Sheppard Cycles Australia Pty Ltd v iRIDE Limited  NZIPOTM 18 (19 July 2019)
IRIDE is the owner of New Zealand Trade Mark Registration Nos. 852906 and 1021488 both for iRIDE and various stylised versions of IRIDE covering similar goods and the same services as the opposed application.
Three grounds were pursued by IRIDE at the hearing, namely:
- The use of the opposed mark was likely to deceive or cause confusion. – Section 17(1)(a)
- The opposed mark is similar to the opponent’s registered trade mark and use of the opposed mark is likely to deceive – Section 25 (1) (a)
- Use of the opposed mark would be contrary to law as it could constitute passing off and would amount to a breach of the Fair Trading Act 1968- Section 17(1)(b)
In determining if the opposed mark was identical or similar to the registered marks, it was found that Sheppard Cycles had expressly admitted in its counter statement that the Application is for similar goods and services and thus that aspect did not need to be determined. The marks were also found to be aurally and visually similar as “MY” and “I” share the same vowel sound. Moreover, the common element RIDE was considered to be descriptive given numerous registrations of the word had become commonplace. The concepts of the marks were also found to be similar with its reference to the first person. On this basis, it was found that the marks were similar and there was a likelihood of confusion.
It was found that on the evidence, IRIDE had established that there was sufficient reputation in its marks to meet the threshold awareness of the marks. Passing off and breach of the Fair Trading Act 1968 was also established. Sheppard Cycles’s argument that the customers were well educated as to the brand and make of cycles, and that there is a lack of confusion due to Sheppard Cycles focusing on the lower end of the market and IRIDE on the higher end of the same market failed. The opposition was successful.
This article was written by Aarthi Singaravelu and Daniel Wilson.