Ariat International, Inc  ATMO 111 (18 November 2015)
On 2 May 2013, U.S.-based equestrian equipment and apparel company Ariat International, Inc (“the applicant”) filed a trade mark application for class 25 goods covering breeches.
If you wear breeches, then either you ride horses or you are into steampunk cosplay. Breeches consists of a pant from the waist down, stopping just below the knee.
Here is the illustration which accompanied the application:
Click here to view image.
And this is how the endorsement to the application reads: “Endorsement: Color is not claimed as a feature of the mark. The mark consists of double-piped pockets, with the pockets being shown applied to breeches which are shown in dashed lines and form no part of the claimed design.”
Six adverse examination reports were issued by the examiner, demonstrating admirable stamina on the part of both the applicant and the examiner. Upon initial examination of the trade mark application, a ground for rejection was raised under s41 of the Trade Marks Act1995 (TMA), on the basis that the applied for mark is not sufficiently nor inherently adapted to distinguish the applicant’s goods from other traders’ goods.
The applicant submitted a declaration from Terry Donohue, the managing director of Just Country Australia Pty Ltd, the exclusive Australian distributor of the applicant’s goods relevant to the trade mark (‘the Donohue Declaration’). But the examiner was of the view that the examples of use in the Donohue Declaration failed to demonstrate use as a trade mark, noting that the stand out feature in the images are “the stitching decoration on the pockets,” which were not referenced as being a trade mark and “extremely common for traders to use.”
The applicant then filed five declarations from people within the equestrian industry, attesting that the applicant is known for selling breeches with double-piped pockets. However, the examiner was unconvinced by this because the declarations only proved that the individuals are aware of the applicant selling breeches with double-piped pockets. The evidence did not prove that consumers exclusively associate double-piped pockets with the applicant’s goods.
The matter went to a hearing before a delegate of the Registrar of Trade Marks. The delegate outlined the prima facie issues that were causing trouble for the applicant’s trade mark application:
“… in subsequent correspondence including the written submissions for the hearing, the Trade Mark is described as being ‘double-piped lining on the front pockets of breeches’. This less clearly references ‘double piped pockets’ and could indicate that the Trade Mark is intended to be the piping itself, rather than pockets that have double piping on them. Although the written submissions potentially introduce some ambiguity, it is the written description in the endorsement that forms part of the representation of the Trade Mark and which is to be considered in the assessment.”
One has sympathy with the delegate – what exactly was being claimed by the applicant?
Turning to s41 of the TMA, the delegate noted that piping with regard to garments – particularly the pockets of pants – is not uncommon, and even those that have decorative features are regularly used by other traders in their goods. The delegate said:
“Piping is ‘a tubular band of material, sometimes containing a cord, for trimming garments, etc., as along edges and seams’. It is not uncommon for piping to be applied to the pockets of pants. Seemingly it is also not unusual for varying decorative features to be applied to the pockets of riding breeches. The Applicant has provided examples, in Annexure 2 of its written submissions, of other traders’ equestrian breeches which demonstrate this….These examples illustrate that embellishments on the pockets of riding breeches are used by other traders as decorative features.”
In her decision, the delegate was not satisfied with the evidence presented by the applicant, noting that it did not prove use as a trade mark, nor that consumers exclusively recognise it as one. The trade mark application was rejected.
This decision was concerned with piping. Stitching and piping are siblings in the sense of being capable of functioning as embellishment on clothing. Consideration of trade mark applications seeking protection for particular types of stitching on pants have arisen only infrequently. In New Zealand, in the decision of NYDJ Apparel LLC v Commissioner of Trade Marks  NZHC 2678 (30 October 2014), a trade mark consisting of the following was permitted, on appeal to the High Court:
The mark consists of a non-functional crisscross stitching pattern, in a contrasting red or purple colour, on the inside pocket of a pair of jeans, as shown in the representation attached to the application. The leg and jeans outline shown in broken lines in the representation forms no part of the mark, but is included to show the location of the mark in use.
This was precisely articulated, and is clearly stylised, very distinctive stitching.
(There is also an interesting copyright case in New Zealand around the design of jeans, from earlier this year, in which a plaintiff was able to successfully demonstrate copyright infringement, albeit in flagrant circumstances - Jeanswest Corporation ( New Zealand ) Limited v G-Star Raw C.V.  NZCA 14 (17 February 2015))
In Australia, well-known jeans manufacturer Levi Strauss & Co has been occasionally keen to stop variations of pocket stitching used by competitors – see for example Lee Cooper Group PLC v Levi Strauss & Co  ATMO 7 (7 February 1996), and Levi Strauss & Co v Vivat Holdings Plc  ATMO 68 (14 July 2000). These oppositions have failed for a variety of reasons, but in summary it is fair to say this occurred because the scope of protection of the mark underpinning the opposition has been read narrowly by the respective delegates of the Trade Mark Registry. Also, consumers’ buying patterns do not rely exclusively on recognition of the pocket stitching - fromLee Cooper Group PLC v Levi Strauss & Co  ATMO 7:
“People do not merely rush up and grab a pair of jeans from a shelf on the basis of a quick glance at a pocket thinking that they are a particular make. They would more usually carefully inspect them for size, style, colour and make - the last criterion demanding a reasonably close inspection to ensure that they are selecting perhaps the opponent's product instead of the applicant's”.
And that is probably the best summation of the point of endeavouring to obtain trade marks over non-distinctive piping and stitching.