AUCKLAND: Australian retail giant Cotton On has been put on the back foot by a boutique fashion business in New Zealand.
The Intellectual Property Office of New Zealand has rendered its Rubi Shoes trademark invalid, following a prolonged legal battle between the retail group and Ruby Apparel Limited.
The boutique womenswear brand, which was launched as a wholesale business in 1999 before expanding into retail in 2002, alleged the registration of Rubi Shoes was contrary to the country’s trade mark laws.
Ruby applied to have the trade mark declared invalid in September 2009, three months after Cotton On launched Rubi Shoes into New Zealand with a concept store in Sylvia Park, Auckland.
Ruby argued the registration breached several sections of the Trade Marks Act 2002, including a likelihood to deceive or cause confusion among consumers and traders.
Cotton On Group, which owns over 650 retail stores across the world, claimed it was not aware of the existence of four Ruby boutique stores or Ruby products when it first filed for registration on 19 November 2008. The Intellectual Property Office of New Zealand did not raise the Ruby logo trade mark registrations as obstacles to the acceptance of its mark, Cotton On claimed.
Two Ruby logo marks were registered in June 2000 and June 2002 respectively.
However, a ruling by assistant commissioner of trademarks Jennie Walden found several grounds for invalidity against Rubi Shoes. In addition to offering a similar class of goods and services, the two trade marks were deemed phonetically similar and likely to deceive or cause confusion in the marketplace.
“Given that Ruby is a well known New Zealand fashion brand name for women’s wear, it is in my view that a potential purchaser who heard Rubi Shoes would be triggered into thinking about Ruby shoes,” she said, noting the brand’s footwear collaboration ‘Ruby by Kathryn Wilson’.
In a final blow to Cotton On, Walden also waved the company’s opposition to an additional ‘Ruby’ trade mark application filed by Ruby Apparel. Walden stated the registration could proceed if Cotton On did not appeal her invalidity decision before the expiry of the appeal period.
It is understood while Ruby Apparel ploughed tens of thousands of dollars into the legal battle, it was awarded total costs of only $7710, related to the hearing only. Ruby Apparel and Cotton On did not comment by the time of press.
New Zealand textile, clothing and footwear consultant Paul Blomfield, who gave evidence in favour of Ruby during the case, said the ruling was a win for small businesses.
“I’m very pleased that the judgment has been so clear,” he said. “If Cotton On could have been allowed to simply enter the country with a similar sounding brand name with no regard to prior registrations, it would have set a dangerous precedent for all small fashion brands operating in New Zealand.
There would be nothing to prevent any fashion brand of even modest reputation from being attacked by any large company with more money and better lawyers.”
Assia Benmedjdoub