The Prince's Trust v Fashion Rocks Pty Ltd

[2008] ATMO 38

TRADE MARKS ACT 1995

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

Opposition by The Prince's Trust to registration of trade mark applications

994903 F-ROCKS

994905 Fashion Rocks/Fashion Rocks Australia (Series)

996151 F-ROCKS FASHION ROCKS Logo

997624 F-ROCKS FASHION ROCKS AUSTRALIA Logo,
in the name of Fashion Rocks Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent: Christian Dimitriadis of Counsel, instructed by Clayton Utz, Sydney

Applicant: Written submissions filed by Kliger Partners, Lawyers, of Melbourne

Decision:

2008 ATMO 38

Section 52 opposition. S 42(b), 58 and 60 not established, registration proceeding.

Background

1. In 2004, Fashion Rocks Pty Ltd, a Victorian company, applied to register four trade marks in Class 41.  Following minor amendment to their specifications, these were in due course accepted for possible registration covering:

   Amusement services; entertainment services; organisation of theatrical, musical, cultural, fashion and recreational events, live performances and competitions; provision of entertainment, educational and recreational information relating to the aforementioned services over a global computer network

2. Further details of the four applications are set out below:

Number	Mark	Priority Date
994903	F-ROCKS	25 March 2004
994905	Fashion Rocks/Fashion Rocks Australia (Series)	25 March 2004
996151	1 April 2004
997624	8 April 2004

1. The Prince’s Trust, of 18 Park Square East, NW1 4LH, London U.K. (“the opponent”), filed essentially identical notices of opposition to registration of each of the four applications on 26 November 2004.

2. The parties filed evidence in support, evidence in answer and evidence in reply as set out below:

Declarant	Dated	Annexures
Opponent’s evidence in support	Ellie Gray	20.07.05	Annexures A-L
Applicant’s evidence in answer	Valentina Jovanovska	21.10.05	Exhibits VJ-1 to VJ-20
Opponent’s evidence in reply	Averil Waters Ellie Gray	21.04.05 8.04.06	Annexures A & B Annexures A - N

1. The four oppositions were in due course heard before me in Canberra as a delegate of the Registrar of Trade Marks on 11 December 2007.  Christian Dimitriadis of Counsel, instructed by Clayton Utz, appeared via video link on behalf of the opponent.  The applicant did not appear at the hearing, but the applicant’s attorneys, Kliger Partners, Lawyers, filed written submissions.

Grounds of Opposition

1. The opponent had initially nominated nine grounds of opposition but at the hearing it sought to press only the grounds numbered 2, 4 and 6, corresponding respectively to Sections 58, 60 and 42(b) of the Trade Marks Act 1995 (“the Act”).  I will deal in detail with each of these, under the latter headings, below.

Discussion

Section 58: ownership

1. Section 58 of the Act reads:

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

2. At the hearing Mr Dimitriadis indicated the opponent was only pressing this ground in relation to opposed application 994905, which is an application under s.51 of the Act to register the marks Fashion Rocks and Fashion Rocks Australia as a series (“the series marks”). It is not in dispute that the series marks meet the requirements of s51(1) and that they “resemble each other in material particulars and differ only in respect of …(d) any matter which is not inherently adapted to distinguish and does not substantially affect the identity of the trade marks”[1].

   [1] Section 51 was amended in 2006. That amendment applies, by express statement, only to applications filed after the proclamation of the Trade Marks Amendment Act2006.  Thus, it is the earlier, pre-amendment, provision that is relevant here.

3. To establish this ground the opponent needs to show it used a mark in Australia:

(a) which is itself substantially identical to the series marks (or one of them);

(b) for services adjudged to be “the same kind of thing” as the Class 41 services covered by application 994905; and

(c) before the earlier of the 25 March 2004 priority date of application 994905 and the applicant’s first use of the series marks (or one of them) for relevant services in Australia.[2]

[2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375; Re Hicks’ Trade Mark (1897) 22 VLR 636

1. It is clear from the opponent’s evidence that the first actual “event” staged anywhere in the world by the opponent by reference to the trade mark FASHION ROCKS took place in London on 15 October 2003 (“the London event”).  The London event was televised in the U.K. and the televised version was also offered for broadcast in several other countries, including Australia.  The offer was at some point, (unspecified in the opponent’s evidence), taken up by the Australian television broadcaster SBS, which aired the 90 minute telecast nationally on 6 December 2003.

