Aussie icon trademark clashes past & present

03 March 2012 By Lawyers Weekly

Former Miss Universe Jennifer Hawkins has hit a snag with her swimwear line Cozi, which is now embroiled in a trademark dispute with online men's swimwear retailer Caussie. Kevin Stapley…

Former Miss Universe Jennifer Hawkins has hit a snag with her swimwear line Cozi, which is now embroiled in a trademark dispute with online men's swimwear retailer Caussie.

Kevin Stapley registered the trademark Caussie in 2005. Cozi by Jennifer Hawkins was lodged in June last year, and opposed by Stapley in February 2009.

Hawkins' application was lodged by Mallesons Stephen Jaques.


Hawkins trademark troubles got Folklaw thinking about some other iconic Aussie brands that have toughed it out on the trademark front in recent years.

Recent Aussie icons in trademark disputes:

1. Apple Inc v Woolworths

Apple Inc challenged the use of Woolworths' new apple-shaped trademark, which it claimed looked too similar to the well-known brand image instantly recognisable to Mac users.

The new Woolworths trademark was lodged in August 2008, and disputed by Apple Inc (represented by Baker & McKenzie) in March 2009.

Lawyers Weekly Discover

2. Perry v Perry

International pop singer Kate Perry, famous for her single "I kissed a girl", decided to play kiss and make up after threatening to sue Australian fashion designer Kate Perry for trademark infringement. Aussie fashion designer Perry feared her newly established label would collapse if the suit progressed. However, singstar Perry backed out of the case an hour before it was due to go to court.

3. Ugh v Ugg

The ultimate Aussie icon, the Ugg boot, owned by Deckers Outdoor Corp, ran into legal problems. In 1971, Shane Stedman registered the term "UGH-BOOT" on the Australian Trade Mark Registry, and Deckers subsequently purchased the registration, which included UGG AUSTRALIA, in Australia. A secondary issue arose through disputes over the manufacturing of boots in Australia and abroad. Owing to US trademark laws, many companies selling into the US now market these boots as "sheepskin boots". Popular brands are Emu Australia, Warmbat, Uggs-N-Rugs, RocketDog, Bear Paw, Koolaburra and Real Australia. In 2006 a Save our Aussie Icon campaign was started online by Aussie Manufacturers to raise awareness about the ongoing trademark confusion.

4. Whacko v Smacko

In Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767 two pet food companies faced off for the rights to use the word Whacko. Effem had the registered trademarks SCHMACKOS and DOGS GO WACKO FOR SCHMACKOS. Wandella applied for registration of the trademark WHACKOS in the same class as Effem's marks. Justice Moore gave some serious thought to the word Whacko, determining that it was a powerful component of Effem's mark, which would be retained in the memory of the relevant consumer and would be recalled when Wandella's mark was seen. The court held that Wandella's mark WHACKOS was deceptively similar to Effem's mark DOGS GO WACKO FOR SCHMACKOS. And dogs everywhere breathed a sigh of relief.

5. McDonald's v McBratney

While not quite as well known as Aussie icons such as Vegemite and Ugg boots, Brisbane lawyer Malcolm McBratney has a strong reputation in the field of intellectual property law. In 2006, Lawyers Weekly reported on a case labelled a "McDavid beating McGoliath". In August 2006, McBratney won a trademark challenge against fastfood giant McDonald's over his use of 'Mc' on a community rugby team's shorts.

"What it boils down to is that McDonald's seems to be trying to own not only the McDonald name but everything beginning with 'Mc'. There are a lot of people with Irish and Scottish heritage who'd dispute that, including me, and I'm prepared to take them on," he told Lawyers Weekly.

Aussie icon trademark clashes past & present
Intro image
lawyersweekly logo