Mark evocative of Princess Diana refused

In McCorquodale v Masterson, the Federal Court of Australia has reversed a decision of the registrar of trademarks that refused an opposition by the executors of Princess Diana's estate (including an individual by the name of Lady Elizabeth Sarah Lavinia McCorquodale) and the trustees of the Diana, Princess of Wales Memorial Fund (fund) to the registration of a trademark evocative of the late Princess. The court found that the mark was likely to mislead the public into believing that it was endorsed or approved by the fund or the estate.

Bonnie Masterson applied to register the trademark DIANA'S LEGACY IN ROSES together with a device comprising doves, a wreath of flowers and a stylized letter 'D' for live roses in Class 31 of the Nice Classification. The fund and the executors opposed registration and the case turned on the application of Section 43 of the Australian Trademarks Act 1995, which provides for objection to an application if the use of the trademark is likely to deceive or cause confusion "because of some connotation that the trademark or a sign contained in the trademark has".

A delegate acting for the registrar of trademarks held that while the mark carried a connotation with the late Princess, there was no evidence that any person in Australia would assume that it suggested sponsorship or approval by the fund or the Princess's estate. Accordingly, he stated that the Section 43 ground was not made out. The executors and the fund appealed.

The Federal Court upheld the appeal. It found that well before the application for registration the estate had registered in Australia and elsewhere trademarks comprising the words 'Diana' and 'Princess', and other variations of these marks in respect of a wide variety of goods and services. It had also licensed the fund to exploit the marks for charitable purposes. The court further found that the fund had licensed a large number of entities in Australia and elsewhere to sell flowers, giftware and other memorial merchandise under the trademarks, and that substantial sales had taken place.

Citing a line of cases going back to Radio Corporation Pty Ltd v Disney ((1937) 57 CLR 448). The court held that:

"there is a real likelihood or a 'real tangible danger' that, by virtue of the connotation of the late Princess in the impugned mark, consumers in Australia would be deceived or confused by incorrectly believing that the mark was indicative of some endorsement or approval by the fund or the estate of the late Princess."

Accordingly, it refused registration pursuant to Section 43.

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne