YD gives Diesel the boot

MELBOURNE: Italian label Diesel has failed in its attempt to create an Australian legal precedent by protecting the shape of one of its shoes using a trade mark rather than by registered design.

The footwear brand, licensed in Australia by Global Brand Marketing, had taken competitor YD to Melbourne's Federal Court alleging three styles of footwear sold by YD - called the Photon, the Cube and the Gamon - infringed the sole mark and shape mark registered by Diesel.

For its part YD, owned by World Brands Management (WBM), denied the allegations and contended the trade marks should be removed as they did not comply with requirements of the Trade Marks Act.

Despite finding YD had used the shape of Diesel's shoes and its shoe soles the presiding judge, Justice J Sundberg, found that YD did not infringe Diesel's trade mark because its shoes and soles were not "deceptively similar" to the trade mark registrations.
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"The test for deceptive similarity necessarily concerns consumers' recollections of the marks in a trade context. . . [Diesel] has had since 2005 to assemble evidence of consumer recollections. In the circumstances it is reasonable to infer that they have been unable to find such evidence."

Justice Sundberg said a key point in YD's evidence was the fact that YD used its own YD branding on the shoes and not the Diesel 'D' logo which formed part of both trade mark registrations. The judge ordered the application be dismissed, together with YD's counter claim and ordered Diesel to pay YD's court costs.

This is not the first time WBM has been forced to defend one of its brands. Ironically WBM is the former owner of the Diesel footwear brand in Australia and in 2004 took Cube Footwear to court on behalf of Diesel for "misleading and deceptive conduct" and design infringement. The case was later settled out of court.

Freehills senior associate Craig Smith, whose firm acts for several TCF companies, said the judge's determination in this latest case could encourage other footwear brands to obtain and enforce trade marks for their shoe soles or shapes.

"The decision also reinforces that another type of intellectual property right, a registered design, is likely to be a more effective right to use to protect a new shoe design."

This had its own "down sides" as in Australia design registration had to be applied for before the shoe design had been publicly disclosed. The other issue was that registration only lasted for 10 years, Smith said.

By Tracey Porter