Valley Girl Co Ltd v Hanama Collection Pty Ltd & Anor
Miller J, High Court, Wellington, CIV 2004-485-2005, 6 April 2005
The respondents owned and used the trade mark VALLEYGIRL in Australia in connection with clothing and accessories for females aged 13-25. The mark had been in use in Australia since 1996.
The sole director of the appellant was a supplier of garments and materials to the respondents until December 2002. On 26 March 2003 the appellant sought registration of VALLEYGIRL in New Zealand as a trade mark in class 35 for “clothing retail”. The respondents successfully opposed registration. The appellant appealed the decision of the Assistant Commissioner. The key issues were whether the Assistant Commissioner had erred in finding that:
(a) The respondents had reputation in the mark VALLEYGIRL in New Zealand on or before the application date;
(b) Use of VALLEYGIRL by the appellant in New Zealand was likely to deceive or confuse persons in the relevant market so that registration was contrary to s16 Trade Marks Act 1953; and
(c) That the respondents rather than the appellants were the proprietor of the mark VALLEYGIRL in New Zealand.
Miller J dismissed the appeal.
Reputation and Awareness of Opponent’s mark
The Court was not prepared to disturb the Assistant Commissioner’s finding that the respondents had established the necessary awareness of their mark in New Zealand based on the nature and extent of their use of the mark VALLEYGIRL in Australia together with travel statistics showing (in 2002) visitor arrivals from Australia of more than 600,000 and New Zealand resident departures to Australia of 600,000. The respondents’ goods were marketed in Australia through a substantial number of VALLEYGIRL stores which were distinctively branded using the mark and were advertised in catalogues and magazines. The target market was highly brand aware.
Section 16
Because the marks were identical, any person aware of the respondents’ Australian mark was likely to be confused or deceived on seeing the appellant’s proposed mark. Miller J held the Courts view borrowings from abroad with suspicion and in circumstances where the appellant had appropriated the same mark for services in the same class, it was perhaps easier to draw the inference that the mark was valuable to the appellant precisely because it had some measure of recognition in New Zealand.
Proprietorship
The Assistant Commissioner’s conclusion that the respondents had established prior use in New Zealand could not be sustained. Advertisements by the respondent in an Australian magazine directed to the Australian market, although circulated in New Zealand, were not sufficient to constitute use for the purposes of a claim to proprietorship. The respondents’ intention to offer goods in New Zealand at some future time was not sufficient to establish intention to use. There was no evidence that the respondents were ready and willing to respond to orders in New Zealand at the priority date.
The respondents had failed to establish use or intention to use at the relevant date, so had failed to establish proprietorship itself.
The Court was not prepared to find breach of duty on the part of the appellant, nor did the evidence establish fraud. Further, there was no bad faith on the part of the appellant. Something more than appropriation of a foreign mark must be shown in order to establish bad faith.
Comment:
It is important to note that the judge’s comments on bad faith were made in respect of provisions in the Trade Marks Act 1953 not in the new Trade Marks Act 2002. The 2002 Act contains a statutory prohibition on applications made in bad faith. Under the 2002 Act, the result may well have been different as to the finding of bad faith. There is certainly UK authority on the equivalent provision in the Trade Marks Act 1994 to the effect that where a local distributor registers an overseas company’s mark, that can constitute bad faith: (Be Natural (SRIS O/106/99; New Century (SRIS O/018/00).