Victoria's Secret, Inc v Gayl Porter

[1993] ATMO 60

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by Gayl Porter to the registration of application 483553, in the name of Victoria's Secret, Inc.

Background
On 5.4.90, trade mark application 483553 was advertised accepted for registration.  The application is in the name of Victoria's Secret, Inc. ("the applicant") - a Delaware corporation.  The goods specified in the application are "clothing and footwear" and the trade mark the subject of the application, which was lodged on 17.3.88, is the words VICTORIA'S SECRET rendered in plain block letters.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Gayl Porter trading as Victoria's Secret ("the opponent"), on grounds which are generalised and which I will not recite at length as they were not fully pursued at the hearing. The opponent claims in general terms that the applicant is not the proprietor of the mark, and that the application should be refused in any case as use of the applicant's mark would be likely to deceive in view of the opponent's reputation shown to exist at the date of lodgement.

After the evidence stages provided in the regulations the matter was set down for hearing on 15.12.92.  The opponent was represented by Mr John Garnsey QC, instructed by Wray and Associates, patent attorneys, while the applicant was represented by Mr Bruce Caine of counsel, instructed by the attorney firm of Callinan Lawrie.  Having heard the parties I will summarise the arguments as follows:

for the opponent:
The opponent has been in business since 1983.  The common law reputation established would show that deception or confusion would be the inevitable consequence of the applicant's use of its trade mark.  The applicant on the other hand is claimed not to have traded in Australia for many years after the opponent commenced business, and its proprietorship claim inferior to the opponent's.

The opponent relied on Kronborg Isager v Boboli 18 IPR 526, Dimtsis' application 17 IPR 273, R & C v Technicolour (1992) AIPC 90-875, Freighter v Freightliner (1992 AIPC 90-862), ANZ v Joint Credit Card Co

for the applicant:
As first user in Australia, the applicant has vindicated the proprietorship claim subsequently asserted at lodgement of the application.  The applicant has traded in Australia by circulating catalogues and, from these, obtaining mail orders for goods.  There have also been regular advertisements, aimed at the Australian market, in internationally circulating magazines.

The applicant relied on Settef v Riv-Oland 10 IPR 402, Re Harris and Co 15 IPR 273, Re Saturno's Norwood Hotel 12 IPR 579, Moorgate v Philip Morris 156 CLR 414, Re Boundy Insulations 9 IPR 345, Arthur Fairest's application 68 RPC 197, 7-Up v O.T. 75 CLR 203, Yanx trade mark 82 CLR 199, New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 and Riv-Oland v Settef 12 IPR 321

Opponents Evidence in Support
In volume terms, the bulk of the evidence is a body of some 40 declarations from buyers for or owners of retail stores selling lingerie.  Mr Caine was critical of these declarations as not showing if the declarant learned of the opponent's mark in trade.  (One declaration, for instance, is from a person who supplied fabrics to Ms Porter.)  He argued that the declarations could have been obtained by coaching and that they should be given little weight.  In essence, he criticised the declarations on the basis that they were no more than a small survey of hand picked insiders, unrepresentative of the general public and arguably not representative of traders on the whole.

However, the declarations as a whole do present a convincing picture.  Trader after trader has declared that he or she learnt of the opponent's trade mark in the course of buying stock for a shop; from another firm who were acting as agents for Ms Porter; from a direct approach from Ms Porter or her state agent; or from a store display in another shop.  The traders concerned have experience in a range of firms and outlets including David Jones stores in New South Wales and Queensland, and Aherns (said to be the largest family owned department store in Western Australia).  These declarations show that, perhaps not from 1983 but certainly from as least as early as 1987, a goodly number of buyers in the clothing trade were aware of Ms Porter's business.  Conversely, none of them associated the mark VICTORIA'S SECRET with the applicant, at least at the time when they made their declarations.  Such statements, made in the proper format of a statutory declaration, must carry full face value. 

