Valley Girl Limited v Hanama Collection Pty Limited HC Wellington CIV 2004-485-2005

The appellant, Valley Girl Co Limited, sought to register the trademark VALLEYGIRL in New Zealand. The respondents, Hanama Collection Pty Limited and Valleygirl Fashions Pty Limited, opposed the application. They argued that they had reputation in the mark in New Zealand, that the appellant’s use of the mark would cause confusion or deception, and that they were the true proprietors of the mark. The appeal was heard by the High Court of New Zealand. The court found that the respondents had established that their mark had reputation in New Zealand, and that the appellant’s use of the mark would cause confusion or deception. The respondents had established that a substantial number of people in New Zealand were aware of their Australian mark, and that the marks were identical. The court found that the appellant had failed to establish proprietorship of the mark. The court found that the appellant had not used or intended to use the mark in New Zealand at the application date. The court also found that the appellant’s application was not affected by fraud, breach of duty, or bad faith. The appeal was dismissed. The respondents were entitled to costs.