The retail group, which operates fashion chains including David Lawrence and Jigsaw, acquired the ‘Morrissey’ trademarks and goodwill associated with the label in November 2006. However, the designer has remained active in the sector, recently launching a collaborative unisex venture with discount department store Big W.
Documents from a recent trademark hearing reveal Webster was able to prove three applications by the designer’s company should be refused on grounds of similarity. The applications covered categories such as men’s and women’s apparel, beauty and homewares. Since purchasing the Morrissey marks four years ago, Webster has used them across clothing products, bags, wallets, sunglasses, cufflinks and compendiums.
In 2009, the company closed Morrissey branded sites and department store concessions to focus on licensing opportunities for sunglasses and leather goods. Lawyers for the designer claimed Morrissey’s considerable reputation, paired with Webster’s retail divestment, meant the marks could coexist without confusion among consumers.
Trade Marks Hearings officer Bianca Irgang disagreed.“While I acknowledge that the word Morrissey is a surname and that sometimes the addition of a forename would sufficiently differentiate the trademarks from each other, I am not persuaded by [these] arguments,” she said. “A significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection.
“Accordingly I refuse to register [the] trade mark applications.”
Intellectual property lawyer Trevor Choy said while the designer does not need a trademark to operate his business, the protection would allow him to stop others from using the same name and provide licensing opportunities. He believed there could be opportunities to salvage his rights.
“There’s a long-standing legal policy that people should not be prevented from using their own personal names if they are doing so legitimately,” he said. “Designers have lost cases where they’ve sold their full name – for example, Joseph Abboud – but Peter is different, he just sold his surname.”
Choy said the designer might still be able to continue designing using his full name.
“So the Big W venture should not be disrupted – he just needs to be careful about how his name is promoted. If we were his lawyers and the Big W venture was challenged, we would certainly pick up the personal name policy sword to protect him.”
Webster did not return Ragtrader’s calls at the time of press.
Assia Benmedjdoub