WILL THE REAL PETER MORRISSEY PLEASE STAND UP!

Opposition to registration of “PETER MORRISSEY” as a trade mark

As the Delegate says, where “an assignee has bought a business including trade marks, the value of the purchase will be undermined if the assignee is not able to protect those trade marks and maintain enforceable rights.” This decision is a timely reminder to all businesses that before you sell your trade marks you need to carefully consider what use you might want to make of similar trade marks in the future, especially when the marks sold incorporate elements of your own name.

In 1983 Peter Morrissey (Morrissey), with his then business partner, Leona Edmiston, launched the fashion label, MORRISSEY Edmiston. This early partnership lasted till 1997 when Morrissey founded a new fashion label under the MORRISSEY name. In 1999, Morrissey successfully registered MORRISSEY for jewellery, handbags, clothing, footwear and headgear. The MORRISSEY label, including these marks, was sold to Oroton Pty Ltd (Oroton) at the end of 2000. Oroton operated the fashion label, selling a range of goods under the MORRISSEY marks and establishing the label in Australia as a premium fashion label. 

In November 2006, Oroton sold the MORRISSEY marks and goodwill associated with the MORRISSEY label to M Webster Holdings Pty Ltd (Webster), the opponent in these proceedings. Webster continued to design fashion goods, and sell them in stand alone stores and department store concessions, and also licensed third parties, to sell goods under or by reference to the MORRISSEY trade marks. 

In 2008, Morrissey filed trade mark applications for: “Peter Morrissey” and in a wide range of classes including clothing, accessories and various homeware products. At the hearing, Webster pressed grounds of opposition under ss 42, 44, 60 and 62A of the Trade Marks Act 1995 (Cth). The Delegate’s decision only deals with the s 60 ground, that is, that at the priority date of the opposed application, another trade mark had acquired reputation in Australia and that because of this reputation, use of the applicant’s mark would be likely to deceive or cause confusion. 

The Delegate was satisfied on the evidence produced at the hearing that Webster had a strong reputation in the MORRISSEY trade marks. It was also clear that Peter Morrissey had established and retained a reputation as a leading Australian fashion designer and that he had goodwill in the name “PETER MORRISSEY”. The Delegate’s central concern was whether use by Morrissey of its marks would be likely to deceive or cause confusion.

Part of Morrissey’s argument against the likelihood of confusion or deception was that Webster had abandoned the MORRISSEY label in early 2009. This argument was based on a statement to this effect in an article published online and Webster’s closure of its MORRISSEY stores and concessions. However, the Delegate considered that “mere non-use” of the mark is not sufficient to lead to an inference of abandonment and that Webster was still licensing its MORRISSEY trade marks to third parties for use on sunglasses and leather goods.

Morrissey also relied on a discussion thread hosted on forums.vogue.com.au, and comments made by contributors about what was happening with the MORRISSEY label. However, the Delegate did not consider that this evidence was conclusive either way.

For the Delegate, the question came down to whether there was a “finite and non-trivial” risk of deception and confusion, allowing for the imperfect recollection of people when only able to see the opposed competing trade mark. The common element here was MORRISSEY and although in some cases the addition of another element would avoid confusion or deception, the Delegate did not consider that to be the case here. He considered it unlikely that Webster would have purchased the MORRISSEY label and associated marks and goodwill if it did not intend to maintain and protect the reputation in the MORRISSEY brand. Morrissey had been responsible for establishing the reputation in the fashion industry but had sold his label, marks and goodwill and could not now undermine Webster’s interest in these assets. 

The Delegate considered that a significant number of consumers would at least experience reasonable doubt about the existence of some connection between Webster’s MORRISSEY marks and the PETER MORRISSEY marks. Held:  s 60 ground established.

End note: Morrissey has filed an appeal in the Federal Court with the first return date on 16 May 2011.