Federal Court Determines That “Double Patenting” Is Not a Basis for Revocation

Stella McCartney Limited v Wong Kwai Hua [2013] ATMO 96


Stella McCartney opposed the below trade mark application on grounds pursuant to sections 42, 43, 44, 59 and 60.

In brief summary, the opponent’s main arguments were as follows:

Section 43 – the ‘NEW YORK’ element of the applicant’s trade mark indicated a geographic connection that does not exist.  The opponent convinced the Delegate that use of ‘NEW YORK’ is ‘more likely deceptive than not’, however, the opponent did not discharge its onus to demonstrate that the ‘NEW YORK’ element would lead to deception or confusion.

Section 60 – the opponent enjoyed a reputation in the trade mark STELLA such that use of the applicant’s trade mark would be likely to lead to confusion or deception.  The Delegate was not convinced that the demonstrated use of the trade mark STELLA MCCARTNEY would necessarily mean that the opponent has a reputation in the trade mark STELLA.  Accordingly, this ground failed.

Section 44 – the opponent’s prior trade marks for STELLA were likely to be confused with the applicant’s trade mark.  The applicant argued that consumers would view its trade mark as ST (a common abbreviation for Saint) and ELLA (the applicant noted a Russian Orthodox Saint Ella as a source of inspiration for its trade mark) as separate words and that its claim for ‘cleaning preparations’ fell outside of any similar goods to those of the opponent’s prior marks.

Dealing first with the goods, the Delegate, after careful consideration of the relevant case law came to the conclusion that ‘cleaning preparations’ and ‘soaps’ (as covered by the opponent’s prior marks) were similar goods.

Finally, the Delegate turned to the question of whether ST ELLA and STELLA were likely to be confused by consumers.  The Delegate came to the view that ‘STELLA…strongly resembles the [applicant’s mark]’.  The opposition was, therefore, successful on the section 44 ground.

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