Its section 43 ground relied on the likely connotation within the trade mark that there was an implied or inherent sponsorship of/between the applicant and opponent. The Hearing Officer noted that the respective industries were not closely related and that the trade mark is an ordinary English word would not result in such a connotation existing.
The opponent’s argument that the applicant did not intend to use the trade mark (section 59) were refuted and evidence showed some use had, in fact, occurred. The section 59 ground failed.
Under section 60, there was no dispute that the opponent held a significant reputation in its COSMOPOLITAN trade mark in relation to women’s fashion magazines. However, the applicant disputed that this would result in likely deception or confusion. The opponent was unable to convince the Hearing Officer that there was such a likelihood of deception or confusion as the relevant industries were ‘so different’ and the parties ‘very well-known in their respective industries’.
Finally, the opponent alleged that the application was made in bad faith (section 62A). The applicant and the opponent (a related entity) partnered for advertising campaigns in 2009 and 2010. At the end of the 2010 campaign, the applicant wrote to the opponent noting its intention to apply for the trade mark COSMOPOLITAN to be used as a colour of its Yaris cars.
The applicant claimed that the letter was merely a courtesy due to an ongoing business relationship, and noted that there was no response at all from the opponent at the time. However, this, in the Hearing Officer’s view, did not imply that the opponent was permitting the use or registration of the trade mark by the applicant. Further, the Hearing Officer took the view that the letter was an indication that the applicant was aware that applying to register COSMOPOLITAN may be a concern for the opponent.
On balance, the Hearing Officer concluded that whilst certainly not a matter of fraud or dishonesty, the applicant’s application did fall short of the ‘proper standards’ test and, on the balance of probabilities, the application was made in bad faith. The application is to be refused registration.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Litigation Team, Trade Marks Team
Trade Marks Team
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