02 June 2008

JWS advises Strandbags in successful defence

Johnson Winter & Slattery advise The Strandbags Group in successful defence of Special Leave Application in the High Court5 Johnson Winter & Slattery Partner Christine Ecob has acted as the principal solicitor representing The Strandbags Group in Colorado Group Ltd & Anor v Strandbags Group Pty Ltd. On Friday 23 May 2008 the High Court (comprised of Justices Kirby, Hayne and Cerennan) unanimously rejected an application by Colorado Group Limited for special leave to appeal against the decision of the Full Federal Court in Colorado Group Limited & Anor v Strandbags Group Pty Limited. This decision by the High Court brings to a close a long running attempt by the Colorado Group to stop the Strandbags Group from using its COLORADO brand on bags and small leather goods. Instead of stopping Strandbags Group's use of its COLORADO brand, the court action by Colorado Group has in fact resulted in Colorado Group Limited's own Colorado trade mark registration being cut back in the protection it provides. The case involved a Federal Court action commenced by Colorado alleging trade mark infringement, passing off and a breach of the s52 of The Trade Practices Act and a subsequent counterclaim by Strandbags seeking an order for the partial removal of Colorado Group's trade mark from the Register. After the initial hearing on liability issues Justice Finkelstein of the Federal Court decided that Colorado Group's claims of passing off and breach of s52 failed absolutely and upheld its claim of trade mark infringement only in relation to backpacks. Colorado Group appealed this decision. The Full Federal Court (comprised of Justices Kenny, Allsop and Gyles) unanimously dismissed Colorado Group Limited's appeal from the decision of Justice Finkelstein and unanimously allowed the cross appeal by Strandbags Group. They confirmed that Strandbags was free to sell its 'Colorado' brand range of bags (including backpacks) and small leather goods and that these items must be removed from the Colorado Group's registered 'Colorado' trade mark. The Strandbags Group is one of Australia's largest and most successful specialty retailers, operating over 200 stores across Australia & New Zealand. Their range of products includes handbags, wallets, travel goods and business cases as well as a range of accessories. "This case represents a major victory for Strandbags" says Ecob. "Strandbags, and the business who sold it the 'Colorado' brand in 1998, have together been using the 'Colorado' brand on handbags since 1991. This decision removes the trade mark protection that Colorado Group had obtained for the use of the word 'Colorado' in relation to bags, backpacks and wallets. It therefore confirms Strandbags' ongoing rights to use its 'Colorado' brand. Strandbags is delighted that these rights have now been confirmed." Deacons acted for Colorado. Johnson Winter & Slattery firm details JWS is a national corporate law firm with 36 partners, and offices in Sydney, Melbourne, Adelaide and Perth. The firm represents major private and public sector business organisations in a number of specialist practice areas. The firm is resourced with a bias to senior lawyers with exceptional legal and commercial expertise, ensuring timely decision-making and the delivery of superior legal services. Media contacts: Peter Slattery, Managing Partner Phone. +61 (8) 8239 7114 Mobile. +61 419 819 348 Email. peter.slattery@jws.com.au Alison Hatch, Communications Manager Phone. +61 (8) 8239 7148 Mobile. + 61 410 625 001 Email. alison.hatch@jws.com.au

Download: Strandbags Press Release 2 June 2008.pdf (76 Kb)

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