Johnson & Johnson v Kalnin

REASONS FOR JUDGMENT This is an appeal, as it is called, under the Trade Marks Act 1955, from a decision of a hearing officer of the Registrar of Trade Marks dismissing the applicant's opposition to the respondent's application for registration of a trade mark in respect of "ladies' clothing and men's casual wear". The mark combines a double shield surmounted by complicated decorations and bearing the letters "EV" with the word in block letters "EUROVOGUE". This embellished composite is represented in the mark in the following manner: The opposition maintained by the applicant relies on ss 28(a) and 33 of the Act. The respondent's application for registration was filed on 27 February 1991, and had been accepted prior to 1 January 1996. Accordingly, by operation of s 241(2) of the Trade Marks Act 1995, the Trade Marks Act 1955 ("the Act") applies to these proceedings. Section 28(a) provides: "A mark: (a) the use of which would be likely to deceive or cause confusion; … shall not be registered as a trade mark." Under s 28(a) of the Act, the applicant points to the wide reputation of the name "VOGUE" through the VOGUE magazines of which it is the publisher in Australia and Singapore, particularly VOGUE Australia, which is issued here regularly. Two overseas VOGUE magazines, VOGUE Paris and the United Kingdom VOGUE, are also distributed in Australia. The word "VOGUE", printed in capital letters, has for many years been registered as the trade mark of the applicant in respect of periodicals and magazines. Written in the same way, it is also the subject of a defensive registration under s 93 in respect of clothing. Until the closing submissions, it was suggested there was as well another defensive registration, but it was finally accepted that at the relevant date there was just the one. The word "VOGUE" in big capital letters is used as the name and cover title of each of the magazines to which I have referred. In the case of VOGUE Australia, the word "Australia" has been added in extremely small capital letters running vertically downwards within the oval-shaped centre of the very large letter "O" in the very large word "VOGUE". This device makes the word "VOGUE" dominant, while at the same time drawing attention, quite strikingly, to the fact that the title is not "VOGUE" alone, but VOGUE Australia. The title of VOGUE Paris is written in a similar way, except that the shorter word "PARIS" is written horizontally and not vertically, within the letter "O". For some reason, which was not disclosed, the United Kingdom VOGUE magazine is titled simply "VOGUE". All of the magazines could fairly be described as glossy magazines, printed on high quality paper, containing many photographs, particularly in advertisements displaying fashionable clothing and accessories. VOGUE Australia endeavours through constant contacts with fashion designers and traders, travel in Europe and America, and in other ways, to keep abreast of developments in fashion. It claims to be the leading fashion magazine in the area of women's and men's clothing and accessories. There is obviously great commercial value for the applicant to be obtained by creating the impression that clothing and accessories featured in VOGUE Australia have a special cachet. The magazine has been successful in attracting as advertisers very many of the best known names among manufacturers of perfumes and cosmetics, jewellers and designers of clothing and accessories. Numbers of these names are associated with France or with other European countries. A substantial proportion of the pages in each issue of the magazine is devoted to fashion. The magazine also maintains its links with the Australian fashion industry in various ways. The editor involves herself in awards, fashion shows, parades and exhibitions. The applicant has also engaged itself in the production of promotional material for use by advertisers in VOGUE Australia. Typically, this material identifies the advertiser's goods as having been portrayed in the magazine. It includes show cards, posters, banners and swing tags. As an example, the form of swing tag used is a card about 11 centimetres long by 2˝ centimetres wide, wholly taken up on each side by the word "VOGUE" written in block letters, with the words "as seen in" contained within the letter "O". The applicant has also licensed a company Butterick Company Pty Limited ("Butterick") to use the trade mark "VOGUE" on dressmaking patterns manufactured and sold by it. Butterick is a registered user. The patterns are paper patterns from which garments may be cut and made up by the purchaser. When a dress has been made up, there is frequently a label available for attachment to it, such as "Vogue Paris Original". A number of statutory declarations were admitted into evidence to show that persons associated with the fashion clothing industry would regard the word or mark "EUROVOGUE" appearing on garments as indicating a connection