MELBOURNE: UK fast fashion giant Next has failed in its bid to take on a boutique lifestyle brand based in Melbourne.
The branded retail chain, which sells its goods through 450 outlets in the UK and over 23 countries across Europe and Asia, filed a notice of opposition against a trade mark registration by Nest in February, 2008. Nest has been operating in the local market since 1999, with a range of homewares, children’s garments and adult loungewear offered through its Melbourne boutiques.
Despite having no claims of selling its branded goods in Australia, nor any formal plans to expand into the country, Next alleged a ‘spillover’ of reputation at a trade marks hearing late last month. Next representatives produced extracts from the Australian Bureau of Statistics website, indicating that between 1992 and 2002 the UK was the third largest source for short-term visitor arrivals in Australia.
Hearing officer Bianca Irgang said while Australian consumers were now more aware of international trade marks, there was no evidence of confusion between Next and Nest in the marketplace. She also said it was “extremely difficult” to quantify any spillover effect by means of tourism.
“Even if I were persuaded that the opponent had established a spillover reputation in Australia – which I am not – I am not satisfied that the Australian consumer is likely to be deceived or confused between the two marks.”
Irgang also dismissed allegations the two trade marks were deceptively similar on aural and visual grounds.
“While I agree that the trade marks share some similarities ... I am not satisfied the average Australian consumer would become confused between them.”
Irgang ordered Nest’s trade mark application to proceed to registration a month out from her decision, pending
a notice of appeal. Costs were also awarded against Next.
Assia Benmedjdoub