Guru Denim Inc (“Guru”) applied to register the trade mark in New Zealand in relation to goods in classes 3, 9, 14, 18 and 25 (the “Guru trade mark”).
Omega SA (Omega AG) (Omega Limited) (“Omega”) has longstanding New Zealand trade mark registrations for the trade mark (the “Omega trade mark”) in relation to watches and numerous other goods.
Omega opposed Guru’s application in relation to the class 14 goods primarily on the basis that if the Guru trade mark was turned sideways or upside down, as could happen with jewelry, there would be a likelihood of confusion.
First instance
In respect of section 17(1)(a) ground of opposition, the Assistant Commissioner held that there was insufficient detail in the evidence provided to assess whether, and the extent to which, the relevant market in New Zealand would have been exposed to the symbol (the “Omega symbol”) on its own, before the relevant date. The Assistant Commissioner concluded that the Guru trade mark was “visually, aurally and conceptually dissimilar” to the Omega trade mark.
Given the above findings, it was considered that each of Omega’s additional opposition grounds also failed.
Appeal before the High Court
In its appeal to the High Court, Omega filed further evidence to demonstrate reputation in the Omega symbol on its own in New Zealand. However this was held insufficient essentially on the basis that the Omega symbol would be recognised as a symbol for the Greek letter. It was also noted that even if the Guru mark and the Omega symbol were regarded as abstract figures with no particular meaning (and while there would be a slighter higher risk of confusion or deception), the dissimilarities would outweigh the similarities.
Appeal before the Court of Appeal
The Court had no doubt that the Omega trade mark was well-known in New Zealand for watches. It was less certain, on the evidence, that Omega enjoyed a sufficient reputation in the Omega symbol on its own. However, the Court noted that, contrary to the Assistant Commissioner’s position, this should not be fatal to Omega’s ability to establish the potential for deception or confusion. In this regard, the Court referred to its own precedent in Sexwax Incorporated v. Zoggs International Limited [2014] NZCA 311, which held that “deception or confusion may arise by the use, not just of the whole of a mark or logo, but by using one or more of its essential features.”
In considering deception or confusion, the Court held that the judge was not entitled to assume that the relevant public would know the Omega symbol as a Greek letter. The Court’s impression was that the marks were visually different taking into account in particular the differences in the orientation, shape, angle and thickness of the lines. In the Court’s view, while the overall impression of the Omega symbol was of a bottom opening oval, the Guru trade mark was of a stylised “U” shape. The Court was also satisfied that even if the marks were rotated so that the openings were aligned, they would not become similar.
The appeal was dismissed.