The Rolling Stones Block Registration of Australian Fashion Brand – Intellectual Property

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Music has influenced fashion for decades. When we think of musical eras and icons such as Frank Sinatra, Madonna and Snoop Dogg, we imagine their particular aesthetics and, as fans, we want to dress like them. But when does inspiration cross the line into bad faith?

Rock and roll icons, the Rolling Stones (under their company Musidor BV), prevented the registration of the trademark of Australian fashion brand JAGGER & STONE.

JAGGER & STONE is the brand of We the Wild Ones Pty Ltd, an Australian designer, manufacturer and retailer of clothing and accessories. On March 19, 2018, We the Wild Ones applied for registration of the following trademark in Class 25 for a variety of apparel:

The Rolling Stones own trademark registrations in Australia for “ROLLING STONES” and “MICK JAGGER” for a wide range of goods and services, including clothing.

The Rolling Stones opposed the registration of the JAGGER & STONE mark on the following grounds:

  • JAGGER & STONE is the same or very similar to another Australian registered trademark – s44;

  • Use of the JAGGER & STONE trademark would be against the law and, in particular, would constitute fraudulent marketing and/or misleading or deceptive conduct – s42(b);

  • Due to a connotation of the JAGGER & STONE mark, its use would be likely to mislead or lead to confusion – s43;

  • The JAGGER & STONE brand is similar to a brand that has gained fame in Australia – s60; and

  • The JAGGER & STONE application for registration was made in bad faith – s62A.

In her decision, the delegate only considered the motive of bad faith.

The Rolling Stones argued that the trademark application was intended to gain a springboard or advantage by exploiting the reputation of Mick Jagger and the Rolling Stones. It has been argued that the reputation of Mick Jagger and the Rolling Stones in Australia is such that the word ‘Jagger’ immediately conjures up Mick Jagger, the lead singer of the Rolling Stones – often referred to as ‘the Stones’.

We the Wild Ones didn’t deny knowing about Mick Jagger and the Rolling Stones, but co-director Lucy Jackson offered the following explanation for the brand choice:

“The choice of the words ‘Jagger’ and ‘Stone’ was derived from the definitions of each word and their resemblance to company directors…I am considered the ‘Jagger’. Urban Dictionary defines ‘Jagger’ as “psychotic demigod not to ride [their] bad side…” …Being the aggressive and determined half of the duo, it’s a word friends often refer to me…Nicki Westcott is considered the ‘Stone’. The reference to ‘Stone’ is more than a symbolic meaning and represents Nikki’s personality and characteristics as ‘grounded’, ‘steady’, ‘down to earth’ and the ‘rock’ of the company.”

It appears the delegate was unconvinced by this explanation, but it was ultimately the content that had been posted on Jagger & Stone’s Instagram account that worked against We the Wild Ones.

The delegate noted that the images posted to Instagram featured JAGGER & STONE branding alongside images of models posing with electric guitars, amplifiers and a sign reading, “If the music’s too loud, you’re too old” ( an expression coined by American musician Ted Nugent, not the Rolling Stones). We the Wild Ones offered no explanation as to why they associated the brand with loud music, bands, electric guitars and amplifiers.

To establish a ground of opposition based on bad faith (s62A), bad faith must exist at the time the application is filed. However, the delegate inferred from the post-filing conduct of We the Wild Ones (the Instagram posts), that they intended to use the mark with other iconography to create and benefit from an association with the reputation of Mick Jagger and the Rolling Stones.

JAGGER & STONE trademark registration was refused.

The key point for brand owners is to exercise caution when drawing inspiration from artists and to avoid making unauthorized references or associations with other merchants’ brands and reputations.

Full decision: Musidor BV v We the Wild Ones Pty Ltd [2021] ATMO 25 (March 24, 2021)

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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