2. A videotape recording of the London event is included as Annexure G to the first Gray declaration.  Ms Gray states she is “not certain whether the event was broadcast as recorded on this tape, or whether SBS edited this recording for the Australian broadcast”.  I am prepared to accept that the version broadcast by SBS is unlikely to have differed significantly from the videotaped version though I note that, for reasons which will emerge, this assumption would not affect the final outcome.

3. In their written submissions the applicant’s attorneys argue that use of a mark “substantially identical” to (either of) the series marks is not shown in the recording since the words FASHION ROCKS are invariably used together with the words FOR THE PRINCE’S TRUST and in conjunction with a device of a silhouette of a model on a catwalk.  However, while this is so throughout most of the recording, the recording does commence with the unadorned words FASHION ROCKS, alone, prominently displayed.  Further, on at least two occasions during the recording one of the presenters, Liz Hurley, uses the words FASHION ROCKS alone in referring to the London event, once in her introductory remarks (“Your Royal Highness, ladies and gentleman, welcome to FASHION ROCKS”), and once towards the end of the recording when introducing a videoclip by David Bowie (“The performance has been specially made for FASHION ROCKS”). 

4. I thus accept that the SBS broadcast constituted use of the words FASHION ROCKS alone for what press releases for the London event, (such as those shown in Annexures B and C to the first Gray declaration) describe as, inter alia, “a fashion and music extravaganza” and “a fusion of fashion and music”.  I further accept that this use was in essence for services that might reasonably be characterised “the same kind of thing” as the services in Class 41 covered by application 994905.  Moreover, on the face of it each of the series marks is (at least) substantially identical to the opponent’s FASHION ROCKS trade mark.

5. The opponent’s evidence also discloses use of the words FASHION ROCKS in press releases in the U.K., and in the U.K. media, in 2003 in relation to the London event of 15 October 2003.  The opponent’s evidence does not indicate that any of these publications had made their way to Australia prior to the SBS broadcast on 6 December 2003.  More significantly, I am not satisfied that this overseas use in relation to the London event constitutes relevant trade mark use in Australia.  The first Gray declaration also attests to Australian print and electronic media coverage, in October 2003, of the London event but again this does not in my view constitute relevant trade mark use in Australia.

6. In similar vein the Waters declaration attests to the conducting of “a retrospective media search…carried out in the Australian press for references to the fashion music event staged by the opponent under its trade mark ‘FASHION ROCKS’ published between 1 January 2003 and 30 September 2003”, the results of which apparently “revealed two articles discussing the FASHION ROCKS event”.  The two (essentially identical) articles were published on 14 April 2003 in the (Brisbane) Courier Mail and the Hobart Mercury.  Once again, these articles do not, in my view, amount to relevant use of FASHION ROCKS as a trade mark in Australia.

7. The opponent’s evidence also refers to a number of websites apparently accessible by Australians which referred to the London event.  No information is provided as to the actual number of Australians who may have accessed relevant information through these websites but, again, the material on the websites as disclosed in the opponent’s evidence does not in my opinion amount to relevant use of FASHION ROCKS as a trade mark in Australia.

8. I accordingly consider the earliest use in Australia by the opponent of the FASHION ROCKS trade mark for relevant services was in relation to the SBS broadcast on 6 December 2003.  It is questionable if that broadcast itself constitutes usage of a trade mark in Australia.  It is hard to see how it amounts to trade, or an offer to trade, in any entertainment services in Australia, and very arguably it simply documents the opponent’s trading actions in the UK without being any sort of trade in Australia.  There may potentially have been earlier use in Australia by the opponent at the time it negotiated the licensing rights for the SBS broadcast but the opponent’s evidence and submissions do not address this issue.  Certainly there is no evidence these negotiations took place before the London event itself took place on 15 October 2003 and I see no basis for a safe inference to that effect.

9. The applicant’s activities during 2003 and 2004 are attested to in the Jovanovska declaration.  Ms Jovanovska is a director of the applicant company and the principal person responsible for the company’s actions.  She indicates that for the years 1998 to 2002 she had been Director of the “Australian Designer Collections”, which had involved her arranging the appearances of models and fashion designers and combining this with musical performances.  Following this experience she states she first decided “[i]n early 2003…to develop the concept of a large live event combining both popular musical performers and current fashion designers” (paragraph 3).  She claims to have first used the words FASHION ROCKS in connection with this concept in conversation with a Mr Lou Cerantonio, Director of Entertainment at Melbourne’s Crown Casino, in February 2003, without any prior knowledge of the opponent’s adoption of the identical words for an essentially similar concept.

