Starite Distributors Pty Ltd v Nordstrom, Inc

Starite Distributors Pty Ltd (Starite) sought to register the trademark "STARITE" for use in relation to clothing and footwear. Nordstrom, Inc. (Nordstrom), a US-based department store chain, opposed this application, relying on its prior use and registration of the trademark "NORDSTROM" and its associated reputation in Australia. The dispute concerned whether Starite's proposed mark was deceptively similar to Nordstrom's registered mark, and whether the registration of Starite's mark would be contrary to s 60 of the *Trade Marks Act 1995* (Cth) (the Act), which prohibits the registration of a mark that is identical or deceptively similar to a mark that has become well known in Australia through use by another person. The matter was heard in the Federal Court of Australia.

The primary legal issues before the court were: (1) whether the trademark "STARITE" was deceptively similar to the trademark "NORDSTROM" for the purposes of s 60 of the Act; and (2) whether Nordstrom had established that its trademark "NORDSTROM" had become well known in Australia through use. The court was required to assess the degree of visual, phonetic, and conceptual similarity between the two marks, and to consider the extent of Nordstrom's use and promotion of its mark in Australia.

In its reasoning, the court applied the established principles for assessing deceptive similarity, which involve considering the marks as a whole, the imperfect recollection of consumers, and the potential for confusion in the marketplace. The court found that while the marks shared some phonetic similarities, they were visually and conceptually distinct. Crucially, the court determined that Nordstrom had not adduced sufficient evidence to demonstrate that its trademark "NORDSTROM" had become "well known" in Australia through use, as required by s 60 of the Act. The evidence presented related primarily to Nordstrom's international reputation and its limited activities within Australia, which the court deemed insufficient to meet the threshold of being "well known" to the relevant section of the Australian public.

Consequently, the court dismissed Nordstrom's opposition to the registration of the "STARITE" trademark.