It has been reported by several media outlets that the key to fashion designer Stella McCartney’s victory in a trademark dispute against a Chatswood-based cosmetics company – and subsidiary of Melilea International – was that the mark would cause confusion when said in a “lazy” Australian accent. While this is perhaps a novel argument, according to one commentator it is a bit of a red herring.
McCartney, who sells a range of luxury bags, clothes and perfumes in Australia, has successfully opposed businessman Wong Kwai Hua’s trademark application for ST ELLA NEW YORK, and one argument put forward was that the Australian accent meant ‘St Ella’ sounded too similar to ‘Stella’. Sean McManis, partner at Shelston IP, represented McCartney and successfully argued: “Phonetically the marks are also very similar bearing in mind the tendency for persons, particularly in Australia, to be lazy in their pronunciation. Consequently, even if the applicant’s mark was referred to as ‘saint ella’, the word ‘saint’ could easily be slurred to ‘snt’ and ‘snt ella’, with the emphasis being on the word ‘ella’ and the name being misheard as the more recognised word ‘stella’.”
However, Julian Gyngell of Kepdowrie Chambers believes this is just another case of a tight decision being decided on its facts and not the setting of new law: “I don’t think that the lazy ‘aussie accent’ or ‘lazy aussie’ pronunciation was the relevant basis for the decision. That was an argument put forward by the opponent but I don’t see anywhere in the judgment that that argument was accepted by the hearing officer or relied on by him in coming to his decision. In fact, quite the opposite, as the word ‘accent’ is not used once in the report of the case – not by either party in its submissions, nor by the hearing officer in his decision. So the ‘aussie accent’ headline is just plainly wrong.”
Gyngell says that this decision is wholly based on the visual impression created by the T crossbar, and nothing to do with lazy pronunciation or accent: “It’s just another example of the difficult 50/50 decisions that are made everyday in the registry. Although the case has an interest factor because it involves Stella McCartney, it really turns on a 50/50 decision that the ST ELLA mark is too similar to STELLA because the cross bar of the T (in lower case) extends into the ‘E’ of ELLA (thus making ST ELLA look too much like STELLA): If the cross bar of the T was smaller, or if the T was in upper case, then I think the registrar would have been happy that the ‘ST’ element would have been pronounced as ‘Saint’ and the decision would presumably have gone the other way. That’s a very fine line – no pun intended.”
The ‘lazy accent’ angle is certainly attention-grabbing and – as journalists – on WTR we understand the need to find unique angles to stories (and particularly to make legal analysis of interest to the general reader) but, given that this element did not sway the decision, it arguably provides the non-trademark specialist reader with a distorted view of how trademark law actually works in practice. Yesterday we reported on INTA’s new strategic plan and its focus on communications to help explain the benefits that trademarks and related forms of intellectual property bring to consumers, national economies and society at large. One important aspect of this will be media outreach – both in terms of spreading the positive message and also helping shape the way the media portrays trademark law.
This blog was first published in World Trademark Review on 9 January 2014