Stella McCartney successfully opposes stylised ST ELLA mark

In Stella McCartney Limited v Wong ([2013] ATMO 96, November 19 2013), Stella McCartney Limited has successfully opposed the acceptance of the mark depicted below:

Stella McCartney owns Australian trademark registrations for STELLA, which cover cosmetic and personal care products in Class 3 of the Nice Classification. Mr Wong Kwai Hua sought registration for the mark depicted above in respect of a wide range of goods in Classes 3 and 18, and a wide range of services in Class 44. The key issue was whether the marks STELLA and ST ELLA were deceptively similar.

On that issue, the hearing officer found that the stylisation of the ST ELLA mark gave “the initial impression that the abbreviation 'St' and the word 'Ella' are (and form) a unity. The fact that the initial letters of the trademark are the abbreviation 'St' are, on a first impression, not at all obvious”. Consequently, he found it a strong argument that a person aware of STELLA-branded product, and looking for goods sold under that trademark, may mistakenly view ST ELLA product as STELLA product.

He went on to point out that, since STELLA is registered in block script, it may fairly be used in other fonts. This includes Kunstler script, which is a normal font within the suite of fonts in Microsoft Word. If used in that font, the mark would be seen as:

If used in that form, the potential for confusion with the ST ELLA mark becomes even more apparent.

Regarding the overlap in goods covered by Stella McCartney’s registrations and those covered by the opposed application, cosmetic products and personal care product were covered by both. There was also agreement that the services of “hygienic and beauty care for human beings” in Class 44 are closely related to hygienic and beauty products in Class 3.

The description “cleaning” within “cleaning, polishing, scarring and abrasive preparations” was interpreted as not including cleaning products of a personal hygiene nature. However, there was still a clash with “soaps” covered by Stella McCartney’s registrations.

In the evidence, it was claimed that Mr Wong’s company, Melilea International Group of Companies, had used the ST ELLA trademark in relation to a range of skin care products, certain other personal care products and beauty services. It was claimed that use began in Malaysia in 2006 and had commenced in Australia in July 2011.

An interesting aspect of the decision is that the hearings officer did not offer to allow registration in respect of the goods covered that were not similar to goods covered by Stella McCartney’s registration. Neither did he offer registration in respect of services covered that were unrelated to goods covered by Stella McCartney’s registrations. This was because the evidence showed that personal care products and services are Melilea’s key interests. The hearings officer commented:

“I see no purpose in offering the applicant the opportunity to excise particular goods and services from the specification as those goods and services to be excised constitute those which the evidence shows to be of particular and immediate interest to him and I have not had the benefit of argument from the parties about the excision of particular goods or services."

Another interesting aspect of the decision is the finding that, despite Mr Wong declaring in his evidence that “[his] company has no intention of using the trademark in respect of perfumes in Australia and only intends to use it in respect of skin care and cosmetic products”, this was not considered sufficient to establish a lack of intention to use the trademark on perfume. This was due to the hearing officer’s view that this statement “made on August 6 2012 casts no light on what the applicant’s intention was over two years earlier on May 7 2010, the priority date of the application”.

Sean McManis, Shelston IP, Sydney

The author represented Stella McCartney Limited in this case