Shoe label Diana Ferrari fails to prevent registration of FERRARI SHOP
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The delegate of the registrar of trademarks has dismissed an opposition filed by Diana Ferrari (Australia) Pty Ltd against the registration of the trademark FERRARI SHOP and the stylized representation of the FERRARI mark (Case 2008 ATMO 73, August 19 2008).
Ferrari SpA, the well-known car company, applied to register the word mark FERRARI SHOP (Application 1034919) for services in Class 35 of the Nice Classification and the figurative mark FERRARI (with 'long F' design) (Application 1037585) for goods in Class 14.
Diana Ferrari opposed the registration of both marks on a number of grounds, all of which were based on its earlier registrations and extensive use of the mark DIANA FERRARI in respect of a range of products in Classes 4, 9, 14, 18, 25 and 26. In particular, Diana Ferrari’s product manager gave evidence that “Diana Ferrari is the most widely recognized women’s shoe brand in Australia and is favoured by more Australian women than any other shoe brand”.
The fundamental ground of objection was based on Section 44 of the Trademarks Act 1995, which requires that an opponent establish a sufficient degree of similarity between the conflicting marks and the goods and services in question. In respect of the relevant goods and services, the registrar's delegate was satisfied that there was a sufficient “nexus of similarity” between some of Ferrari’s retail services and Diana Ferrari’s goods for them to be seen as “closely related”. The deciding question was thus whether the trademarks were also “deceptively similar” to each other.
Diana Ferrari argued that the marks were deceptively similar by reason of the common use of the distinctive element 'Ferrari'. After considering the well-known passage of Justice French in Registrar of Trademarks v Woolworths Ltd ((1999) 45 IPR 411), the registrar's delegate decided that although DIANA FERRARI and FERRARI SHOP had a common element, the overall impressions of the marks were not such that the average customer was likely to be confused. She noted that Diana Ferrari’s trademark was clearly designed to be seen as the name of a person, whereas Ferrari’s FERRARI SHOP mark was not. According to the registrar's delegate, FERRARI SHOP specifically refers to a store or shop, and there was no evidence that allowed the inference that the buying public would assume that Ferrari’s use of its trademark was the result of Diana Ferrari setting up a shop using only part of its trademark.
As regards the stylized FERRARI mark, the registrar's delegate considered that the 'long F' is a highly memorable feature that adds to the differences between the trademarks. Thus, the “net impression” of the two trademarks is one of difference, rather than one of similarity. Moreover, even in a situation of imperfect recollection, there was insufficient likelihood of deception and confusion between the two trademarks when both are in use in the general Australian market.
Both Diana Ferrari and Ferrari have traded continuously in Australia for a long period of time and both companies have established their own, independent reputation and goodwill within their particular markets. The relevant buying public is therefore familiar with both companies and their respective products and services. The registrar's delegate thus concluded that it would be difficult to envisage a situation where Ferrari’s use of FERRARI SHOP or its 'long F' trademark would cause consumers to choose its goods when their real intent was to buy Diana Ferrari goods.
Having failed to establish deceptive similarity, Diana Ferrari’s other grounds of opposition also failed for substantially the same reasons. The opposition was thus dismissed.
Julian Gyngell, Julian Gyngell, Wahroonga
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