Omega SA v Guru Denim Inc [2015] NZHC 559 is a case about fashion brands. And we love to write about cases about fashion brands (jeans brands here, shoe brands here, perfume brands here, bird brands in the fashion space here).

Guru is owner of the True Religion brand of jeans. The pockets of these jeans are adorned with a U-shaped stitching design. Omega is a famous watch brand.

This decision relates to a comparison between Guru’s U-shaped logo (below left), and Omega’s marks (below right):

Click here to view the image  

Click here to view the image                             

Omega’s main line of attack was ostensibly that there would be a likelihood of confusion if Guru’s brand was shown on goods the wrong way round.

Click here to view the image        

First instance

Omega opposed Guru’s application only in respect of class 14 goods such as watches and jewellery (and not goods in classes 3, 9 and 25).

Assistant Commissioner Walden rejected Omega’s various grounds of opposition:

  • Use of the mark would be likely to deceive or cause confusion (s17(1)(a));
  • Use of the mark is contrary to law (the Fair Trading Act, passing off) (s17(1)(b));
  • The mark is similar to Omega’s registered mark such that there is likelihood of confusion (s25(1)(b));
  • The mark is similar to Omega’s mark which is well known in New Zealand and use of the Guru logo would be taken as indicating a connection in the course of trade between the opposed goods and Omega, which would prejudice the interests of Omega (s25(1)(c)).

Briefly, in respect of 17(1)(a), AC Warden considered that:

  1. the Omega Combined mark were likely to have been known in the relevant market, but the Omega Device was not (Omega’s evidence lacked “sufficient specificity” in this regard); and
  2. the respective marks (the Omega Combined mark and Guru’s logo) were dissimilar, as the word OMEGA in the Omega Combined mark caused the symbol  to be “correctly orientated” and “states what the symbol is so that the symbol cannot be construed as any other kind of symbol”, as against the Guru logo which could be perceived as a “stylised “U” device or as a horseshoe device” (it did not matter which).

Given these findings, it was considered that each of Omega’s additional opposition grounds also failed.

The appeal

Mackenzie J heard the appeal by Omega. He surmised that “[t]he essential issue on this appeal is whether the Assistant Commissioner erred in her conclusion that the Guru mark and the Omega marks are dissimilar”.

Before considering the comparison, Mackenzie J considered the AC’s finding that the Omega Device was not known in its own right. Omega had adduced further evidence in this regard (Guru challenged this in terms of relevance and weight). The evidence showed some standalone use of the device, but the use was still in close conjunction with the word OMEGA.

Mackenzie J held that:

  • Omega’s use of the word Omega and the symbol was widespread in New Zealand, and this created “a reputation firmly linked to the symbol as representing the Greek letter omega” (which letter “is likely to be sufficiently well known to people in the relevant market to be recognised as such”);
  • [t]he risk to be assessed … is the risk that the Guru mark may be mistaken for the Greek letter”;
  • [w]hile there can be differences in the way letters in any language are represented in print, those differences are limited to those which do not obscure recognition of the letter intended to be portrayed”.

On this basis, the risk of confusion was low.

On the arguments run by Omega relating to a flipped version of Guru’s logo, Mackenzie J took the view that the fact that Omega’s device represents the Greek letter “”anchors” its orientation”. Mackenzie J accepted that the Guru mark was not anchored in this way, and that it could be seen in a different orientation (eg. on watch crowns). However, this would not give rise to a likelihood of confusion which is not otherwise present. The consumer confronted with the Guru mark would have no reason to align it in any particular way. If it was seen upside down, consumers “would see it not as a U shape but as an inverted U with upward sloping arms”. Such use was not in any case a normal use.

Finally, even if the relevant consumer did not recognize the Omega device as a Greek character (and while the likelihood of confusion would be slightly higher in that case) the dissimilarities would still outweigh the similarities.

What about Australia?

Guru’s logo is the subject of a number of registrations in Australia, one of which (AU 1416182, the same as the mark at issue in NZ) was opposed by Omega. The opposition was dismissed in 2014 (see the decision here , and Omega did not appeal.

In the Australian proceedings, Omega’s opposition based on various grounds corresponding to those in the NZ case also failed. Guru’s mark was considered to resemble a stylized U. Even upside down “it is clearly not the omega symbol”.

Upside down

Omega had cited a number of earlier decisions in which “inverted or mirrored” marks had been held sufficiently similar to lead to a likelihood of confusion. Mackenzie J distinguished those decisions on the facts, as in each case the device was more complex than that at issue here.

Interestingly, in a recent decision from OHIM’s 1st Board of Appeal, a finding by OHIM’s opposition division that the marks below were confusingly similar was upheld (Case R 368/2014-1, onepoint.fm gmbh v Beats Electronics, LLC, 21 October 2014).

Click here to view the image     

The Board of Appeal held that “even in the event the public perceives the letters ‘p’ and ‘b’ in the marks, there would remain visual similarity since the typography of the letter depicted and the way it is presented is essentially the same in the conflicting marks. Indeed, the mark applied for is, in its overall impression, a mirror image of the earlier mark”.

Summary

It is notable to the author that (in the Australian decision and at first instance in New Zealand) Omega’s evidence was not sufficient to show that the Omega Device was reputed in its own right, at the very least in relation to watches.

The point relating to the orientation of a mark is of general interest in respect of opposition proceedings. As Mackenzie J noted, different orientations of the Guru mark might give rise to other remedies for Omega.

The decisions can be seen at austlii.edu.au and nzlii.org