Prada S.A. v The Farmers Trading Company Limited HC Auckland CIV 2010-485-58
[2010] NZHC 1888
•21 September 2010
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
CIV-2010-485-000058
BETWEEN PRADA S.A.
Appellant
ANDTHE FARMERS TRADING COMPANY LIMITED
Respondent
Hearing: 5 August 2010
Appearances: D L Marriott and B P Cain for the Appellant
K W McLeod and E G McBride for the Respondent
Judgment: 21 September 2010
RESERVED JUDGMENT OF PRIESTLEY J
This judgment was delivered by me on Tuesday 21 September 2010 at 3.00 pm pursuant to Rule 11.5 of the High Court Rules.
Registrar/Deputy Registrar
Date:………………………….
Counsel/Solicitors:
D L Marriott, P O Box 5844, Wellesley Street, Auckland 1141. Fax: 09 377 0361
Email: [email protected]
James & Wells (CPK Wells), Private Bag, 11907, Ellerslie, Auckland 1542. Fax: 09 914 6760
Email: [email protected]K W McLeod, A J Park, P O Box 565, DX CP 21527, Shortland Street, 1140,Auckland. Fax: 09 356 6990.
PRADA S.A. V THE FARMERS TRADING COMPANY LIMITED HC AK CIV-2010-485-000058 21
September 2010
The issue
[1] The appellant (Prada) is a well known European based manufacturer and distributor of women’s clothing and accessories. The name “Prada” is undoubtedly, in first world countries, a word which has passed into the language.
[2] In New Zealand Prada is the owner of various registered and common law trade marks for MIU MIU. The format for the trade mark is .
[3] The MIU MIU brand is a brand which Prada introduced in Italy in 1992 and which extends to products available in approximately 62 countries internationally. The products to which the brand relates are currently regarded as luxurious and at the high end of the retail market.
[4] The respondent (Farmers) is a well known New Zealand retail chain which trades throughout New Zealand. In early 2008 it introduced a range of women’s shoes which it proceeded to market and display under the brand of MIMI. Farmers regards the MIMI brand as being currently limited to synthetic footwear sold throughout its department store chain at cheap prices. Farmers proposed to use as its trade mark format.
[5] Neither MIU MIU nor MIMI seem to have any clear etymological basis. MIU MIU, on some of the evidence, is pronounced similarly to the plaintive wail of a kitten, or may possibly have been the nickname of a granddaughter of Prada’s founder, Mario Prada, whose first name was Miuccia. MIMI (although this did not feature in the evidence or in counsel’s submission) was the first name of the consumptive operatic character in Puccini’s La Bohème. The word is also the Maori word for urine/urination. Farmers does not rely on either of these word similarities.
[6] Farmers in due course (2 October 2007) filed trademark applications, the first relevant mark being and the second relevant mark being MIMI. Prada filed notices in opposition. In terms of the procedure set out in the Trademarks Act 2002 there was a hearing. The Assistant Commissioner of Trademarks, Ms J Walden,
released her decision dated 7 December 2009 and directed registration of both the and the MIMI marks. The matters raised in Prada’s notices of opposition were rejected.
[7] The sole issue in this appeal, brought under s 170 of the Act, is whether the
Assistant Commissioner’s decision is correct.
Preliminary overview
[8] Central to the statutory provisions on which Prada relied are issues of similarity and perception. Is the mark likely to deceive or cause confusion? Are there similarities, bringing Farmer’s mark too close to Prada’s mark, which will confuse the public or, in effect, erode Prada’s proprietary interest in its mark?
[9] The relevant statutory provisions must be applied to the relevant facts, in this case the two competing marks.
