Fashion IP case driven out of court

Fashion and footwear retailer Diana Ferrari has failed in its bid to prevent a trade mark application by European automotive giant Ferrari.

The retailer first filed two notices of opposition to Registrar of Trade Marks in May 2005, after Ferrari sought to register application 'Ferrari Shop' and its associated logo in the Australian market. The retailer argued the car supplier, which planned to launch a series of national concept stores offering licensed Ferrari products, was in contravention of three sections of the Trade Marks Act 1995.

The three-year legal spat finally came to a head late last month after Australian Trade Marks Offices found no grounds for opposition against Ferrari and awarded costs against Diana Ferrari. The retailer failed to prove all three grounds of opposition, namely that Ferrari had trade marks that bore similar goods or closely related services to the apparel group and were substantially identical or deceptively similar to its logo.

Hearings Officer Alison Windsor said to show a trade mark was deceptively similar to another, it was necessary to show a "real tangible" danger of deception or confusion occurring.

"While these two trade marks have that common element, namely the surname Ferrari, I am not satisfied that the overall impressions of the two are such that an average consumer is likely to be confused."

Windsor said Diana Ferrari's title was clearly designed to be seen as the name of a person while 'Ferrari Shop' made the specific reference to a store. She said the latter's "long F" logo, which is the letter F with an extended top bar, added to the disparity of the two trade marks.

"I consider that the "long F" is a highly memorable feature, adding to the differences between the trade marks," she said. "Even in a situation of imperfect recollection, I cannot be satisfied there is any strong likelihood of deception and confusion...when both are in use in the general Australian market." 

Windsor also dismissed Diana Ferrari's claim that the term 'Ferrari' in both titles would mislead or deceive a substantial number of consumers into believing it sold similar goods.

"I have difficulty envisaging a situation where the applicant's use of either or both of is "long F" or Ferrari trade marks in the Australian market would direct consumers towards choosing its goods when their real intent was to buy Diana Ferrari goods."

"I am satisfied that both trade marks have sufficient reputation that the relevant buying public will be familiar with them both, hence the likelihood of confusion is remote."

Under the decision, Ferrari's trade mark applications could now proceed to registration. Diana Ferrari had not filed a notice of appeal at the time of press.