Marking your business can prove costly when similar is too similar

These days we are used to seeing families of trade marks emanating from the same fashion house – think GIORGIO ARMANI; EMPORIO ARMANI; A/X ARMANI EXCHANGE; ARMANI JEANS; MANI; ARMANI ALTA MODA – or TOMMY HILFIGER; TOMMY; HILFIGER DENIM…

However, there are names that might appear similar but emanate from very different sources – a recent New Zealand example of this is TRELISE COOPER and TAMSIN COOPER. Trelise threatened Tamsin with legal action for using her own name (Tamsin Cooper) for her fashion label on the grounds that it was too similar to the Trelise Cooper label. The issue was finally settled out of court and both labels co-exist – and so they should. After all, these labels are the designers’ own names and they create very different products within the same industry.

So how similar is too similar? Let’s look at some recent decisions of the Commissioner of Trade Marks where the issue of similarity of trade marks for clothing has been considered. Essentially, under the Trade Marks Act 2002, the Commissioner must not register a trade mark for any goods or services if that trade mark is identical or similar to an earlier registered trade mark and both will be used for the same goods or services. In determining if the trade marks are similar, the Commissioner must consider factors such as ‘imperfect consumer recollection’, the ‘look, sound and any meaning’ of the trade marks and whether the goods are the same or similar, among others.

So, considering how familiar we have become with families of trade marks emanating from the same source, the following recent decision is somewhat surprising.  The Commissioner determined that the trade marks PURE and PURE BABY are NOT similar - although both marks were to be used in relation to the same goods – clothing. While this is a good decision in terms of not allowing a monopoly in the arguably descriptive word ‘pure’, there is a potential for the consumer to be confused. What if PURE came out with a whole range of clothing for different ages e.g. PURE GIRL, PURE BOY, PURE TEEN? These may then be seen to be an extension of the PURE BABY range not the PURE range.

The reasoning behind this rather surprising decision was that the inclusion of the word ‘baby’ provided enough of a difference. It was also based on the Hearing Officer’s conclusion that using ‘pure’ as an adjective creates a different meaning than using ‘pure’ on its own. Thus, PURE BABY creates an overall concept of a baby which is pure. Whereas just PURE most likely refers to something about the goods which is pure, for instance a material it contains such as ‘pure’ merino or even a colour, such as ‘pure’ white.  Thus the Hearings Officer concluded that the customer would not be confused!

The PURE BABY trade mark will now proceed to acceptance and it will be interesting to see if the owner of the PURE trade mark takes steps to prevent the registration of the trade mark (watch this space!)

However, it’s not so surprising that the Commissioner did not register VERAGE on the grounds that it was too similar to VERGE.  With the difference of only one letter it is easy to see how consumers would be confused by use of the VERAGE trade mark given the existence of the VERGE trade mark.  In the same case the Hearings Officer considered whether the trade mark VERAGE was similar to the well known VERSACE trade mark.  Notwithstanding the repute of the VERSACE trade mark, the Hearings Officer did not consider the VERAGE trade mark to be similar to VERSACE. This decision has not been appealed.

The lesson here is to be as original as possible if you want to avoid conflict and confusion and establish a strong and successful brand. Often the best and most successful trade marks are made up words – consider the likes of KODAK, KLEENEX, PEPSI to name a few. There are many tricks to making up words that represent your brand such as onomatopoeia, joining words, clipping etc.

Another tip may be to avoid using your company name, first because a trade mark legally has to be distinctive and not descriptive, and secondly, if you sell your company but want to continue your range, you may face difficulties.

Your trade mark is the way people remember you – so do not underestimate it’s importance. It does not make good business sense to select a mark which you cannot use or protect or will be confused with another trade mark. So, the best advice is to get some expert advice in the selection and protection of your trade mark.

By Elena Szentivanyi.  An edited version of this article appeared in The Press, Christchurch, and The Dominion Post, Wellington, on 15 August 2008