Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Workwear

Workwear Industries Pty Ltd v Pacific Brands Workwear Group Pty Ltd [2013] FCA 1042 (15 October 2013)

This is another case which reinforces the difficulty in protecting descriptive business names. It involved an unsuccessful application by Workwear Industries (WI) alleging Pacific Brands engaged in misleading or deceptive conduct by carrying on business under The Workwear Group name and logo.

WI had carried on business in the workwear clothing field since 1993. In about 2001, it adopted a logo containing the words Workwear Industries. The evidence was unclear as to when WI adopted its current logo shown below, but it was before 2012.

Workwear Industries Group Logo

WI sold its workwear products by reference to its Riggers Workwear and Progard brands.

In 2010 Pacific Brands restructured its various workwear business units and consolidated them into a single group. In 2012, it registered the business name The Workwear Group and adopted the logo shown below:

Workwear Group Logo

Pacific Brands continued to sell its workwear products by reference to its well established King Gee, Hard Yakka, Stubbies, Stylecorp and NNT Uniforms brands.

There was some evidence of confusion which was of a minor nature and WI could not show that it had suffered any quantifiable loss of sales.

Siopis J referred to earlier cases involving competing names which were descriptive and noted that small variations will be sufficient to differentiate them. Also, where traders use descriptive words as part of their trade names, the risk of confusion by members of the public must be accepted.

His Honour summarised his conclusions as follows:

  1. In my view, the impugned conduct would not induce, nor be likely to induce, in an ordinary or reasonable consumer, the mistaken belief that he or she was purchasing a workwear product from the applicant when in fact he or she was purchasing it from the respondent. This is because the ordinary or reasonable consumer, intent on purchasing such a product, needs to complete a process which requires the precise identification of the product concerned, by reference to its distinctive name brand and its distinctive product code. This product specific identification process, when engaged in by an ordinary or reasonable consumer, would preclude the respondent’s logo from having a material influence in the purchasing process.
  2. Nor, in my view, would the impugned conduct induce, or be likely to induce, in an ordinary or reasonable consumer who has received an invoice rendered by the respondent, a mistaken belief that the invoice was rendered by the applicant. This is because an ordinary or reasonable consumer would, in considering the invoice rendered by the respondent, have regard to all of the information on the invoice rendered by the respondent and by reason of the matters identified at [115]-[122] above, conclude that it was the respondent that had rendered the invoice. Nor, for the same reasons, would the impugned conduct cause, or be likely to cause, an ordinary or reasonable consumer to entertain the mistaken belief that the respondent’s business was associated or affiliated with the applicant’s business.
  3. In addition, more generally, the respondent’s letterhead refers, specifically, to its five brand names, and contains the respondent’s address, and, for that reason, an ordinary or reasonable consumer would not mistake a letter from the respondent as being from the applicant, or that the applicant and respondent were associated or affiliated.
  4. Further, an ordinary or reasonable consumer in dealing with invoices and other documents from the applicant and the respondent, would appreciate that there are significant differences between the two logos. The most significant difference is the fact that the applicant’s logo contains as its most prominent feature, a large “W” symbol, whereas the respondent’s logo contains no such symbol. Secondly, the applicant’s logo contains the word, “Industries” whilst the respondent’s logo does not. Thirdly, the respondent’s logo contains the words, “A division of Pacific Brands”, whilst the applicant’s does not.