Advanced Magazine Publishers Inc v Paul Rigo  ATMO 200 (23 December 2020)
Advance Magazine Publishers Inc. (“Opponent”) has failed to prevent the registration of the trade mark VOGUE by Paul Rigo (“Applicant”) for a range of plumbing products and coffee machines in Class 11.
The Opponent is the parent company of Condé Nast which publishes Vogue Magazine. It opposed the registration of the VOGUE trade mark on the following basis:
- the trade mark is substantially identical with or deceptively similar to prior registrations owned by the Opponent for VOGUE including in respect of “bathroom furniture” and “coffee shops and cafes” (section 44)
- the Applicant is not the owner of VOGUE for plumbing products and coffee machines because the Opponent was the first user of the VOGUE trade mark for the “same kind of thing” as plumbing products and coffee machines in Australia (section 58)
- due to the reputation of the Opponent in the VOGUE trade mark, the use of VOGUE for plumbing products and coffee machines by the Applicant would deceive or confuse (section 60)
- the use and registration of VOGUE for plumbing products and coffee machines by the Applicant would be contrary to law (section 42(b))
- the word VOGUE has connotation such that its use as a trade mark for plumbing products and coffee machines is likely to deceive or confuse (section 43)
- the application had been made in bad faith (section 62A)
The Delegate determined that none of the above grounds had been established.
Although the trade marks in question are identical, the Delegate found that plumbing products and coffee machines are not similar to “bathroom furniture” and “coffee shop” services as covered by registrations for VOGUE owned by the Opponent. Interestingly, the Opponent made no submissions on this point even though the onus rests with the Opponent to establish a ground of opposition. On the other hand, the Applicant submitted that plumbing products and coffee machines are specialised goods offered through distinct trade channels. The section 44 ground was not established.
For similar reasons to the above, the Delegate held that the section 58 ground had not been established noting, that the relevant test for this ground is narrower than that under section 44. Section 58 requires use for the “same kind of thing” as opposed to “similar goods” or “closely related goods/services”.
The evidence of use filed by the Opponent in respect of the section 60 ground was sufficient to support a reputation in VOGUE in respect of fashion, interior design, home furnishing, improvement and renovation. This reputation was limited, however, to the advertisement and promotion of these goods with consumers not likely to take the “further step” of wondering whether the goods being advertised were associated with the Opponent even though they might recognise VOGUE as the name of the Opponent’s magazine.
Thus, the section 60 ground failed as did the ground of opposition under section 42(b).
The Opponent further sought to rely on its reputation in the VOGUE trade mark to press the ground of opposition under section 43 which requires a connotation arising in the trade mark which would lead to confusion. It was noted, however, that reputation is irrelevant to this ground as the required connotation must arise from the mark itself rather than any other trade mark.
The Delegate also did not find that this application had been made in bad faith. It was noted that the Applicant had been aware of the Opponent’s VOGUE trade marks and its registrations, however, he did not believe that these would pose an obstacle to his application given prior registrations for VOGUE owned by third parties for other goods such as tobacco, paint, and motor vehicles.
Overall, this opposition was unsuccessful due to failure of the Opponent to address key issues such as the similarity of the goods concerned and the risk of confusion which might result from its reputation in the identical VOGUE trade mark.
Read the full decision here.