M Webster Holdings Pty Ltd v Peter Morrissey Pty Ltd [2011] ATMO 23

The Australian Trade Marks Office has refused an application by well-known Australian fashion designer Peter Morrissey to trade mark his own name, citing a risk of confusion with pre-existing Morrissey trade marks. The existing trade marks had been sold by Mr Morrissey over ten years ago and subsequently acquired by M Webster Holdings, which opposed Mr Morrissey’s current application.

History of the Peter Morrissey brand

The Morrissey name has been used in the fashion industry since the early 1980s when Peter Morrissey and his business partner Leona Edmiston launched the ’Morrissey Edmiston‘ clothing label. In 1997 Mr Morrissey founded the Morrissey fashion label. The business was sold to, and operated by, a succession of companies including Oroton Pty Ltd from December 2000. In November 2006 Oroton sold the business, including the Morrissey trade marks and goodwill to M Webster Holdings Pty Ltd, which was the opponent in these proceedings.

The business conducted under the Morrissey trade mark maintained a very high profile under the ownership of both Oroton and M Webster Holdings, with Mr Morrissey remaining an integral part of the associated profile and trading operations until mid 2006. However by 2009 the scale of the business conducted under the Morrissey trade mark diminished although there is ongoing licensing of the trade mark for use on sunglasses and leather goods.

The trade mark applications at issue

In 2008 Mr Morrissey, through his company Peter Morrissey Pty Ltd, applied for registration of “Peter Morrissey” and separately a signature version of the name Peter Morrissey, in relation to a range of goods and services in classes 3, 8, 11, 19, 20, 21, 25, 27, 33, 42 under trade mark application numbers 1247002, 1278308 and 1278314.

Use of ‘Peter Morrissey’ as a trade mark likely to deceive or cause confusion

M Webster Holdings successfully opposed the registration of the Peter Morrissey trade mark under section 60 of the Trade Marks Act, by establishing to the satisfaction of the Hearing Officer that:

  • it has acquired a reputation in the Morrissey trade mark; and
  • that because of that reputation the use of the trade mark Peter Morrissey by Peter Morrissey Pty Ltd would be likely to deceive or cause confusion.

The Hearing Officer concluded 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 existing Morrissey trade mark (owned by M W Holdings) and the applicant’s Peter Morrissey trade marks.

In reaching the decision the Hearing Officer assumed that the consideration paid by M Webster Holdings for the purchase of the business, the Morrissey trade marks, and goodwill would not have been a small amount and commented that the value of the purchase would be undermined if the company was not able to protect the trade marks and maintain enforceable rights.

The Hearing Officer dismissed the argument that Mr Morrissey retained his own reputation as a leading Australian fashion designer and retained the goodwill in his name and that no deception or confusion is likely to arise from coexistence of the two trade marks in the marketplace.

The dispute continues

Peter Morrissey Pty Ltd has filed an appeal to the Federal Court from the decision of the Trade Mark Office (Fed Crt appeal NSD437/11 to refusal of TM Application).

In addition to the Federal Court proceedings both parties have matters pending before the Trade Mark Office:

  • Peter Morrissey Pty Ltd has opposed M Webster Holdings Pty Ltd's Application No. 1173277 MORRISSEY in classes 14, 18 and 35, and has filed an application for registration of Peter Morrissey Signature and SEX logo under Trade Mark Application No 1415096 covering goods in class 3.
  • M Webster Holdings Pty Ltd is the applicant for registration of MORRISSEY under Trade Mark Application Nos 1377285 in class 24, 1377286 in classes 21 and 27, and 1377287 in classes 3, 8, 11, 16 and 21.