On 24 January 2007, the Chancery Division of the High Court in Hachette Filipacchi Presse S.A. v Saprotex International (Proprietary) Limited  EWHC 63 (Ch), dismissed an appeal by the publisher of ELLE magazine against the registration of the trade mark ELLE in relation to knitting wools and yarns. The case affirms that if there is no similarity between the products, the 'likelihood of confusion' between the marks is unlikely.
Hachette Filipacchi Presse S.A. (HFP) is the publisher and distributor of ELLE magazine, a well-known fashion and lifestyle magazine for women, and the registered proprietor of the mark ELLE in respect of the magazine and women's clothing. The ELLE mark is registered in respect of periodicals relating to women and women's clothing and is also used for selling fashion, and other, goods. Knitting patterns have been published in both the UK and French editions of Elle Magazine as recently as 2001. Saprotex International (Proprietary) Limited (SIP) is a manufacturer of hand knitting yarns which are widely distributed to South Africa, Australia, New Zealand, the US and the UK. SIP sought to register the mark ELLE for knitting wool and yarn but its application was opposed by HFP; the opposition was dismissed by the hearing officer and HFP appealed.
On appeal, the Court found that the hearing officer had not made any mistake in his assessment of the distinctive character of HFP's mark and the degree of likely association between the marks. It held that the average consumer for knitting wool and yarn is “a mother or grandmother 50-60 years old knitting for her children or grandchildren"; while the magazine is for “independent and working woman having disposable income”. Therefore, the target audience of the magazine differed from those of knitting wool and yarn, with the average purchaser of knitting wool being unlikely to purchase ELLE magazine. If there was any association or confusion in the minds of customers, it would be only marginal. Since the association between two marks was not strong enough, it was hard to find any conclusion of unfair advantage that SIP might take from HFP's mark. Secondly, there was no recognisable degree of similarity between the goods; they had different uses, well separated trade channels and distribution processes, and neither was complementary to or in competition with the other. HFP's appeal was dismissed.
The mark ELLE has been used for more than fifty years in relation to fashion and lifestyle magazines. Undeniably, it has reputation created through time and across a particular section of society. However, the publication of knitting patterns in past editions of ELLE magazine was not sufficient evidence to establish a ground for refusal of registration of the ELLE mark in relation to knitting wools and yarns.