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High Court of New Zealand Decisions |
Last Updated: 12 September 2012
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV-2012-485-000409 [2012] NZHC 2259
UNDER the Trade Marks Act 2002
IN THE MATTER OF an appeal from the decision of the Assistant
Commissioner of Trade Marks dated 26
January 2012 ([2012] NZIPOTM 3) AND
IN THE MATTER OF the New Zealand Trade Mark Application
782866
BETWEEN THE NORTH FACE APPAREL CORP Appellant
AND SANYANG INDUSTRY CO LIMITED Respondent
Hearing: 24 July 2012 and 21 August 2012
Counsel: S A Fogarty and L Carter for Appellant
M C Warburton for Respondent
Judgment: 4 September 2012
In accordance with r 11.5 I direct the Registrar to endorse this judgment with the delivery time of 4.00pm on the 4th day of September 2012.
RESERVED JUDGMENT OF COLLINS J
THE NORTH FACE APPAREL CORP V SANYANG INDUSTRY CO LIMITED HC WN CIV-2012-485-
000409 [4 September 2012]
Introduction
[1] The North Face Apparel Corp (North Face) appeals a decision of an Assistant
Trade Marks Commissioner (Assistant Commissioner) delivered on 26 January
2012.
[2] In her decision the Assistant Commissioner dismissed North Face’s
opposition to an application by Sanyang Industries Co Ltd (Sanyang) to register the following device trade mark:
(Sanyang’s trade mark)
[3] Sanyang had applied to register its trade mark under Classes 7, 16, 25 and 35 of the Ninth Edition of the International Trade Mark Classification System (ITMCS), adopted as part of the Nice Agreement.1 For present purposes it is only necessary to refer to Class 25 of the ITMCS which covers the following goods:
Clothing; swimsuits; shirts; beachwear; vests; tee-shirts; [overalls]; coats; liveries; footwear; scarves; neckties; headwear; earmuffs; socks; mittens; waistbands; ...
[4] Sanyang’s application to register its trade mark was made on 22 January
2008. That is therefore the relevant date for assessing the parties’ respective rights.
[5] North Face’s opposition to Sanyang’s application was based upon its contention that prior to 22 January 2008 it owned and was using the following unregistered trade mark.2
(North Face’s device trade mark)
[6] North Face submits that its prior use of its device trade mark should have precluded Sanyang’s trade mark being approved for registration by the Assistant Commissioner. North Face’s case therefore revolves around s 32(1) of the Trade Marks Act 2002 (the Act) which provides:
32 Application: how made
(1) A person claiming to be the owner of a trade mark or series of trade marks may, on payment of the prescribed fee (if any), apply in the prescribed manner (if any) for the registration of the trade mark or series of trade marks used or proposed to be used in respect of the following:
(a) particular goods or services within 1 or more classes: (b) particular goods and services within 1 or more classes.
...
[7] The approach taken by North Face mirrors the law as articulated by McMullin J in North Shore Toy Co Ltd v Charles L Stevenson Ltd where his Honour said:3
I take as the starting point for the consideration of the submissions of the parties the proposition, accepted by both, that a person may become the proprietor of a trade mark by virtue of his use of it and that such a trade mark, called a common law trade mark, has survived the introduction of trade mark legislation in this country as it has in England.
His Honour added:4
To obtain registration of the trade mark in the first place an applicant must be able to claim that he is the proprietor. ...
If an applicant for registration is required to be the proprietor of the trade mark, then it seems to me that the fact that he is not entitled to lay claim to
proprietorship is a ground for rectifying the register, in that he has secured registration when he lacked the requisite qualification in the first place ... .5
[8] The three principal issues raised by North Face’s appeal are:
(1) Whether, as a matter of fact, North Face owned and used its device trade mark in New Zealand prior to 22 January 2008.
(2) If so, is North Face’s device trade mark the same or “substantially
identical”6 as Sanyang’s trade mark.
(3) If so, is Sanyang’s trade mark being used in relation to the “same kind of goods”7 as the goods to which North Face’s device trade mark relates.
Background
North Face
[9] North Face is an American company that was established in California in
1968. It has an international reputation for producing clothing and equipment used by mountaineers, persons engaged in snow sports, trampers and travellers. At the relevant time it sold its products in New Zealand through a distributor, MS 2 Ltd.
