and co-founder of Giramondo Publishing Company Pty Ltd	15 February 2005	II-1 to II-8
Evidence in Answer
Helen Lederer	Business Director of EMAP Consumer Media Limited	28 November 2005	HKL-1 to HKL-2
Evidence in Reply
Ivor Indyk[5]	Director and co-founder of Giramondo Publishing Company Pty Ltd	13 February 2006	II-1 to II-2
Opponent’s Further Evidence
Brian Francis Johns	Chairman of Copyright Agency Limited	9 September 2009	-
Susan Diana Cole	Executive Assistant to CEO of Copyright Agency Limited	10 September 2009	-
Nicola Evans	Program Manager of Literature Board	11 September 2009	-
Margaret Seares	Former Chairman of the Literature Board of Australia Council for the Arts	11 September 2009	MS-1
Ivor Indyk[6]	Director and co-founder of Giramondo Publishing Company Pty Ltd	11 September 2009	II-1 to II-14
Applicant’s Response
Simon Greves	International Director of Bauer Consumer Media Limited	8 October 2009	SG-1
Tracy Jones	Sales Development Director of Seymour International Limited	13 October 2009	TJ-1
Daniel Robert Raison	Client Services Manager at Gordon and Gotch Australia Pty Ltd	13 October 2009	DR-1 to DR-9
Catherine Melanie Sendall	Solicitor of Addisons	14 October 2009	CMS-1
Applicant’s Further Evidence
Michael John Cade	Salesperson in Toorak Village News agency	21 August 2001	-

[4] For convenience I will refer to this declaration as Indyk #1.

[5] I will refer to this declaration as Indyk #2

[6] I will refer to this declaration as Indyk #3

Opponent’s Evidence

1. In Indyk #1 it is stated the opponent was set up in December 1995 with the aim of publishing creative and interpretive writing by Australian authors. The opponent’s HEAT magazine is distributed around Australia with sales of the magazine being made by subscription and through bookshops. Copies of the new series of the HEAT magazine are now held in all main public and university libraries in Australia.

2. In each of his declarations Dr Indyk has stated that the opponent has used the HEAT trade mark as the title of its magazine since at least July 1996 and that its HEAT trade mark prominently appears on the cover of each issue of the magazine and on all the associated promotional material. This is supported by exhibits II-1, II-3 and II-4 of Indyk #1 and exhibits II-1 through to II-12 of Indyk #3.  

3. In Indyk #3, Dr Indyk states that he considered the word HEAT as an unlikely but apt title for a literary magazine. The idea was to express the anger, frustration, passion and intensity which he wanted to convey regarding the difficulties encountered by Australian authors and the reduced importance given to Australian literature. Dr Indyk asserts that the HEAT logo and design was specifically commissioned from a renowned leading graphic designer in Australia, Henry Williamson, in early 1996.

4. Indyk #1 states that the opponent commenced publishing its literary magazine in Australia in July 1996. The opponent also states that in June 1997 it established a website with the address: which has been maintained and updated since that time. However, all of the information and print-outs from the website are dated after the priority date of the opposed application. Exhibit II-13 of Indyk #3 demonstrates that since 11 December 2008 there have been a relatively small number of visitors to the opponent’s website. The search string most commonly used by these internet visitors is “heat magazine” and the average time spent on the website is two minutes and 25 seconds.

5. The opponent’s website has been used to promote its HEAT magazine and contains past and current content of the opponent’s HEAT magazine as well as instructions on how to order or subscribe to the magazine. However, the evidence also shows that this website is used to showcase many of the activities that the opponent is involved in. It is not a website solely related to the promotion of the opponent’s HEAT magazine. Indeed, specific figures relating to advertising expenditure have not been provided but it is estimated that a few thousand dollars per year are spent on promotion of the opponent’s HEAT magazine.

6. The opponent’s HEAT magazine was published quarterly from July 1996 to November 1998. From March 1999 to October 2000 the opponent’s HEAT magazine was only published three times a year with the intention of each edition of the magazine having ‘the feel, and authority of a book’ (exhibit II-3 of Indyk #1). Indeed, since its first publication the opponent’s HEAT magazine has received a number of awards including the Penguin Award for Best Designed Paperback at the 1997 Australian Publishers’ Association Design Awards and being short-listed for the Phillips Fox Award for Best Designed C Format Book at the 1998 Australian Publishers’ Association Design Awards.

7. In early 2000 the opponent’s HEAT magazine was faced with the possibility of ceasing publication due to low circulation and poor sales. However, joint-support from the University of Newcastle and Sydney Grammar School as well as continued funding from the Literature Board of the Australia Council allowed the opponent to continue publication in a new form in 2001. From May 2001 the new series of the HEAT magazine was produced bi-annually.

8. On 30 August 2001 the opponent filed trade mark application no. 887517 to register the plain text word HEAT. The opponent’s trade mark obtained registration on 21 September 2004.  The details of the opponent’s registration are as follows:

   Trade mark:   HEAT

   Trade mark registration:      887517

   Filing Date:  30 August 2001

   Specification:  Class: 16 Magazines in book form containing essays, fiction, poetry and reviews of the highest literary standard

   Endorsements:  Provisions of subsection 44(4) applied.

9. In 2002, the opponent began publication of literary works by individual authors under its Giramondo book brand name while continuing to publish its HEAT magazine twice a year. In 2007, the opponent was housed in the Writing and Society Research Group at the University of Western Sydney which provided sufficient support for the opponent to return to publishing its HEAT magazine three times a year. 

10. Indyk #1 states that the print run for each issue of its HEAT magazine has been between 1000 and 1700 copies with sales (after returns) in the range of 1000 to 1400 copies for each issue although it appears this number may have increased since 2007. These numbers are minimal from a commercial point of view. However, Indyk #1 and #3 assert that these small sales figures are excellent for a literary magazine.

11. Similarly, the total revenue derived from sale of the opponent’s HEAT magazine each year is small. In fact, the revenue received from government grants and sponsorship is at least three times the amount derived from actual sales of the HEAT magazine. However, Indyk #3 asserts that these limited sales figures support his claim that the primary purpose of the HEAT magazine is ‘cultural rather than commercial’.

12. The opponent’s evidence has also sought to establish that the applicant’s use of the HEAT trade mark on magazines will have the consequence of damaging and diluting the reputation of its HEAT magazine. Exhibits II-6, II-7, II-8 of Indyk #1, II-1 of Indyk #2 and II-1 and II-14 of Indyk #3 demonstrate that since August 2002, a number of consumers have emailed the opponent with requests and offers on the mistaken belief that it is the applicant. A number of official press releases have also been sent (via email) to the opponent on the mistaken belief that they were being sent to the applicant (exhibit II-2 of Indyk #2).

13. The opponent has documented instances of confusion at the point-of-sale of its magazine as well. The statutory declarations of Brian Francis Johns and Susan Diana Cole indicate that when Ms Cole was asked to obtain a copy of the opponent’s HEAT magazine by Mr Johns she purchased the applicant’s HEAT magazine in error. However, all the documented instances of confusion in the marketplace in the opponent’s evidence post-date the priority date of the opposed application (9 October 2001) and thus I am obliged to attribute limited weight to them.

    Applicant’s Evidence

14. The applicant is a UK-based company which commenced using the HEAT trade mark in relation to its magazine in the United Kingdom on 27 February 1999. The applicant’s HEAT magazine is published weekly and the applicant’s evidence demonstrates that its HEAT trade mark has always been prominently displayed on the cover of its magazine along with photographs and headlines promoting some of the contents of the magazine.

15. The applicant asserts that its HEAT magazine has been sold within Australia since 1999. The statutory declaration made by Simon Greves (“the Greves declaration”) state that two Australia-based customers subscribed to the applicant’s HEAT magazine in 1999. However, details surrounding these subscriptions are limited. The applicant has not indicated how an Australian consumer was able to obtain a subscription to its HEAT magazine in the first place. Nor are there any documents in the evidence which establish that the applicant sought to obtain Australian subscribers when its magazine commenced publication on 27 February 1999.

16. It is asserted in the statutory declaration made by Michael John Cade, a salesperson in Toorak Village Newsagency, that he first sold copies of the applicant’s HEAT magazine through the newsagency in March 2001. The statutory declaration made by Helen Lederer (“the Lederer declaration”) asserts that sales of the applicant’s HEAT magazine have taken place since at least this time. However, there is no documentation to support this claim. The first sales of the applicant’s HEAT magazine in Australia which are supported by documentation may be found in exhibit TJ-1 accompanying the statutory declaration made by Tracy Jones (“the Jones declaration”).

17. The Jones declaration and accompanying exhibit demonstrates that Seymour International Limited (the largest international distributor of magazines published in the United Kingdom) commenced exporting the applicant’s HEAT magazine to the Australian-based distributor, Gordon and Gotch Australia Pty Ltd (“Gordon and Gotch”) in August 2003. Gordon and Gotch then distributed and continue to distribute the applicant’s HEAT magazines to various Australian newsagents and retailers. These statements are further supported by the statutory declaration made by Daniel Raison and accompanying exhibits DR-2, DR-3, DR-5, DR-6, DR-7, DR-8 and DR-9.

18. The figures relating to the sales of the applicant’s HEAT magazine are relatively small given the size of the magazine industry in Australia. However, these figures are growing and from the evidence it is clear that the applicant has a considerable reputation in its HEAT trade mark in the UK.

19. The applicant’s growing reputation in its HEAT trade mark in the UK is supported by the number of emails and press releases meant for the applicant which are mistakenly being sent to the opponent by consumers in the marketplace (Exhibits II-6, II-8 of Indyk #1, II-1, II-2 of Indyk #2 and II-1, II-14 of Indyk #3). However, this evidence of the opponent’s reputation in the UK does not demonstrate that the opponent’s reputation is of the same scope and scale in Australia. The applicant has also not provided figures relating to expenditure on advertising its HEAT magazine in Australia and it is unclear whether the applicant has actively sought to promote its magazine within Australia.

20. According to the statutory declaration made by Catherine Sendall, lawyer for the applicant, the applicant launched its HEAT website in May 2007. The applicant’s website, is used to promote the HEAT magazine and prominently features the HEAT trade mark as demonstrated in exhibit CMS-2. Ms Sendall states that consumers located in Australia are able to subscribe to the applicant’s HEAT magazine via this website and are also able to register as members of the HEAT website to receive a daily email alert and a weekly email newsletter.

21. Ms Sendall also states that she was informed by Emmy Lovell (a marketing manager for the applicant) that from the launch of the HEAT website in May 2007 until 12 October 2009 the website has received 201,955 visits from Australian-based internet users. Indeed, it is asserted that Australia is ranked number 10 in terms of countries from which the HEAT website derives internet traffic. However, this evidence post-dates the priority date of the opposed application so is of limited relevance to these proceedings.

    Discussion

    Ownership – section 58

22. Section 58 of the Act provides:

    Applicant not owner of trade mark

    58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:  For applicant see section 6.

23. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[7] on particular goods or services[8], or at common-law by the use of that trade mark on the particular goods or services. The owner of the trade mark is the person who first uses it in Australia, or first files the application in Australia, whichever is the earlier. Therefore, for the requirements of the section 58 ground of opposition to be met, the opponent must demonstrate:

    ·    that the respective trade marks of the applicant and opponent be either identical or substantially identical [9],

    ·    that the respective goods of both parties be the ‘same kind of thing’ [10]

    ·    that the opponent has the earlier claim to ownership based on use prior to whichever is the earlier of (a) the application to register and (b) any actual use of the mark by the applicant[11].

    [7] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636 at 639-40

    [8] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

    [9] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

    [10] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

    [11] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd supra.

24. The applicant’s trade mark has a priority date of 9 October 2001 and has been made in respect of goods and services in classes 9, 16, 38 and 41. Ms Phoebe Arcus, the opponent’s representative at the hearing, advised that the opponent was pursuing the opposition in regards to class 16 only and that should the opponent be successful in the opposition it is expected that the applicant’s trade mark would be able to proceed to registration for the remaining goods and services in classes 9, 38 and 41.

1. The applicant’s trade mark is for the word HEAT. The opponent’s trade mark is identical to the applicant’s HEAT trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414. From the outset, there has been no dispute between the parties as to whether the trade marks were substantially identical.