[10] It is thus worth, at the risk of stating the obvious, listing some comparisons. Inevitably these comparisons will focus on both similarities and differences. The relevant comparisons are:
a) Both words contain two syllables which are repeated. b) Both syllables begin with the letter M.
c) The MIU MIU mark is two words. The MIMI mark is one word. d) The words, for those who care to pronounce them, are different.
e) The mark has distinctive gaps at the top of the second loop of the M and at the bottom of the U loop.
f) The mark has a dot over both of the letters i. The mark has no dot.
g) The mark is underlined. There is no underscoring of the mark.
h)The mark deploys two letters of the alphabet repeated in the same order totalling four letters in the one word. The
mark deploys three of the letters of the alphabet forming one word, that word being repeated.
i) Both marks start with the letters m and i.
j)MIMI deploys one consonant and one vowel. MIU MIU deploys one consonant and two vowels.
k) The two marks are in similar lower case font.
[11] Although not necessarily exhaustive, the above analysis probably touches most obvious bases. There are four points of similarity and seven points of difference.
The statutory approach
[12] Section 13 provides that a trademark is registrable when:
…
(2) The following requirements must be met:
(a)an application for the registration of the trade mark must be made in accordance with this Act:
…
(c) the Commissioner must be satisfied that there are no absolute or relative grounds set out in this Part that would prevent the registration of the trade mark.
[13] Section 17(1) proscribes various “absolute grounds” for not registering a trademark.
17 Absolute grounds for not registering trade mark: general
(1) The Commissioner must not register as a trade mark or part of a trade mark any matter—
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which is contrary to New Zealand law or would otherwise be disentitled to protection in any court; or
…
[14] This provision, as I understand it, is designed to protect the market or consumers rather than the proprietary interest of the owner of a registered trade mark.
[15] In general terms, although I shall return to this point, an unsuccessful opposition to registration under s 17(1)(a) would also fail under s 17(1)(b). The statutory words in s 17(1)(a) “likely to deceive or cause confusion” are somewhat less rigorous than what would be required to establish a breach of the Fair Trading Act 1986 or the tort of passing off.
[16] The leading authority in this area seems to be Pioneer Hi-bred Corn
Company v Hi-line Chicks Pty Ltd.[1]
[1] Pioneer Hi-bred Corn Company v Hi-line Chicks Pty Ltd [1978] 2 NZLR 50 (CA).
[17] A number of comments are contained in Pioneer. These include:
•The Court must be satisfied that the new mark, if used in a normal and fair manner in connection with any goods covered by registration, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.
•The test of likelihood of deception or confusion does not mean that all people in the market are likely to be deceived or confused, but nor is it sufficient that
someone in the market is likely to be deceived or confused. A balance has to be struck.
•The relevant market to be considered in New Zealand are those prospective or potential purchasers of goods to which the relevant markets might extend or apply.
•Being “deceived” carries with it the creation of an incorrect belief or mental impression. Confusion may go no further than being perplexed or muddled.
[18] Issues of similarity are further raised in s 25(1) which provides:
25 Registrability of identical or similar trade mark
(1) The Commissioner must not register a trade mark … in respect of any goods or services if—
…
(b) it is similar to a trade mark … that belongs to a different owner and that is registered, or has priority under section 34 or section 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or
(c) it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand …, whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of [the well known mark], and would be likely to prejudice the interests of the owner.
[19] This provision focuses more on the interests of the holder of an existing trade mark rather than a market or consumer.
[20] Relevant and helpful authorities so far as s 25(1)(b) are concerned include Intellectual Reserve Inc v Robert Sintes,[2] where Winkelmann J at [14] identified three issues:
[2] Intellectual Reserve Inc v Robert Sintes HC Auckland CIV-2007-404-2610 13 December 2007
a) Is the mark applied for similar to a mark already on the register?
b) Are the goods or services the same or similar?
c) Is use of the mark applied for likely to deceive or confuse?
[21] The Court of Appeal in N-V Sumatra Tobacco Trading Co v British American Tobacco Brands (Inc)[3] indicated the above issues are interdependent and need a global assessment.
[3] N-V Sumatra Tobacco Trading Co v British American Tobacco Brands (Inc) [2010] NZCA 24.