with the VOGUE Australia magazine. But none of them seems to have been asked to look at the actual mark in question here, with its prominent shield, decoration and letters EV as well as the word "EUROVOGUE". The weaknesses of evidence of this kind have frequently been pointed out. Although I will take it into account, the ultimate decision must be for the court. I take a similar attitude to a number of corresponding, but opposite, opinions tendered on behalf of the respondent. The respondent's application for registration of its elaborate mark, as I have said, relates to ladies' clothing and men's casual wear. The word "EUROVOGUE" had been coined by the respondent, the Managing Director of Apparel Marketing Pty Limited ("Apparel"), a manufacturer, wholesaler and retailer of clothing, mainly ladies' wear. She thought she had devised a compound word suggesting fashion or style having a European influence. She did not associate it specifically with the applicant's magazine, although she was, of course, aware of the existence of that magazine. The mark was first used in Australia on 10 October 1989, and has since been used continuously, and, except for a relatively small use of variants of it, exclusively of any other mark, by Apparel as a trade mark in respect of various ladies' garments and men's shirts in most parts of Australia. The mark has been applied so as to appear with prominence. From 10 October 1989 to 31 October 1994, over 157,000 items at a sales value exceeding $8 million were sold under the mark. Precise figures for the period up to 22 February 1991 have not been extracted, but the material before me enables me to deduce that approximately 32,000 items were sold in that period at a sales value exceeding $2 million. The respondent has provided positive evidence, which I accept, that no instance of actual confusion between her mark and the trade mark "VOGUE" has been reported to her, and that no customer or supplier has ever asked her whether there is any connection between her business and the VOGUE magazine business, nor is she aware of any such query made to any member of her staff. This evidence was brought up to date by an affidavit sworn 17 November 1997. Of course, at least so far as customers at the wholesale level are concerned, the fact that the applicant publishes magazines, and does not manufacture or sell clothing, is likely to be well understood, and to eliminate any risk of confusion or deception at that level. The real question, I think, relates to the retail level, and to the possible perceptions of persons purchasing garments in boutiques through which, very largely, sales are made, or in other shops. There is evidence, but I hardly think it was necessary, that the word "vogue" is commonly used in business names or trade marks having some connection with fashion, furnishings or the decorative arts. The date of the application, 27 February 1991, is the date as at which the application is to be determined, not only under s 28 but also under s 33 of the Act. On that ground, objection was taken to some of the evidence relating to the period between 27 February 1991 and the date of the hearing. But it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. The question whether the opposed mark was, at 27 February 1991, a mark "the use of which would be likely to deceive or cause confusion" may be answered, in part, by reference to evidence about what actually happened when the mark was used over a subsequent period of years. Although it may be a mystical idea that, as the poet Thomas Campbell wrote, "coming events cast their shadows before", it is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 439. As his Honour pointed out, the onus must be borne in mind, and also the difficulty in obtaining evidence of confusion or deception. These considerations are perhaps peculiarly applicable to a small, relatively cheap, item such as a packet of bandaids. But ladies' garments are often bought after a great deal of consideration and some discussion with sales staff. I think there is significance, in relation to goods of this kind, to be attributed to the evidence that trade in a substantial amount, over a considerable number of years, has proceeded without a single instance of confusion or deception coming to the notice of a witness who should surely have heard of it if it had happened, at least if it had happened on more than an isolated occasion. In In the Matter of an Application by Alex. Pirie and Sons Ld. to Register a Trade Mark (1933) 50 RPC 147 at 160, Lord Tomlin (with whom Lord Russell of Killowen and Lord Wright agreed) said: "It is the user and not the registration which is liable to cause confusion, and the commercial user has not produced any proof of confusion. This fact cannot be regarded as unimportant even though allowance be made for difficulty of proof … ." The central propositions relevant to the court's task in opposition proceedings were stated by Kitto J, in an often