Trade marks in fashion: Designer refused right to own name

In 2000 Mr Morrissey sold the famous Morrissey label to the Oroton Group, which in 2006 on sold it to a Mr Lyle Hudson who operates M Webster Holdings. In 2008 Mr Morrissey applied to register marks for a new brand that would support fashion and lifestyle accessories, Peter Morrissey, which is to be released through the Big W department store chain. However the application was opposed by Mr Hudson on the grounds that a similar mark for a same or similar product already existed in Australia and that to allow the new mark would be likely to confuse and deceive the public owing to the importance of the Morrissey name to the success of the existing brand.

IP Australia noted that it was required to ascertain whether there was a “finite and non-trivial” risk that the public would be confused or deceived by allowing the new mark to be registered. The hearing officer was convinced on the evidence before her that such a risk existed and that a significant number of consumers would at the very least be in considerable doubt about the connection between the two brands and Mr Morrissey’s relationship with them. It was concluded that the registration of the Peter Morrissey mark would undermine the value or ‘good will’ that Hudson had bargained for when he acquired the rights to the Morrissey label. The application to register the marks was successfully opposed by Hudson, and therefore Mr Morrissey was unable to secure the right to trade mark that range of products in his own name.

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