[22] The test for similarity, so far as New Zealand law is concerned, was set out by the New Zealand Court of Appeal in New Zealand Breweries Ltd v Heineken Beir Broweij Maatshappij NV[4] which states that respective words must be judged by look and sound; relevant goods must be considered along with the nature and kind of customer; and the surrounding circumstances and likely consequence must be considered.
[4] New Zealand Breweries Ltd v Heineken Beir Broweij Maatshappij NV [1964] NZLR 115, 159
[23] Section 25(1)(c) applies to situations where it is established that an existing trade mark is well known in New Zealand. In that situation registration of a new mark will not succeed unless the applicant for a new mark establishes that the relevant marks are neither identical nor similar; or that the relevant goods are not similar, and the use of the marks would not be taken as indicating a connection with the opponent’s goods; or that the use of the relevant marks will not prejudice the opponent. Again the focus is on the protection of the interest of a registered (and well known) trade mark.
[24] It was common ground between counsel that the onus rested on Farmers to establish, both in respect of s 17(1)(a) and s 25(1)(b), that there was no overarching similarity likely to deceive or cause confusion in the market and/or in respect of another registered mark. In respect of s 25(1)(c), the onus rests on Prada to establish that the MIU MIU mark is well known. Should Prada do so, the onus would then
shift to Farmers to establish that registration of the MIMI mark would not indicate a connection between it and Prada that could prejudice Prada’s interests. Section
17(1)(b) does not seem to give rise to onus considerations.
Assistant Commissioner’s decision
[25] I have considered in their entirety the materials which were placed before the Assistant Commissioner. Because I have reached a clear view I shall not analyse in any detail the evidence which was before the Assistant Commissioner or her decision. An overview will suffice.
Section 25(1)(b) issue
[26] The Assistant Commissioner, bearing in mind what she called “imperfect recollection”, formed the overall impression that the competing marks looked different. She also correctly found that the marks sounded different. She accepted that a number of people in the relevant market who read fashion magazines or who had familiarity with fashion would know that MIU MIU was associated with Prada, but for others, the words would have “no obvious meaning”. She considered that in the context of Farmers’ goods the relevant market was likely to perceive Mimi as the name of a female. On these bases the Assistant Commissioner considered the relevant marks were not similar for s 25(1)(b) purposes.
Section 17(1)(a) issue
[27] The Assistant Commissioner addressed the relevant authorities. She considered that Prada had established that at the relevant date (2 October 2007) there was a sufficiently substantial awareness of its MIU MIU and in the
relevant market. She canvassed evidence relating to a penetration of the New
Zealand market by MIU MIU products and its advertising profile. She found at [51]:
That the relevant marks and the opponent’s marks are not visually, aurally, or conceptually similar, even when I consider the opponent’s word mark in
the same font design as the first relevant mark, and when I consider the second relevant mark in the same font design as the opponent’s logo mark.
[28] Given these differences the Assistant Commissioner found (at [57]) that
Prada’s ground of opposition did not succeed.
[29] Although the Assistant Commissioner considered that the Prada MIU MIU products were high-end women’s fashion clothing, shoes, and handbags available exclusively in New Zealand through four Workshop stores whereas the Farmers’ goods were available in 52 department stores throughout New Zealand, and although she held that the actual markets for the Farmers’ goods were “unlikely to ever be the same” as the market for the Prada goods (at [56]) she nonetheless held, and correctly so in my judgment, that on a notional fair use basis the Farmers goods were the same as or similar to the opponent’s goods because Farmers goods were not, so far as the trade mark applications were concerned, limited to the current actual range of MIMI goods being women’s shoes in the $29.99 to $39.99 range.
Section 17(1)(b) issue
[30] The Assistant Commissioner considered it was unnecessary for her to consider Prada’s grounds that the proposed MIMI marks would amount to passing off and would be in contravention of ss 9 and 10 of the Fair Trading Act 1986. She concluded (correctly in my view) that given the finding she had made against Prada under the s 17(1)(a) ground, because a higher threshold of confusion was necessary for Fair Trading Act purposes, the Prada opposition could not succeed.
