The Hearst Corporation and Hearst Communications, Inc v Tosca Travelgoods (Aust) Pty Limited

[2001] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by The Hearst Corporation and by Hearst Communications, Inc. to registration of trade mark application 768132(18) - COSMO - filed in the name of Tosca Travelgoods (Aust) Pty Limited.

Background

Tosca Travelgoods (Aust) Pty Limited (the applicant) filed the above numbered application for the word trade mark COSMO on 21 July 1998 in respect of 'Leather and imitation leather bags, handbags, purses, wallets, cases, attache cases, haversacks; rucksacks, suitcases, travelling bags, luggage trunks, and cosmetic, beauty and vanity cases'. These goods fall in class 18 of the International Classification of goods and services. The application was accepted without objection from this Office and advertised in the Australian Official Journal of Trade Marks of 19 November 1998. The Hearst Corporation and Hearst Communications, Inc. (the opponents) filed a notice of opposition on 27 January 1999, in which the grounds of opposition, under the Trade Marks Act 1995 (the 1995 Act), are listed under s.57 in terms of s.41 and s.42(b), and also under s.58 and s.60. The notice also lists, as grounds, allegations that would appear to be more suitable to action under either the infringement provisions of s.120 of the Act or to the Trade Practices Act 1974. The opponents' evidence in support was filed and served by 27 January 2000. The applicant has chosen not to serve any evidence in answer.

The evidence, which I will detail later in these reasons for my decision, goes to show that Cosmopolitan magazine was established in 1886 in New York by the firm of Schlicht and Field. Following three changes of ownership, including proprietorship by Ulysses S Grant Junior, it was bought by William Randolph Hearst in 1905. The Hearst Corporation was formed in 1920 and published the magazine until December 31, 1997 when Hearst Communications, Inc took over the function.

In Australia, the COSMOPOLITAN and COSMO trade marks have been used under licence from The Hearst Corporation by Hearst/ACP, a joint venture between HMI Australia, Inc. and ACP Publishing Pty Limited, since 1991. Although the magazine had been published in Australia since 1973, this licence agreement has seen the publication of an Australian edition of Cosmopolitan magazine since 1991. On 31 December 1997, The Hearst Corporation transferred many of its assets to Hearst Communications, Inc, including most of the worldwide rights to the COSMOPOLITAN and COSMO trade marks.

The opponents are currently the registered owners of literally hundreds of COSMOPOLITAN trade marks in 82 jurisdictions around the world, for a wide variety of goods. The opponents have 10 registered and four pending COSMOPOLITAN marks in Australia. The portfolio of registered COSMO marks is more modest, amounting to 42 registrations in 26 jurisdictions, with just three registrations and one pending mark in Australia.

By means of the COSMOPOLITAN mark, the opponents have licensed a number of independent companies to market goods in more than 30 countries. Some of these companies are based in Australia. It is a matter of conjecture whether the mark has been used in Australia for these goods, however, as no sales figures or any other details have been provided for such Australian activity in the evidence. The COSMO mark is, apparently, not subject to such marketing arrangements. I also note that several parts of the opponents' evidence, including exhibit C to the King declaration, which outlines use of the opponents' marks on the Internet, post-date the present application and are not useful to progress the opponents' case.

The agents for both parties provided short written submissions on behalf of their clients but did not request to be heard. The matter has now been directed to me for a decision on the material held in this Office.

The Evidence

The opponents' evidence in support of its opposition consists of two declarations. Short details of these declarations are as follows:

DECLARANT	STATUS	DATE	ATTACHMENTS	HEREINAFTER
Jodie W King	Vice-President and Secretary of opponent companies	29 December 1999	Annexures '1' to '3' and exhibits 'JWK1' to 'JWK5' inclusive.	King declaration.
Judith Patricia Ingram	Group Publisher ACP Publishing Pty Ltd	25 January 2000	Annexures 'A', 'B' and exhibits 'JPI1' to 'JPI9' inclusive	Ingram declaration.

Discussion

As I have mentioned earlier, the grounds of opposition relied upon by the opponents in the notice of opposition are under ss. 41, 42(b), 58 and 60 of the Act. I intend to deal with these four grounds in that order in these reasons.

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

The relevant considerations from the legislative framework on which this ground is based have been set out by Branson J in Blount, Inc v Registrar of Trade Marks, (1998) 40 IPR 498 at 504-505 (the OREGON case).

There, Justice Branson looked at the operation of s.41(5) and s.41(6) of the Act. Her Honour found that the initial assessment to be made for s.41 went to answer the question, 'is this trade mark inherently adapted to distinguish the designated goods or services?', as per s.41(3). An answer in the affirmative removes the need to further consider any of s.41(4), (5) or (6). An answer in the negative causes the decision maker the need to assess whether the mark has some inherent adaptation to distinguish (and if so, apply s.41(5)), or whether it possesses no inherent adaptation to distinguish (and if so, apply s.41(6)).

The test for the inherent ability of a trade mark to be able to distinguish the goods of one trader from those of another, lies in 'whether other traders are likely, in the ordinary course of their businesses and without any improper motive to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods'[1].

[1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514.

In this regard, I note that the examiner's research for this application indicates that COSMO- is a word representing COSMOS. The Multimedia Macquarie Dictionary gives the word COSMOS the various meanings as 'the physical universe', 'the world or universe as an embodiment of order and harmony', 'a complete and harmonious system', 'order, harmony' and 'any plant of genus Cosmos'.

Given the foregoing, it seems that the word COSMO is inherently adapted to distinguish the goods claimed in class 18 for this application from the similar goods of other traders. Nothing available to me from the researched material, or submitted by the opponents in the evidence, gives me cause to think that this is not the case. This being so, it is not necessary for me to consider the provisions of s.41(5) or s.41(6) - because in terms of s.41, the application is already acceptable under the provisions of s.41(2) and (3).

Thus, I find that opposition under this ground is not successful.

(b) Section 42(b) - Use of Trade Mark contrary to law

The legislation allows:

42. An application for the registration of a trade mark must be rejected if:

(a) ....
(b) its use would be contrary to law.

The opponents have not directed me to any law, in the evidence or in the written submissions, for which use of this trade mark would be contrary.

Consequently, I find that opposition under this ground is not successful.

(c) Section 58 - Applicant not owner of trade mark

For this opposition ground the legislation reads:

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.

It is now well settled that the word 'owner', as used in s.58, has the same meaning as the word 'proprietor' as used in s.40 of the Trade Marks Act 1955 and its predecessors. In order for the opponent to succeed under this ground, the following investigations relevant to ownership of the applicant's mark in Australia must fall as follows:

• The applicant's mark must be either identical with, or substantially identical with, the opponents' mark[2].

  [2] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (31 IPR 375).

• The respective goods must be the 'same kind of thing'[3].

  [3] Re Hicks' Trade Mark ( 1897) 22 VLR 636 at 640.

• The claim of prior ownership may be based on either use of the mark or on making an application to register[4].

  [4] Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413; Re Hicks' Trade Mark, supra at 639.

In the present circumstances, both the applicant and the opponents claim ownership of the COSMO trade mark. There is no question that the respective marks are identical. The goods for which the applicant claims ownership of the mark, from the date of application, being 21 July 1998, are:

'Leather and imitation leather bags, handbags, purses, wallets, cases, attache cases, haversacks; rucksacks, suitcases, travelling bags, luggage trunks, and cosmetic, beauty and vanity cases.'

The opponents' claim for ownership of the mark encompasses both services, based on two prior trade mark registrations, and commercial use of the mark on goods. These claims are:

'Television broadcasting services and television broadcasting services by satellite distribution and television broadcasting services by cable',

from registration 736133 from 6 June 1997.

'Entertainment services, namely the production and distribution of television programming including programs or segments on cooking, the concerns and interests of women, the concerns and interests of men, human relationships, financial advice, history, health, exercise, fashion, motion picture reviews, astrology and/or motion pictures'

from registration 764499 from 12 June 1998.

