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Bottom line: The Court affirmed the Board’s decision and held that St Ella is not similar to STELLA.

Stella McCartney Limited filed an invalidation action against the registration for stylized St Ella shown below for cosmetics.  The ground for invalidation is similarity with its prior marks STELLA and STELLA McCARTNEY (Section 4-1-11) and likelihood of confusion (Section 4-1-15).

<Registered mark in dispute>

The Board found that St Ella is not confusingly similar to STELLA or STELLA McCARTNEY and dismissed Stella McCartney’s invalidation action.  Stella McCartney requested a review of the Board’s decision before the IP High Court.

<Plaintiff’s argument>
- The Board erred in finding that the mark in dispute, stylized St Ella will be pronounced as [Saint Ella] only.  It will also be pronounced as [Stella], which is supported by a questionnaire survey conducted by an investigation company.
- The mark in dispute will be attached to cosmetics which are rather small products, thus the mark will be recognized as a series of successive 6 letters, i.e. STELLA.
- It is not common to abbreviate “saint” as St without period and a girl’s name Ella is not commonly known, whereas Stella is a familiar name.  Accordingly, the mark in dispute will not be recognized as a combined mark of “St (saint)” and “Ella”, and its pronunciation and connotation will not be derived from “Saint Ella”.
- Licensee of the mark in dispute is Stella’s Choice (M) Sdn. Bhd. and the brand creator’s name is Stella K.Y. Chin.  In view of these facts, traders and consumers are likely to recognize the mark as STELLA.
- The mark in dispute falls under Section 4-1-11 as the sound and meaning of the mark in dispute is identical with the cited mark STELLA.
- The mark in dispute falls under Section 4-1-15 as the sound and meaning of the mark in dispute is identical with the cited mark STELLA and the mark in dispute is likely to cause confusion with the cited mark STELLA.

<Defendant’s counter argument>
- The mark in dispute will be recognized as a combined mark of St and Ella due to the capitalization of S and E, a space between St and Ella, and integrity of St / Ella, respectively.  The mark in dispute will not be pronounced as [Stella].
- The questionnaire survey prepared at the request of Plaintiff is not reliable and does not reflect the recognition of traders and consumers precisely.  The results of questionnaire survey shows that minority group responded that the mark in dispute will be pronounced as [Stella], which contradict with the Plaintiff’s argument.
- It is supported by fact that saint is abbreviated to St without period in Japan.  Consumer will understand St (without period) refers to saint and can pronounce it as [saint].  Ella is a familiar name to Japanese.
- Names of the licensee and the brand creator is only available at website in English created abroad.  There is little chance that the Japanese consumers will know these names.
- The mark in dispute will not have sound and meaning of Stella and does not fall under Section 4-1-11 and Section 4-1-15.

<Court’s opinion>

1. Factual finding: 

- The mark in dispute is composed of 6 letters S, t, E, l, l and a.  St is connected and so is Ella, and there is a space between St and Ella.
- The mark in disputed is used by Malaysian company, Stella’s Choice (M) Sdn. Bhd. and the products bearing the mark in dispute is sold in south-eastern Asia.  The mark in dispute is pronounced as [Saint Ella] in these countries.  The brand creator of the mark in dispute is Stella K.Y. Chin.
- Plaintiff is the owner of the cited marks STELLA and STELLA McCARTNEY.  Products under the Plaintiff’s brand are sold in Japan and the Plaintiff’s brand or designer’s name Stella McCartney is sometimes shortened to STELLA.
- Majority of dictionary available in Japan shows that St. (with period) is used as an abbreviation for saint, but St (without period) is also listed in some dictionaries.
- According to the results of the questionnaire survey, 16.6% answered that the mark in dispute will be pronounced as [Saint Ella], 9.6% answered as [Stella].

2. Conclusion:

- The mark in dispute will be pronounced as [Saint Ella] and not as [Stella], in view of the above findings.  The mark in dispute is different from the cited mark STELLA in sound, appearance and connotation, and does not fall under Section 4-1-11.
- Names of licensee and the brand creator will not affect the pronunciation of the mark in dispute.
- Court finds that the marks are not similar to each other.  In view of the sound and connotation of each mark, confusion is not likely and the mark in dispute does not fall under 4-1-15.

And so the Court affirmed the Board’s decision that St Ella is not confusingly similar to STELLA and that confusion is not likely between the marks.