Tiffany & Co has failed in its opposition to the extension of protection in Australia of an IRDA for the mark TIFFANY KOURY in Tiffany and Company v Tiffany C Koury [2009] ATMO 68.
Tiffany & Co, the opponent, raised various grounds of opposition, however these principally relied upon establishing a likelihood of deception or confusion arising as a result of its significant reputation in the mark TIFFANY.
Having regard to the significant reputation of the opponent both in Australia and internationally, the hearing officer considered whether the opposed mark contained a connotation which would give rise to deception or confusion, concluding;
I accept that the word TIFFANY alone may connote the opponent. However, in the context of its use in the opposed IRDA, where it appears with the surname KOURY, I consider consumers are likely to see TIFFANY as a female name and any connotation of the opponent would be neutralized.
The hearing officer also considered that the opposed mark was not substantiality identical to either the TIFFANY or TIFFANY & Co marks owned by the opponent, noting that “for aural confusion to arise between KOURY and & Co, an exceptional degree of slurring or carelessness of pronunciation would need to be exercised”.On the question of deceptive similarity, the hearing office considered what were said to be a family of TIFFANY marks owned by the opponent but concluded that:
Although TIFFANY is an identifiable word in the IRDA, TIFFANY KOURY, it is not highlighted or presented in such a way that it would be seen as the dominant or memorable element of the mark, and does not retain a trade mark identity within that mark. Rather, it presents as a female first name. The word KOURY, being an uncommon surname in Australia, is likely to be the more memorable element. When the IRDA is considered as a whole and each of the elements given its fair weight, the net impression it creates is that of the full name of a female person. Because they create very different impressions they are unlikely to be confused for each other or viewed as belonging to a family of “Tiffany” trade marks.
Accordingly, the section 44 ground of opposition was dismissed as were related grounds under sections 42(b) and 60. All other grounds of opposition were also unsuccessful, resulting in protection of the IRDA being extended to Australia.