REISS.KEY BUSINESS: PROTECTING YOUR BRAND INTERNATIONALLY

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Despite having 95 stores spread throughout the northern hemisphere, when RHL tried to register its mark here it came up against an earlier registration for REISS in relation to clothing, footwear and headgear in the name of the Australian company Network Clothing Company (Sales) Pty Ltd (NCC).

RHL applied to revoke the trade mark registration, alleging that the Australian company had not used the mark REISS in New Zealand for three years. However, NCC managed to show that a number of sales of men’s shirts, jackets and pants had taken place in New Zealand through its distributor and was therefore able to retain its registration in relation to these limited goods. The decision is currently under appeal to the High Court and a hearing date is expected to be set this month.

In the REISS case, RHL didn’t have many other options against NCC since the mark was registered in 1998 and RHL had only started to use the name in the United Kingdom that same year. Other than obtaining consent to its registration from NCC (which, in the circumstances, did not appear to be possible) an application for revocation for non use appears to have been RHL’s only option to enter the New Zealand market without infringing NCC’s rights.

However, if the earlier mark had not yet been registered or had only been registered after RHL had been using the name for some time overseas; what other options would have been available? One option would have been to oppose the application or seek to invalidate the registration of the earlier mark on the basis that New Zealand consumers would be deceived or confused if the mark was used in light of their recognition of the brand being used by another company overseas. To do this, it is necessary to establish what is known as spillover reputation.

The leading case in New Zealand in relation to spillover reputation is the Court of Appeal decision of Pioneer Hi-Bred Corn Company vs. Hy-Line Chicks Pty Ltd. In that case, the court affirmed that in order to establish likelihood of deception or confusion in New Zealand regard has to be had to the awareness of the relevant New Zealand market of the mark, and “the manner in which or the source from which knowledge has been acquired is immaterial”.

There are a few important points to note about establishing spillover reputation:

• Reputation in New Zealand must be established before the date on which the application for registration of the prior mark was filed
• The reputation must be sufficiently substantial that use of the prior mark would be likely to deceive or cause confusion
• Evidence of substantial advertising in foreign magazines circulated in New Zealand and geared at the relevant consumers may be helpful
• Evidence of official figures showing movement of people between New Zealand and the country where reputation exists is essential
• Esteem or image that a mark holds is also relevant to reputation

The ability of overseas traders in the clothing industry to establish a spillover reputation in New Zealand has been mixed. Given Australia’s geographical proximity and the constant stream of people traveling between New Zealand and Australia, a claim of spillover reputation from Australia has a high likelihood of success. Such a claim was successful in the Pioneer Hi-Bred case, and again in 2005, when the New Zealand High Court accepted an Australian company’s claim to spillover reputation in its VALLEYGIRL clothing chain.

Establishing spillover reputation from the United Kingdom, although more difficult, can also be done if adequate evidence is provided. For example, in 2003 the UK owner for the clothing brand BOY LONDON was not successful in establishing that a substantial number of New Zealanders were aware of its reputation. This was despite the Assistant Commissioner’s acknowledgement that New Zealanders are “avid travelers”.

However, in 2006, a large clothing chain using the brand NEXT was able to establish spillover reputation from the UK in light of evidence submitted showing substantial traffic between our countries and the high profile of the brand in the UK. Where the brand is recognized as having a substantial international reputation due to linking with a famous designer then a claim to spillover reputation may also be successful. For example, in 2005 Tommy Hilfiger was able to claim spillover reputation in the name TOMMY in New Zealand.

There are two main lessons to be learned from these cases. First, do not assume you can use your mark in another country (no matter how well known in your own country) without conducting a trade mark search; and second, protect your mark as early as possible in your most likely export markets. To do otherwise is a risky business.

The original article published by Fashion Industry New Zealand is available here.

By Rachel Dawson, Senior Solicitor