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11 Mar 2010

Registrar of Trade Marks turns up HEAT on magazines

by Mary Still

IP Australia has just released the decision of the delegate of the Registrar of Trade Marks in relation to the opposition by Giramondo against registration of the trade mark HEAT by Bauer (formerly known as Emap) (The Giramondo Publishing Company Pty Limited v Bauer Consumer Media Pty Limited [2010] ATMO 8).

The Giramondo trade mark HEAT has been registered since 21 September 2004 in class 16 in respect of "magazines in book form containing essays, fiction, poetry and reviews of the highest literary standards". The actual magazine had been published under the trade mark HEAT since 1996, and Giramondo's website had been promoting it since 1997.

Bauer is a UK company which commenced using the trade mark HEAT in relation to its magazine in 1999. There was some evidence that the first copies of the magazine were sold in Australia in 2001 and its website was launched in 2007. It sought registration in a number of classes including class 16 in respect of magazines.

Giramondo tried to prevent registration by using section 58 of the Trade Marks Act 1995, which allows registration to be opposed on the ground that the applicant for registration is not the owner of the trade mark. The opponent must demonstrate that:

  • the respective trade marks of the applicant and the opponent are either identical or substantially identical;
  • that the respective goods of both parties are "the same kind of thing"; and
  • that the opponent has the earlier claim to ownership based on use prior to whichever is the earlier of the application to register and the actual use of the mark by the applicant.

As the marks were clearly identical and the evidence showed that Giramondo's use of the mark preceded that of Bauer, the only question which remained was whether the goods were "the same kind of thing".

Bauer attempted to distinguish the term "magazine" as used in common parlance, which it suggested was used to connote a non-durable, popular periodic publication, from the words of the registration being "magazines in book form containing essays, fiction, poetry and reviews of the highest literary standard".

The Delegate relied heavily on the Macquarie Dictionary's definition of "magazine":

"a periodical publication, usually bound with a paper cover, containing miscellaneous articles or pieces, in prose or verse, often with illustrations."

She found that the definition did not suggest that there was any link, format or content limitation on what constituted a magazine and that magazines are published in many different ways and contain limitless array of content. She found that it was clear from the evidence of both parties that they both produced a periodical publication bound with a paper cover and contained miscellaneous articles in prose and/or verse often with illustrations. On this basis, it followed that the opposition based on section 58 was satisfied.

Other grounds for opposition based on reputation and an allegation that the use of the mark would be contrary to law were not upheld. The Delegate therefore refused to register Bauer's trade mark in class 16 but registration in other classes sought was approved.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.