Fur flying in fashion cases: a roundup of last year's trade mark disputes involving fashion brands

This article was first published in the Lexis Nexis Australian Intellectual Property law Bulletin (newsletter) Volume 27 no 3 April 2014

As usual, the last year has seen its fair share of trade mark disputes involving fashion brands. Perhaps the highest profile case was Adidas AG v Pacific Brands Footwear Pty Ltd (No 3),1 in which the presiding judge had the unenviable task of deciding whether nine separate examples of sports shoes with four stripes were, or were not, deceptively similar to the applicant's trademark, which involved the use of three stripes.2 In this article, we take a look at some of the other cases.

LOUIS VUITTON

First out of the starting gates is Louis Vuitton Malletier, with two cases. The first3 came before a delegate of the registrar in June 2013. While the notice of opposition nominated a number of grounds, the opponent only proceeded under the s 60 ground at the hearing.

The marks in issue were as shown in Fig 1.

Figure 1

The applicant's mark was for wines and wine-based beverages. However, the delegate found that the reputation of the opponent's mark was such that the use of the first would nonetheless be likely to deceive or cause confusion. The opposition was successful on the s 60 ground. It is noted that there were no submissions filed on behalf of the applicant and there was no appearance by or for the applicant at the hearing. However, a Mr Wang of the applicant attended the hearing as an observer.

The second case4 involving Louis Vuitton Malletier was the subject of a judgment by Jessup J in the Federal Court in September 2013. In that case, the respondent was found to have infringed the flower logo trade mark of the applicant, Louis Vuitton Malletier, by using a deceptively similar mark on the arms of its sunglasses (Fig 2).

Figure 2

However, in this case, the court held that the...