la-z-boy v lazy holdings case summary
overview

Lazy Holdings Pty Ltd is a mattress retailer in Australia that sells a “bed-in-a-box” where the mattresses are delivered direct to the consumer to be instantly unpacked.

La-Z-Boy Inc is an American furniture manufacturer that has been using its marks globally since the 1920s and in Australia since 1958.  It operates about 300 stores nationwide and has a global presence.

La-Z-Boy opposed Lazy Holdings application for “LAZYBED” on the ground that the use of the trade mark would be likely to deceive or cause confusion due to the reputation of La-Z-Boy’s trade marks, being “LA-Z-BOY”, “LA-Z-ROCKER” and “LA-Z-BOY GALLERY”.  The “LAZYBED” application was made in respect of foam mattresses.

decision

The Delegate upheld the opposition preventing registration of the “LAZYBED” mark due to the following:

1. It would be likely that a person who encountered the goods would wonder whether the goods were made by La-Z-Boy or under its authorisation (notwithstanding the alleged differences in goods to which the marks were actually applied);
2. La-Z-Boy has a strong reputation of the “LA-Z-BOY” trade mark in Australia;
3. The use of “LA-Z” and the phonetic “lazy” at the beginning of the respective marks was similar;
4. Notwithstanding that Lazy Holdings stressed that its business model was that of the concept of a “bed-in-a-box” being delivered to the customer’s door, the Delegate was required to consider the trade channels through which the full breadth of goods in the specification were usually sold, namely that such goods are sold through department and furniture stores.
5. There is a strong national connection between sofa beds and mattresses.

key takeaways

• The method or model of sale of the goods will not affect the consideration given as to whether the goods would ordinarily be provided in the same stores as those listed under a similar trade mark.
• Phonetic pronunciations, including well-known American pronunciations, are an important consideration in the similarity of a trade mark where the spelling is different.