Tiffany fails to stop Tiffany

Upmarket jewellery brand, Tiffany & Co has failed to prevent the name “Tiffany Koury” being registered as a trademark in Australia.

The Australian Trademarks Office ruled in favour of Tiffany Koury stating that there could be no "danger of deception" between the two brands.

Koury is a New York-based fashion designer and the Trademarks Office looked at evidence that included Koury's use of the term "Tiffany Koury" in relation to fashion garments inspired by famous Hollywood stars.

While Koury did not provide evidence or any representation at the hearing, 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 decision also discussed the name "Tiffany" and its limited popularity in Australia.

The name Tiffany is the medieval-English form of the Greek name Theophania - a combination of theos (god) and phainein (to appear). The name 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 first name, it fell into disuse until revived in the 20th century under the influence of the famous New York jewellers, Tiffany's (as counsel for Tiffany & Co. argued), and the film, starring Audrey Hepburn, Breakfast at Tiffany's (1961).

However, to prevent Koury's registration of "Tiffany Koury", the Australian Trademarks Office stated that there had to be a connotation giving rise to deception or confusion.

As the two companies market different products, and the name 'Koury' appears alongside 'Tiffany', the Office decided that any connotation "would be neutralised".

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

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.

"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."

Koury said she did not have any plans to produce a jewellery line at this stage.

More information: Tiffany and Company v Tiffany C Koury

Posted October 01, 2009