Luxury fashion brand Giorgio Armani has successfully prevented jewellery designer “Arman’s Fine Jewellery” from registering four trade marks containing “Arman” for jewellery goods and services.1
- When providing evidence for a trade mark to be accepted or registered under the honest concurrent use provisions of the Trade Marks Act, it is important to submit a sufficient amount of evidence of use. The evidence of use must be both use of the trade mark as applied for, and in relation to the goods and services claimed.
Giorgio Armani (GA) first sold goods bearing the words “GIORGIO ARMANI” in 1976, and enjoys a globally renowned reputation as a high-end fashion house. The brand holds Australian trade mark registrations for “GIORGIO ARMANI” and “ARMANI” for a variety of clothing and accessory goods and services (GA Marks).
Arman’s Fine Jewellery Pty Ltd (AFJ) applied to register the following trade marks in Australia in class 14 for jewellery and class 42 for the design of jewellery:
|Trade Mark no:||Trade Mark|
|2021554||Arman’s Fine Jewellery|
GA opposed registration of the AFJ Marks on several bases under the Trade Marks Act 1995 (Cth) (the Act), but was only required to prove ground of opposition. The Registrar found GA was successful in demonstrating that the AFJ Marks were deceptively similar to its GA Marks in relation to closely related goods and services.
Similarity of the Marks
The Registrar did not consider the AFJ Marks and the GA Marks were substantially identical due to the spelling difference between the letter “i” in the GA Marks and the “s” in the AFJ Marks, which also impacted pronunciation. However, the Registrar did consider that when accounting for the imperfect recollection of an ordinary consumer, the AFJ Marks were deceptively similar to the GA Marks both visually and phonetically. The lack of established meaning in both the AFJ Marks and the GA Marks further exacerbated the potential for confusion.
Use of the Marks
AFJ claimed the AFJ Marks were first used in 1986, and had developed a reputation in relation to fine jewellery, particularly engagement rings. The Registrar considered that it may have been the case that AFJ had used the AFJ Marks concurrently for this period, but the evidence provided fell “well short of substantiating this”. The Registrar considered there to be “notable deficiencies” in the evidence submitted by AFJ, which did not demonstrate use of the AFJ Marks in relation to the goods and services claimed.
AFJ contended that the AFJ Goods and Services were of an entirely different nature, being a “business-to-business” encounter rather than a consumer and business interaction. The Registrar did not accept this argument, noting that the actual use made of the marks was irrelevant where the scope of the goods and services claimed was unqualified, and would be considered closely related even if qualified.
As GA succeeded on this first ground of opposition, the Registrar did not address the other grounds raised.
1 Giorgio Armani S.p.A v Arman’s Fine Jewellery Pty Ltd  ATMO 198.