A Brazilian manufacturer of beach footwear has been unsuccessful in its attempt to prevent the registration of a trade mark by a rival in New Zealand.

The case of Sao Paulo Alpargatas S.A. v But Fashion Solutions Comercio E Industria De Artigos Em Pele LDA (HC Wellington, CIV-2010-485-2473, 5 July 2011) involved an opposition by Sao Paulo to the registration by But Fashion Solutions' of the 'CUBANAS' trade mark on the basis that it was too similar to Sao Paolo's registered trade mark 'HAVAIANAS' and that its use would be likely to deceive or cause confusion.

At first instance, the Assistant Commissioner of Trade Marks had rejected these arguments and found that Sao Paulo had not discharged its burden of showing that its own trade mark was well known. The Assistant Commissioner also found that the trade marks had strong visual and aural differences which meant they would be perceived as conceptually different.

In dismissing Sao Paulo's appeal against this decision, Justice Mallon found that the trade marks were sufficiently distinct overall and therefore it was unlikely that the use of But Fashion Solutions' trade mark would cause confusion. While Justice Mallon considered that Sao Paulo had established that its trade mark was well known in New Zealand (noting in this regard that the term HAVAIANAS has been mentioned in the New Zealand media without the need to state what the product actually was) the other requirements for refusal regarding the likelihood of confusion were not met. Key factors leading to this conclusion were the differences in font and script, the distinctive picture used in relation to the CUBANAS mark and the differences in the appearance and sound of the first part of each name. Justice Mallon also noted that because a tropical holiday or beach theme is not a unique or unusual brand feature, the similar theme of the two marks is not a factor which weighed heavily in the assessment of likely confusion.

The case demonstrates that the threshold for opposing a trade mark on the grounds of similarity or that it is likely to deceive or confuse is relatively high. The mere fact that the mark contains certain similarities to an existing registration will not necessarily be sufficient to prevent its entry onto the register.