[10] North Face has developed a number of trade marks for its products, the most prominent of which is its principal trade mark:
5 See also Newnham v Table for Six (1996) Ltd (1998) 44 IPR 269 (HC) and Moorgate Tobacco
Co Ltd v Philip Morris Ltd [1984] HCA 73; 3 IPR 545 (HCA).
6 This is the test set out in Shell Companies of Australia Ltd v Esso Standard Oil (Australia) Ltd
[1963] HCA 66; (1963) 109 CLR 407.
7 Re Hicks’ Trade Mark (1897) 22 VLR 636 (SC).
(North Face’s principal trade mark)
[11] North Face submits that prior to 22 January 2008 it developed and used two other trade marks, namely:
(1) its device trade mark; and
(2) 
(North Face’s device and word trade mark).8
Sanyang
[12] Sanyang was founded in Taipei in 1954. Mr Chih Hui Hsu, an authorised representative of Sanyang explained in his declaration that since its inception Sanyang has manufactured a wide range of products including automobiles, motor cycles and parts and accessories. Clothing and other apparel have been added to Sanyang’s range of goods in recent times.
[13] Sanyang have explained that its original trade mark was a stylised moving arrow incorporated into the letter “Y” of its SYN trade mark. The arrow was adopted to indicate forward movement of its motor cycles and motor vehicles. In
2006 Sanyang developed its trade mark which it describes as being a stylised arrow. Sanyang says that its trade mark is simply a modernised version of the trade mark it
used from 1954 to 2006.
Assistant Commissioner’s decision
[14] The Assistant Commissioner found that North Face had established use of its device and word mark prior to 22 January 2008. The evidence which supported that conclusion was derived from North Face expedition apparel, equipment and footwear catalogues which demonstrated use by North Face of the Summit series trade marks in relation to the following Class 25 goods namely, jackets, parkas, pants, overalls, and gloves/mittens.
[15] The Assistant Commissioner undertook a comparison of The North Face device and word trade mark with the Sanyang trade mark. The Assistant Commissioner said:
(1) North Face’s device and word trade mark comprised two essential features:
(a) the device; and
(b) the words “Summit Series”.
(2) The position of the words “Summit Series” helps to anchor the device mark above it so that the device must be viewed from a particular perspective.
(3) The words “Summit Series” gives the trade mark context by implying
that the centre of the trade mark is a summit.
(4) The incomplete circle in The North Face trade mark may give the impression of a highly stylised “S” which might stand for “Summit” and or “Series”.
(5) Sanyang’s trade mark was described by the Assistant Commissioner as being “three dimensional and reminiscent of a badge of a motor
vehicle”. She thought the Sanyang device trade mark had a “metallic
and therefore industrial appearance”.9
[16] The Assistant Commissioner concluded therefore that The North Face device and word trade mark was not substantially identical to the Sanyang trade mark. She accordingly dismissed North Face’s opposition to registration of Sanyang’s device trade mark.
Summary of North Face’s grounds of appeal
[17] In his submissions for North Face Mr Fogarty explained the Assistant
Commissioner erred in the following material ways:
(1) by concluding that for present purposes North Face only had one trade mark, namely The North Face device and word trade mark;
(2) by consequently concluding that she should focus only upon The North Face device and word trade mark and not The North Face device mark when comparing North Face’s trade marks with Sanyang’s device trade mark;
(3) by wrongly concluding that North Face’s device and word trade mark
is not substantially identical to Sanyang’s device mark;
(4) by not considering whether Sanyang’s trade mark was substantially identical to an “essential element” or “essential feature” of North Face’s device and word trade mark; and
(5) by not considering whether Sanyang’s goods are the same kind of goods as North Face’s goods.
Summary of Sanyang’s case on appeal
[18] Mr Warbuton’s submissions for Sanyang can be distilled to the following three key points:
(1) that the Assistant Commissioner compared the correct trade marks, namely North Face’s device and word trade mark with Sanyang’s trade mark;
(2) that the Assistant Commissioner directed herself on the correct test she should follow when comparing the two trade marks, namely whether the two trade marks are “substantially identical”; and
(3) that the goods that Sanyang uses its trade mark for are not the same goods that North Face uses its trade mark for with the possible exception of mittens.
Legal approach to be followed
[19] An appeal of this nature is conducted as a rehearing pursuant to s 173 of the Act and r 20.18 of the High Court Rules. The Court is not bound to accept the Assistant Commissioner’s findings of fact and is entitled to exercise any power or discretion available to the Assistant Commissioner at first instance. The Court must exercise its own judgement but, where appropriate, the Court may give weight to the expressions of opinion of the Assistant Commissioner.
