Intellectual Property

Fashion Designer Peter Morrissey Buys Back the Right to Use His Name as a Trade Mark

Australian fashion designer Peter Morrissey has bought back the right to use MORRISSEY as a trade mark, following the opposition to his trade mark applications for PETER MORRISSEY by M Webster Holdings Pty Ltd, the company that purchased the trade mark rights in the MORRISSEY name in 2006.

In 2000, Mr Morrissey sold his fashion label MORRISSEY to OrotonGroup. In 2006, M Webster Holdings purchased the MORRISSEY fashion label from the OrotonGroup including several Australian trade mark registrations for MORRISSEY. M Webster Holdings shut down all the MORRISSEY stores in early 2009. Since that time, M Webster Holdings continued to sell upscale eyewear under the MORRISSEY brand, meanwhile Mr Morrissey entered into a collaboration with discount retailer Big W.

In 2008, Mr Morrissey applied for three trade marks for PETER MORRISSEY. These applications were opposed by M Webster Holdings on the basis that the PETER MORRISSEY trade marks were likely to deceive or cause confusion (pursuant to section 60 of the Trade Marks Act 1995 (Cth) (TMA)) given the reputation of the existing MORRISSEY trade marks owned by M Webster Holdings.

On 22 March 2011, in M Webster Holdings Pty Ltd v Peter Morrissey Pty Ltd [2011] ATMO 23 the Delegate of the Registrar of Trade Marks agreed with M Webster Holdings and refused Mr Morrissey's PETER MORRISSEY trade mark applications based on the strong pre-existing reputation of the MORRISSEY trade marks in the marketplace.

In August 2011, it was announced that as the result of a settlement agreement between Mr Morrissey and M Webster Holdings, Mr Morrissey had bought back the MORRISSEY trade marks. Mr Morrissey now has the sole right to use the PETER MORRISSEY and MORRISSEY trade marks.

Lessons

This case is a reminder of the pitfalls individuals can face after assigning trade mark rights in their brands which are based on their personal name. Like Peter Morrissey, other fashion designers such as shoe designer Jimmy Choo and US menswear designer Joseph Abboud have lost the right to use their personal names as trade marks following the sale of their brands to third parties. This case demonstrates the issues these sorts of assignments can present in the event that the individual wishes to use their own name commercially again in the future, and the steps that are required to regain those rights.

View more from IP @ Blake Dawson.

Authors

Ireland, Elizabeth Senior Associate, elizabeth.ireland@blakedawson.com


  Ritson, Lisa Practice Leader, lisa.ritson@blakedawson.com

This publication is intended only to provide a summary of the subject matter covered. It does not purport to be comprehensive or to render legal advice. No reader should act on the basis of any matter contained in this publication without first obtaining specific professional advice.

This article is copyright. For permission to reproduce this article please email Katherine Kulakowski: katherine.kulakowski@blakedawson.com 

© Blake Dawson 2011

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