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

Last Updated: 8 May 2014
Article by Catherine Logan

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.


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 respondent's "LOUIS V" trade mark was not deceptively similar to "LOUIS VUITTON". The court was not impressed that Louis Vuitton sought to rely on a two-paragraph affidavit from its solicitor, where each paragraph began with the words "I am instructed" and did not consider that this evidence established that the trade mark was "notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods".5 This level of reputational evidence, the court said, was necessary to include reputation in the assessment of the consumer's imperfect recollection for the purposes of s 120(1).

It is important to remember that the fame of a brand has actually been its downfall in this comparison in the past.6 It is unclear whether, if the evidence had been sufficient, this finding as to lack of deceptive similarity would have been any different.

It is also interesting to note that his Honour felt that he could take the applicant's reputation into account for the purposes of its claims under the Australian Consumer Law. He found that a consumer would be misled by both the "LOUIS V" trade mark and the flower mark, so the applicant succeeded on both those claims.


Stella McCartney Ltd succeeded in its opposition to the registration of "ST ELLA - NEW YORK" under s 44.7 This case has received some publicity, due to a submission by the opponent's representative that the marks had an aural similarity owing to the tendency for "persons, particularly in Australia, to be lazy in their pronunciation".8 Reading the full reasons, however, which are very detailed, Delegate Iain Campbell Thompson was really persuaded by the visual similarity of the two marks, which was as a result of the way in which the applicant had chosen to represent its mark (Fig 3).

Figure 3

This case was not an obvious one of an applicant trying to take advantage of a registered mark, with one of the applicant's founders and directors having the forename "Stella". However, the opponent's registered trade mark was in normal uppercase typed font. When rendered in the italic script of the applicant's mark, the two marks were held to strongly resemble each other.

The order of the letters was the same, and it was held that "the 'crossbar' of the alphabetical letter "t" extends across the space between the abbreviation "St" and the word "Ella", which gives the initial impression that the abbreviation "St" and the word "Ella" are (and form) a unity".9


While not as famous a fashion house as the last examples, German men's outfitter Bugatti GmbH (not to be confused with the French luxury automobile marque) has been involved in two actions in Australia in the last year. The first was an opposition and the second involved proceedings for trade mark infringement, both in respect of the trade mark "BUGATCHI UOMO".

The first case to be decided was Bugatti's application in the Federal Court10 for infringement against the owners of a menswear retail business in Melbourne that imported and sold clothing and accessories through a retail outlet called "Bugatchi Uomo". Justice Tracey ruled that in the context of clothing in class 25, both BUGATCHI UOMO and BUGATCHI alone were deceptively similar to the applicant's BUGATTI word trade marks, which had also been registered in class 25 (and in several other classes in respect of accessories, textiles and textiles goods, and the retailing of them).

Figure 4

In that case, the court held that there was visual and aural similarity between the two marks.

In the hearing of Bugatti GmbH's opposition11 to Canadian company Bugatchi Uomo Apparel, Inc's international application to register the word mark "BUGATCHI UOMO" in class 25, the delegate requested and received written submissions from the parties on the relevance of that judgment to the opposition proceedings.

Delegate Heath Wilson felt that he was bound by the decision of the Federal Court that the marks "BUGATTI" and "BUGATCHI" were deceptively similar when used in relation to clothing and that the addition of the word "UOMO" did not "serve to dissolve any confusion which might otherwise arise".12

The delegate nevertheless went on to consider in his judgment the aural and visual similarity of the marks, with the result that the opponent was successful in establishing its opposition on the s 44(2) ground. The delegate found that, on the evidence, the applicant failed to make out either the exception for honest concurrent use (s 44(3)(a)) or other circumstances (s 44(3)(b)).


1Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521; [2013] FCA 905; BC201312738. See the article by Sébastien Clevy in this issue of the Australian Intellectual Property Law Bulletin.

2He found that only three of the nine were deceptively similar.

3Louis Vuitton Malletier v WinWorld Australia Pty Ltd [2013] ATMO 46. See A McDonald, L Eade and L Lennon "Louis Vuitton Malletier v Sonya Valentine Pty Ltd: s 120(1) doesn't give a damn about Louis Vuitton's reputation" (2013) 26(6-10) Australian Intellectual Property Law Bulletin 131.

4Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933; BC201312983.

5Above, n 4, at [34], quoting from the judgment of the Full Court in CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42; (2000) AIPC 91-640; [2000] FCA 1539; BC200006518.

6Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354; [2009] FCA 606; BC200904981. See also C Logan "Mars fail to get up in get up case: Maltesers rolled down the aisle and out of court" (2009) 22(3) Australian Intellectual Property Law Bulletin 46; C Logan "Maltesers rolled again on appeal" (2010) 22(7) Australian Intellectual Property Law Bulletin 140.

7Stella McCartney Ltd v Wong Kwaid Hua [2013] ATMO 96; BC201316949.

8Above, n 7, at [51].

9Above, n 7, at [70].

10Bugatti GmbH v Shine Forever Men Pty Ltd (2013) 103 IPR 574; [2013] FCA 1116; BC201314200.

11Bugatti GmbH v Bugatchi Uomo Apparel Inc (2013) 104 IPR 348; [2013] ATMO 102; BC201316316.

12Above, n 10, at [41].

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Catherine Logan
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions