Fashion designer wins trademark fight with jewellery giant Tiffany & Co.

Luxury jewellery chain Tiffany & Co. has been unsuccessful in an attempt to prevent fashion designer Tiffany Koury from registering her name as a trademark, in a hearing which heard evidence from MySpace and references to Greek linguistics.

While Koury did not provide evidence or any representation at the hearing, Australian Trademarks Office hearing officer Frances Aarnio ruled in favour of the New York-based fashion designer as there could be no “danger of deception” between the two brands.

The legal defense for Tiffany & Co., Jasmine Burns from Allens Arthur Robinson, submitted a declaration including evidence gathered from Koury’s MySpace page.

“Her declaration provides the results of internet research she conducted that showed the holder’s use of the term Tiffany Koury in relation to fashion garments inspired by famous Hollywood stars, such as Audrey Hepburn, Marlene Dietrich and Grace Kelly,” Aarnio wrote.

“Her research also revealed references to Audrey Hepburn and the movie Breakfast at Tiffany’s in lists of heroes and favourite movies appearing on the holder’s MySpace page.”

A significant portion of the decision was dedicated to a discussion of the name “Tiffany”, with Aarnio writing she was “unaware” how frequently the name appears in the general Australian population, but acknowledged its limited popularity.

“Usual medieval English form of the Greek name Theophania ‘Epiphany’, from theos ‘god’ + phainein ‘to appear’. This was once a relatively common name, given particularly to girls born on the feast of the Epiphany (6 January) and it gave rise to an English surname.”

“As a given name, it fell into disuse until revived in the 20th century under the influence of the famous New York jewellers, Tiffany’s, and the film, starring Audrey Hepburn, Breakfast at Tiffany’s (1961)… Tiffany has also appeared as the first name of female characters in the television shows Underbelly, United States of Tara and Neighbours“.

Aarnio acknowledged Tiffany and Co’s prominence in the jewellry industry, citing worldwide net sales of $2.5 billion in 2006 and advertising expenditure approximately $119 million for the same year.

Tiffany and Co. currently has over 246 stores globally, with stores located in Sydney, Melbourne, Perth and Brisbane.

“The opponent has extended its reputation beyond normal marketing channels via awards and commissions it has won… The opponent has garnered a significant reputation in use of its Tiffany trademarks, both internationally and in Australia,” Aarnio wrote.

However, she found for Tiffany & Co. to successfully block Koury from registering her name as a trademark, there must be a connotation that gives rise to deception or confusion. As the two companies market different products, and the name ‘Koury’ appears alongside ‘Tiffany’, she ruled “any connotation of the opponent would be neutralised”.

“In summary, I am not satisfied that there is a connotation or secondary meaning… which suggests that its use would not be likely to deceive or cause confusion in relation to the specified goods.”