Department store giant Saks Fifth Avenue has been successful in quashing a trademark application from a local business on the back of “robust” popularity and sales in the Australian market.
Documents from the Australian Trade Marks Office reveal beauty salon vendor Ebru Sak was unsuccessful in registering ‘Saks International’ for domestic use. The application was first filed in 2009, with an initial trade mark hearing taking place in October 2011 and a decision handed down last month.
Saks Fifth Avenue has held trade marks for the Australian market since 1984, launching its saks.com website to service domestic and global consumers in 2000. In filing a declaration for the hearing, Saks Incorporated vice president and associate general counsel Sunny Park said the existence of both trade marks would lead consumers to believe the companies were related.
He said Saks Fifth Avenue enjoyed “robust popularity with international customers, and Australian customers in particular” and noted its reputation through placements in feature films, television programs and magazines available for viewing or purchase locally.
In handing down her refusal to register ‘Saks International’, Trade Marks hearing officer Bianca Irgang said it was likely consumers would draw a possible connection between the two firms.
“[Evidence] accompanying the...declaration does demonstrate that a number of Australian customers have purchased goods from the opponent via the telephone and online services provided. These sales are a significant amount, particularly given the opponent’s sales have only been made by internet and telephone services.”
Australian lawyers for Saks Fifth Avenue did not release these sales figures to Ragtrader by time of press.