If your parents chose to give you the name Armani, when
you grew up could you open a boutique called "Armani"?
Not so simple, huh
Colette Hayman of Manly finds herself in an analogous pickle at
the moment, being sued by the fashion goddess Collette Dinnigan
over whether she can call her little accessories brand in Brookvale
Collette with two L's says she can't. The
Competition & Consumer Act (CCA) says
(well, it doesn't say this, the courts say that it says this)
that, if you develop a substantial reputation in a trading name so
that it's closely identified in the consumer's mind with
you, others cannot then purloin that name or anything similar and
in effect "trade off" your reputation and goodwill. The
legal risk is that punters will be confused into thinking that
Colette Accessories is in some way connected with Collette
Colette with one L says pish posh to that, not only does she
only have one L, but Collette D has no reputation in jewellery and
handbags, and anyway how can she stop me from using my own birth
name? What, Colette with one L might well ask, am I supposed to do,
change my name?
The case might turn on the fact that Collette with two Ls is
very well known for clothing but not so much for accessories. Our
extensive research (Google search) revealed a lot of flesh but no
handbags on the Collette Dinnigan website. But we did note that
Colette Accessories came up as Number 2 result in a
"Collette" search, so that's probably why the
Anyway, Colette might escape on the basis that they're not
really in the same business. But if the court finds otherwise, then
the question is whether Colette can be prevented from trading under
her own name.
The answer will be "yes", we expect. The CCA
doesn't distinguish between accidental and deliberate cases of
passing off. For example, it would make no difference if
Colette's parents had named her Colette for the express purpose
of causing confusion in the marketplace 30 or so years later, as
opposed to the probable reality that they just thought it was a
nice name (but only with one L).
To mislead, under the CCA, requires no intention. The test is
all about the effect, not what was meant. So, it's quite likely
that Colette with one L will be looking for a new name. As for
Collette with two Ls, seriously? Was it that big a deal?
Questions? Please give us a call.
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