These declarations are supported by a declaration from Ms Porter.  She declares that her "interest in lingerie stems from approximately 1976 when (she) commenced collecting antique laces and textiles".  She has sold lingerie bearing the trade mark VICTORIA'S SECRET since 1983.  All goods sold bear both woven sewn-in labels and swing tickets as per samples attached to the declaration.  Purchase orders for 1983 and subsequent years are also annexed, and though they are couched in terms which do not identify the trade mark carried by the goods so ordered, the evidence as a whole leaves me in no doubt that the mark under which they were sold by the opponent was VICTORIA'S SECRET. 

By 1984, the opponent's business was beginning to attract newspaper mention.  The first unambiguously dated article exhibited is from the fashion section of the Daily News of 18.7.84.  That article notes "Gayle has produced only three collections but already Australia's fashion houses are clamouring for her specialised creativity".  The article quotes prices and identifies the sales outlets where "a sensational lingerie collection called Victoria's Secrets" is available.  The article notes that the clothing is an extension of Ms Porter's hobby of collecting antique textiles and laces, a hobby said to have commenced while she was in the United States.

A similar article in the Daily News of June 5 1985 makes the additional point that on her return she noticed what appeared to her to be a gap in the lingerie market.  The text of another article copied incidentally makes it clear that the Daily News is a paper which circulates in Perth.  A third mention is made in the same newspaper on 11.2.87, and there are others in the West Australian of 11.12.84 and 8.2.88.

I can also give some weight to newspaper articles noted in the margin with the comments "Western Mail 1983" and "Brisbane Courier Mail 1983", though handwritten endorsements cannot be given full weight unless they are confirmed in a statutory declaration. 

Sales for the years 1983 to 1990 have been analysed by state.  I note the sales for 1983 and 1984; $8,900 and $45,137 respectively.  In 1985 and the next three years the figures were $107,462, $106,191, $77,025 and $65,912, spread across all states and territories.  In physical terms this can be assessed from the prices of individual items:  the lowest unit price in any invoice tendered was $41.00, the highest $110.00.  Mr Caine drew my attention to the fact that the sales for 1987 and 1988, the key period prior to lodgement, actually fell markedly.

The opponent does not advertise directly, leaving this to her retailers, which range from Grace Brothers and David Jones to small boutiques.  The only date given for any promotion by a major store is for David Jones in 1989:  after the relevant date.  Some advertisements can be attributed to smaller retailers before the date of the present application, at least if regard is had to the note "advertisements placed by clients 1984 - 1985" at the head of the relevant page.  However, all of the shops concerned are in Subiaco in Western Australia, and no widespread public reputation is shown by those exhibits.

The other exhibits to Ms Porter's declaration satisfy me that at the present time the opponent's business is successful and well known.  However, they do not bear on the extent of the opponent's reputation at the date on which the present application was lodged.

Applicant's Evidence in Answer
The opponent relies in part on the declaration of Roy Raymond.  He declares that he founded VICTORIA'S SECRET (the business which was the predecessor of the applicant) in 1977.  Annexed to his declaration are samples of advertisements - hand endorsed as to date of circulation.  The earliest shown is apparently from the magazine Glamour for July 1979.  The text of the advertisement shows the opponent's trade mark and a description of the opponent's "luscious" "dreamy" and "enticing" lingerie.  It invites the reader to "Send $2 for full colour catalogue.  Dept GL-7" followed by a Post Office box address in California.

There are many similar advertisements with the same reference to sending $2 for the purchase of a catalogue.  The first of these shown in Mademoiselle is for September 1978.  Later advertisements refer to boutiques, and give either a street address or simply refer to the town or city in which they may be found.  Other similar advertisements from the magazines Vogue and The New Yorker are also exhibited.

One, though only one, advertisement (August 1981, in Harper's Bazaar) offers a particular line of clothing for mail order.  A one-piece undergarment known as a teddy is offered for sale in specified colours and sizes, with amounts given for the purchase price and for postage and handling.  The advertisement suggests that "CA residents add 6.5% sales tax".  I presume that CA is California, but the advertisement does not give the impression that it is aimed at readers outside the United States.  There is no reference to the cost of international postage, nor is the reader told how to remit funds to the United States - or even told that the price is expressed in U.S. dollars and not Australian.

Mr Raymond makes some entirely generalised references to requests for his former firm's catalogue from "several foreign countries" and to an "international clientele".  When those requests were made, and that clientele came to be, he does not say, except that it was before he sold the business in 1982.  However, and crucially, it is not even asserted specifically that the catalogues were requested from Australia or that the goods were ordered from this country.

