Class 41: Online (electronic) publication of news

1. The Application was examined as required by s 31 and advertised for possible registration on 23 November 2023.
2. On 22 January 2024 the Opponents filed a Notice of Intention to Oppose the Application followed by its Statement of Grounds and Particulars ('SGP') on 20 February 2024. The Applicant filed its Notice of Intention to Defend the opposition on 28 March 2024.
3. Thereafter the parties filed evidence in accordance with the Regulations. The Opponents filed the following evidence in support:
   • Declaration of Feridun Hamdullahpur, Director of the AMTD Group of the Opponents, made on 29 June 2024, with Annexures 1 to 34 ('Hamdullahpur').

1. The Applicant filed the following evidence in answer:
   • Declaration of Dimitri Vorontsov, Director of the Applicant, made on 11 October 2024, with Annexures 1 to 13 ('Vorontsov').

1. The Opponents filed the following evidence in reply:
   • Declaration of Feridun Hamdullahpur, made on 17 December 2024, with Annexures A to B.

1. Once time for filing evidence had ended both parties were given an opportunity to either request an oral hearing or a hearing by way of written submissions. The Opponents requested to be heard via videoconference. As a delegate of the Registrar of Trade Marks I heard the matter on 24 June 2025. Sonia Stewart of Counsel, instructed by Sarah Dixon and Riya Mathew of FB Rice appeared on behalf of the Opponents. The Opponents oral submissions were supported by its written submissions filed prior to the hearing.

1. In the SGP the Opponents nominated grounds of opposition under ss 42(b), 58, 60, 62(b) and 62A.
2. The date at which the rights of the parties are to be determined is the filing date of 27 July 2022 ('Relevant Date') which is also the priority date for the purposes of s 60.
3. The Opponents bear the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

1. On 1 May 2025 the Opponents filed the declaration of Sarah Dixon, Solicitor of FB Rice, for the Opponents, made on 1 May 2025, with Annexure A, out of time. Material filed out of time may be considered pursuant to regs 21.15(4) and 21.19. Part 51.2.5 of the Trade Marks Office Manual of Practice and Procedure notes that a party must make a compelling case for giving such material weight when deciding the opposition. Important considerations are the nature and significance of the evidence put forward, including whether the material is critical to the outcome and whether that material is of high probative value.
2. The additional evidence consists of a decision before the World Intellectual Property Office Arbitration and Mediation Center Administrative Panel concerning the domain name lofficiel.au dated 16 April 2025. The Opponents state that the decision was not available during the evidence stage in the opposition.
3. In my opinion, a single decision in relation to a domain name from another jurisdiction, does not change the outcome of this matter, and therefore I have not had regard to the evidence filed out of time.

1. The first opponent AMDT Group is the holding company of AMTD IDEA Group ('AMTD IDEA'), a Hong Kong based financial services conglomerate. In April 2022 AMTD IDEA completed the acquisition of 100% equity interest in L'Officiel Inc. SAS, a French company that wholly owns the second opponent Les Editions Jalou ('LEJ'). LEJ is a limited company that was incorporated in 1984 in France and is the operating company of the Jalou family's publishing group, and through an acquisition became the owner of the iconic French fashion and lifestyle magazine L'OFFICIEL ('Magazine') which was first published in Paris in 1921.
2. Hamdullahpur avers that the L'OFFICIEL name and trade mark is a brand that has an established reputation and high level of recognition and influence which is exclusively associated with the Magazine. The Magazine was initially a professional trade magazine directed principally at international buyers of high fashion, both corporate and individual, and at those working in the fashion industry. In 1932, when Georges Jalou joined the Magazine as artistic director, the Magazine helped to start the careers of designers such as Pierre Balmain, Cristóbal Balenciaga, Christian Dior, and Yves St. Laurent, and came to be known as "the Bible of fashion and of high society".
3. Prior to the acquisition by AMTD IDEA in April 2022, the plain word trade mark L'OFFICIEL and the stylised trade mark ('LEJ L'OFFICIEL Marks') were used for the publication of the Magazine. After the acquisition the Opponents have used the LEJ L'OFFICIEL Marks and the stylised AMTD trade mark ('AMTD L'OFFICIEL Mark') (together the 'Opponents Marks').
4. Hamdullahpur states that as the Opponents' publication business evolved, use of its trade marks expanded in respect of a wide range of goods and services, including but not limited to books, magazines, printed publications, electronic publication of magazines, journals and reviews, provision of information via the internet, entertainment, sporting and cultural activities and online social networking services ('Opponents' Goods and/or Services').
5. Hamdullahpur declares that the Opponents have an extensive global trade mark portfolio comprising the Opponents Marks and other L'OFFICIEL composite marks in various combinations. The Opponents have registered or applied for trade marks in numerous jurisdictions including but not limited to Argentina, Brazil, Canada, China, European Union, France, Japan, Kuwait, Hong Kong, Monaco, Morocco, Oman, Qatar, Saudi Arabia, South Korea, Singapore, Taiwan, Turkey, United Kingdom, United States of America, United Arab Emirates, and Vietnam. In Australia, LEJ held registered trade mark rights for trade mark registrations 1429736, 1429738, 1429739 and 1429740. However, due to changes in internal staffing at LEJ these registrations were allowed to expire and renewal fees not paid. Hamdullahpur opines that it may have been the case that the renewals had been overlooked when the management of the portfolio was being transferred.

