Australian Trade Marks Office (ATMO) decision (Karen Walker Limited v Premonition Designs Pty Ltd & Mamta Group Pty Ltd [2025] ATMO 103) reinforces a growing body of Australian case law raising the bar for honest practices.
Applicants are expected to conduct proper clearance searches and seek appropriate legal advice before adopting a mark in Australia if they want to obtain a registration through honest concurrent use.
Karen Walker Limited (KWL), a globally recognised New Zealand fashion label, opposed an Australian trade mark application filed by Premonition Designs Pty Ltd and Mamta Group Pty Ltd (PDMG) for RUNAWAY THE LABEL covering clothing goods in class 25 and online retail services in class 35.
KWL used RUNAWAY as a clothing and accessory brand in Australia since 2003, and owns prior Australian trade mark registrations 1177410 and 1615117 for RUNAWAY in classes 25 and 3.
PDMG are Sydney-based fashion designers and retailers, operating under the RUNAWAY THE LABEL brand in Australia since 2013. PDMG applied to register RUNAWAY THE LABEL back in 2015, and was blocked by KWL’s earlier registration in class 25. KWL also issued a letter asking PDMG to stop using the RUNAWAY THE LABEL brand in 2021.
The ATMO found the marks to be deceptively similar, that the goods / services were also similar / closely related, and there was a real risk of consumer confusion.
Crucially though, PDMG argued that that the application should be registered based on honest concurrent use under section 44(3)(b) of the Trade Marks Act 1995, because its mark was honestly adopted without knowledge of KWL’s rights and concurrently used since then without confusion.
The ATMO dismissed PDMG’s honest concurrent use claim because it didn’t meet the honesty threshold, applying factors from Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252:
- PDMG failed to take reasonable steps to verify the availability of the mark before using it.
- PDMG continued using the mark after becoming aware of KWL’s earlier rights and filed the application in question with knowledge of KWL’s earlier rights.
- There was a high likelihood of confusion given the distinctiveness of RUNAWAY in the fashion context and the high level of similarity in the marks (given THE LABEL is also generic in relation to that industry).
In essence, honest use must be informed use – without evidence of clearance searches or legal advice, claiming ignorance won’t cut it.