Mr Raymond declares to sales for the years 1977 to 1982 - $150,000 rising to $6,000,000.  By that time the applicant had opened five stores in the United States, and catalogue sales are said to have made up half of its business.

Building on this base, Patricia McCabe declares that she has been advised by the relevant sales representatives that the magazines Vogue, The New Yorker, Harper's Bazaar, Glamour and Mademoiselle circulated in Australia in the period 1977 to 1982.  Sales figures provided to her on an average per month basis suggest that the total number of copies of the five magazines circulated in Australia in that period is 435,000.

A declaration by W. Brant Mossop goes to world-wide trade mark applications and registrations for VICTORIA'S SECRET held by the applicant.  These details seem to me to be entirely irrelevant, and I will not review them.

The applicant's final declarant in the evidence in answer is Grace Nichols.  She is an officer of the corporation of which the applicant is now a totally owned subsidiary.  Although she had, in December 1991, been with the parent company for only five years, she has made a declaration about events going back to the acquisition Mr Raymond's business by the parent company in 1982.  This is said to proceed, as Mr Caine pointed out at the hearing, from Ms Nichols being able to access the records of the parent company.

However, as Mr Garnsey pointed out, some aspects of Ms Nichols' evidence can be given little weight.  She gives no basis for her estimate of 4 million catalogues in circulation in 1982 and 5 million the next year.  The sales figure for the fiscal year 1982 is itself also only an estimate.   Though at 5 million dollars it is at least of the same order of magnitude as the 6 million quoted by Mr Raymond, I think it shows that Ms Nicholls' estimates can be less than accurate.

Ms Nichols asserts that "it is reasonable to assume that there were substantial VICTORIA'S SECRET catalog sales to Australia annually during the period 1982 - 1990".  Her belief is based on "estimated" catalogue sales to Australia in the twelve months November 1990 to November 1991.   There is no information as to how the 1990 - 91 sales were estimated to be "approximately" $46,000 - itself an insignificant part of the applicant's catalogue sales - let alone any explanation of the basis by which they have been extrapolated back to 1982. 

Let that issue be resolved here and now:  there either were or were not sales to Australia in 1982 and the following years up to the date on which the present application was lodged.  It is unsafe to assume that events in those years can readily be deduced from subsequent events.  While the declarant was no doubt sincere in her belief, held for whatever reasons and on whatever estimates seemed to her to be sufficient, there is no evidence before me on which I can form a similar conclusion.

Ms Nichols declares that "Catalogs bearing the VICTORIA'S SECRET trade mark are and have been distributed to customers by mail.  The VICTORIA'S SECRET lingerie catalog is distributed internationally including the United States, the United Kingdom and Europe."  A sample catalogue is annexed and I will consider it in detail.  I note however that the reference to "are and have been" distributed is not precise as to any date.  Thus, even though the next sentence is to the point that the countries of  distribution "include" those specified, and may perhaps include others, the declaration is silent as to distribution in Australia.  If there has been any, the date on which it commenced is unstated.

The annexed catalogue is titled "Autumn Preview VICTORIA'S SECRET" and the cover page gives the address as No 10 Margaret St London.  However, the first page inside the catalogue, a prominent half page insert, gainsays this appearance of a British origin.  It refers to "Your Free Gift" and the values are in dollars. 

Mr Caine stressed the reference, on the insert to which I refer, to a "Deluxe Gift Wrap" said to be available "Whether your gifts are for someone right next door, or on the other side of the world".  This, he said, makes it clear that the applicant's goods are being offered internationally.  However, anyone reading the catalogue and gaining the impression that international sales are really being sought will be disabused of this by the next paragraph, headed "Next Day Delivery".  Potential buyers are told "Call by 12 noon E.S.T. weekends (sic) for Federal Express next day delivery of you purchase or gifts virtually anywhere".  I very much doubt that this would be seen as an offer of next day delivery "virtually anywhere" unless that offer is constrained to the country of origin. 