cited passage, in Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1953) 91 CLR 592 at 594-595: "(i) In all applications for registration of a trade mark, the onus is on the applicant to satisfy the Registrar (or the court) that there is no reasonable probability of confusion. (ii) It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring (Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 C.L.R. 84, at pp. 94, 95; Sym Choon & Co. Ltd. v. Gordon Choons Nuts Ltd. (1949) 80 C.L.R. 65, at p. 79) - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v. Scarlett (1937) 57 C.L.R. 115, at p. 120.) (iv) In applications for registration, the rights of the parties are to be determined as at the date of the application. (v) The onus must be discharged by the applicant in respect of all goods coming within the specification in the application (pursuant to s. 32(2)) of the goods or class of goods in respect of which the registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?" Applying these principles to the present case, it seems to me that a conclusion as to whether there existed "a real, tangible danger" of confusion occurring, taking account of all the surrounding circumstances, including the reputation acquired by the name VOGUE (see Johnson & Johnson v Kalnin at 438), requires some attention to be paid to the nature of the relevant trade. At the wholesale level, it is to be expected that proprietors of boutiques, and other shops in which garments bearing the opposed mark will be sold, will have some knowledge of VOGUE Australia magazine, and probably of VOGUE Paris and the United Kingdom VOGUE as well. But they will be in no doubt that these are Australian made garments which will be offered to them, and that the trade mark and title "VOGUE" is used by the applicant in Australia in respect of a magazine, not garments. They may know of the practice of attaching swing tags to garments featured in VOGUE Australia, but the opposed mark makes no suggestion of that kind about the garments sold under it. The word "EUROVOGUE", in relation to the garments produced by an Australian company, involves no real or tangible danger of suggesting an association with any magazine on the other side of the world, such as VOGUE Paris, and it is plainly different from the name of VOGUE Australia, or the mark "VOGUE" as used in Australia. "EUROVOGUE", though containing "VOGUE" as a syllable, does so in a new word with a new meaning. It is not like "Polo Club", where the original meaning of "Polo" is retained and is dominant, so that a product labelled with the two words may be taken as merely the "club" version of the Polo product. Cf Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 at 230. "VOGUE" is altogether too indefinite a word, in this context, to have that sort of distinctive impact. Its meaning is particularly vague when it is combined with "Euro", since a pan-European vogue would be very hard to envisage. If one turns, then, to the consumer who may purchase an item of ladies' clothing or men's casual wear in a boutique or other shop, several considerations have to be remembered. In the first place, if the purchaser looks at the opposed mark, its appearance is in no way reminiscent of the cover title of the magazine. Counsel for the applicant suggested the block letters were similar, though they are not identical, but there is nothing special about these letters. "EUROVOGUE" is printed in a well known and quite ordinary font, referred to as "Dutch". Indeed, the evidence is that the letters were chosen for their ready availability. But the real point is that the most cursory sight of the opposed mark, and the most imperfect recollection of it afterwards, could hardly denude it of the two shields, the embellishments, and the added letters "EV" involved in it. It is not simply "EUROVOGUE". This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies' clothing and men's casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual. Thus "the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods", mentioned by Kitto J, are factors which, in the present case, place particular emphasis on the appearance of the opposed mark, and the great difference between its impression of ornateness and the simplicity of the applicant's mark and title. The importance of observing the impact that appearance may make is emphasized by the case Kitto J cites in the quoted passage: Jafferjee v Scarlett (1937) 57 CLR 115. There, Latham CJ (at 120-121) and Dixon J (at 126) make it clear that the appearance of the mark, as it would be seen in the ordinary course of trade, is an important matter - Dixon J describes it as "the more important" of the two considerations influencing his decision. See also Johnson & Johnson v Kalnin at 439, and the case there cited, Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 395. To the extent that the opposed mark may be referred to by word of mouth, as "EUROVOGUE", the accent will naturally fall on