Fashion designer Stella McCartney has won a legal battle against a Chatswood cosmetics and skincare business.
McCartney, who sells a range of luxury bags, clothes and perfumes in Australia, successfully opposed a trademark application by businessman Wong Kwai Hua.
Hua tried to register the trade mark “St Ella New York” arguing it was a “new and original concept” and “is clearly used and pronounced as ST or SAINT ELLA not STELLA.”
But McCartney’s legal representatives argued the Australian accent meant “St Ella” sounded too similar to “Stella”.
“Phonetically the marks are also very similar bearing in mind the tendency for persons, particularly in Australia, to be lazy in their pronunciation,” Sean McManis, counsel representing McCartney, told the tribunal.
“Consequently, even if the Applicant’s mark was referred to as ‘saint ella’, the word ‘saint’ could easily be slurred to ‘snt’ and ‘snt ella’, with the emphasis being on the word ‘ella’ and the name being misheard as the more recognized word ‘stella’.”
Hearing officer Ian Campbell Thomas found the trademark STELLA, rendered in italic script, strongly resembled the trademark and the two trademarks were “likely to be confused for one another and are deceptively similar”.
Richard Hoad, partner at Clayton Utz, told SmartCompany the decision was “not particularly surprising”.
“It is an example of how it is not uncommon for people who are looking to take advantage of a registered trademark try to come up with a clever way of doing that, which might be what happened here,” he says.
“[The tribunal] looks to see whether they are deceptively similar in an imperfect recollection test, whether they sound similar and look similar.”
McManis told SmartCompany he believes the correct decision was issued and warned Stella McCartney was always looking out for potential intellectual property infringements.
“Premium brands always maintain a watch on the market and are careful to ensure their reputation is not diminished by third parties using the brand,” he says.
SmartCompany attempted to contact Hua but did not receive a response prior to publication.