Omega Sa (Omega Ag) (Omega Ltd) v Guru Denim Inc.
| Jurisdiction | New Zealand |
| Judge | Asher J |
| Judgment Date | 27 March 2017 |
| Neutral Citation | [2017] NZCA 81 |
| Docket Number | CA218/2015 |
| Court | Court of Appeal |
| Date | 27 March 2017 |
[2017] NZCA 81
Asher, Simon France and Peters JJ
CA218/2015
IN THE COURT OF APPEAL OF NEW ZEALAND
Appeal against the decision of the High Court (HC) upholding the decision of the Assistant Commissioner of Trade Marks, that the respondent was entitled to registration of its trade mark in Class 14 (watches and jewellery) — the appellant was a Swiss watchmaking corporation and had a longstanding trade mark, which was the Greek letter for Omega with the word Omega below it — the respondent's mark was not accompanied by words — the appellant relied primarily on 17(1)(a) (use … likely to deceive or cause confusion), Trade Marks Act 2002 — the HC said that there would be no confusion because the Omega symbol would be recognised as the Greek character, there was little possibility of confusion — whether the Omega symbol and the Guru mark had a similar shape overall — whether that there was sufficient familiarity with the appellant's word and symbol mark as a whole so that the use of they symbol alone could cause deception or confusion — whether the Judge erred by focussing on the alleged public awareness of the Greek Omega symbol.
M D Johns and T A Huthwaite for Appellant
E C Gray and J N Simpson for Respondent
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A The appeal is dismissed.
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B Costs must follow the event on a standard appeal on a band A basis, and we certify for two counsel.
(Given by Asher J)
The Omega brand has a distinguished history for watchmaking going back to the nineteenth century, and has an international reputation. The appellant Omega SA (Omega) is a Swiss corporation that owns the Omega intellectual property and has a longstanding trade mark, first registered in New Zealand in 1905. It consists of the Omega symbol with the word “OMEGA” in this format:.We will refer to this as the word and symbol mark.
The respondent Guru Denim Inc (Guru) is a United States corporation which specialises in the supply and sale of clothing and lifestyle products. It has applied in New Zealand for registration of a trade mark in this design: in classes 3, 9, 14, 18 and 25, with a wide description of goods specified in each class. We will refer to this mark as the Guru mark.
Omega opposes the proposed Guru registration in class 14, which is the class that includes watches and jewellery. Its opposition failed before the Assistant Commissioner of Trade Marks 1 and on appeal to the High Court before MacKenzie J. 2 It now appeals that decision to this Court.
Omega branded products have been available in New Zealand since at least 1945. They have been promoted in New Zealand for some time, and there are a number of retailers of the brand.
Guru applied for registration of its trade mark on 24 March 2011 (the relevant date). Omega's opposition was pursued under ss 17(1)(a), 17(1)(b), 25(1)(b) and 25(1)(c) of the Trade Marks Act 2002 (the Act). Those sections were the same sections relied on in the appeal in the High Court, and Omega continues to rely on them in this appeal.
On 27 June 2014 the Assistant Commissioner held that the trade mark application in relation to class 14 should proceed to registration in full, subject to any appeal. 3 She held that the Omega word and symbol mark was likely to have been
Having regard to the opposed goods on a notional fair use basis, I consider that the relevant market in New Zealand will mainly consist of the general purchasing public, and wholesalers and retailers, including jewellery and watch stores, fashion stores, large departments stores, and online sites that sell the opposed goods. I consider that the relevant market for the opposed goods is a mass market. I consider that the relevant market is likely to be discerning because the opposed goods are likely to involve high involvement purchasing decisions due to their cost and/or fashion considerations.