the first syllable. That, in itself, will emphasize the compound word as something different from the title and mark "VOGUE". In In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ made the observation: "But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction." Much the same may be said of Australian English: Johnson & Johnson v Kalnin at 441. Sometimes a degree of dissonance between marks in sound and (speaking figuratively) in appearance may be balanced by an identity or close similarity in what has been called the "idea of the mark" - see Jafferjee v Scarlett at 121, per Latham CJ; Johnson & Johnson v Kalnin at 439. But the mental associations conjured up by the word "VOGUE" are not specific to a continent, and to the extent that they may be concentrated on a place, that place would be a city such as Paris or Milan or a country such as France or Italy. "EUROVOGUE" suggests some sort of broad commendation as modern and in accordance with European trends and fashions. Certainly, the two marks have in common their reference to the fashion of the moment, but they make that reference in a different context. Furthermore, the cited mark is well known in relation to magazines. A fashion magazine is very much a mirror held up to the fashion of the moment. It may be a perfect mirror, but even if the image may look real, no one mistakes the mirror itself for the thing reflected in it. Persons who know of the "VOGUE" mark know of it as the name of a magazine about clothing, accessories and fashion, not as the name or mark of garments. Undoubtedly, a number of people will know that VOGUE Australia attempts to bestow some sort of cachet on manufacturers who advertise in the magazine, or whose products are featured in it, by way of swing tags and other promotional material. But I do not think the word "EUROVOGUE" would be at all likely to associate the respondent's products with that kind of promotion which, in Australia, is clearly related to the magazine VOGUE Australia. Nor, because they are Australian goods being sold in Australia, could sale by reference to the respondent's mark be realistically seen as suggesting any association with European VOGUE magazines. In my opinion, "EUROVOGUE", when used by the respondent, will convey the impression of a smart, perhaps somewhat evocative, name for Australian goods. I agree with the hearing officer that ordinary buyers are not likely to take an expression like "EUROVOGUE" literally, and I think I am entitled to take into account, in accepting that view, the hearing officer's special experience: see Alex. Pirie & Sons at 158. At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse. As Gummow J emphasized in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 379, "it is for [the respondent] to satisfy the court that there is no reasonable probability of confusion". But this, of course, is on the basis of use "in a normal and fair manner": In the Matter of an Application by Smith Hayden & Coy., Ld. (1945) 63 RPC 97 at 101. If the word "EUROVOGUE" is abstracted from the total mark of the respondent and then used in a way which is deceptive in relation to the cited mark, as Sargant LJ pointed out in London Lubricants at 280, registration of the mark will not prevent the bringing of an ordinary action for passing off. I am satisfied that the respondent has discharged her onus under s 28(a). I turn to the question under s 33(1), which reads: "Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark." The comparison required to be made in respect of the cited mark and the mark sought to be registered, for the purposes of s 33, is between the statutory rights of use; it is not a comparison of the actual modes of use. Assuming use by the proprietor of the registered trade mark which has been cited, in a normal and fair manner, in respect of any of the goods covered by its registration, the question is whether the court is satisfied that there will be no reasonable likelihood of deception or confusion amongst a substantial number of persons if the mark sought to be registered is also used by the respondent normally and fairly in respect of the goods which would be covered by its registration. See Johnson & Johnson v Kalnin at 440. It is obvious that, although the question is not identical with that which I have already considered under s 28(a), there are areas of overlap. For reasons which have essentially been made plain by my discussion of the issues raised under s 28(a), I am satisfied that there will be no reasonable likelihood of deception or confusion of the relevant kind. Accordingly, the application is dismissed with costs. It is unnecessary to consider the argument raised by the respondent under s 34(1), although I should indicate that, if it had been necessary to deal with that argument, there would, in my opinion, having regard to the honesty of the respondent, have been much to be said for it, despite the shortness of the period of concurrent use involved.