In a decision issued by the Australian Trade Marks Office,
Stella McCartney Limited ("SML") has successfully opposed
the acceptance of the mark depicted below:
SML owns Australian trade mark registrations for STELLA, which
cover cosmetic and personal care products in Class 3. Mr Wong Kwai
Hua ("Mr Wong") sought registration for the mark depicted
above ("ST ELLA Stylised") in respect of a wide range of
goods in Classes 3 and 18, and a wide range of services in Class
44. The key issue was whether the marks STELLA and ST ELLA Stylised
are deceptively similar.
On that issue, the Hearing Officer found that the stylisation of
the ST ELLA trade mark gives "the initial impression that
the abbreviation "St" and the word "Ella" are
(and form) a unity. The fact that the initial letters of the trade
mark are the abbreviation "St" are, on a first
impression, not at all obvious". Consequently, he found
it a strong argument that a person aware of STELLA product, and
looking for goods sold under that trade mark, may mistakenly view
ST ELLA Stylised product as STELLA product.
He went on to point out that since STELLA is registered in block
script, it may fairly be used in other fonts. This includes
Kunstler script, which is a normal font within the suite of fonts
in MICROSOFT WORD. If used in that font the mark would be seen
If used in that form, the potential for confusion with the ST
ELLA Stylised mark becomes even more apparent.
Regarding the overlap in goods covered by SML's
registrations and those covered by the opposed application,
cosmetic products and personal care product were covered by both.
There was also agreement that the services of "hygienic and
beauty care for human beings" in Class 44 are closely related
to hygienic and beauty products in Class 3.
The description "cleaning" within "cleaning,
polishing, scarring and abrasive preparations" was interpreted
as not including cleaning products of a personal hygiene nature.
However, there was still a clash with "soaps" covered by
In the evidence, it was claimed that Mr Wong's company,
Melilea International Group of Companies ("Melilea"), had
used the ST ELLA Stylised trade mark in relation to a range of skin
care products, certain other personal care products, and beauty
services. It was claimed that use began in Malaysia in 2006 and had
commenced in Australia in July 2011.
An interesting aspect of the decision is that the Hearings
Officer did not offer to allow registration in respect of the goods
covered that were not similar to goods covered by SML's
registration. Neither did he offer registration in respect of
services covered that were unrelated to goods covered by SML's
registrations. This was because the evidence showed that personal
care products and services are Melilea's key interests. The
Hearings Officer commented that "I see no purpose in
offering the Applicant the opportunity to excise particular goods
and services from the Specification as those goods and services to
be excised constitute those which the evidence shows to be of
particular and immediate interest to him and I have not had the
benefit of argument from the parties about the excision of
particular goods or services".
Another interesting aspect of the decision is the finding that
despite Mr Wong declaring in his evidence that "My company
has no intention of using the Trade Mark in respect of perfumes in
Australia and only intends to use it in respect of skin care and
cosmetic products", this was not considered sufficient to
establish a lack of intention to use the trade mark on perfume.
This was due to the Hearing Officer's view that this statement
"made on 6 August 2012, casts no light on what the
Applicant's intention was over two years earlier on 7 May 2010,
the priority date of the application".
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.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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