Omega SA (Omega Ag0 (Omega Ltd) v Guru Denim Inc
[2015] NZHC 559
•25 March 2015
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV-2014-485-9534 [2015] NZHC 559
UNDER The Trade Marks Act 2002 IN THE MATTER OF
an appeal from the decision of the Assistant Commissioner of Trade Marks dated 27 June 2014
New Zealand Trade Mark N° 839153
BETWEEN
OMEGA SA (OMEGA AG) (OMEGA LTD)
Appellant
AND
GURU DENIM INC Respondent
Hearing: 3 February 2015 Counsel:
T A Huthwaite for Appellant
E C Gray and J N Cooke for RespondentJudgment:
25 March 2015
RESERVED JUDGMENT OF MACKENZIE J
I direct that the delivery time of this judgment is
3 pm on the 25th day of March 2015
Solicitors: Baldwins Law Limited, Wellington, for Appellant
Simpson Grierson, Auckland, for Respondent
OMEGA SA (OMEGA AG) (OMEGA LTD) v GURU DENIM INC [2015] NZHC 559 [25 March2015]
[1] The respondent (Guru) is a United States corporation carrying on business in the design, marketing, distribution and sale of a range of clothing and lifestyle products. It has applied for registration of a trade mark in classes 3, 9, 14, 18 and 25, with a wide description of goods in each class. Guru’s mark (which I refer to as “the Guru mark”) is in the following format:
[2] The appellant (Omega) is a Swiss corporation carrying on business as a manufacturer of watches and jewellery. Omega opposes the registration of the Guru mark in class 14, which covers goods of the type manufactured by Omega. Registration in the other classes is not opposed.
[3] Omega has two registered marks in class 14. One is of very long standing, and it was first registered in New Zealand in 1905. It consists of the Omega symbol
with the word Omega in this format:
[4] The second mark is much more recent. Omega has, after the date of the Guru application, applied for registration of the Omega symbol alone, in this format:
[5] I refer to these two marks as “the Omega combined mark” and “the Omega device mark” respectively.
[6] Omega’s opposition to Guru’s application was based on five grounds:
(a) Registration should be refused under s 17(1)(a) of the Trade Marks Act 2002 (the Act) because use of the Guru mark would be likely to deceive or cause confusion.
(b)Registration must be refused under s 17(1)(b) of the Act because use of the Guru mark is contrary to New Zealand law in that such use would be contrary to ss 9, 10, 13 and/or 16 of the Fair Trading Act 1986.
(c) Registration should be refused under s 17(1)(b) of the Act because use of the Guru mark amounts to passing off and as such is contrary to New Zealand law.
(d) Registration should be refused under s 25(1)(b) of the Act because the
Guru mark is similar to the Omega combined mark.
(e) Registration should be refused under s 25(1)(c) because the Guru mark, or an essential element of it, is identical or similar to the Omega device mark, a trade mark that is well known in New Zealand. The use of the Guru mark would therefore be taken as indicating a connection in the course of trade between those goods and Omega, and would be likely to prejudice the interests of Omega.
[7] In a decision delivered on 27 June 2014, the Assistant Commissioner of Trade Marks directed that the Guru mark be registered.1 She held that on the evidence, the Omega combined mark (and the Omega brand name) were likely to have been well known in the relevant market in relation to luxury watches. She held however that the evidence did not establish that the relevant market in New Zealand would have been exposed to the Omega device mark before the date of Guru’s application. She
first considered the ground under s 17(1)(a) of the Act, formulating the question in this case by reference to the test described in Pioneer Hi-Bred Corn Company v Hy- Line Chicks Pty Ltd, as being whether she was satisfied, having regard to the reputation acquired for the Omega marks, including the Omega device mark, that the Guru mark, if used in a normal and fair manner in connection with the relevant goods, will not be reasonably likely to cause deception and confusion amongst a
substantial number of persons in the relevant market.2 That market will mainly
consist of the general purchasing public, and wholesalers and retailers that sell the relevant goods.
[8] The Assistant Commissioner conducted a comparison between the Guru mark and the Omega combined mark, applying the test described in New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij NV.3
… The rules for comparison of word marks have been summarised as
follows: 1. You must take the two words and judge of them both by their
1 Guru Denim Inc v Omega SA (Omega AG) (Omega Ltd) [2014] NZIPOTM 30.
2 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 57.
3 New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115 (SC and CA) at 139.
look and by their sound; 2. You must consider the goods to which they are to be applied and the nature and kind of customer who is likely to buy these goods; and 3. You must consider all the surrounding circumstances and what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks: In re Pianotist Co.'s Application (1906) 23 R.P.C. 774, 777. It is for the Court to decide the question of fact as a matter of impression, having due regard, of course, to any relevant evidence which has been produced. But the question is not one to be decided upon the opinion of the witnesses. It is a matter for the Judge.