Section 25(1)(c) ground
[31] The Commissioner referred to Intellectual Reserve Inc v Robert Sintes and to NZ Milk Brands Ltd v NV Sumatra Tobacco Trading.[5] The Assistant Commissioner was satisfied that Prada had established that at the relevant date there was a sufficient awareness of its marks in the relevant market. She held, however, that the evidence
fell short of supporting the finding that Prada’s marks were well known in the relevant market at the relevant date. The Assistant Commissioner thus distinguished between a mark being “well known” and “a sufficient awareness of a mark” (supra [24]).
[5] NZ Milk Brands Ltd v NV Sumatra Tobacco Trading HC Wellington CIV-2007-485-2485 28
November 2008, Dobson J.
[32] The Assistant Commissioner’s conclusion (at [67]) was that Prada did not succeed on this ground because it had not established that at the relevant date its marks were well known and that in any event the relevant marks were visually, aurally, and conceptually different.
Discussion
[33] Prada’s counsel attacked the Assistant Commissioner’s findings with a broad sword. In general terms he submitted:
a) The Assistant Commissioner had effectively reversed the onus and ignored whether Farmers could dispel confusion.
b) She failed to acknowledge similarities.
c) In addition to failing to acknowledge similarities she searched for differences and had thus reached an incorrect decision.
d) She had failed to consider the likelihood of confusion.
e) She had failed to look at the effect registration of Farmers’ marks would have on pre-existing Prada marks.
[34] Mr Marriott also referred to the Supreme Court’s judgment in Austin, Nichols
& Co Inc v Stitching Lodestar[6] and submitted, correctly, that if I were of a different view from the Assistant Commissioner (particularly so far as her evaluative decisions were concerned) and reached the conclusion that she was wrong, then I should act on my own view.
[6] Austin, Nichols & Co Inc v Stitching Lodestar [2008] 2 NZLR 141.
[35] At the heart of Mr Marriott’s submissions was his perception of the two marks. His submissions made the following points:
•The marks were “largely identical” the only difference being the “removal of the letter u” from each syllable.
• Both marks utilised the same distinctive and unusual font.
• Both marks were in a simple type face.
• Both marks were visually and phonetically similar.
• Both marks comprise repetition of one syllable.
• Both syllables comprising the marks had the same rhythm.
• Neither mark had a definite meaning.
[36] If there was a possibility of deception or confusion amongst a substantial number of people then Farmers would have failed to discharge the onus. The correct overall conclusion had to be that the marks were “insufficiently distinct” to avoid the possibility of confusion.
[37] Furthermore the Assistant Commissioner erred in considering similarities between the competing marks in isolation from the question of the degree to which such similarity might cause confusion or deception. In so doing the Assistant Commissioner had “implicitly and incorrectly” held that there was no reasonable likelihood of a sufficiently substantial number of the purchasing public being confused or deceived.
[38] The Assistant Commissioner’s decisions were additionally flawed, submitted Mr Marriott, because she had not clearly put from her mind the differences between the trade channels through which the parties’ respective products had been sold to date and the likelihood that the actual markets might in the future be the same (supra [29]). Counsel further submitted that the Assistant Commissioner had been incorrect
in her consideration of s 17(1)(b). There was reference to Taco Co of Australia Inc v Taco Bell Pty Ltd,[7] Neumegen v Neumegen & Co,[8] and Arsenal Football Club PLC v Reed (No.2).[9]
[7] Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177.
[8] Neumegen v Neumegen & Co [1998] 3 NZLR 310 (CA).
[9] Arsenal Football Club PLC v Reed (No.2) [2003] All ER 865 (CA) at [70]-[71].