10. The first use of the words FASHION ROCKS documented in the applicant’s evidence is a copy of an email dated 22 April 2003 from Ms Jovanovska to Mr Cerantonio (Jovanovska declaration paragraph 4 and Exhibit VJ-1).  The email has as its subject heading the words “Fashion Rocks Date”.  The relevant part of the email message is as follows:

    On work matters, can you please attentively (sic) book the week commencing 10 to 15 November for the Fashion Rocks concept I discussed with you last.

    We need to meet when I get back to go over the idea etc. and see if you are comfortable with it.

    There are a couple of people interested for presenting sponsor at this stage, but I haven’t pursued it until we lock in date and discuss.  thanks heaps.  (sic)

11. Thereafter followed what Mr Dimitriadis described in his submissions as a “flurry of activity” by the applicant, attested to in the Jovanovska declaration.  In particular, Ms Jovanovska received an email dated 23 April 2003 from Pamela Apostolidis, “a business colleague” who “was to assist me with locating suitable performers and television broadcasters”, reporting preliminary discussions Ms Apostolidis had had with an executive producer from Channel 7 Melbourne concerning a possible national television broadcast of “FASHION ROCKS”.  Ms Apostolidis indicates the producer appeared interested and would like to see a “proposal”.  Ms Apostolidis concludes by asking Ms Jovanovska to prepare an updated “prop” (described in paragraph 5 as “a document setting out my ‘concept proposal’ to show to potential sponsors and artists”) that Ms Apostolidis might follow up with.

12. Between 19 May 2003 and the end of June 2003 Ms Jovanovska had email exchanges with Mr Cerantonio, Ms Apostolidis, Vanessa Yates (of Mushroom Music, assisting with musical performers), Kathee Gunn (assisting with sponsorship) and Anita Waldrum (of Crown Limited) in which Ms Jovanovska’s formal proposal document is circulated and refined.  Significantly, these emails refer in some detail to discussions or approaches Ms Jovanovska and her correspondents have initiated with a wide range of potential performers, designers, advertisers and sponsors and with potential television broadcasters of the proposed “Fashion Rocks event”, originally tentatively scheduled for November 2003 and subsequently rescheduled for 11 December 2003.  It is apparent these approaches and discussions were “preliminary” ones at this point insofar as the possible participation and availability of numerous parties for the proposed event was their very purpose.

13. Further, as indicated in an email dated 26 May 2003 from Ms Jovanovska to Mr Cerantonio (Exhibit VJ-9) the apparent objective at that time was to lock in television broadcasting arrangements before sponsorship and other details were finalised.  In this regard it appears from further email messages forming Exhibit VJ-9 that discussions concerning broadcasting rights were held with Channel 7, Channel 9 and MTV in late May and early June 2003.

14. While not of direct relevance to my decision I note that Ms Jovanovska attests in paragraph 8 to inquiring of the London based agents or promoters for Robbie Williams and Duran Duran, (both of whom subsequently appeared in the opponent’s London event in October 2003), regarding their availability to participate in her proposed event in Australia, then planned for November 2003.  Although not clearly stated, this was apparently in May or June of 2003.  In learning of the artists’ unavailability she was apparently not informed that an identically named event of the same kind involving those artists was to take place in London that coming October.  Rather, Ms Jovanovska indicates in paragraph 17 that she first became aware of the opponent’s use of the FASHION ROCKS trade mark “during October 2003” when informed by Pamela Apostolidis.

15. During July, August, September and October 2003 Ms Jovanovska continued to negotiate with potential participants, sponsors and broadcasters with, as mentioned, the date for the planned event being pushed back initially from November to December 2003.

16. It is apparent from emails forming part of Exhibit VJ-15 that by 26 November 2003 negotiations to secure Lisa Marie Presley as the headline act for the event were then close to finalisation but that at that point negotiations with Channel 9 as potential broadcaster were also still ongoing.  The Jovanovska declaration is essentially silent on what negotiations or activity occurred after this date, with Ms Jovanovska simply stating at paragraph 14 that the event “was again rescheduled to 13 March 2004 to accommodate Lisa-Marie Presley”.  The evidence shows the event did take place at Crown Casino in Melbourne that day (“the Melbourne event”) and that an hour long edited version was broadcast by Channel 7 (not Channel 9) on 6 April 2004.

