North Sydney Commercial Lawyers

Replica RagePrint This Post

Replica Rage

Herman Miller Inc, a US company and owner of the word trade mark EAMES which is registered in Australia for chairs (furniture) has reportedly settled a Federal Court dispute with the Matt Blatt furniture company. The legal battle revolved around Matt Blatt’s use of the term “Eames” in the context of advertising replica furniture.

Matt Blatt sells a range of reproduction furniture. Amongst its “replica” range, are reproductions of the famous high-end Eames branded furniture. Matt Blatt markets these products as “replica Eames”. Herman Miller argued that this use of the term “Eames” amounted to, amongst other things, an infringement of the registered Eames trade mark.

Not all uses of a registered trade mark constitute infringement. It is a defence to an infringement action to show that a mark is used in good faith in a descriptive sense or to indicate some quality or characteristic of the relevant products.

The term replica is generally understood to describe an exact copy of the original. On the one hand, Matt Blatt’s use of the term “replica Eames” describes a characteristic of Matt Blatt’s product, i.e. that it is a copy of the original Eames product. The opposing view is that the use of “replica Eames” constitutes infringing use of the mark EAMES, as it is used to distinguish Matt Blatt’s products. It also arguably takes unfair advantage of the reputation of the Eames design. If Matt Blatt’s products are not a genuine replica of the original Eames products (for example if they are made using different materials), use of the term “replica Eames” may also be misleading, in which case it would breach Australia’s consumer protection laws.

It is common for manufacturers of replica products to use terms such as “replica”, “compatible with”, “similar to” or “if you love (registered mark) then you will love this product”. There have been very few cases in Australia which consider the issue of trade mark infringement in this context.

However, we will not be able to look to the Federal Court’s view for guidance on this issue in the Eames case, as Herman Miller and Matt Blatt have reportedly settled their dispute. The Court Order includes an undertaking by Matt Blatt that it will not use the term Eames “unless such description incorporates… the qualification ‘replica’ or words or expressions synonymous with that word, expressed in the same manner as the ‘Eames’ expression and of at least equal prominence to the ‘Eames’ expression…”

If the Federal Court had ruled in favour of Herman Miller, this would have armed Herman Miller to replicate (pardon the pun) its court action against other traders who also use Eames in a similar manner on replica Eames furniture. Ironically, this would include Matt Blatt’s own competitors, who promote replica Eames pieces.

It remains to be seen whether Herman Miller will take action against other local retailers who use the EAMES trade mark in a similar manner to Matt Blatt.