Havaianas: more dramas against CubanasThe Brazilian footwear giant behind Havaianas has failed in its latest effort to strike down trademark registrations held by competitor Cubanas.
Sao Paulo staged an appeal in the High Court of New Zealand Wellington Registry last month after it failed to oppose the registration of mark containing the word Cubanas below a stylised drawing of a man wearing circular headwear made of leaves in November 2010. Sao Paulo registered the Havaianas mark in New Zealand on April 15, 1999 while the Cubanas mark was accepted on July 15, 2009.
The Assistant Commissioner ruled the only similarities between the two marks were the last four letters and the possibility of an “underlying tropical theme”. The Assistant Commission concluded that on the evidence before the original hearing, it had not been established that the trademark was well known in New Zealand at the relevant date. It was also deemed there was no obvious meaning in either mark and that strong visual and aural differences would cause both to be perceived as conceptually different.
In its appeal, Sao Paulo claimed the Assistant Commissioner erred in concluding that Cubanas was not confusing or deceptively similar to the Havaianas mark. The company framed its case on several grounds, including improper comparisons of the two brands by the Commissioner, its overall brand identity and brand awareness, marketing collatoral, and the offer of similar goods and services.
However High Court Judge Jillian Mallon upheld the earlier decision, ruling while the marks are similar, there were key aural and visual differences.
“Sao Paul submits that the expansion of its product range (for example [from sandals] to shoes) or means of sale would be limited by the presence of the respondent’s mark,” Mallon added. “Sao Paulo submits the respondent’s mark will dilute or blur the distinctiveness of the Havaianas brand....The differences in the respective marks will enable Sao Paulo to preserve its identity.”
The brand has been operated by a direct distributor in New Zealand since 2004, with 180 retail outlets carrying Havaianas between Northland and Invercargill. According to the hearing, 93,000 pairs of sandals were sent to the market in 2004 before growing to 125,700 in 2007. Cubanas offers a range of footwear and accessory products.
Assia Benmedjdoub