17. Publicity material for the Melbourne event indicates the participation of several well known performers in addition to Ms Presley, of some 12 Australian fashion designers and of sponsors including Remington, Wella, the Herald Sun, Kodak, Midas, Mollini and others.  While the Jovanovska declaration is silent on precisely when these further participants confirmed their involvement in the Melbourne event it is reasonable to infer discussions with parties such as these would have been intensifying in the months leading up to 13 March 2004.

18. I have already indicated that I consider the opponent’s first use of the FASHION ROCKS trade mark in Australia for relevant services shown in its evidence was (subject to my doubt expressed in para 17 above) in relation to the SBS broadcast on 6 December 2003.  The question which arises for determination, therefore, is whether the applicant’s negotiations with participants and other preparations it made for the Melbourne event prior to 6 December 2003 constitute use of FASHION ROCKS as a trade mark in relation to relevant services.

19. At the hearing and in his written submissions Mr Dimitriadis referred to the decision in Moorgate Tobacco Co. Ltd v Philip Morris Ltd (1984) 156 CLR 414; 3 IPR 545 and characterised the applicant’s activities during the months from February to August 2003 in particular as being “in the category of mere preliminary discussions and negotiations rather than actual dealings which would constitute use of the mark”. Although he conceded that this would have been the case “at least to the point where prospective celebrities were being contacted with regard to their involvement in the event” he concluded that “the applicant appears not to have made public use of the FASHION ROCKS trade mark until early 2004, when the event held in March 2004 was publicised”.

20. In Moorgate Deane, J had said (at CLR 433; IPR 557) that while it was not necessary that there be an actual dealing in goods bearing a trade mark to constitute use in Australia, what was required was that there be “an existing intention to offer or supply goods bearing the mark in trade”.  However in a later decision by Assistant Registrar Hardie specifically in relation to services, Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331, Ms Hardie said of preparations for use of the trade mark SIZZLER for restaurant services (at 339):

    I distinguish this use from the use found short in the Moorgate case. There, the court found it was not established that at the critical date there was an existing intention to offer or supply the goods bearing the mark in trade. There was no more than preliminary discussions and most notably, the choice of a trade mark was not yet settled. Here, I do not find that there were services which had been offered under the trade mark, but I do find that there was a fixed and existing intention to use the mark SIZZLER, that the market research and negotiations were much more than the preliminary discussions undertaken in the Moorgate case, and that by means of the market research and trade negotiations, the Sizzler Restaurants International had exposed its use of the trade mark SIZZLER to the public.

21. The words of Deane, J in the Moorgate case were further discussed by Drummond, J in Woolly Bull EnterprisesPty Ltd and anor. v Reynolds (2001) 51 IPR 149, a non-use application under s. 92(4)(b), at 154:

    The applicants, in my opinion, misunderstand what Deane, J said. His Honour made the comment relied on in the context of explaining what was necessary to establish use of a mark in Australia by an overseas trader, though there was no actual dealing in goods bearing the mark in this country in the sense of no actual sales or offers of sale of the goods here. The dictum cannot be read in isolation from this context.

22. Drummond, J noted that preparatory use of a trade mark in relation to services had been considered by the Federal Court in Buying Systems (Australia) Pty Ltd v Studio Srl (1995) 30 IPR 517. This was a dispute as to proprietorship of the trade mark STUDIO for a magazine under the Trade Marks Act 1955 and his Honour commented at 157:

    The critical date was 8 December 1983. In the period September to November 1983, Grand, the principal of Buying Systems, decided to set about publishing a new fashion magazine under the name ‘Studio Collections’. He had business cards and letterheads with the word ‘Studio’ printed. He contacted potential advertisers and solicited advertisements for the new magazine. Two of the organisations approached in this period ultimately took up advertising space in the first issue, which appeared in mid-1984. Gummow J concluded at 520:

    ‘These steps amount to sufficient activity by the opponent to produce the result that [Studio SRL] the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade. The case is quite different from activities of the nature discussed in Moorgate.’

    [28] Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983. It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine.

1. In the case before me it is not immediately obvious at what precise point the applicant’s preliminary negotiations with potential participants and its other preparations for the Melbourne event might be said to first qualify as relevant use.  However, I am satisfied the evidence demonstrates the applicant had “a fixed and existing intention” and, indeed, in the words of Drummond, J quoted above, “an objectively ascertainable commitment to offering to supply” the services covered by application 994905 at a time before the London event took place in October 2003.

