British fashion designer Stella MCCartney has won a legal battle against a cosmetics company in Australia with the help of a “lazy accent” argument. Chatswood makeup and skincare business owner Wong Kwai Hua tried to register “St Ella New York,” but the famous designer successfully opposed its trademark, claiming that Australians would pronounce their brand names so closely as they tend to be “lazy in their pronunciation.”
Mr Hua, whose company is a subsidiary of the Melilea International Group of Companies based in Malaysia, wanted to register his company St Ella New York, but Ms Cartney’s legal reps argued that “St Ella” sounds too similar to the designer’s own “Stella McCartney Limited.”
Her lawyers filed the Notice of Opposition to Mr Hua’s trademark application in December 2010.
He claimed that “St Ella New York” was a “new and original concept,” and “is clearly used and pronounced as ST or SAINT ELLA not STELLA.”
But the designer, who sells luxury bags, clothes, and perfumes in the country, wasn’t buying it.
“Phonetically the marks are also very similar in bearing in mind the tendency for persons, particularly in Australia, to be lazy in their pronunciation,” Ms McCartney’s lawyers argued.
“Consequently, even if the Applicant’s mark was referred to as ‘sain ella,’ the word ‘saint’ could easily be slurrd to ‘snt’ and ‘snt ella,’ with the emphasis being on the word ‘ella’ and the name being misheard as the more recognised word ‘stella.’”
Hearing Officer Ian Campbell Thompson sided with Ms McCartney in his decision released in December 2013, saying he also found the trademark STELLA, which is in italic script, strongly resembles the trademark, thus people would likely confuse one trademark for the other.
And although Mr Thompson acknowledged that “St Ella” refers to the Grand Duchess Elizabeth Deodorovna of Russia, but not many people know of this Saint Ella person.
“This is not a case involving two different well-known words with very different meanings. It is where one is a well-known name and the other, which also clearly incorporates ‘ella,’ is not likely to be known. This gives rise to a substantially higher risk of confusion than two marks with separately well-known meanings,” the argument of Ms McCartney’s lawyers reads, which Mr Thompson agrees with.
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