[20] In Austin, Nichols & Co Inc v Stichting Lodestar, the Supreme Court said that when considering a general appeal the High Court is required to:10
... come to its own view on the merits. The weight it gives to the decision of the Commissioner is a matter of judgment [sic]. If the High Court is of a different view from the Commissioner and is, therefore, of opinion that the Commissioner’s decision is wrong, it must act on its own view.
[21] The Court went on to say:11
Those exercising general rights of appeal are entitled to judgment in accordance with the opinion of the appellate court, even where that opinion is an assessment of fact and degree and entails a value judgment [sic]. If the appellate court’s opinion is different from the conclusion of the tribunal appealed from, then the decision under appeal is wrong in the only sense that matters, even if it was a conclusion on which minds might reasonably differ. In such circumstances it is an error for the High Court to defer to the lower Court’s assessment of the acceptability and weight to be accorded to the evidence, rather than forming its own opinion.
In the present appeal there was no basis for caution in differing from the assessment of the tribunal appealed from. The case entailed no question of credibility. It turned on a judgment [sic] of fact and degree, not the exercise of discretion entrusted to the tribunal. We are of the view that the Court of Appeal was not correct to suggest that, because the decision turned on a value judgment [sic] apparently open to the Assistant Commissioner, “the High Court Judge ought not to have embarked on a reconsideration of the issue without considering, and giving weight to, the Assistant Commissioner’s conclusion”. The High Court Judge was obliged to reconsider the issue. He was entitled to use the reasons of the Assistant Commissioner to assist him in reaching his own conclusion, but the weight he placed on them was a matter for him.
Analysis
Did North Face own and use its device trade mark in New Zealand prior to 22
January 2008?
[22] The Assistant Commissioner proceeded on the basis that North Face’s only trade mark (for the purposes of its dispute with Sanyang), was its device and word trade mark. Consequently the Assistant Commissioner did not assess whether or not North Face was the owner and used The North Face device trade mark in New Zealand prior to 22 January 2008.
[23] The evidence before this Court is exactly the same evidence that was presented to the Assistant Commissioner. The evidence in relation to North Face’s ownership and use of trade marks in New Zealand prior to 22 January 2008 falls into two categories, namely:
(1) a 2007 catalogue; and
(2) a series of invoices documenting the distribution of various North
Face products in New Zealand prior to 22 January 2008. It is necessary to look at this evidence in some detail.
The catalogue
[24] In 2007 North Face products were distributed in New Zealand through MS2
Ltd. Ms Murray was employed by MS2 Ltd from 2004 to 2007 as the “Brand Manager for The North Face Apparel Corp’s Products ...”.12 Ms Murray annexed to her declaration a North Face “fall 2007” expedition, apparel, equipment and footwear catalogue (the catalogue). The catalogue appears to have been primarily written for the North American “fall” (i.e. September/October 2007), although the same catalogue was also used by MS2 Ltd to promote North Face’s products in New Zealand in 2007.
[25] Almost all of the products advertised in the catalogue display The North Face principal trade mark (refer [10]).
[26] The catalogue is divided into two sections, namely: (1) The “Summit Series”; and
(2) The “Free Ride Collection”.
[27] Both sections display a range of apparel and equipment.
[28] Almost all of the illustrations of “Summit Series” apparel and equipment in the catalogue display The North Face principal trade mark.
[29] There are some illustrations of “Summit Series” apparel and equipment in the catalogue which also display The North Face device and word trade mark, in addition to The North Face principal trade mark.
[30] One page of the catalogue is devoted to mountaineering gloves and mittens. Six products are illustrated. Two of those products (the Nuptse Mitt ARZ3 and the Recon Glove ARZ2) display only The North Face principal trade mark. Three products display The North Face principal trade mark and, separately, also display The North Face device trade mark. Those products are:
(1) the Patrol Glove (AJZ1);
(2) the Himalayan Mitt (AC7W); and
(3) the Mountain Guide Mitt (ARZ1).
The sixth product (the Crux Glove AC7M) does not have a discernible trade mark illustrated.
[31] The depictions for the Patrol Glove, Himalayan Mitt and Mountain Guide Mitt are each referred to in the catalogue as “new”. Beneath the word “new” can be found The North Face device and word trade mark.