1. The Applicant is a company incorporated in the USA in the State of Delaware. Since November 2020 the Applicant has operated a publishing business in Australia under the Trade Mark, the trade mark LOFFICIELAU and through its website www.lofficiel.au.
2. Vorontsov declares that since the beginning of the Applicant's publishing operations in 2020 it has photographed and interviewed over fifty high and mid to low tier profile celebrities and is an independent entity to the Opponents' Magazine akin to how Vanity Teen operates independently from Vanity Fair.

Section 62A

1. Section 62A provides:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations of applications made in bad faith:
   • persons who monitor new property developments, register the name of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
   • persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and
   • persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. These illustrations are not exhaustive. In DC Comics v Cheqout Pty Ltd Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[4] Moreover, conduct after the priority date can be used to shed light on the Applicant's subjective intent at the filing date.[5]
2. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[6] Dodds-Streeton J made the following comments, quoting from Harrisons's Trade Mark Application:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton "the Robin Hood test". The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

... The words "bad faith" suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[7]

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant's mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[8]

1. In the SGP the Opponents particularise the s 62A ground of opposition as follows:

We are instructed that Dimitri Voronstov (also known as Dmitri Voronstov) is a director of the Applicant, Luxury Village LLC. Dimitri Voronstov was also a director of Cielo Publishing Pty Ltd and Perpetual Eight Group Pty Ltd, two former Australian companies that had the exclusive licence to publish the L'OFFICIEL magazine in Australia and New Zealand. Cielo Publishing held the exclusive licence from 2014-2016, and Perpetual Eight Group Pty Ltd from 2016-2018. Both licences have terminated and Cielo Publishing Pty Ltd and Perpetual Eight Group Pty Ltd were deregistered in February 2021 and July 2019 respectively.

Under the licences, Cielo Publishing Pty Ltd and Perpetual Eight Group Pty Ltd had the exclusive right to publish the L'OFFICIEL magazine and to use the L'OFFICIEL word and logo marks for the purpose of the publication of the magazine in print and digital form, and its related websites, social media pages and mobile sites in Australia and New Zealand, and were granted access to Les Editions Jalou's proprietary know-how about its branding guidelines (including font, typeface, size, colour etc, of the L'OFFICIEL trade marks) and contents.

As a result of the licensing relationship, Dimitri Voronstov is and was well-aware of the details of the Opponents' L'OFFICIEL trade marks, particularly the L'OFFICIEL word mark and the stylised logo marks which are widely used. As such, filing of the Opposed Mark is a filing in bad faith being an application that is substantially identical with or deceptively similar to the Opponents' L'OFFICIEL word and logo marks, in relation to the same or similar or closely related goods and services, to those which the Opponents' marks are used and have a reputation.

1. The Opponents submit that the facts in the present matter are similar to those established in Hard Coffee Pty Limited v Hard Coffee Mail Beach Pty Limited.[9] In Hard Coffee, Delegate Nancarrow, refused the registration of four applications on the basis that all four were made in bad faith, where the director of the applicant company was also a director of a company which had previously purchased a coffee shop from the opponent with an agreement that the opponent retained the rights in the intellectual property. The Opponents consider that the Hard Coffee decision is "on all fours" with the present facts.
2. Hamdullahpur states that the Opponents have used the L'OFFICIEL brand in Australia since at least 2014. The launch of the Australian edition of the Magazine, L'OFFICIEL AUSTRALIA, was announced to the public on or around 23 September 2014.[10] The premiere January 2015 edition of L'OFFICIEL AUSTRALIA was published in December 2014 by Cielo Publishing Pty Ltd ('Cielo')[11] the Licensee at that time. I have reproduced an image from the premiere edition below:[12]

