Court of Appeal Upholds Finding that Devices are Dissimilar on Balance
Even re-orienting the alleged infringing mark deemed insufficient to lead to deception or confusion...
Omega has longstanding New Zealand trade mark registrations for a device mark incorporating an Ω symbol in relation to watches and numerous other goods.
Guru sought to register what has been described as an upside down omega symbol in relation to a wide range of goods, including watches and related goods in class 14. Omega was unsuccessful in opposing Guru’s application before an Assistant Commissioner and also in appealing that case to the High Court. The Assistant Commissioner held that there was insufficient evidence to establish that Omega had reputation in the Ω symbol on its own in the relevant market, and also held the respective marks to be visually, phonetically and conceptually dissimilar. In its appeal to the High Court Omega showed evidence of use of the Ω symbol on its own. Nonetheless, the Judge also found the respective marks to be visually, phonetically and conceptually dissimilar. Principally this was due to the likelihood that the Ω symbol would be seen as a Greek character, but the dissimilarities were also held to outweigh the similarities even if the respective symbols were considered to be abstract figures with no particular meaning.
To succeed on appeal Omega needed to show that the use of Guru’s mark would be likely to deceive or cause confusion at its application date. While Omega only obtained registration subsequent to that date for the Ω symbol in relation to relevant goods, their unregistered rights in that mark could be used for the purpose of establishing the required likelihood of deception or confusion. However, the Court of Appeal found that Omega’s reputation in the Ω symbol on its own was insufficiently established by the supplied evidence of such use. Nonetheless, the Court of Appeal referred to its own precedent to hold that use of a component of a mark by a competitor could give rise to deception or confusion if that component is an essential feature and significant part of the reputation of the full mark.
In considering deception or confusion the Court of Appeal held that the Judge was not entitled to assume that a significant number of New Zealanders know that the Ω symbol is a Greek letter. This is somewhat surprising given that the Ω symbol is used to represent electrical current resistance and is introduced to high school students for such use.
As Guru had yet to make any use of its mark the Court had to compare actual use of Omega’s mark with the notional use of Guru’s mark, and taking into account imperfect recollection. The Court of Appeal found that the visual differences outweighed the similarities, noting in particular differences in the orientation, shape, angle and thickness of the lines. The overall impression of the Omega mark was given as a bottom opening oval while the Guru mark was given as a stylised ‘U’ shape. The Court of Appeal held that even if the Guru mark was rotated the other differences would still be sufficient to prevent deception or confusion. It also noted that given the predominant use is in relation to watches the correct orientation of the mark would be determined by the watch face, and that interested purchasers of luxury watches and jewellery would closely examine such goods.