This is followed by the telephone number 1-800-888-8200, which Mr Caine asserted at the hearing was an international toll free number.  At the hearing, Mr Garnsey countered this by asserting that in fact the number was toll free only for callers from within the U.S.A.  The latter view appears to be in keeping with the information on the order sheet which is also exhibited - and which is to be returned to Columbus, Ohio.  The further point that emerges to my inspection, and from my own knowledge, is that without a prefix to access the international telephone system, the phone number in question simply will not work for Australian callers. 

Such an obviously foreign phone number together with the reference to time zones, the text to which I have referred and prices expressed in dollars rather than pounds, would create a strong impression on anyone who may have encountered it in Australia.  It would suggest that the catalogue originated offshore, perhaps in the United States, and is aimed at customers in that country and not the United Kingdom or any other country. 

Thus for all that the catalogue invites buyers to purchase goods using "your internationally accepted VISA, MasterCard or American Express Card", I think that it is fair to say that the catalogue does not appear to be aimed at the Australian market.  It may be that readers who consider the fine print will conclude that there is no insuperable obstacle to them ringing or writing and ordering goods from an American company.  That, though, is a far cry from Mr Caine's picture of an international mail order campaign.

Another exhibit to Ms Nichols' declaration is an article from M magazine.  That article notes "anecdotal" evidence that "vast numbers of men" have taken to reading the applicant's catalogues "just to have a gander".  The article goes on to say that "a call to England gets only a recorded message", and makes it clear that the catalogue is delivered free ("junk mail") in the United States, though it is sold in the applicant's stores.  These matters are not formally evidenced, but I think it is fair to say that the party which introduces speculative or third hand material must be prepared to suffer from any adverse inferences to which the material gives rise. 

Opponent's Evidence in Reply
Ms Porter has made a second declaration.  She states that she "commenced sales of goods under the trade mark VICTORIA'S SECRET in 1983".  The earliest evidence for such a sale, for goods described only by reference to their type, is from a store called Vogue, which ordered goods to the value of $492 on 7.6.83.  Ms Porter also relies on invoices for incoming materials which her business, then trading as Cherchez, bought to manufacture the goods sold with VICTORIA'S SECRET labels attached to them.  The earliest such invoice is November 1982, while the latest invoice is dated August 1983.  The dollar amounts involved are small but the materials seem to be in commercial quantities:  132 metres of lace, 50 metres of knicker elastic and so forth.

Attached to her declaration are copies of other orders for materials coming into the business.  These seem to me entirely irrelevant as there is no means of knowing how or when the materials ordered were used.  Without such information I do not see how they can be given more than corroborative weight in showing if or when the use of a trade mark has commenced in relation to goods.

In the evidence in reply, the opponent has specifically declared that "at the time of commencement of my business Cherchez, which used the name Victoria's Secret as a trade mark ... I was unaware of any activities in trade or commerce by Victoria's Secret Inc in Australia or of any goodwill within Australia of that Company".

Ms Porter's evidence on oath
The applicant requested, on 9.11.92, that the opponent be summonsed for cross examination on her evidence.  The further comment of both sides was called for.

The opponent's attorney referred to the Patent, Trade Marks and Designs Office's Hearings Manual at chapter 2.7.1.  That section states, in relation to the analogous power under the Patents Act, that:

The Commissioner will not, either for his own purposes or at the behest of another party, summons a witness unless there is a very good purpose to be served, as the regulations specifically provide for the evidence to be in documentary form.  However, where there is evidentiary conflict on facts as distinct from opinions... the Commissioner may exercise his power under section 14 if it appears that the conflict could be resolved by taking oral evidence.

In the present instance there is no conflict of facts.  The applicant's attorney argued that in the evidence in reply the opponent has suggested, without stating, that the trade mark was conceived in vacuo.  This is to be put beside Ms Porter's having lived for some time in the United States to study at Cornell University.  The applicant had commenced to use its mark in the United States in 1978, and though the opponent had not said when she studied in that country the Registrar was prepared to concede that the resolution of the opponent's motives and knowledge in adopting the trade mark was relevant to the proceedings.

