TOD’S S.P.A. V JIANG & HOU PTY LTD. [2015] ATMO 5

Applications for VANESSA HOGAN and the below VANESSA HOGAN and Device trade marks were opposed by Tod’s S.p.A. The opponent is the owner of a number of prior ‘HOGAN’ trade mark registrations in Australia that cover the same goods as the VANESSA HOGAN applications.

The Hearing Officer was convinced by the opponent’s evidence that it enjoys a very extensive and long standing reputation in its HOGAN trade marks, certainly sufficient to fulfil the first element of an opposition under section 60; ‘the existence of a significant reputation in Australia for its HOGAN trade marks before the priority date of the opposed trade marks’.

The second element of an opposition under section 60 was then considered by the Hearing Officer; whether deception or confusion is likely to arise, was then considered by the Hearing Officer. The Hearing Officer noted her concern that a significant number of Australians would retain a reasonable doubt as to a potential connection between the applicant and opponent due to the common HOGAN elements, and concluded that ‘[t]he ordinary consumer would, in my view, be justified in holding the view that the applicant’s VANESSA HOGAN trade marks had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s HOGAN trade marks’.

The opposition was successful under section 60 and the applications are to be refused.

To view the Office decision, click here.