2. In regards to which of the parties first used its HEAT trade mark in Australia, exhibits II-2 and II-3 of Indyk #1 establish that the opponent first used its HEAT trade mark in Australia in July of 1996 on its literary magazine. This is more than two years before the applicant commenced publication of its HEAT magazine in the UK on 27 February 1999. The opponent’s first use is also before the priority date of the opposed application. Therefore, the opponent has established the second requirement under section 58. It only remains to be determined if the respective magazine goods of the parties are ‘the same kind of thing’.

3. The issue of contention between the parties has been whether or not the respective HEAT magazines may be called ‘the same kind of thing’ for the purposes of section 58. The main thrust of the opponent’s argument surrounding this issue is that no matter what the physical attributes of its publication are it is still considered a ‘magazine’ and therefore the ‘same kind of thing’ as the applicant’s publication.

4. In contrast, the applicant’s arguments on this issue relate to the particular context the word ‘magazine’ takes from the characteristics of the respective publications. The applicant has argued that the meaning of “magazine” which has been used by the opponent to define its HEAT publication is not the same meaning which may be attributed to the term “magazine” (in common parlance) when used in relation to the applicant’s publication.

5. The applicant’s representative, Ms Bowne, submitted that weight should be given to the wording ‘magazines in book form containing essays, fiction, poetry and reviews of the highest literary standard’ used by the opponent to describe its publication. This wording has been used by the opponent to describe the goods in class 16 of its trade mark registration no. 887517. Ms Bowne states that the use of the words ‘...in book form’ is a critical importance in construing exactly what type of publication the opponent produces.

6. Logically, I agree with the applicant that trade mark registration no. 887517 was sought by the opponent in order to obtain registration of its HEAT trade mark for use on its literary magazine. The opponent’s evidence has not demonstrated that it uses its HEAT trade mark on any other periodical publication. However, the description which the opponent may apply to its goods does not necessarily take precedence over how its goods may be defined. In other words, “…that which we call a rose by any other name would smell as sweet…”[12].

   [12] William Shakespeare, Romeo and Juliet, (II, ii, 1-2) 1594

7. Ms Bowne submitted that the word “magazine” in the opposed application is clearly intended to be understood in a popular or vernacular sense to connote a non-durable popular periodic publication distinct from a book. She further stated that it was unlikely that consumers would regard the opponent’s “book form” product as being a magazine. However, I am not persuaded by this argument. The specification of goods in class 16 of the opposed trade is ‘magazines’. This is a broad claim which covers all goods which may be defined as ‘magazines’ without exception or limitation.

8. The entry for the word ‘magazine’ found in the Macquarie Dictionary[13] contains a number of definitions with the most relevant being:

   magazine
   noun 1. a periodical publication, usually bound and with a paper cover, containing miscellaneous articles or pieces, in prose or verse, often with illustrations.
   

   [13] (2010) on-line edition

   2. a program on radio or television, usually documentary, on a number of miscellaneous topics.

9. This definition of the word ‘magazine’ does not in any way suggest that there are any length, format or content limitations on what would constitute a magazine. Magazines are published in many different forms and contain a limitless array of content. The applicant’s suggestion that a ‘magazine’ is narrowly defined by consumers to be a non-durable publication containing glossy photos and articles on celebrities conveniently ignores a significant portion of the magazine industry. While I am sure that a number of consumers would think of such a publication upon hearing the word ‘magazine’ this is not the test which is to be applied under section 58. Rather, it is to be considered whether the goods are ‘the same kind of thing’.

10. What is obvious from the evidence of both parties is that they both produce a periodical publication which is bound with a paper cover and contains “miscellaneous articles in prose and/or verse often with illustrations”. Even though the opponent now publishes its HEAT magazine three times a year compared to the applicant’s weekly publication rate this does not in any way preclude the opponent’s publication from being defined as a magazine. Nor does the ‘book’ format of the opponent’s publication affect its status as a magazine.

11. I agree with the applicant that the respective publications look very different and deal with different subject matter. It is also quite obvious that the applicant’s magazine is commercial in nature whereas the opponent’s evidence has demonstrated that its literary magazine has suffered from a distinct lack of commercial viability. However, the definition of a magazine is very broad and it is a term which accurately describes both publications. This is regardless of what popular connotations may be attributed to the word ‘magazine’ by consumers.