2. The opponent has therefore not established this ground.

Section 60: prior reputation in deceptively similar trade mark.

1. This ground is based upon s.60 of the Act and the opponent presses it against all four opposed applications. All four applications were filed well before significant amendment to s.60 came into force on 23 October 2006 and thus the pre-amendment version of the section applies[3]. At that time s.60 read:

   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.

   [3] Apple Computer Inc. v Todaytech Group Pty Ltd, 2007 ATMO 40

2. Here the comparison is between an existing trade mark that “had acquired a reputation in Australia”, in this case the opponent’s unregistered FASHION ROCKS trade mark, and each of the opposed marks.  The relevant dates for assessing the reputation of the opponent’s mark are 25 March 2004 in the case of applications 994903 and 994905, 1 April 2004 for application 996151 and 8 April 2004 for application 997624.

3. Dealing firstly with the threshold question in paragraph (a) of Section 60, I do not consider the F-ROCKS trade mark subject of application 994903 to be substantially identical or deceptively similar to the FASHION ROCKS mark. Mr Dimitriadis submitted to the contrary on the basis that F-ROCKS appeared to be an abbreviation of FASHION ROCKS and that both marks conveyed the same idea having regard to the services in question and the imperfect recollection of consumers. To my mind however the two marks do not look or sound similar when compared as wholes. Although both marks feature the element ROCKS, this element is on the face of it somewhat descriptive and I believe the additional material appearing in each mark is sufficient to obviate the likelihood of any significant deception or confusion amongst relevant consumers. The opponent therefore cannot establish this ground in relation to application 994903. Moreover, even if I am wrong on that preliminary point, the opponent has not established a sufficient quantum of reputation at the relevant dates, as I will set out below.

4. In the case of application 994905 I have already found that each of the series marks is  substantially identical to the opponent’s FASHION ROCKS trade mark.  While they do contain additional material, the marks subject of applications 996151 and 997624 both prominently feature the combined words FASHION ROCKS and for this reason both are in my view deceptively similar to the opponent’s trade mark.

5. What then was the nature and extent of the reputation in Australia of the opponent’s FASHION ROCKS mark as at March/April 2004?  From the opponent’s evidence, the direct exposure the opponent’s mark enjoyed in Australia up to March/April 2004 can be summarised as follows:

• In the period 1 January 2003 to 30 September 2003 a short syndicated article concerning the London event written by Louise Pritchard appeared on 14 April 2003 in the Brisbane Courier Mail and the Hobart Mercury;

• On 16 October 2003 Fairfax Digital published a brief report on the London event on its website at and published some photos (only) of the London event on its website at on 16 October 2003 Channel 9, NBN Tamworth, NBN Newcastle and NBN Gosford gave on average 50 seconds over to coverage of the London event on their evening television news broadcasts.  ;

• On 6 December 2003 Fairfax Digital published a review on its website at of the SBS broadcast scheduled for that evening;

• Also on 6 December 2003, a Saturday, the SBS network broadcast an edited (90 minutes, including commercials) version of the London event on national television at 7.30 pm.  As I understand it from the opponent’s evidence the broadcast had an “average audience” of some 250,000 people in all mainland capitals combined, being just under 1.9% of the total population (13,175,000 people) of those cities;

• Finally, paragraph 53 (and Annexure H) of the first Gray declaration attests to the results of a retrospective “Media Monitors” search (which she had presumably undertaken or commisioned in the first six months of 2005) aimed at locating “references to the Trust’s trade mark ‘FASHION ROCKS’ in the Australian press”.  Excluding “repeats” and apparently irrelevant “hits”, this retrospective search located some 17 items published during the period 9 October 2003 to 6 December 2003.  Only the first 40 words or so of any of these items are included in Annexure H and the relevant sentence or sentences where the words “FASHION ROCKS” appear is/are not reproduced in the evidence in the case of five of these.  Of the remaining twelve items, eight appeared on or shortly before the SBS broadcast on 6 December 2003 and appear to be brief previews or reviews of the broadcast itself which appeared in various newspapers’ television guides at the time.

1. In assessing the nature and extent of the reputation of the opponent’s FASHION ROCKS mark in Australia as at March/April 2004 a range of matters must be considered, including not only the mark’s exposure in Australia but also the novelty, memorability and inherent distinctiveness of the mark itself and the “target audience” for the opponent’s relevant (goods or) services (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (“the MONSTER case”)). Here the FASHION ROCKS mark could reasonably be said to contain at least a tinge of descriptiveness in relation to the opponent’s relevant services (“a fusion of fashion and music”) and, indeed, the parties’ evidence is that it was independently “coined” by each of them.

