Mr Russell’s application for the below trade mark for clothing in Class 25 was opposed by Russell Brands LLC, the owner of the RUSSELL ATHLETIC brand and trade marks.
The applicant did not contest the opposition and the opponent put on evidence of its reputation in relation to clothing in Class 25. The opponent’s evidence included examples of its use since the 1920s and its continuous use in Australia since 1990, as well as its ‘very significant’ advertising and revenue figures.
Based largely on the strength of its advertising efforts and revenue in Australia, the Hearing Officer was satisfied that the opponent enjoys a reputation in the trade mark RUSSELL ATHLETIC such that the use of the above trade mark would lead Australian consumers, at the very least, to subscribe to a reasonable doubt as to some sort of connection between that two trade marks.
Interestingly, the Hearing Officer commented that ‘[t]he ordinary consumer would, in my view, be justified in holding the view that the applicant’s RUSSELL & CO trade mark had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s RUSSELL ATHLETIC trade marks.’
One suspects that had the applicant contested the opposition, it may have advanced arguments that it was using the RUSSELL element of its trade marks not to trade off the fame of the opponent, but as a badge of origin for Mr Russell’s goods…