This is an opposition brought by Hearst Communications, Inc. against an application by H.A.G. Import Corporation (Australia) Pty Ltd to register the trade mark COSMOPOLITAN in relation to hand tools in Class 8 and a range of household goods in Class 21.
The opponent is the publisher of the magazine, COSMOPOLITAN and the opponent alleged that:
“The notoriety of COSMOPOLITAN has been recognised in overseas jurisdictions and the magazine has been referenced in popular culture on numerous occasions. It enjoys significant readership and generates significant revenue from both sales of the magazine and sales of advertising space within it.”
On section 44, the opponent named its prior COSMOPOLITAN trade marks in Classes 9, 14, 16, 21, 24 and 25. As the trade marks are identical, the question to be considered by the Hearing Officer was the similarity of the goods at issue. On this, the Hearing Officer took the view that the closest set of goods were those covered in Class 24, but even these were not so close that they should be considered similar. In coming to this view, the Hearing Officer noted that goods being sold within the same department store (in this case kitchen/dining ware v manchester) was not necessarily enough to make the goods similar. Accordingly, the section 44 ground failed.
The Hearing Officer was not willing to agree that COSMOPOLITAN magazine had acquired a reputation sufficient for her to consider it likely that consumers would expect home wares bearing the name COSMOPOLITAN were related to the magazine. The section 60 ground failed.
The remaining grounds also failed, with the Hearing Officer noting that the consistent use by the applicant of sub-brands under its MAXWELL WILLIAMS house brand (in this case COSMOPOLITAN is a sub brand of MAXWELL WILLIAMS) indicated that consumers would be likely to see COSMOPOLITAN as a trade mark in its own right.
The opposition failed on all grounds and the registration is to proceed.
To view the Office decision, click here.
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.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team