Having a prominent reputation as a high end, international fashion label, may not be able to prevent trade marks similar to their own from being registered in Australia, unless they are able to produce quality evidence establishing that their branding is recognised in Australia.
Trade mark applications for the words CHRISTINE McQUEEN and the CMQ logo (pictured below) were filed by Metropolitan Investment Group Pty Ltd (Applicant) in 2012, for various goods and services including the retailing and wholesaling of clothing, footwear and headgear. The applications were opposed by Autumnpaper Limited (Alexander McQueen), the owner of high profile fashion label Alexander McQueen. The opposition identified a number of registered trade marks owned by Alexander McQueen, being ALEXANDER McQUEEN word marks and device marks for “CQ” and “McQ” (pictured below).
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L-R: the Applicant’s CMQ logo, Alexander McQueen’s CQ logo and McQ logo
Alexander McQueen argued that the Applicant’s marks were deceptively similar to the Alexander McQueen marks and had been filed in respect of similar goods and services. They also argued that the Alexander McQueen marks had acquired a reputation in Australia such that use of the Applicant’s marks would be likely to deceive or cause confusion, and that the Applicant’s trade mark applications had been filed in bad faith.
At a hearing before the Australian Trade Mark Office recently, the hearing officer held that Alexander McQueen had not established any of the claimed grounds of opposition. The CHRISTINE McQUEEN and CMQ logo trade mark applications were allowed to proceed to registration.
The hearing officer was not persuaded that CHRISTINE McQUEEN was deceptively similar to ALEXANDER McQUEEN, as McQueen is not so unusual a surname in Australia, that its use would necessarily cause deception or confusion. The hearing officer was also not satisfied that the Applicant’s logo was deceptively similar to either of Alexander McQueen’s device marks.
Alexander McQueen has had significant press coverage, with its designs being worn by various celebrities including the Duchess of Cambridge at her wedding to Prince William. While sufficient evidence was produced to establish that ALEXANDER McQUEEN had a reputation in Australia, Alexander McQueen did not produce evidence to show that it had such a long standing reputation that would cause the Christine McQueen brand to be perceived as a brand extension of Alexander McQueen. Alexander McQueen did not have clear evidence of the date it commenced sales into Australia and could only prove it had made sales dating back to some time before 2005. Publicity for the brand had primarily been in international fashion magazines and Alexander McQueen did not produce figures as to circulation or readership of such publications in Australia.
The hearing officer was not satisfied that Alexander McQueen had established reputations in Australia in respect of the McQ logo or the word McQUEEN used on its own. Photographs produced by Alexander McQueen of Australian retailers and websites displaying the logo were undated, and there was no evidence showing that McQUEEN on its own had been used on shop signage, fashion items, social media or websites. Alexander McQueen also failed to establish its bad faith argument.
This decision highlights the importance of being able to produce specific evidence showing how, when and where a trade mark has been used. Brands will not be able to merely rely upon a recognisable international reputation, or unsubstantiated claims that a brand has built up a reputation within Australia, to successfully oppose a trade mark. What is needed is quality evidence establishing how and when a reputation has been amassed in Australia.
In this case, a different outcome may have resulted if Alexander McQueen had been able to produce better evidence proving its reputation in its marks in Australia.