12. I am satisfied that the opponent has met the third and final requirement necessary to meet the provisions of section 58. Therefore, the opponent is successful in establishing this ground of opposition in regards to the goods in class 16.

13. In the event that the opponent was able to establish the section 58 ground of opposition, Ms Bowne submitted that as the Registrar’s delegate, I am empowered under subsection 55(1) of the Act to decide to register the opposed trade mark by imposing such conditions or limitations that would overcome any objections. Specifically, the applicant has suggested that the Registrar would be empowered to “carve out” from the class 16 goods “magazines in book form containing essays, fiction, poetry and reviews of the highest literary standard” if satisfied that the specification of “magazines” in the opposed application covered the aforementioned  goods.

14. I have determined that the applicant’s broad claim for ‘magazines’ does include the opponent’s goods. I acknowledge that the Registrar does have the authority to limit the applicant’s goods specification in class 16 and that in another case this may be an appropriate course of action. However, both the applicant and opponent are producing publications which can be called magazines regardless of the format or content. While a limitation such as that suggested may be possible in theory, in practice such a limitation would not be in the public interest. It would exacerbate the confusion in the marketplace which has already been demonstrated by the opponent’s evidence.

15. Therefore, I will not make any condition or limitation to the goods in class 16 of the opposed application.

    Reputation - section 60

16. It is only necessary for the opponent to establish a single ground of opposition in relation to class 16 of the opposed application in order to succeed in the opposition. However, while Ms Arcus stated that the opponent was pursuing the opposition in relation to the specification of goods in class 16 of the opposed application, her written submissions indicate that the opponent has pursued the application in relation to all the goods and services of the opposed application.

17. I will say now that I do not consider that the opponent could have established the ground of opposition under section 60 in relation to the remaining goods and services of the opposed application. Based upon the evidence before me, the opponent would not have been successful in establishing such a large reputation in the term “HEAT” for its magazine goods that the public is likely to be deceived and confused and be caused to wonder if there is a connection between the name of the opponent’s magazine and the applicant’s goods and services in classes 9, 38 and 41.

18. Ms Arcus has submitted that the degree of reputation necessary depends on the market in question and she referred me to Le Cordon Bleu BV v Cordon Bleu International Lee[14] noting in her written submissions:

    What is “significant” or “substantial” will depend on the nature of the goods and services in question. For highly specialized products, awareness among a few thousand persons, or even less might be sufficient…

    [14] [2000] 50 IPR 1

19. Ms Arcus argued that in the current circumstances the reputation that should be established is one that would be consistent with the size and extent of the market for specialty magazines in Australia. Indeed, the opponent’s evidence does demonstrate that it is developing a reputation within the literary community. However, much of the opponent’s evidence relating to its reputation is dated after the priority dates of the opposed application and therefore, not relevant for the purposes of establishing this ground of opposition.

20. At the relevant date, the opponent’s evidence has demonstrated that it was developing a reputation in the Australian literary community for its very specific literary publication. The narrowness of the reputation is an important factor in determining whether there is a likelihood of deception or confusion in the marketplace between the opponent’s literary magazine and the applicant’s goods and various services which include telecommunication and television entertainment services. In particular, I note that the opponent’s HEAT magazine had just managed to obtain additional funding which would allow it to continue publication in the face of its public acknowledgment of low circulation and poor sales.

21. I also note that the majority of instances of confusion documented in the opponent’s evidence (and post-dating the priority dates of the opposed application) have nothing to do with the opponent’s reputation in its HEAT magazine. Rather, the evidence demonstrates that it is the applicant’s considerable reputation in its HEAT magazine which is causing consumers to mistakenly direct their correspondence to the opponent. Given the opponent’s limited evidence and the narrowness of its reputation I am not satisfied that the likelihood of deception or confusion would be real and tangible[15]. The evidence simply does not go to the extent necessary to support the kind of reputation envisaged by section 60. The opponent has not established the section 60 ground of opposition.

