Megan Gale’s ISOLA brand and the importance of trade mark searching

Some readers may have read the article in The Melbourne Age on 22 May 2010 reporting on a trade mark issue Megan Gale is experiencing with the upcoming launch of her bikini brand ISOLA.

For those who haven’t, Ms Gale adopted the trade mark because ISOLA means "island" in Italian. It was therefore a perfect sounding name for her new bikini range – both exotic and reflected an ideal summer destination.

Unfortunately it has now come to light, only months before the intended launch, that another bikini brand has been sold in Australia for many years, under the trade mark ISSLA. The owner of the ISSLA brand believes Ms Gale’s ISOLA mark is too similar to its trade mark and has objected to Ms Gale using the trade mark.

The objection has been filed at IP Australia against Ms Gale’s trade mark application, and a contentious opposition proceeding where both parties will need to file evidence and a decision eventually handed down by a delegate of the Registrar of Trade Marks, will take place. It will now be up to the parties to reach a resolution in this matter or have a decision made for them by IP Australia.

Whether or not the trade marks ISSLA and ISOLA are considered as too similar, this story does remind us of the importance of undertaking trade mark searching prior to launching a product in Australia. The searching should not only cover registered and pending trade marks on the IP Australia database, but also general Internet searching, eg on the Google® search engine, for trade marks which are in use but not registered (known as "common law trade marks"). The Australian trade mark system works on the "first to use" principle, meaning that owners of unregistered trade marks can successfully prevent registration of similar marks at IP Australia in some instances.

If you are considering launching a new brand in the marketplace, we recommend that you always consider undertaking a comprehensive trade mark search before substantial funds are expended into the launch.