Case Notes, Deceptively similar?

Case Note – Bugatti GmbH v Shine Forever Men Pty Ltd [2013] FCA 1116

The Applicant was the registered owner of a trade mark registration for the word BUGATTI in several classes including in relation to clothing.

The Respondent imported and sold clothing and accessories by reference to the trade marks BUGATCHI and BUGATCHI UOMO.  It also operated a retail outlet in Melbourne under the name BUGATCHI UOMO.

In issue was:

  1. whether the Respondent had used the impugned marks “as a trade mark“;
  2. whether the impugned marks were deceptively similar to the Applicant’s registered marks; and
  3. whether the Respondent had a defence under s 122(1)(f) or 122(1)(fa) of the Trade Marks Act 1995 (Cth).

Use as a trade mark

The Respondent gave evidence that another company, Bugatchi Uomo Apparel Inc (BUA), was the owner of the impugned marks and that it only used the marks with BUA’s consent and at its direction.  Therefore, it argued, it did not “use” the marks in the relevant sense.  Any use as a trade mark was only by BUA.

This contention is plainly wrong and was quickly dismissed by Tracey J.  By importing and selling goods in Australia bearing the mark BUGATCHI UOMO, the Respondent had used those words as a trade mark.

Deceptive similarity

There was some evidence of actual confusion in the market place.

The Court pointed out that little is to be gained from “a meticulous comparison of the two word marks, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.”

It said:

“The test requires an assessment of the response of the hypothetical customer with an imperfect recollection of the applicant’s mark when confronted with the challenged mark.”

Despite the obvious minor differences, Tracey J considered that the marks BUGATTI and BUGATCHI UOMO are sufficiently similar as to cause consumers “to wonder whether it might not be the case that the products bearing the marks … come from the same source… As a result there was a real danger of the creation of the confusion which the legislation is designed to obviate.”

Defences under s 122(1) TMA

The Respondent, not legally represented at trial, contended that BUA had defences available to it pursuant to s 122(1) TMA.  BUA, however, was not a party to the proceeding.  The Respondent itself could not rely upon these provisions and did not contend otherwise.  Reliance on s 122 was therefore misplaced.

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