However, she decided there was insufficient detail in the evidence provided for her to assess whether, and the extent to which, the relevant market in New Zealand would have been exposed to the Omega symbol on its own, before the relevant date. 6 She went on to compare the appearances of the opposed Guru mark and the Omega word and symbol mark. Her impression was that, having regard to all their essential features, the totalities of the Guru mark and the Omega word and symbol mark were dissimilar. 7 Therefore, she did not consider that registration of the Guru mark was likely to deceive or confuse. 8 In relation to s 25(1)(b) she found that a number of the opposed Guru goods were the same as or similar to goods covered by the Omega word and symbol mark. 9 But, in keeping with her conclusion under s 17(1)(a), she concluded that Guru's mark was “visually, aurally and conceptually dissimilar” to the Omega mark and that Omega consequently failed under s 25(1)(b). 10 For the same reason, Omega also did not succeed under ss 17(1)(b) or 25(1)(c). 11
Omega appealed to the High Court and filed a further declaration of a Mr Strёhl, setting out more history of Omega's trade marks. In this declaration Mr Strёhl asserted generally that the Omega symbol often appears alone and not in combination with the word “OMEGA”. He attached exhibits, some of which
MacKenzie J, in dismissing the appeal against the Assistant Commissioner's decision, rejected the argument that the Omega and Guru marks were sufficiently similar to be likely to deceive or confuse. He did so on the basis that the Omega symbol “must be considered as a symbol for the Greek letter”. 12 He held that since the Omega symbol would be recognised as the Greek character, there was little possibility of confusion. In contrast, he did not consider there was a risk of an observer of the Guru mark thinking that the Guru mark was intended to represent the Greek letter. 13 He went on to note the different orientation of the Omega and Guru marks, with one opening to the bottom and the other opening to the top, and given those differences he thought the similarities relied on by Omega were unlikely to deceive or cause confusion. 14 Even if the Guru mark and Omega symbol were regarded as abstract figures with no particular meaning, he considered that although there would be a slightly higher risk of confusion or deception, the dissimilarities outweighed the similarities and therefore registration of Guru's mark would not be likely to deceive or cause confusion. 15
Since the Guru application, Omega has applied for, and been granted, registration of the Omega symbol alone in this form: Ω. We will refer to this as the symbol mark.
In Crocodile International Pte Ltd v Lacoste the Supreme Court stated that in New Zealand an appellate court is obliged to consider the Commissioner's view, but must then decide what weight is to be given to it. 16 If it considers that the Commissioner's view is wrong, the Court must act on its own view. The Court is not obliged to defer to the assessment of the Commissioner. However, the
Given the wide range of trade mark decisions that Commissioners are called upon to make, they may be expected to have a broader and more nuanced appreciation of the trade mark Register than judges, whose experience will generally be limited to the particular contested applications that come before them. This may mean that, where an appeal raises this type of issue, the appellate court should hesitate to depart from the Commissioner's qualitative assessment (although being prepared to do so if ultimately satisfied that the Commissioner's view is erroneous).
The Supreme Court also cited the following passage from Austin, Nichols & Co Inc: 18
The tribunal may have had a particular advantage (such as technical expertise or the opportunity to assess the credibility of witnesses, where such assessment is important). In such a case the appeal court may rightly hesitate to conclude that findings of fact or fact and degree are wrong.
The present appeal involves a qualitative assessment by the Assistant Commissioner, but there were no findings on credibility or indeed reliability.
Omega accepts the view of MacKenzie J that if this Court finds Omega does not succeed under s 17(1)(a) of the Act, then it cannot succeed under ss 17(1)(b) or 25(1)(c). As to s 25(1)(b), Omega submits that in principle a failure under s 17(1)(a) does not necessarily imply failure under s 25(1)(b). However, it accepts that for the purposes of this appeal there is no material difference between the approaches under the provisions. Therefore, if Omega's objection under s 17(1)(a) fails, that is also fatal to the objection under s 25(1)(b).
As it did in the earlier hearings, Omega submits that s 17(1)(a) of the Act is a bar to the registration of Guru's mark. Section 17(1)(a) provides:
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;
For the purposes of s 17(1)(a), nothing turns on the fact that the Omega symbol mark was registered after the relevant date. Section 17(1)(a) is concerned with the protection of the public rather than the proprietary interests of traders. 19 A likelihood of deception or confusion can arise in respect of an...
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