1. Regarding the relationship between the Opponents and the Applicant, Hamdullahpur attests that in 2014 and 2016 respectively, LEJ granted two exclusive licenses conferring rights to use LEJ L'OFFICIEL Marks in publishing an Australian edition of the Magazine for distribution in Australia and New Zealand. The first license in 2014 was granted to Cielo and the second license in 2016 was granted to Perpetual Eight Group Pty Ltd ('Perpetual').[13] Hamdullahpur states that Mr Vorontsov, Director of the Applicant, was formerly a Director of both Cielo and Perpetual at the respective time when these two companies were the Licensees of LEJ.
2. Annexure 14 to Hamdullahpur comprises copies of the Exclusive License and Distribution Agreements between LEJ as the Licensor with each of Cielo and Perpetual respectively as the Licensee (the 'Cielo Agreement' and 'Perpetual Agreement'). Mr Vorontsov executed both the Cielo Agreement and Perpetual Agreement on behalf of the Licensees in his capacity as the Director and the CEO respectively.
3. Under the licenses with LEJ, Cielo and Perpetual had the right to use LEJ's L'OFFICIEL Marks for the publication of the Australia edition of the Magazine and its related websites, social media pages and mobile sites in Australia and New Zealand. The Licensees could also access LEJ's proprietary know-how which includes its branding guidelines (e.g., font, typeface, size, colour etc. of the LEJ L'OFFICIEL Marks) and contents. Hamdullahpur also highlights the following clauses in the Cielo and Perpetual Agreements:

Recital E and Clause 7.1 of the Cielo and Perpetual Agreement provided that LEJ was the exclusive owner of any and all rights over the titles and trade marks set out in Schedule 1 of the Cielo and Perpetual Agreement.

In clause 7.4 of the Cielo and Perpetual Agreement, Cielo and Perpetual acknowledged the exclusive ownership of LEJ of the title L'OFFICIEL, trade marks owned by LEJ identified in the Agreements, the Australian/New Zealand websites, the Australian/New Zealand Mobile Sites and the Australian/New Zealand Social Network Pages during the term of the Agreement as well as after its termination.

Clause 2.7 of the Cielo and Perpetual Agreement provided no rights were conferred to Cielo or Perpetual in the title or the trade marks owned by LEJ identified in the agreements.

Clause 7.5 of the Cielo and Perpetual Agreement provided:

During the term of this Agreement as well as after its termination for any reason whatsoever, the Licensee undertakes not to file, whether in Roman alphabets or any other alphabets, any of the Trademark or any similar, derived or composite trademark (including the translation in the Language used in the Territory nor the Trademark), for any type of product or service whatsoever, any Internet domain name, or any other right within the Territory or any other country. The Licensee further undertakes not to assist, directly or indirectly, any person or entity who makes an attempt to make such a filing.

Clause 17.8 requires that the parties undertake to ensure that:

Their representatives, employees and third parties which may intervene in any capacity within the scope of this Agreement comply with these provisions.

