“RUNAWAY THE LABEL” trade mark refused: what happened and why it matters

01 Oct 2025

Who’s involved?

• Opponent: Karen Walker Limited (NZ fashion brand).
• Applicants: Premonition Designs Pty Ltd & Mamta Group Pty Ltd (AUS fashion label using “Runaway the Label”).
• Mark applied for: RUNAWAY THE LABEL (classes 25 clothing, 35 online retail).
• Decision: 4 June 2025, Delegate Sheona Robertson, registration refused (ATMO 2025/103).
• Costs: Applicants ordered to pay the opponent’s regulated costs.

The core issue in one line

The Registrar found RUNAWAY THE LABEL is deceptively similar to Karen Walker’s earlier RUNAWAY trade mark for clothing. Because the goods/services overlap and the earlier mark was first, the new application was knocked back.

What the decision turned on (in simple terms)

1. There was an earlier “RUNAWAY” trade mark for clothing.

   Karen Walker owns RUNAWAY for clothing (class 25) dated well before the applicants’ filing (12 Feb 2021).

2. The goods/services are close enough.

• Clothing vs clothing = obviously similar.
• “Online retail services” for clothing were treated as closely related to clothing goods (brands commonly sell their own goods online).

     3. “RUNAWAY THE LABEL” is too close to “RUNAWAY”.

• The word RUNAWAY dominates both marks.
• Adding “THE LABEL” doesn’t save it—it’s descriptive and won’t stick in consumers’ memories.
• With imperfect recollection, many shoppers will just remember RUNAWAY and assume a connection.

      4. “Honest concurrent use” wasn’t proven.
           The applicants argued they’d used their brand for years. The Delegate said:

• There wasn’t evidence they searched for earlier rights or took advice when adopting the name.
• They knew about Karen Walker’s mark by 2015 (from an earlier blocked filing) and still pressed on.
• Given the real risk of confusion, the discretion to allow the mark anyway wasn’t exercised.

Bottom line: The section 44 ground (conflict with an earlier similar mark for similar goods) succeeded. Other pleaded grounds weren’t needed.

Why this matters for businesses (not just fashion)

• Descriptives don’t cure conflict. Tacking on “THE LABEL”, “AUSTRALIA”, “CO.”, etc., rarely fixes a clash if the core word is the same.
• Online retail ≈ your product line. If you sell your own goods online, your retail services can be treated as closely related to the goods—expanding the risk zone.
• Use ≠ safety. Years of trading won’t automatically rescue a conflicting mark—especially if you knew (or should have known) about earlier rights.
• Search before you spend. Not searching or getting advice at adoption can sink later attempts to keep your brand.

Practical takeaways you can use today

1. Do a clearance search before you fall in love with a name.
   Quick DIY checks are not enough; have a professional search the registers and marketplace.
2. Watch the dominant element.
   If your proposed name shares the striking word with a competitor (e.g., “RUNAWAY”), adding minor descriptors likely won’t help.
3. Think family of marks.
   If someone owns the core word across your category, they’ll often be able to police variations.
4. Document your adoption story.
   If you later need to rely on “honest concurrent use,” you’ll want evidence of searches, legal advice, and why you believed confusion wouldn’t arise.
5. Have Plan B names ready.
   Build a shortlist you can pivot to quickly if a conflict appears.

If this were your brand…

• Already using a risky name? Consider a negotiated coexistence, rebrand plan, or house mark + product mark strategy to transition risk down.
• Not filed yet? Pause major spend (packaging, domain buys, ad campaigns) until clearance is done.
• Selling online? Treat your storefront services as part of the same risk footprint as your goods

If this decision made you even slightly nervous about your brand, don’t wing it. Get a proper clearance search and a plan before you spend another dollar.

At IP Solved, we’ll:

• pressure-test your proposed name (registers + marketplace),
• map your risk (who can block you, where, and how),
• give you options (proceed, pivot, or negotiate), and
• set a filing and enforcement plan that won’t collapse at the first opposition.

Want a straight answer, fast? Book an IP triage call and bring your top 2–3 names. We’ll tell you what flies—and what doesn’t—so you can move with confidence.