[39] Counsel submitted that the Assistant Commissioner had dealt inadequately with a number of issues, such as the need to determine the relevant purchasing public by reference to all types of people who came within it; sufficiency for some consumers to be misled or deceived so long as the number was not so small or the impact so minimal that the conduct could not be said to be misleading; and that unfair competition leading to the dilution and/or destruction of goodwill in trade marks could be actionable as passing off.
Conclusion
[40] I have considered closely counsel’s submissions. I have also reread the evidence and given careful attention to the Assistant Commissioner’s decision in the light of Mr Marriott’s attacks on it.
[41] My conclusion is that the Assistant Commissioner was correct. I agree with her evaluative judgments. I include here Mr Marriott’s submissions on font, typeface, and syllable repetition. Such similarities as there are between
.and and between the words MIU MIU and MIMI are in my view superficial. Such similarities are strongly outweighed by the differences. In relevant portions of her decision the Assistant Commissioner has described the
competing marks as being visually, aurally, and conceptually different. I agree.
[42] I am satisfied on the evidence before the Assistant Commissioner Farmers have established that its and MIMI marks were not likely to deceive or cause confusion. For identical reasons I do not consider that the use by Farmers of its
proposed marks would be contrary to New Zealand law or would be disentitled to protection in any court. I do not consider that the use by Farmers of its proposed marks breached Prada’s rights under the Fair Trading Act 1986 nor would the use amount to passing off. Accordingly, I am satisfied that Farmers has satisfied its onus under s 17.
[43] For similar reasons, and having regard to the legal principles enunciated elsewhere in this judgment, I do not consider that the competing marks were similar. I, like the Assistant Commissioner, am satisfied that Farmers established that its proposed use of the MIMI marks was not likely to deceive or cause confusion. Comparing the fair and notional uses of each mark, recognising that consumers’ recollection is imperfect, I find it unlikely that consumers could confuse the two or be deceived.
[44] For s 25(1)(c) purposes, I am satisfied that the MIU MIU brand is well known in New Zealand. Although it is sold in low volumes through only two retail stores in New Zealand, that is the nature of Prada’s brand. However, importantly I do not consider the proposed MIMI marks could be said to be prejudicial to the interests of Prada and its marks. Simply, the marks are dissimilar.
[45] Mr Marriott in argument suggested that a casual buyer looking inside a MIMI shoe in a Farmers store might well confuse the emblazoned mark with the Prada MIU MIU mark. Again, I do not agree. I do not accept that a casual buyer in a Farmers store, spotting the mark, would be confused or deceived, or
remotely consider she was in the presence of a Prada MIU MIU product.
[46] Prada has not established that the Commissioner erred in law by applying the wrong test or omitting a relevant consideration. While I accept that the Assistant Commissioner wrongly took differences in trade channels into account, departing from a comparison of notional fair use, I find that Farmers has established that consumers are not likely to be confused or deceived by notional fair use of the MIMI mark. The two marks are sufficiently dissimilar.
[47] For these reasons I am satisfied that Prada’s appeal must be dismissed.
[48] It is some comfort to find that Prada, in overseas cases, has similarly failed to uphold its mark against the word MIMI although the context of those disputes was totally different as were undoubtedly the statutory schemes. But those overseas decisions reinforce the view which the Assistant Commissioner and I have reached
about certain visual and other differences between the words MIU MIU and MIMI.[10]
[10] The judgments are: Miu Miu SA v Broggian SRL OHIM Decision No. 10458/1999, 3
November 1999; Miu Miu SA v Gibs OHIM Decision No. 1899/2001, 31 July 2001.
[49] These overseas decisions, however, have not been determinative in the conclusion that I have reached. In noting these decisions, I keep in mind the Court of Appeal’s remarks in N v Sumatra Tobacco trading Co v British American Tobacco (Brands) Inc [2010] NZCA 24 at [40]. They have merely reinforced it.
Result
[50] The appeal is dismissed.
Costs
[51] Counsel were agreed that a successful party was entitled to costs on the 2B scale. Accordingly the appellant is ordered to pay the respondent’s costs on that scale.
.......................................… Priestley J
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