Ms Porter was therefore summonsed once the applicant had undertaken to meet her reasonable costs in appearing.  She appeared and swore an oath to tell the truth, the whole truth and nothing but the truth.  She was questioned by Mr Caine, and it is now clear that she studied in the United States in the years 1976 to 1982, returning to Australia in July of that year.

Ms Porter was adamant that she had coined the trade mark simply as a result of personal preference, "Victoria's" being a reference to a bygone era and also, in its simple form, the name of her daughter.  She denied that she had ever seen the applicant's shops, signs or catalogues.  She had not researched the trade mark in what Mr Caine called prominent international magazines, and could not recall having read Harper's Bazaar, Mademoiselle or Glamour, though she may have glanced at The New Yorker in a doctor's surgery or some similar context.

I can only agree with Mr Caine's concession that the testimony on oath negates any suggestion of dishonesty or fraud on Ms Porter's part.

Decision

Proprietorship
An application to register a trade mark can only be properly made by the proprietor.  On that subject, McGarvie J said in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd (10 IPR 402 at 413):

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
            ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

Put simply, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", per Holroyd J in Re Hick's trade mark (1897) 22 VLR 636 at 639. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation in the minds of those concerned of an impression that goods of a particular trader are being offered for sale in Australia.

It has not been shown that the applicant's catalogues were even circulating in Australia at any relevant date.  Even if that were so, the catalogue I have considered is not on its face an offer being made in Australia.  Perhaps my conclusion would be different if there was clear evidence that this offer, ambiguous at best, was circulated extensively in Australia, but as matters now stand it seems that the catalogue was neither circulated here nor intended for such circulation.

I have rejected the applicant's unsupported and speculative inference that there may have been catalogue sales to Australia in 1982 and later years.  There is simply no evidence that this was so or was reasonably likely to have been so, and I cannot use any lesser level of certainty for a positive answer to a question of law.

Nor are the applicant's advertisements in foreign magazines decisive.  Those advertisements were simply not directed to the Australian public.  Indeed, it is quite possible that the advertisements, if they were seen and considered at all, were misinterpreted as being for the sale (in the United States) of titillating reading material.  They are certainly open to such a view, and the applicant itself has produced material that shows that the catalogues may be sought as products in their own right.

I note Mr Caine's reference to the Boundy Insulations case 9 IPR 345. In that case, the opponent's goods had been advertised in trade journals which invited the reader to request further information on a range of products, and to which the applicant itself had responded. There was also the purchase of a sample of the goods by a third party resident in Australia. I do not see that the present applicant's ambiguous advertisements and allegations of sales and of catalogues in circulation are comparable with Boundy.

On the other hand I must accept that the opponent has been selling clothing bearing the trade mark VICTORIA'S SECRET in Australia in relation to lingerie since 1983.  Mr Caine accepted that the invoice dated 7.6.83 completes a picture of trade mark use as at that date.  That use renders the opponent as the proprietor at common law for those goods at least.

However, as the application includes goods other than lingerie I must turn to the opponent's contentions as relates to those other goods.

Section 28 - deception and confusion
In the first instance it is for the opponent to establish some conflicting reputation which might show that at the relevant date there was a real risk that use of the applicant's mark would be a cause of deception among consumers.  (Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592). That risk must extend to a substantial number of people (Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300).

Mr Caine argued that the opponent had not established any significant public reputation prior to the date of the application.  However Kendall Co v Mulsyn Paint and Chemicals, supra, at page 305, makes it clear that the likeliness of deception must be assessed among the class of purchasers to whom the goods are directed even if - per Hack's case 1941 RPC 91 at 104 - actual purchasers will not ultimately be deceived.

All that I can have regard to is the declared sales in the trade, some minor mentions in newspapers, and the corroborating declarations from traders.  The applicant's sales do not necessarily equate to goods seen or purchased by the ultimate consumers, but I think that, taken with the level of sales over time and the various trade declarations on which the opponent relies, the opponent had, by the time the present application was made, established a significant reputation in the trade itself.  That finding will trigger s 28(a) even when the threshold is set at the level of Kendall v Mulsyn, supra.

Mr Caine reminded me that those in the trade would not confuse the wholesale activities of the opponent with the mail order activities of the applicant.  None the less, the test is to ask what the applicant can do if it obtains registration.  The fact that at the relevant date the applicant may have been conducting its business in some less confusing way is neither here nor there.

