NATIONAL: International retail giant Next has continued its tumultuous relationship with the Australian market, losing its second trademark dispute in as many months while forging ahead with the domestic launch of its Lipsy label.
As exclusively reported in the July 30 edition of Ragtrader, the UK-headquartered retailer failed in its bid to oppose a formal trademark registration by Melbourne lifestyle boutique Nest. Freshly released documents from IP Australia reveal Next suffered another legal battering against a Perth homewares retailer the following month.
In a hearing before the Registrar of Trade Marks in Canberra, Next legal representatives failed to establish grounds against the registration of Next Home in Australia.
The registration was put forward by a furniture and homewares retail store based in Belmont, Perth, and opposed on several grounds including similarity and reputation.
In an almost identical show of evidence to its previous case against Nest, the retail giant argued that a ‘spillover’ of reputation would occur among visitors between Australia, the UK and other key operating markets for the company.
A statutory declaration by company solicitor Sarah Louise Noble noted the brand had around 400 branded stores across the UK, as well as sites across Europe, the Middle East and Asia.
Noble produced tourism figures from the Australian Bureau of Statistics to argue that a significant portion of the Australian population would be aware of its trademark, and a ‘spillover’ of reputation would occur. However, the evidence failed to convince Registrar of Trade Marks delegate Iain Thompson.
“There are some overseas trade marks where evidence of the type before me would suffice – there are trade marks which have little or no use in Australia such as Walmart or Marks & Spencer in relation to which such evidence would confirm the trade mark’s reputation in Australia,” he said. “However, the opponent’s trade mark is not, in my consideration, of that ilk.”
“It might also be ... that if an opponent’s trade mark is particularly idiosyncratic, it might be more likely to affix itself in the minds of Australian travellers. Again, I do not consider that the trade mark Next is of that ilk.”
Next does not operate any branded retail stores in Australia. However, as reported in the last edition of Ragtrader, the company is preparing to wholesale its trend-driven Lipsy label nationally for spring/summer 2010.
It is not known whether the recent spate of trade mark oppositions is the result of similar plans for its Next branded fashion label. Next UK representatives did not respond to queries at the time of press.
Assia Benmedjdoub