McCorquodale v Masterson [2004] FCA 1247

McCorquodale v Masterson [2004] FCA 1247

The use of 'Diana's Legacy in Roses' for live roses, with the accompanying device, directly connotes the late Princess Diana. Given the widespread recognition of the Fund and its licensing activities in Australia at the priority date, registration and use of the respondent's mark would likely lead a significant sector of the public to believe there was sponsorship or approval by the Fund or the Estate of the late Princess. This likelihood of confusion or deception, due to the connotation in the mark, satisfies the ground of opposition under s 43 of the Trade Marks Act 1995 (Cth).

Parties
First Applicant: Sarah McCorquodale; Second Applicant: Richard John Carew Chartres; Third Applicant: The Diana, Princess of Wales Memorial Fund; Respondent: Bonnie Masterson
Jurisdiction
Australia
Judgment Date
24 September 2004
Procedural Posture
Appeal From Registrar's Delegate Trade Marks Opposition / Final Judgment After Full Hearing
Outcome
Appeal allowed; opposition sustained; registration refused; costs ordered against respondent.
Legal Topics
Trade Mark Opposition, Likelihood of Deception or Confusion, Connotation in Trade Marks, Sponsorship or Endorsement Suggested by Mark
Intellectual Property Trade Marks Trade Mark Opposition Likelihood of Deception or Confusion Connotation in Trade Marks Sponsorship or Endorsement Suggested by Mark

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 31 Party arguments 2 Amounts and remedies 7
Sign in to unlock

Parties

Sarah McCorquodale

First Applicant

Richard John Carew Chartres

Second Applicant

The Diana, Princess of Wales Memorial Fund

Third Applicant

Bonnie Masterson

Respondent

Procedural Posture

Appeal From Registrar's Delegate Trade Marks Opposition / Final Judgment After Full Hearing

Legal Issues

  1. 1 Whether the impugned trade mark 'DIANA'S LEGACY IN ROSES' would, because of its connotation, be likely to deceive or cause confusion under s 43 of the Trade Marks Act 1995 (Cth)

Ratio Decidendi

The use of 'Diana's Legacy in Roses' for live roses, with the accompanying device, directly connotes the late Princess Diana. Given the widespread recognition of the Fund and its licensing activities in Australia at the priority date, registration and use of the respondent's mark would likely lead a significant sector of the public to believe there was sponsorship or approval by the Fund or the Estate of the late Princess. This likelihood of confusion or deception, due to the connotation in the mark, satisfies the ground of opposition under s 43 of the Trade Marks Act 1995 (Cth).

Court Disposition

Appeal allowed; opposition sustained; registration refused; costs ordered against respondent.

Orders

  • Frances Shand Kydd (deceased) removed as party; proceeding continued in names of remaining applicants.
  • Decision of delegate of Registrar of Trade Marks made on 31 May 2001 reversed.