The goods identified in the evidence, for which use of the mark is shown in Australia, is a single item - as a colloquial name for Cosmopolitan magazine. This use is shown in exhibit JPI3 to the Ingram declaration from January 1984, although the opponents claim an even greater time period - from 1973 (first edition published in Australia), at clause 10 of the Ingram declaration; and from 1964 (U. S. edition sold into Australia), at clause 18 of the King declaration. This evidence clearly provides reference to the word COSMO as representing Cosmopolitan magazine in a number of settings, such as Cosmo style, Cosmo reviews, Cosmo counsel, Cosmotravel, Cosmofood, CosmoBeauty Club and Dear Cosmo. In all of the references in evidence, it is apparent that the word is used as a colloquialism for Cosmopolitan magazine. There is no evidence before me to show that the mark COSMO has been used in Australia on any other goods.

In my view, the class 18 goods claimed in the present application are not 'the same kind of thing' as any of 'magazines' or of the services specified in registrations 736133 in class 38 or 764499 in class 41.

This being the case, the opposition in terms of the s.58 ground has not been made out.

(d) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The legislation allows:

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.

In terms of the s.60 ground, the opponents have relied on two different trade marks - COSMO and COSMOPOLITAN. Each of these must, therefore, be considered in terms of the legislation. I will now address these separately below.

(i) s.60 and the opponents' COSMO trade mark

Clearly, the presently applied for mark and this trade mark are substantially identical, if not indistinguishable. I also accept from the evidence that the mark has acquired a strong reputation prior to 21 July 1998, the date of application for the present mark. In Australia, that reputation, however, is in connection with a magazine in the fashion and beauty industry, particularly directed toward the older teenage and younger adult female market.

The reputation shown, in this case, is by means of evidence demonstrating that COSMO is the colloquial name for Cosmopolitan magazine. For many years, a number of features in that magazine were prefaced by the word COSMO to show that they were part of Cosmopolitan magazine. Prior to the present application, there is no evidence, however, that any fashion or beauty goods are, or have been, sold under the COSMO trade mark in the Australian market. From this background, I must assess the likelihood of deception or confusion if the applicant's mark is used on the goods nominated in the present application.

The matter of the test to be employed, to assess the likelihood of 'deception and confusion', under the 1995 Act, has been discussed by French J in Registrar of Trade Marks v Woolworths Limited 45 IPR 411 at paragraph 45 on page 426 in relation to a judgement concerning acceptance or rejection of an application under s.44 of the Act. There, Justice French observed:

Somewhat surprisingly the submissions made by the registrar before this court posited a test which imported the old law as to onus. It was put in his written submission that the test to be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

"Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the registrar or the court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Although developed in relation to a matter under s.44 of the 1995 Act, the principle outlined above - that the Registrar 'would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application' - assists in making the assessment of whether the applied for mark 'would be likely to deceive or cause confusion' in opposition proceedings under s.60. The emphasis that Justice French places on the positive finding (under the current legislation) of being 'satisfied' of the reasonable likelihood of deception or confusion contrasts with the negative finding outlined in the Smith Hayden test, as it had been applied under the Trades Marks Act 1955.

A 'negative finding' had also been expressed in considering that 'reputation' impacts on a finding of deception or confusion under s.11 of the Trades Mark Act 1938 (U. K.) in the Smith Hayden case, in the following words of Evershed J in that case at 101:

Having regard to the reputation acquired by the [opponent's mark], is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.

This s.11 of the 1938 U. K. Act corresponds to s.60 of the current Australian legislation, in dealing with possible deception or confusion as a result of the reputation in the opponent's mark. In an earlier decision,[5] when dealing with a submission claiming that the applicant should carry the initial onus in an opposition action under both s.44 and s.60, as a delegate of Registrar, I commented that:

[5] Kellogg Company v Premium Brands Pty Limited [2000] ATMO 70.