…
[9] The Assistant Commissioner noted that the ultimate focus is on the whole of each mark, and does not involve a side by side comparison because allowance must be made for imperfect recollection. Her impression of the totality of the two marks, having regard to their essential features, was that the marks are dissimilar because there were no similarities which need to be assessed; and the Omega combined mark was well known and easily recognisable. It was able to be recalled as the Omega symbol because the presence of the word and its position at the base of the symbol effectively means that the symbol can be perceived only as the symbol for the Greek letter omega. The word causes the symbol to be correctly orientated for the purposes of its recognition and states what the symbol is, so that it cannot be construed as any other kind of symbol.
[10] She considered that the Guru mark may be perceived as a stylised U device or as a horseshoe device, but however it is perceived, it is different from the Omega combined mark, so that in a normal purchasing situation the relevant market would have no difficulty in perceiving that the Guru mark and the Omega word and symbol mark as dissimilar. She was satisfied that the goods involved in respect of both marks were the same or similar. She was satisfied that the use of the Guru mark was not likely to deceive or confuse because the relevant market is likely to be discerning, and also because of the cost and fashion considerations in purchasing decisions. Persons in that market are likely to be at least “reasonably well informed and reasonably observant and circumspect” in considering the purchase of the relevant goods. She considered that the Omega combined mark is well known as Omega’s symbol and word in relation to luxury watches, whereas the Guru mark is dissimilar.
[11] The Assistant Commissioner therefore did not need to consider grounds [6](b) and (c) above because a higher threshold of confusion is required to establish a breach of the Fair Trading Act or passing off than is required under ground [6](a), on which the opponent had not succeeded. On ground [6](d), she found that the Guru mark is visually, orally and conceptually dissimilar to the Omega combined mark, so that the opposition did not succeed on ground [6](d). On ground [6](e) the Assistant Commissioner found that as Omega had not succeeded under s 17(1)(a) of the Act, it did not succeed on s 25(1)(c) of the Act.
[12] The essential issue on this appeal is whether the Assistant Commissioner erred in her conclusion that the Guru mark and the Omega marks are dissimilar. I turn directly to that issue.
[13] The Assistant Commissioner’s decision that a sufficient reputation had not been acquired in the Omega device mark led her to address the issue of similarities by a comparison of the Omega combined mark and the Guru mark, not the Omega device mark. It is therefore appropriate to address first the challenge to the factual finding that Omega’s reputation extended, for relevant purposes, only to its combined mark and its brand name.
[14] The appellant has adduced further evidence on this appeal intended to address the lack of specificity which the Assistant Commissioner found in the evidence before her as to the use of the Omega device mark in New Zealand. The respondent, while not opposing leave to adduce that evidence, challenges its relevance, and the weight which it should carry.
[15] The further affidavit sets out the history of Omega and its brand and expresses the belief that the Omega device is synonymous with Omega’s watches. There is some material produced, including catalogues and other material dealing with sales in New Zealand. Much of this is later in time than the relevant date, which is the date of filing of the Guru application. There is some evidence of the use of the Omega symbol separately from the word Omega, on watch crowns and the like. I do not consider that this evidence takes the position much further than the evidence before the Assistant Commissioner. Apart from its use on cufflinks, all of
the uses of the device mark alone are on watches, or in catalogues where the combined mark, or the word Omega, are used in close conjunction. Even on the cufflinks, where only the device appears, the label has the combined mark. Because Omega’s device mark is the symbol for the Greek letter, its use (which as I have noted is generally in conjunction with the word Omega, or the Omega combined mark), is unlikely to add to the reputation which arises from the name Omega, and the Omega combined mark. I do not find in the further evidence any significant use which might create some reputation in the Omega device mark, considered in isolation. That conclusion makes it unnecessary for me to examine in detail Mr Gray’s submission that much of the additional evidence is not relevant because it is not clear that it predates the respondent’s application.
[16] The correct focus is on the awareness of the Omega marks in relation to prospective purchasers of the goods to which its mark attaches, and individuals and entities involved in that trade.4 Omega’s evidence (including the further evidence) establishes widespread use in New Zealand of the word Omega, and the Omega symbol. That use has created a reputation firmly linked to the symbol as representing the Greek letter omega. I consider that the Greek character is likely to
be sufficiently well known to people in the relevant market to be recognised as such. The risk that the use of the Guru mark is likely to deceive or cause confusion must be assessed having regard to the fact that a risk of deception or confusion is likely to arise only if, and to the extent that, the Guru mark is likely to be mistaken for a representation of the Greek character, in which the appellant has a reputation.
