A registered trade mark is a powerful tool against brand
dilution. Typically a registered trade mark provides its owner with
protection against other businesses using or registering a mark
which is "substantially identical" or "deceptively
similar" to the registered trade mark, provided it is for the
same or similar goods and services.
Three recent cases involving Hugo Boss, Botox and Twitter,
remind us that the ability for owners of well known marks to
protect their brand extends well beyond the usual tests.
Where a trade mark owner can establish that its mark has
acquired reputation in Australia such that the use of another mark
would be likely to deceive consumers or cause confusion, the trade
mark owner can prevent registration of the mark. This is the case
even if the second mark is not "substantially identical"
or "deceptively similar" to the first mark, and even
where the marks are used in relation to goods or services which are
not closely related.
Hugo Boss case
Hugo Boss successfully opposed the registration of the mark
"Bosspabini" in relation to clothing. The applicant for
the "Bosspabini" mark was seeking registration in
relation to clothing. The Trade Marks Office (TMO) found that the
earlier registered "Boss" and "Hugo Boss" trade
marks had acquired such a reputation in Australia that "a
significant number of consumers would at the very least experience
a reasonable doubt as to the existence of some sort of
connection" between the marks. The TMO therefore accepted that
the registration of the "Bosspabini" mark may lead to
consumer confusion based on the success of the earlier "Hugo
This is particularly the case in the modern world of brands
having "diffusion" lines and consumers being used to
there being a variety of sub-brands from the primary brand.
An applicant attempted to register a trade mark for
"No-tox" in relation to facial care products. The owner
of the well known "Botox" trade mark, Allergan, opposed
registration. The TMO rejected the opposition, and Allergan
appealed to the Federal Court.
In upholding the appeal and rejecting registration of the
"No-tox" mark, the Federal Court accepted that Allergen
had demonstrated that "Botox" had acquired such a
reputation that the use of the mark "No-tox" would be
likely to deceive or cause confusion amongst consumers. The court
considered there was a real and tangible danger that consumers
might view "Botox" and "No-tox" as
complementary products in the same way as the Coke and Diet Coke
Twitter successfully appealed to the Federal Court to prevent
registration of "Twitter Real Estate" in relation to real
estate advisory services. The point of interest is that the
application for "Twitter Real Estate" was not related to
the same services as those of the existing registered trade marks
for "Twitter", which were for instant messaging and
Twitter was able to show that given its reputation in the
"Twitter" trade mark, consumers would experience a
reasonable doubt as to the existence of some sort of connection
between the mark "Twitter" and "Twitter Real
Estate". This is likely to be particularly the case where the
only distinctive element of the second mark is the word
In order to establish substantial reputation, trade mark owners
need to rely on information such as high volumes of sales,
extensive advertising and promotion. Survey evidence can also be
used to establish consumer recognition of a brand.
These recent cases demonstrate the importance of selecting a
strong mark which does not bear resemblance to well known trade
marks, regardless of whether you operate in the same
The cases also highlight the value of having a highly recognised
brand which gives its owner additional means of protection to
safeguard its reputation.
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.
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