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

    Contrary to Law - Section 42(b)

22. The ground based on section 42(b) is indicated in the Notice as “The use of the [opposed trade marks] would be contrary to the law”, echoing the words of section 42(b) which simply state “An application for the registration of a trade mark must be rejected if its use would be contrary to law.”

23. Ms Arcus submitted use of the opposed trade mark would be contrary to law because it would offend against section 52 of the Trade Practices Act 1974 (“the TPA”). This section deals with misleading or deceptive conduct and is reproduced below:

    S.52 Misleading or deceptive conduct

    (1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    (2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

    Note:          For rules relating to representations as to the country of origin of goods, see Division 1AA (sections 65AA to 65AN).

24. Ms Arcus’ submission was simply that “the opponent has established sufficient reputation in its mark to support a finding that use of the opposed marks would be misleading and deceptive under the Trade Practices Act”. I cannot agree with this submission. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct than is the case with trade marks likely to deceive or cause confusion under subsections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs, CJ noted (at 688):

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

25. As I have found that the use of the opposed trade mark on the applicant’s remaining goods and services is not, at a minimum, likely to “confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive. Thus, I find that the opponent has not established its ground under section 42.

    Application defective – Section 62(b)

26. In regards to section 62 the opponent argued that if the opponent established the section 58 ground of opposition it would then follow that the applicant had made a false claim to ownership which was a representation that was “false in material particulars” and therefore in breach of section 62(b). However, in MB Holdings (Aust) Pty Ltd v B2 Import & Export SA CC[16] Hearing Officer Williams held that the Registrar cannot deal with issues of ownership prior to acceptance and that if the opponent is to establish its opposition on the basis of ownership it will do so under section 58 and not under section 62.

    [16] (2001) 54 IPR 584

27. I refer to the following passage from Subafilms Limited v Tenancy Management Pty Ltd [2006] ATMO 11 (11 January 2006), in which the Registrar’s delegate considered the scope of s.62(b) and its possible overlap with s.58:

    In Kiwi Munchies Pty Ltd v Kraft Foods Holdings Inc [2005] ATMO 22 the delegate noted (at paragraph 35) that section 62(b) is ‘clearly directed to evidence that was material in the decision to accept the application for registration.’ This is consistent with the 1992 report of the Working Party to Review the Trade Marks Legislation which said [at 1.3.3.8A(8)] registration could be opposed on the ground ‘that acceptance of the trade mark has been obtained by misrepresentation; the Working Party intends that "misrepresentation" should be interpreted as meaning "a material misrepresentation of relevant facts" ’. As noted by the delegate in MB Holdings (Aust) Pty Ltd v B2 Import & Export SA CC (2001) 54 IPR 584 (at 587) there is no ground for rejection on the basis of ownership and ‘it is unlikely, in the lack of something more, that the extent of the representation as to ownership present in the making of an application can be "the basis" of the decision to accept the application.’ There is nothing before me to show a different conclusion is warranted in this case. Ownership of the applicant’s trade mark was not material to the decision to accept the application. Accordingly I find the section 62 ground fails

28. I am satisfied that establishing the ground of opposition under section 58 can not, as a consequence, furnish the opponent with a fait accompli under section 62. The opponent has not put forward any other arguments or evidence which would establish this ground of opposition, therefore, the ground of opposition under section 62 has not been established.

    Decision

29. Section 55 of the Act 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.

30. I have found the opposition to be partially successful on the ground raised pursuant to section 58 of the Act, in relation to all of the goods in Class 16 claimed. I find no ground of opposition established insofar as the goods and services in classes 9, 38 and 41 are concerned.

31. Accordingly, I refuse to register trade mark application number 891532 unless, within one month from the date of this decision, the application is restricted to those goods and services in classes 9, 38 and 41.  If the application is so restricted, it may proceed to registration. However, if the Registrar has been served with a notice of appeal within one month from the date of this decision, I direct that registration shall not occur until the appeal has been discontinued or in the event of a decision from the Court that the application be subject to that order. 

    Costs

32. Both parties made a claim for costs. As the successful party, the opponent is entitled to its costs and I accordingly award costs against the applicant as per Schedule 8 of the Trade Marks Regulations 1995.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    27 January 2010