Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Bugatchi

Bugatti GmbH v Shine Forever Men Pty Ltd [2013] FCA 1116 (31 October 2013)

Successful application by Bugatti for infringement of its registered BUGATTI trade mark arising from the conduct of Shine Forever Men by importing and selling clothing and accessories bearing BUGATCHI and BUGATCHI UOMO. It also operated a retail outlet in Melbourne named BUGATCHI UOMO.

Shine Forever Men was an Australian distributor, since 2010, for Bugatchi Uomo Apparel Inc (BUA), a Canadian company. The BUGATCHI UOMO trade mark had been used in Canada since 1976. Clothing and accessories bearing this trade mark were first sold in Australia in 1991.

Shine Forever Men argued that it was not a user, in the relevant sense, of the trade marks owned by BUA but that was rejected by the judge, Tracey J who referred to E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 and Paul’s Retail Pty Ltd v Sports Leisure Pty Ltd (2012) 202 FCR 286 in confirming that an importer of goods who sells in Australia goods to which the mark has been applied overseas uses the mark as a trade mark.

In finding deceptive similarity had been established, Tracey J noted that, although the BUGATTI and BUGATCHI UOMO marks are not identical, there are similarities in a number of respects. They share the same first two syllables in the first word. The third syllable of the first words (“TI” and “CHI”) bear a close visual and aural similarity. The addition of the Italian word “UOMO did not serve to dissolve any confusion which might otherwise arise. The test requires an assessment of the response of the hypothetical customer with an imperfect recollection of the registered mark when confronted with the challenged mark. The BUGATCHI and BUGATCHI UOMO marks were used by Shine Forever Men on and in relation to the same type of goods as the registered BUGATTI mark. The “idea” which would be conjured up in the consumer’s mind is that of a European (and, perhaps, more specifically, Italian) fashion brand. The visual and aural similarity between the two marks is such as to cause to wonder whether it might not be the case that the products bearing the marks or closely related products come from the same source or to wonder or be left in doubt about whether the two sets of products come from the same source. As a result there was a real danger of confusion.