What happened?

Yesterday, the Federal Court of Australia dismissed an appeal of a trade mark opposition decision made by IP Australia. A US-based fashion house called PAIGE unsuccessfully opposed the registration of stylised “Sage + Paige” trade marks by an Australian online retailer.

The dispute centred on clothing, handbags, jewellery and related retail services. The US fashion house failed to persuade the Judge that these marks were deceptively similar to PAIGE or that they were likely to cause confusion in the market.

The judgment considered brand collabs in the fashion industry. So yes, the word “collab” has reached the high point of judicial consideration – see paragraph [68]. Spoiler alert: Sage + Paige was not found to be a likely collab with PAIGE.

Why did Sage + Paige win?

Her Honour Justice Needham dismissed the opposition, which was run on two separate grounds:

• The inclusion of “Paige” in “Sage + Paige” did not render the marks deceptively similar. “Paige” is a recognisable but not highly unusual woman’s name, and the addition of “Sage” (itself a name and a word with multiple meanings) created a distinctive composite mark.
• The “name + name” trend is common in the fashion industry and does not, by itself, suggest a collab or brand extension.
• The visual and phonetic presentation of “Sage + Paige” (including the use of a plus sign and uniform stylisation) indicated a single brand rather than a collab.
• The appellant’s reputation in Australia was found to be modest and largely confined to high-end denim, insufficient to form the necessary reputation under s 60.
• Differences in style, price point and target markets reduced the likelihood of consumer confusion. ‘PAIGE’ was positioned as a high-end, premium brand. Sage + Paige was more accessible.

Take home points

• The presence of a registered plain text mark wholly contained within a new composite mark did not result in a deceptive similarity finding in this case. Australian practitioners and examiners often go the other way on this. Will this be one of those “on its facts” cases, or is this a challenge to the way we practice?
• Here, deceptive similarity was assessed by considering broader context, industry trends for the relevant goods, and the distinctiveness of the names. Some of that also feels controversial.
• The Court recognised the prevalence of collabs in fashion but didn’t give them much weight: double-name brands are more likely to be seen as single brands rather than merged existing brands.
• Substantial evidence of reputation in Australia is required to support an opposition under section 60. That word “modest” is so hurtful.
• Brand owners and decision makers often disagree about the extent of a reputation. The woman in our stock photo is NOT pleased by this decision.
• Even if a reputation is established, it does not automatically lead to a finding of consumer confusion. Don’t gloss over this part of the test, which also comes up in passing off allegations.