Stella McCartney Limited v Wong Kwaid Hua

This case involved an opposition by Stella McCartney Limited (the Opponent) to an application by Wong Kwaid Hua (the Applicant) to register the trade mark "ST ELLA NEW YORK" for goods and services including cosmetics, skincare, and beauty services. The Opponent relied on grounds of opposition under sections 43, 44, 59, and 60 of the *Trade Marks Act 1995* (Cth). The hearing officer, Iain Campbell Thompson, considered the evidence and submissions presented by both parties.

The primary legal issues before the hearing officer were whether the Applicant's proposed trade mark was likely to deceive or cause confusion under section 43, whether it was deceptively similar to the Opponent's registered trade mark "STELLA" under section 44, whether the Applicant intended to use the trade mark in Australia under section 59, and whether the Opponent's trade mark had acquired a reputation in Australia such that the Applicant's use would be likely to deceive or cause confusion under section 60. The hearing officer also considered the nature of the goods and services for which registration was sought and the registered trade marks relied upon by the Opponent.

In relation to section 43, the hearing officer found that the evidence did not establish that the use of the trade mark was likely to deceive or cause confusion, particularly as some goods were manufactured in the USA. However, the hearing officer found that the Opponent had established its ground of opposition under section 44. This was based on the conclusion that the trade marks "STELLA" and "ST ELLA NEW YORK" were deceptively similar, and that the goods and services specified in the application were either the same as, or closely related to, those covered by the Opponent's registered "STELLA" trade marks. The hearing officer determined that the Applicant had not established its opposition under sections 59 or 60.

Ultimately, the hearing officer refused to register the trade mark application based on the successful opposition under section 44. The Opponent was awarded costs.