On a more general level, counsel for both sides attempted to shed light on the workings of section 28 of the Act in the aftermath of the Moo case (New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385). Mr Caine relied on that case and on the Federal court decision in Settef v Riv-Oland 12 IPR 321. His view accords with the Registrar's present understanding of the situation, to the effect that the action of s 28(a) of the Act - to prevent the registration of marks liable to deceive or cause confusion - is limited by the action of s 28(d) to situations where the deception or confusion is the result of blameworthy conduct on the part of the applicant.

Mr Garnsey on the other hand argued that in such cases as Riv-Oland the incumbent proprietor was found to be the proprietor in law, and thus not able to be attacked under s.28(a) alone.  In any other case the action of s 28 (a) is not restricted by what he called "the Riv-Oland principle".

Mr Garnsey hinged his argument on the claim that, had the applicant sued Ms Porter for passing off in 1983 or 1984, its reputation would not have been sufficient for that action to succeed.  On the other hand the thrust of proprietorship law is that even a small amount of trade mark use can establish proprietorship while in the lack of any such use the claim rests on authorship of the mark, the intention to use it and the making of the application.

Accordingly, on goods other than lingerie the applicant is the proprietor and s 28(a) has only the limited effect left to it by the Moo and Riv-Oland decisions. 

I have found for the opponent on the question of the proprietorship of the trade mark in relation to lingerie.  The applicant's use of the mark after that came to be so would not be entitled to protection in a court of justice.  It is also my conclusion that use by the applicant of the trade mark VICTORIA'S SECRET in relation to lingerie would cause deception or confusion in the clothing trade.  Given these two findings the opponent has made out a case under s 28 in relation to lingerie, but to no other goods.  On goods other than lingerie the applicant is the rightful proprietor of the trade mark and no case has been made under s 28.

Conclusion
As to the disposal of the application, my conclusion is that the opponent has made its case with respect to lingerie.  If the application is not restricted, within one month from the date of this decision, by the exclusion of lingerie, it will be refused.

Costs
Mr Garnsey asked that, irrespective of the outcome of the opposition, Ms Porter be awarded costs to the extent of her airfare.  He argued that the cross-examination had not advanced the applicant's case, and that the applicant's counsel has conceded that the case is one of innocent misappropriation.  Nor should variations on the normal scheme of the regulations, framed to deal with written evidence, be encouraged where there is no conflict in that evidence.

Mr Caine countered by noting that authorship of a trade mark is one where motivation may be relevant.  This should not be decided on inference from declarations which are silent on the question, he argued.

However, in the first instance it is no more than sharp business practice to adopt the mark of a foreign trader.  As Williams J. noted in the case of Seven Up Co. v O.T. Ltd, 75 CLR 203:

in the absence of fraud it is not unlawful for a trader to become registered proprietor of a trade mark which has been used, however extensively, by another trader as a trade mark for similar goods in a foreign country, provided there has been no use of the foreign trade mark in Australia at the date of application.

On the other hand, there may come a point where that sharpness becomes fraudulent.  Cross examination might potentially have shown motives of the sort found in the SPUDS McKENZIE case, Anheuser-Busch v Castlebrae Pty. Ltd. (1991) AIPC 90-840. In that case Davies J reached the view, on the facts before him, that the adoption of a well-known foreign trade mark by Castlebrae was deliberately intended to deceive Australians who knew of the Anheuser-Busch trade mark. That is surely a finding of blameworthy conduct, but no such finding is open to me here.

It seems to me that the decision to cross examine Ms Porter was a reasonable one.  None the less the cross examination has failed to produce any result that might have assisted the applicant, and the applicant must accept the consequences of this. 

Potentially, each side has been partially successful, since the application should be able to proceed in a restricted form.  I therefore decide that each side should bear its own costs with the exception that the applicant should pay Ms Porter's airfare. 

Mr Garnsey was offered the opportunity to argue for costs in excess of the scale provided in the regulations, but did not pursue it.  The maximum amount payable for Ms Porter's fares must therefore be limited to the       amount claimable under the scale.

T. Williams
Hearing Officer