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Karen Walker v Runaway the Label: A reminder of what is required for honest concurrent use

Karen Walker Limited successfully opposed the registration of the trade mark Runaway the Label by Premonition Designs Pty Ltd and Mamta Group Pty Ltd in Australia¹.

This case is a timely reminder of the risks of adopting trade marks without proper due diligence, and underscores the importance of conducting thorough clearance searches and seeking legal advice before adopting a brand.

Background

Karen Walker Limited, a renowned New Zealand fashion house with global reach, was incorporated in 1990.  While the Opponent largely trades under the trade mark KAREN WALKER, the RUNAWAY brand has been used, continuous in Australia since 2003.   The Opponent registered RUNAWAY in relation to class 25 goods in Australia in May 2007 and for class 3 goods in December 2013. 

The Applicants first used Runaway the Label in relation to clothing in 2013.  On 14 April 2015 they filed an application to register the trade mark in class 25.  This application did not progress due to the prior existence of the Opponent’s registered trade mark. 

In January 2021 the Opponent wrote to the Applicants objecting to their use of Runaway the Label.  Notwithstanding this, the Applicants filed the application under opposition on 12 February  2021.  The applicants’ application was accepted on the basis of evidence of honest concurrent use under section 44(3)(a) of the Trade Marks Act 1995 (Cth). 

The Opponent filed an opposition on several grounds, most notably section 44 of the Trade Marks Act, that the Applicants’ trade mark is substantially identical with or deceptive similar to the Opponent’s trade mark for similar goods and closely related services.

Key Findings

• Similarity of Goods and Services: The Applicants’ clothing and online retail services were found to be similar or closely related to Karen Walker’s registered clothing goods.
• Deceptive Similarity: The Delegate found that Runaway the Label was deceptively similar to Karen Walker’s RUNAWAY mark. The shared dominant word Runaway was found to create a real and tangible risk of consumer confusion, especially given the similar goods and closely related services.  The Delegate considered that the additional wording THE LABEL in the Opponent’s trade mark would probably not be recalled and therefore did not assist to distinguish the trade marks. 
• Honest Concurrent Use Rejected: Although the Applicants had used the mark for over a decade, they failed to demonstrate honest adoption. The Delegate was not satisfied that reasonable steps—such as trade mark searches or legal advice—had been taken prior to adoption. Continued use  in spite of awareness of Karen Walker’s rights, arising from with the prior failed application and the letter of objection from the Opponent, further undermined their position.
• Registration Refused: The opposition under section 44 was upheld, and the application was refused. Costs were awarded to Karen Walker Limited.

Why This Matters

This decision underscores the importance of conducting thorough clearance searches and seeking legal advice before adopting a brand—particularly in competitive industries like fashion.

Call to Action

This case is a timely reminder of the risks of adopting trade marks without proper due diligence. For tailored advice on trade mark protection in New Zealand or Australia, or to discuss how this decision might impact you, get in touch with our IP team.

Elena Szentiványi - July 2025

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