In a recent decision of the Australian Trade Marks Office, Karen Walker Limited successfully opposed the registration of the mark 'Runaway the Label' for clothing, footwear and headgear (class 25) and online retail services (class 35). We focus here on Delegate's findings on deceptive similarity under s 44 of the Trade Marks Act 1995 (Cth).
Karen Walker is an internationally recognised New Zealand fashion designer with registered Australian trade marks for the word 'RUNAWAY' for clothing (class 25) and perfume (class 3), and the below "Runaway Girl" mark for eyeglasses, jewellery and clothing.
The Applicants (Premonition Designs Pty Ltd and Mamta Group Pty Ltd) are Sydney based designers and retailers of fashion targeted at young females and submitted that they had used the "Runaway the Label" mark since 2014.
Runaway the Label is Deceptively Similar to RUNAWAY
On the question of deceptive similarity, the Delegate noted that the first part of the mark is usually the most important. When considering the overall impression or imperfect recollection of an ordinary person, the Delegate found that the two marks, 'RUNAWAY' and 'Runaway the Label' were deceptively similar. Namely, that 'RUNAWAY' in each mark conveyed the same concept, namely escapism, independence and self-assurance. The non-distinctive additional words of "THE LABEL" did not, in the Delegate's opinion, "diminish the visual and aural dominance of the RUNAWAY element of the mark".
Also, the Delegate found that Karen Walker's class 25, but not class 3, were similar/closely related to the Applicants' goods/services in classes 25 and 35. In this regard, the Delegate noted that it is increasingly common for clothing brands to sell their goods on their own websites, which means consumers now expect that the clothes and the website service originate from the same owner.
Despite the Applicants' concurrent use of the mark, the Delegate found that while the Applicants' conduct in relation to adopting the mark was not improper or surreptitious, they did not show by way of evidence that their conduct was sufficiently 'honest' and therefore the 'honest concurrent use' defence was unavailable.
Key Takeaways
- The first word matters – it is the word that is most likely to be remembered by consumers.
- The addition of generic or descriptive words associated with the goods or industry is unlikely to give the mark its own distinctive character.
- It is always best to conduct searches before adopting a new mark to avoid legal issues later on and to ensure that your business develops a reputation in a distinctive and unique brand name. Our full-service team would be delighted to assist you to ensure you can avoid the challenges often faced by new and emerging designers in the fashion industry.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