[32] Thus, the evidence before the Court suggests that as at September/October
2007, North Face was advertising in its catalogue for sale in New Zealand, three styles of gloves/mittens which bore North Face’s device trade mark. In all instances The North Face device trade mark was a white trade mark set upon a black background.
Invoices
[33] Ms Murray also annexed to her declaration a series of invoices which she said were for products which she stated carried North Face’s device trade mark. However, Mr Warburton pointed out that each of the invoices contained references to
North Face’s product range numbers. When those product range numbers were compared with the product range numbers in the catalogue it became apparent that none appeared to bear The North Face device trade mark. Some of the products identified by Ms Murray were advertised in the catalogue with The North Face device and word trade mark. Examples of products that fell within this group were the Men’s Pantheon Jacket and the Men’s Free Think Pant.
[34] Thus, notwithstanding Ms Murray’s assertion in her declaration, it appears that the invoices do not demonstrate that North Face had used its device trade mark in New Zealand prior to 22 January 2008 in relation to goods that are referred to in the invoices annexed to Ms Murray’s declaration.
[35] However, the catalogue does show North Face used its device trade mark on three gloves/mitten products that appeared to have been available to be purchased in New Zealand through MS2 Ltd, prior to 22 January 2008. Thus, I am satisfied that North Face has demonstrated use of its device mark in New Zealand prior to
22 January 2008. As a result of this factual finding I am required to consider whether The North Face device mark is the same or substantially similar to the Sanyang trade mark. This is a different question from that which the Assistant Commissioner focused upon.
Is The North Face device trade mark the same or substantially identical to the
Sanyang trade mark?
[36] In his submissions, Mr Fogarty illustrated his client’s concerns by asking the Court to turn Sanyang’s trade mark 90 degrees and then compare it “side by side” with North Face’s device trade mark. Thus, the Court was asked to make the following comparison:
(North Face device trade mark) (Sanyang’s trade mark)
[37] Mr Fogarty said the Court should make this comparison because, without the “anchoring words” “Summit Series” North Face’s device trade mark could be naturally looked at from any angle (particularly when it is seen on a glove or mitten that is being worn at all sorts of angles).
Is it appropriate to make just a “side by side” comparison?
[38] Mr Fogarty urged me to undertake a “side by side” comparison of The North Face device mark and Sanyang’s trade mark. He relied on, inter alia, Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd in which Windeyer J said:13
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the court's own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106.
[39] I observe that when assessing whether or not trade marks are deceptively or confusingly similar under s 17 of the Act, a “side by side” comparison is discouraged. Thus, in De Cordova v Vick Chemical Co the Judicial Committee of the Privy Council said:14
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the
13 Shell Companies of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at
414.
14 De Cordova v Vick Chemical Co (1951) 63 RPC 103 (PC) at 106.
eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. (emphasis in original).
[40] I accept that the test for determining the outcome of an opposed application for registration of a trade mark on the grounds that it is deceptively or confusing similar to another trade mark differs from the test that is employed when determining if registration should be declined because of prior ownership of the same or substantially identical trade mark. However, there are some similarities between the two tests. During the course of oral submissions the parties accepted:
(1) both a prior ownership claim and a case under s 17 of the Act can involve a visual comparison of the marks in issue;15
(2) in an appropriate case, aural comparisons can be made in determining a prior ownership claim. Thus, in North Shore Toy Co Ltd v Charles Stevenson Ltd16 the Court had to decide if “Lul-a-bye” was aurally identical to “Lullaby”. This is similar to the approach that can sometimes be employed when considering claims under s 17 of the Act when the Court considers how the marks in question sound;17 and
(3) the conceptual nature of two marks can be considered when deciding whether or not to reject an application to register a trade mark that is subject to a claim of prior ownership of the same or similar trade mark. However, any conceptual analysis that is undertaken in relation to a prior ownership claim must involve an examination of objective conceptual considerations, and not the subjective assertions of a party. Conceptual considerations are often taken into account when
determining if trade marks are deceptively or confusingly similar.18
15 Shell Companies of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at
414.
16 North Shore Toy Co Ltd v Charles L Stevenson Ltd [1973] 1 NZLR 562 (SC).
18 See, for example NV Nutricia v Cambricare New Zealand Ltd [2012] NZHC 1344.
[41] In assessing whether or not the two trade marks are “substantially identical” I have undertaken both a visual and a conceptual analysis of the Sanyang trade mark and North Face’s device trade mark.
