Both the Supreme Court and Court of Appeal have delivered judgments on actions to protect trade marks in 2017.
The Supreme Court’s decision in Crocodile International Pte Ltd v Lacoste involved a Lacoste trade mark (70068), which Crocodile International Pte Ltd had applied to revoke, arguing that Lacoste had not used it. The issue was whether Lacoste had used certain other trade marks in ways which might differ in form from trade mark 70068, but did not alter its distinctive character. If so, under section 7(1)(a) of the Trade Marks Act 2002 (TMA) Lacoste would have “used” trade mark 70068.
The Supreme Court’s press release shows that some of the other trade marks in question featured a similar crocodile motif to trade mark 70068, but either omitted the word “Crocodile” or used a different font. They also depicted a smaller crocodile, facing left rather than right, and with jaws closed.
The lower courts had set aside an order revoking trade mark 70068, but the Supreme Court unanimously allowed the appeal, and trade mark 70068 is now revoked.
The Supreme Court noted that a strong reputation among consumers might mean that greater changes could be made before a trade mark’s distinctive character would be altered, than for a brand of lesser repute. However, the key factor was the Supreme Court’s finding that there were significant visual differences between this and the other trade marks, especially in the cursive script and less stylised crocodile symbol of trade mark 70068. The Supreme Court also considered that if a trade mark has not been used, there is no residual discretion not to revoke it.
In March 2017, the Court of Appeal delivered judgment in Omega SA (Omega AG) (Omega Ltd) v Guru Denim Inc. Omega owned trade marks for the “Omega” word and the “Ω” symbol in relation to luxury watches, generally using them together. Guru Denim wanted to register a trade mark for an upside-down omega symbol for clothing and lifestyle products, in a trade mark class which includes watches and jewellery.
Omega argued that section 17(1)(a) of the TMA barred Guru Denim’s registration, because use of the proposed trade mark would be likely to deceive or cause confusion. Omega was able to prove that its trade marks had a sufficient reputation in NZ that there might be confusion. The Court of Appeal also found that, although Omega had not been able to show that it had used and had a reputation in NZ for the “Ω” symbol alone, it was open to Omega to argue that use of the word and symbol together was familiar enough that another brand’s use of one part of it might cause confusion. The “Ω” symbol was an essential feature of the word and symbol mark.
However, as in the Crocodile International case, the Court of Appeal found that there were important visual differences between the marks. Guru Denim’s mark was a stylised “U” shape, depicted in thicker lines which gave it a less stylised appearance. There would be no danger of consumer deception or confusion, especially given that watches tend to be closely examined before purchases are made. Accordingly, the Court of Appeal held that there would be no prejudice to Omega if registration went ahead.