From the foregoing, it is apparent that a ground for rejecting the initial application, in the face of a possible conflicting mark with earlier priority date, will only satisfy the legislation where it is determined that there is a reasonable likelihood of deception or confusion occurring. The onus in the first instance is on the Registrar to find a clear reason why an application cannot progress. This position is, of course, a reversal of the onus under the repealed 1955 legislation - where the applicant bore the onus to justify why acceptance should occur.

Once accepted, I can see no compelling reason why this onus should then be reversed under the present legislation, thereby placing the applicant in the position to justify registration of the mark in the face of a possible challenge. It seems logical to me that in an opposition action, in the first instance the opponent would carry the onus of the need to establish 'a reasonable likelihood of deception or confusion' between possible conflicting marks rather than the applicant having to justify why this would not be the case.

The reputation enjoyed by the opponents in the COSMO mark, in Australia, is entirely in terms of its use in connection with Cosmopolitan magazine. I do note that the evidence of use of the COSMO mark, in the exhibits (JWK4) to the King declaration, shows use in the United Kingdom in Cosmopolitan magazine. These overseas uses include free membership to Cosmo Club, sale of Cosmo lingerie and Cosmo bed linen (February 1998 issue), sale of Cosmo crop tops and shorts, bikinis, wrap skirts, body costumes, sunglasses, ophthalmic frames, bedding accessories, bags, watches, drinks, dresses, (July 1998 issue). Other exhibits, including JWK5 to the King declaration show use of the COSMO mark, but are all post application date and in jurisdictions other than Australia. The only item (apart from the magazine itself) showing use, in Australia, by the opponents of the COSMO mark alone on goods is found in exhibit JPI5 to the Ingram declaration. This exhibit shows a copy of an advertisement for a knit dress from the October 1994 edition of Cosmopolitan magazine.

In the face of that sort of reputation, I am not satisfied that use of the COSMO mark by the applicant in respect of the class 18 goods claimed in the application, will produce deception or confusion in the relevant market of prospective purchasers in Australia. Cosmopolitan magazine is aimed, in general, at the female market of older teenagers through to younger adults. I believe that the society in which we live has become more aware of trade mark matters in recent years, but this particular group, in relation to fashion and beauty products, are particularly cognisant of market conditions. Given that the evidence shows that the usual marketing of promotional products by the opponents in Australia is through Cosmopolitan magazine in conjunction with trade mark owners using marks other than COSMO, I believe that any deception or confusion produced by use of the mark by the applicant will be minimal. I believe that, in the absence of a promotional campaign by means of Cosmopolitan magazine, the relevant purchasing public would not presume that the COSMO mark identified the opponents as the trade source of the class 18 goods here. The opponents have simply neither used the mark in Australia on fashion or beauty goods, nor have they been involved with the sale of goods (under other trade marks) without a promotional campaign through Cosmopolitan magazine.

In my opinion, the reputation in the COSMO mark held by the opponents, as shown in the evidence, is not in a domain with sufficient nexus to the present goods for me to be satisfied that use of the mark by the applicant would be likely to deceive or cause confusion. Thus, I find that in relation to the COSMO trade mark, this ground of opposition has not been made out.

(ii) s.60 and the opponents' COSMOPOLITAN trade mark

Under the s.60 ground of opposition, the applied for mark must be found either substantially identical with, or deceptively similar to, the mark relied on by the opponent. The tests outlined in most precedent cases, direct attention to the differences and similarities between the visual and the phonetic or aural aspects of the respective marks. In the present case, I do not accept that the words COSMO and COSMOPOLITAN could be confused in either manner. However, there is one other aspect of possible confusion that must be considered, as outlined in John Fitton & Co. Ltd's Application 66 RPC 110 at 113, where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

Cosmopolitan magazine has used the COSMO mark interchangeably as an abbreviation of COSMOPOLITAN throughout the magazine for some appreciable time. It was first used in that manner in 1964 and exhibit JPI3 to the Ingram declaration provides examples from 22 editions of Cosmopolitan magazine (15 of which pre-date the present application from as early as January 1984). These items show many uses of COSMO interchangeably as an abbreviated form of COSMOPOLITAN. I have little doubt that the general purchasing public familiar with Cosmopolitan magazine would have minimal difficulty connecting the two words. In addition, the magazine has sizeable circulation figures, as shown at Schedule A of the Ingram declaration, in the Australian market, from June 1994 to the present date of application. This adds support to the contention that both of the words, COSMO and COSMOPOLITAN, will be seen as sourcing the opponents' goods.