[42] In my assessment The North Face device mark is not “substantially identical”
to Sanyang’s trade mark. The reasons for reaching this conclusion are:
Visual comparison
(1) The colour of the Sanyang trade mark is significantly different from The North Face device mark. In this case, the colour of the two trade marks provides a major point of difference between the two trade marks:
(a) the Sanyang trade mark comprises a shaded silver/grey image set upon a distinctive deep red background. The device has a shaded silver/grey ring around the deep red background.
(b) by contrast, The North Face device mark is depicted as a plain white image on the gloves and mittens referred to in [37] of this judgment. (North Face has also used a plain black depiction of its device trade mark in its submissions).
(2) The contrasting use of colour in the Sanyang trade mark also provides a significant point of difference between the two trade marks:
(a) the shading in the silver/grey colour of the Sanyang trade mark gives a three-dimensional appearance to that trade mark;
(b) by contrast, The North Face device trade mark is not shaded. This gives a one-dimensional appearance to The North Face device trade mark.
(3) The visual layout of the two trade marks also provides a significant point of difference between the two trade marks:
(a) the Sanyang trade mark is designed to be used so that the central part of the device gives the impression of an arrow moving from a left to right direction.
(b) by contrast, The North Face device mark is designed to represent the image of a mountain peak. When viewed from the angle at which it is designed to be seen, The North Face device mark is not “substantially similar” to the Sanyang trade mark.
Conceptual comparison
(4) There are significant conceptual differences between the two trade marks:
(a) the Sanyang trade mark does have a metallic appearance that is reminiscent of the type of badge that one might expect to see on a vehicle. One can see that the Sanyang mark is an evolution of the arrow concept that underpinned the trade mark it used between 1954 and 2006.
(b) by contrast, The North Face device mark depicts a mountain peak that is clean and pristine.
Side by side comparison
[43] Even if the approach which I have taken towards assessing the two trade marks is incorrect, and, if the correct approach is to adhere strictly to a “side by side” comparison, then I would reach exactly the same conclusion. When compared side by side, I believe that the visual differences between the two trade marks results in a
conclusion that the two trade marks are not “substantially identical”. The visual differences are fully explained in [42(1), (2) and (3)] of this judgment.
Comparison between Sanyang trade mark and North Face device and word trade mark
[44] North Face is on even weaker ground when a comparison is made between the Sanyang trade mark and North Face’s device and word trade mark. The words “Summit Series” which appear at the foot of the device section of the device and word trade mark clearly anchor the trade mark. This layout of The North Face device and word trade mark re-emphasises the mountain peak image which North Face is conveying with its device and word trade mark. The North Face device and word trade mark, is, in my assessment quite different from the Sanyang trade mark for the reasons explained by the Assistant Commissioner in her decision. I would accordingly endorse the Assistant Commissioner’s decision when she concluded that the Sanyang trade mark and The North Face device and word trade mark are not substantially similar.
Are the goods in question the “same type of thing”?
[45] My decision that North Face’s two trade marks, namely (1) its device and (2) its device and word trade marks are not the same or substantially the same as Sanyang’s trade mark renders it unnecessary for me to consider Sanyang’s third ground of opposition to the appeal.
[46] For completeness I record Sanyang submitted that, to succeed, North Face would have to show that the goods in respect of which it has used its trade marks are the “same kind of thing”19 as the goods in respect of which Sanyang has used its trade mark.
[47] Sanyang points out that in this case it has used its trade mark on, inter alia, promotional caps and polo shirts. Sanyang submits that these goods are not the
“same type of thing” as North Face’s specialised extreme weather climbing.
19 Re Hicks’ Trade Mark (1897) 22 VLR 636 (SC).
[48] However, if I were required to determine this point I would find in favour of North Face. The reason for this is that Sanyang’s trade mark registration is in respect of class 25 of the ITMCS. Class 25 is broad and appears to me to encompass clothing products of the kind that North Face produces. For this reason I would have been inclined to decide that Sanyang’s clothing products and North Face’s clothing products are the “same type of thing”.
Conclusion
[49] North Face’s appeal is dismissed.
[50] Sanyang is entitled to costs on a scale 2B basis.
Solicitors:
A J Park Law, Wellington for Appellant
Acacia Law, Wellington for Respondent
D B Collins J
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