[17] In his submissions on the comparison of the marks, Mr Huthwaite submits that the Omega device and the Guru mark share a similar shape overall and share the same combination of features: a curved body, an opening, and arms protruding outwards at the opening. My conclusion that the Omega device must be considered as the symbol for the Greek letter is relevant to those claimed similarities. The risk to be assessed, as I have described, is the risk that the Guru mark may be mistaken for the Greek letter. While there can be differences in the way letters in any language are represented in print, those differences are limited to those which do not
obscure recognition of the letter intended to be portrayed. When the two marks are
4 Sexwax Incorporated v Zoggs International Ltd [2014] NZCA 311, [2015] 2 NZLR 1 at [65].
compared with that in mind, I consider that the risk of an observer of the Guru mark being deceived or confused by thinking that it is intended to represent the Greek letter is small.
[18] Similar considerations apply to Mr Huthwaite’s further submission that the similarities are especially obvious when the orientation of the marks is aligned. The fact that the Omega device represents the Greek letter “anchors” its orientation, by requiring that the opening and the protruding arms must appear at the base of the symbol. If they do not, it is not the Greek character. The application for the Guru mark portrays the device in the opposite orientation, in the shape of the letter U, with the opening at the top.
[19] Mr Huthwaite refers to a number of cases in which inverted or mirrored marks have been held to be identical or sufficiently similar to lead to a likelihood of confusion.5 Those cases are clearly distinguishable on the facts. In all cases the device is more complex than in this case (a human head, a crocodile, and a leaping cat) where form and pose, of the crocodile and cat in particular, are similar. None of these devices is “anchored” in its orientation in the way that the Greek letter is. An observer of the mark in those cases would not associate the mark with any particular orientation, so that a risk of confusion can arise despite the different orientation of
the marks. That is not the case here.
[20] The Guru mark is not “anchored” in orientation in the way that the Omega symbol is. The possibility exists that it might be viewed in other orientations than shown on the application. Counsel for Omega submits that the type of goods also leads to that possibility. The possible use of the Guru mark on watch crowns is an obvious example.
[21] I do not consider that the way in which either device may be viewed in particular situations gives rise to a likelihood of confusion which is not otherwise
present. An informed person seeing the Omega device in a situation where its
5 New Yorker Kereskedelmi KFT v Corporacion Habanos, S.A. [2003] NZIPOTM 34 at 9; Crocodile International Pte Ltd v Lacoste [2009] NZIPOTM 24; Lacoste v Crocodile International Pte Limited HC Wellington CIV-2009-485-2536, 1 March 2011 at [42]-[44] and [48]-[52]; Instinct Clothing Ltd v Puma AG Rudolf Dassler Sport [2011 NZIPOTM 28 at [26]- [31].
orientation is not fixed would recognise it as the Greek letter and understand its intended orientation from that. Persons seeing the Guru mark would have no reason to align the device in any particular way. This means that the similarities when the marks are aligned, relied on by Mr Huthwaite, are unlikely to deceive or cause confusion.
[22] If the orientation of the Guru device was “anchored” (for instance by use in conjunction with text) at 180 degrees to that given in the application, the viewer would see it not as a U shape but as an inverted U, with upward sloping arms. In that situation, the possibility that it might be mistaken for a stylised representation of the Greek letter could not be entirely discounted. That would require the use of the Guru mark in a way which would not, on the face of it, be normal, having regard to the depiction in the application. It is necessary to consider all the surrounding circumstances and what is likely to happen if each of the marks is used in a normal
way as a trade mark for the relevant goods.6 The possible orientation of the mark at
180° to that shown in the application is therefore not sufficient to raise a risk that the normal use of the Guru mark may deceive or cause confusion. There may be other remedies available to Omega if it was used in that way.
[23] In the foregoing discussion, I have placed reliance on the likelihood that the Omega device will be recognised as the Greek character. I deal briefly with the claimed similarities if that is not the case, in the circumstance where an observer would view both the Guru mark and the Omega device as abstract figures with no particular meaning. In that event, the risk of confusion or deception would be slightly higher. However, if the marks are compared on that basis I consider that the dissimilarities outweighed the similarities, to the extent that the application of the test described at [8] (albeit in respect of device marks, not word marks) leads me to the conclusion that the use of the Guru mark would not be likely to deceive or cause confusion.
[24] For these reasons, I uphold the Assistant Commissioner’s finding that the use
of the Guru mark is not likely to deceive or cause confusion, and consequently her finding that Omega does not succeed on the s 17(1)(a) ground. It follows that
6 New Zealand Breweries Limited v Heineken’s Bier Browerij Maatschappij NV, above n 3, at 139.
Omega cannot succeed on either of the grounds which rely on s 17(1)(b). It also follows that the Guru mark is not similar to the Omega combined mark, so that the grounds of appeal based on s 25(1)(b) and (c) must also fail.
[25] The appeal is accordingly dismissed.
[26] The respondent is entitled to costs, which I fix on a 2B basis, plus disbursements to be fixed if necessary by the Registrar.
“A D MacKenzie J”
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