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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
 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.
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
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Practice Leader, email@example.com
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© Blake Dawson 2011
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