The word 'cosmo' appears in the Ninth Edition of the Abbreviations Dictionary, Edited by Ralph de Sola et al, published by CRC Press, Inc (1995). 'Cosmo' is shown as a diminutive for 'cosmopolitan' under that entry.

From the above, in the circumstances of this particular opposition, I believe that the presently applied for mark, COSMO is deceptively similar, in a contextual sense, to the COSMOPOLITAN mark.

It remains for me to assess the reputation of the opponents' COSMOPOLITAN mark in Australia and to determine, 'if because of the reputation of the COSMOPOLITAN trade mark, the use of the applicant's COSMO trade mark would be likely to deceive or cause confusion'.

Insofar as the reputation of the mark is concerned, the opponents provided much evidence of the use of the mark. However, it did little to convince me of the reputation of the mark in the Australian market. I have little doubt that the COSMOPOLITAN mark enjoys a reputation, in relation to a range of goods in overseas jurisdictions. In Australia, however, evidence of such reputation is lacking. The goods sold under the COSMOPOLITAN mark in the United Kingdom are extensive (exhibits JWK3 and JWK4 to the King declaration and also at paragraph 14). The opponents also claim a presence in other markets, via licensing arrangements, namely in the United States of America, Canada, Mexico, four South American countries, nine European countries, eight Asian countries, South Africa, New Zealand, Middle East countries, Ireland, Channel Islands and Malta. In Australia, the opponents claim that they have licensed the COSMOPOLITAN mark on compact discs, non-fiction books, simulated personal magazine covers, calendars, books of short stories, eyewear, key rings, art prints, exercise videos. However, there is no material before me to assess the success of these arrangements, or for me to gauge the reputation held by the opponents in the mark in Australia through such activity. The worldwide revenue is attested to in the King declaration but not the extent of the Australian contribution.

The exhibits to the Ingram declaration also provide copies of advertisements from various Australian editions of Cosmopolitan magazine showing handbags for sale (exhibit JPI2) and also a listing of traders who advertise handbags in the magazine (Schedule B). None of these, however, are in respect of either the COSMO or the COMOPOLITAN trade marks. Although the evidence does show a reputation for the opponents in the COSMOPOLITAN mark in a fashion and beauty magazine, a single television show and to a lesser extent a 'beauty club', such reputation does not automatically transfer to the fashion and beauty goods that the magazine features.

In my opinion, the reputation in the COSMOPOLITAN mark held by the opponents, as shown in the evidence, is not in a domain with sufficient nexus to the presently applied for goods in class 18 for me to be satisfied that use of the mark by the applicant would be likely to deceive or cause confusion. Thus, I find that in relation to the COSMOPOLITAN trade mark, this ground of opposition has not been made out.

In total, the ground of opposition taken under s.60 has not been established in terms of either of the opponents' marks - COSMO or COSMOPOLITAN.

Conclusion

From the foregoing, I have found that none of the grounds of opposition relied on by the opponents in the notice of opposition has been made out. In my capacity as the delegate of the Registrar in this matter, I therefore dismiss opposition to registration of this trade mark application and direct that, on payment of the appropriate fees that the application may proceed to registration.

Costs

Having been the successful party here, the applicant is entitled to its costs. Thus, as the Registrar's delegate I award costs in the matter against the opponents, The Hearst Corporation and Hearst Communications, Inc., in accordance with the Official scale.

Don Nancarrow
Hearing Officer

2 March 2001