The Melbourne-headquartered company opposed a bid by River Island to register its trademark in Australia, with the latter’s application including categories such as jewellery, articles of clothing and leather accessories. Freshly released documents from a trademark hearing last month reveal Rivers claimed the two names were deceptively similar and could cause confusion in the local marketplace.
While River Island, which recorded worldwide turnover of $1.5 billion in 2008, currently operates no stores domestically, it claims 85,000 Australians visited its website in 2009. Rivers argued there were still grounds for confusion, citing a recently commissioned Roy Morgan survey which found a “significant number of persons” would be confused by the two clothing marks if approved for the Australian market. Rivers also called upon a trade witness to support its case.
“[It is] likely that consumers would regard River Island as being a sub-brand of Rivers [in the same way that] the Armani brand has Armani Exchange as a sub-brand,” footwear veteran Colin Brown claimed in his testimony.
However, lawyers for River Island noted the brand had already lost similar cases against brands such as Rock River and StoneRiver in Australia. Lawyers also questioned its decision to challenge River Island’s application, given it had not opposed many other brands with the term ‘River’.
Hearing officer Michael Kirov dismissed the case and awarded costs in River Island’s favour.
“Given that Rivers and River Island do not look alike, nor sound alike, nor convey the same idea, and given consumers might generally be expected to carefully inspect goods such as clothing, footwear and fashion accessories before purchasing them, I thus believe the [two marks] should be able to exist without difficulty,” he said.
Last year, UK fashion retailer Next lost two trademark oppositions against local retailers Nest and Next Home.
Assia Benmedjdoub