2. While there appears to have been some limited coverage of the London event by the Australian media in October 2003, direct exposure of the opponent’s mark in Australia in the main revolves around a single television broadcast on a Saturday evening on 6 December 2003 and associated media or television guide reviews of the broadcast.  I would describe the SBS broadcast in general terms as in the category of “light entertainment” and thus conclude the relevant target market to be the average Australian television viewer of either sex aged, say, 6 years and older.  Trade mark cases dealing with “reputation” indicate a “substantial number” of relevant persons would need to be exposed to the mark in question.  Here, the evidence is that a relatively small number of people, (7% of all people in mainland cities actually watching television at the time according to paragraph 51 of the first Gray declaration), watched some or all of the SBS broadcast.

3. Further, as noted by Middleton, J in the MONSTER case (at, inter alia, paragraph 97) in referring to the incidental use of a trade mark in the background, as it were, of a live event, a distinction must be drawn between the mark’s exposure to those actually attending the event and those who watch an edited television broadcast of the event.  In the latter case, only intermittent and fleeting exposure of the mark is likely to take place and this is undoubtedly the case with the video footage forming Annexure G where on my estimation the words “FASHION ROCKS” can only be seen or heard for a total duration of less than 3 minutes out of a total of 90, and with all but one or two references lasting less than 10 seconds.  The words “FASHION ROCKS” are I believe in fact only spoken on two occasions during the broadcast, with all other references appearing as a graphic incorporated in the opening credits or projected from time to time on a large screen set up behind the presenters at the back of the stage.

4. As mentioned earlier in connection with the Section 58 ground the opponent’s evidence also refers to a number of websites accessible by Australians which referred to the London event and to coverage in UK newspapers and magazines which “may” have made their way to Australia prior to March/April 2004. No information is provided as to the actual number of Australians who may have accessed relevant information through these means and I am not prepared to infer this number is likely to be significant.

5. There is one instance of possible confusion mentioned in the opponent’s evidence, being an undated review of the applicant’s Melbourne event of 13 March 2004 which appeared on the website (Second Gray declaration, paragraph 18 and Annexure N).  The relevant reference is in the review’s initial paragraph, which reads:

   Fashion Rocks has been a successful event in England and America.  It came to Melbourne’s Crown Showroom on Saturday, March 13 and a great line-up of young Australian music talent joined forces with Australia’s leading designers to present Fashion Rocks in Melbourne.

6. Significant weight might ordinarily be given to evidence of this kind where the likelihood of confusion or deception is in issue.  In this instance the reviewer concerned mentions that “Fashion Rocks has also been a successful event … in America”.  However, there is no mention, in the review, of either the opponent or the Prince of Wales and, conversely, there is no mention in the opponent’s evidence of relevant events staged by it in America.  This to me suggests that the reviewer might not have been familiar with any proprietorial claims made by the opponent with regards to what, in the reviewer’s mind, might well have been separate and entirely unrelated usages by, apparently, three different entities.  I accordingly do not attribute great significance to this evidence.

7. Taking into account the opponent’s evidence as discussed above and my assessment of the nature and extent of the reputation of the opponent’s FASHION ROCKS trade mark in Australia I am not satisfied that confusion or deception amongst a substantial number of people in Australia was likely as at the relevant dates in March/April 2004. 

8. The opponent has thus not established this ground in relation to any of the opposed applications and it fails at the threshold in relation to 994903, as I have said above at para 36.

Section 42: contrary to law

1. The opponent argues that use of the opposed trade marks would be contrary to law in two ways, namely that it (1) would be in breach of s.52 of the Trade Practices Act, 1974 and/or (2) would constitute passing off. However, I have already found that the opponent has not made out its ground under s 60, in that I am not satisfied that use of the applicant’s trade marks in the face of the reputation of the opponent’s trade marks was likely, at the relevant dates, to have given rise to any significant level of deception or confusion. For similar reasons, I am not satisfied that the use of the trade marks by the applicant would be contrary to the laws on which the opponent relies.

Decision

1. 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.

2. None of the grounds pressed at the hearing has been established.  Accordingly, the four opposed trade mark applications may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.  I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Terry Williams

Hearing Officer

21 May 2008