Alexander McQueen suffered a loss recently in connection with its name in Australia. The London-based design house, which services Australia through its e-commerce site and through independent stockists, has lost its battle to prevent the registration of trademarks for “CHRISTINE McQUEEN” and “CMQ” in connection with various goods and services, including the retailing and wholesaling of clothing and footwear.
Alexander McQueen’s legal team pointed to a number of its federal trademark registrations in Australia (including but not limited to Alexander McQueen and McQ) and argued that the proposed Christine McQueen marks will likely deceive consumers and/or cause confusion. Moreover, Alexander McQueen’s attorneys argue that the trademark applications, which were filed in 2012 by Metropolitan Investment Group Pty Ltd, were filed in bad faith (aka with the intent to deceive and/or confuse and piggyback on the luxury fashion reputation of Alexander McQueen’s name).
In their opposition of Metropolitan Investment Group’s trademark applications, McQueen further argued that “the Applicant’s marks were deceptively similar to the Alexander McQueen marks and had been filed in respect of similar goods and services,” and “the Alexander McQueen marks had acquired a reputation in Australia such that use of the Applicant’s marks would be likely to deceive or cause confusion, and that the Applicant’s trade mark applications had been filed in bad faith.”
However, it appears that having established recognition as an international fashion house is not always enough to prevent similar trademark from being registered in Australia. According to the Australian Trade Mark Office (“ATMO”), which recently held a hearing on the matter, Alexander McQueen had not established requisite grounds for opposition. While the design house has been the subject of significant press coverage, especially in connection with the Duchess of Cambridge wearing a dress from the house for her wedding to Prince William, the design house failed to establish that it had established recognition in Australia with respect to the McQ logo or the word “McQUEEN” used on its own. The ATMO held that McQueen produced sufficient evidence to establish that ALEXANDER McQUEEN had a reputation in Australia, the design house did not produce evidence to show that it had such a long standing reputation that would cause the Christine McQueen brand to be perceived as a brand extension of Alexander McQueen. Specifically, McQueen did not produce clear evidence of the date it commenced sales into Australia and could only prove it had made sales dating back to some time before 2005. Finally, the ATMO’s officer noted that a different outcome may have resulted if McQueen had been able to produce better evidence proving its reputation in its marks in Australia.
As a result, CHRISTINE McQUEEN and CMQ logo trademark applications have been allowed to proceed to registration.