Brooks Sports (“Brooks”) applied to register the trade mark in respect of a range of goods in class 25. This application was accepted but then opposed by Speedo Holdings B.V. (“Speedo”).
Speedo relied on four different grounds of opposition as follows:
Ground 1 – section 17(1)(a)
Speedo claimed that the opposed mark is similar to its arrow device mark, and that its use is likely to deceive or cause confusion.
The Assistant Commissioner was satisfied that the opposed mark, if used in a normal and fair manner in connection with the opposed goods, would not be reasonably likely to cause deception or confusion amongst a substantial number of persons. The reasoning was that the evidence indicated that the Speedo brand (including the arrow device) had a reputation, at the relevant date, that was centred essentially on swimwear, not footwear or other clothing products.
Speedo did not succeed on this ground.
Ground 2 – section 17(1)(b)
Adopting a similar reasoning, the Assistant Commissioner considered that use of the opposed mark would not, on the balance of probabilities, breach the Fair Trading Act 1986 or amount to passing off.
Speedo did not succeed on this ground.
Ground 3 – section 25(1)(b)
Under this section, the Commissioner must not register a trade mark if it is similar to a trade mark that belongs to a different owner and that is registered, or has priority, 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 cause confusion.
Speedo relied on a number of earlier registrations for the arrow device mark and for the mark covering various goods in classes 25, 18, 9 and 28.
Of particular interest here, the Assistant Commissioner pointed out that for the purpose of this ground of opposition, it is the details of the opponent’s marks as they appear on the Register that are important, not the opponent’s actual use and reputation of those marks.
Given the very close identity between the respective goods, and the similarities between the marks, the Assistant Commissioner considered that there is a risk that use of the opposed mark may give rise to deception or confusion.
Speedo succeeded on this ground.
Ground 4 – section 25(1)(c)
The Assistant Commissioner was of the opinion that Speedo did not establish that its arrow device mark was well known in New Zealand as at the relevant date.
While Speedo did establish that its mark was well known in New Zealand as at the relevant date, the Assistant Commissioner found that because of the differences between this mark and the opposed mark , the use of the opposed mark would not be taken as indicating a connection in the course of trade with Speedo.
Speedo’s opposition failed on this ground.
To view the Office decision, click here.