IP SERVICE INTERNATIONAL resists Oppositions against Sage + Paige Trade Mark Applications before IP Australia

IP SERVICE INTERNATIONAL successfully defended trade mark oppositions against the "Sage + Paige" Trade Mark Applications in the name of Sage and Paige Collective Pty Ltd.

Key Issues

The case concerned oppositions by the U.S. fashion house Paige, LLC under s 52 of the Trade Marks Act 1995 (Cth) to our client’s applications for SAGE + PAIGE in two stylisations (a figurative “words in disc” mark and a “fancy” word mark), both filed on 17 June 2020 across Classes 14, 18, 25 and 35 (jewellery, bags/leather goods, apparel, and retail/online retail and related services). The opponent relied on earlier Australian registrations for PAIGE (including for clothing in Class 25 and bags and related goods in Class 18) and pressed grounds under ss 44 and 60, and s 42(b) by reference to the ACL and passing off.

Findings

For s 44, it was effectively accepted that the parties’ goods were similar and the services closely related, so the contest turned on whether our client’s marks were substantially identical or deceptively similar to PAIGE. The delegate rejected the opponent’s contention that PAIGE was the essential feature of our client’s marks or that consumers would inevitably perceive “SAGE + PAIGE” as a collaboration with the opponent. In particular, the delegate treated SAGE and PAIGE as given names to be given equal weight, noted that PAIGE is not uncommon, and applied established guidance (including the “coupled given names” convention in fashion branding) to find there was no real and tangible danger of deception or confusion. On that basis, s 44 was not made out.

For s 60, the delegate found the opponent had only a modest Australian reputation as at the relevant date, primarily in women’s denim/jeans, with sales and advertising evidence not demonstrating broad market penetration immediately prior to the filing date. The delegate further held that any residual confusion risk was confined and, in any event, was defrayed by the differences in the marks, the lack of deceptive similarity, and the opponent’s boutique positioning, which would heighten consumer care. Accordingly, the opponent failed to establish that, because of its reputation, use of our client’s marks would likely deceive or cause confusion.

The s 42(b) ground—based on alleged contraventions of ss 18 and 29 of the ACL and passing off—was advanced on the same factual footing as s 60 and therefore also failed. The delegate noted that the ACL threshold is more stringent than s 60, and that where the ACL case is not established, a passing off claim is unlikely to succeed on the same facts.

Outcome

The Registrar dismissed both oppositions in the hearing before IP Australia where Sage and Paige were represented by Max Steinhausen (2023] ATMO 57).

Paige, LLC appealed the decision before the Federal Court of Australia, which ultimately dismissed the appeal, confirming the Registrar's finding that the mark “Sage + Paige" is visually and conceptually distinct from the mark “Paige", and that there was no real and tangible risk of confusion (Paige LLC v Sage and Paige Collective Pty Ltd – NSD 501/2023).

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