1. Upon the request of Cielo, LEJ agreed to early termination of the Cielo Agreement and Cielo's rights and obligations as the Licensee were transferred to and taken up by Perpetual as the Licensee under the Perpetual Agreement in 2016 and the Vorontsov Trust acted as guarantor to that agreement.
2. The licensing relationship between LEJ and Perpetual was formally terminated when Perpetual failed to pay licensing fees under the Perpetual Agreement and termination letters dated 23 November 2016 addressed to Cielo and 28 November 2016 addressed to Perpetual were issued by LEJ. Subsequently Perpetual was deregistered in July 2019 and Celio deregistered in February 2021.[14]
3. Hamdullahpur states that upon termination of the licensing relationship with LEJ, Mr Vorontsov as Director of the Applicant, Cielo and Perpetual ceased to have any rights to use LEJ L'OFFICIEL Marks. No other contractual agreement had been entered into between Cielo, Perpetual, the Applicant and/or Mr Vorontsov in his individual capacity with the Opponents. Likewise, neither the AMTD Group nor LEJ have ever had any past or present licensing agreement or arrangement with the Applicant, in Australia prior to or after the Relevant Date. Hamdullahpur avers that despite the cessation of the licensing relationship between LEJ and Cielo and between LEJ and Perpetual, Mr Vorontsov has, through the Applicant, continued to use the L'OFFICIEL trade mark to represent and market its fashion publication business. Moreover, the Applicant and Mr Vorontsov have operated several websites including https://lofficiel.com.au/ and https://lofficielmontecarlo.com/ for the publication of its magazine editions in Australia and Monte Carlo, which have not been authorised by the Opponents.
4. In response, Mr Vorontsov declares that the Applicant has registration and protection of its Trade Mark in Monaco and with the European Union Intellectual Property Office and filed the Application for the Trade Mark in Australia. Vorontsov claims that LEJ forfeited all of its trade mark rights in Australia for trade mark 1429739 on 9 June 2011.
5. Mr Vorontsov states that the term L'OFFICIEL is considered generic in French and claims that AMTD IDEA is attempting to rebrand the name L'OFFICIEL which has been tarnished by its association with LEJ's numerous criminal and civil cases. Mr Vorontsov sets out LEJ's court cases in France and in the City of New York and states that despite these proceedings LEJ has continued to sell trade mark licenses globally. Moreover, Mr Vorontsov suggests that as per the Versailles Court of Appeal decision dated September 2024, LEJ would not have been legally able to enter into any contract in 2014 with Cielo or Perpetual or authorise any signatures by Dimitri Vorontsov without the prior approval of the French Court due to bankruptcy proceedings. As such, any contracts purportedly entered into during this period would not have been legally valid or enforceable, and are therefore inadmissible as evidence to establish any legal relationship between the parties.
6. Mr Vorontsov states that the Opponents cannot claim exclusive rights to the 'Didot' font used in the Trade Mark as it is freely and publicly available and is widely used in the logos and trade marks of numerous prominent brands including Vogue and Bazaar.[15]
7. I am satisfied that the Opponents' evidence demonstrates that at the Relevant Date the Opponents' L'OFFICIEL trade mark had been in existence since 1921, and the Opponents' Goods and Services are provided to a global customer base directly and indirectly under this trade mark. It is also apparent that the Applicant at the Relevant Date had full knowledge that the Opponents L'OFFICIEL stylised trade marks were represented in 'Didot' font and used by the Opponents and its affiliates to provide the Opponents' Goods and Services which are the same or similar to the Applicant's Goods and Services.
8. The evidence before me indicates that Mr Vorontsov the Director of the Applicant, was aware of the Opponents legal position in relation to its trade marks because of his prior dealings with the publishing companies Cielo and Perpetual. Mr Vorontsov executed both the Cielo Agreement and Perpetual Agreement on behalf of the Licensees in his capacity as the Director and the CEO respectively. As signee to the Cielo Agreement and Perpetual Agreement, Mr Vorontsov had prior knowledge of the Opponents' use of its trade marks and his conduct in respect of filing the Application was contrary to these Agreements which provided that the Licensee undertakes not to file for the Opponents trade marks or any similar trade mark for any type of product or service whatsoever, any Internet domain name, or any other right within the Territory or any other country. Moreover, the Licensee further undertook not to assist, directly or indirectly, any person or entity who makes an attempt to make such a filing. Having agreed to the terms in the Agreements, Mr Vorontsov as Director of the Applicant clearly applied to register a trade mark which prominently features a trade mark which he has previously recognised as the property of the Opponents.
9. The strength of the Opponents' evidence is sufficient to shift the onus to the Applicant to respond. The Applicant motivated by LEJ's numerous criminal and civil cases claims that LEJ would not have been legally able to enter into any contract in 2014 with Cielo or Perpetual. However, the Applicant has provided no cogent evidence of the Opponents status in Australia and the court proceedings referred to are all in criminal and civil courts in other jurisdictions. The Applicant also highlights the failure of the Opponents to maintain some of its global portfolio of trade marks on the respective Registers, however, for any of the trade mark registrations the Opponents had in Australia that were not renewed or lapsed, the Opponents retain its common law rights.
10. I find that a reasonable person standing in the shoes of the Applicant should have considered themselves constrained from applying for the Trade Mark on the basis of the previous dealings between the Opponents and Director of the Applicant company and that in all the circumstances surrounding this matter, the Application was made in bad faith.
11. The Opponents have established the s 62A ground of opposition.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponents have established a ground of opposition in terms of s 62A. I refuse to register trade mark number 2289204 one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court's order or direction.

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') or regulation of the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] [2013] FCA 478, [62].

[6] [2012] FCA 81.

[7] Harrison's Trade Mark Application [2004] EWCA Civ 1028.

[8] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147], [165]-[166].

[9] [2009] ATMO 26, (Delegate Nancarrow) ('Hard Coffee').

[11] Hamdullahpur [24] to [25], Annexure 12.

[12] Hamdullahpur, [41], Annexure 17.

[13] Hamdullahpur [24] to [25], Annexure 12.