You pick up a pair of jeans in the store, and you inspect the back pockets. (Is there anyone that doesn’t select jeans based on what is on the back pockets?)
What brand of jeans are you holding?
The answer would be obvious to many. They’re LEVI’S jeans. You could tell whether the word mark LEVI’S was there or not. In a sense this might reflect some circularity or presumptuousness in terms of consumer perceptions. They probably are not aware of Levi Strauss’ registered trade mark portfolio, but – for whatever reason – they would be surprised if an unrelated trader could use the well-known “arcuate” device (or something visually close to it).
Yes, there will be some argumentative types that would say “these might well be LEVI’S, but I can’t say for sure because they don’t have the distinctive red tab and/or the LEVI’S word mark” (example shown below). But I suspect this kind of answer would predominantly come from trade mark lawyers / attorneys.
It is therefore sometimes surprising that these types of marks are difficult or less than straightforward to register. See our earlier case notes here and here on the NYDJ decisions in New Zealand by way of example.
Even if a registration is obtained, the next question to consider relates to the scope of rights. How close is too close?
A recent decision in Australia provides a good example of a use that is far too close.
Levi Strauss & Co has various registrations for its arcuate stitching marks in Australia. It relied on the following 4 registered marks in class 25 (below left) in an opposition against an application for the mark shown below right made by Yugen Kaisha Shimura (Shimura Ltd) in class 25.
LEVI’S marks YUGEN’s mark
The decision upholding the opposition was brief and to the point.
- Yugen’s mark comprised “a pocket device with stylized arcuate stitching across the middle and a small monograph within a circle in the top left hand corner which may contain either the letters ‘BS’ or ‘SB’”.
- The monogram is a minor element and its visual significance is not immediately evident.
- Levi’s earlier marks (particularly 584819 and 1211752, shown below) each feature “two parallel symmetrical lines of stitching that begin at equivalent points on either side of the pocket and feature two arches intersecting in a dip in the centre”.
- There are differences between the respective marks on a side by side comparison.
- However, as a matter of general impression (rather than on the basis of a photographic recollection), the marks were visually deceptively similar, even taking account of the nature of the relevant consumers (who might handle and closely inspect the items and try them on for size and appearance before purchase).
- As regards Yugen’s arguments based on earlier decisions in which oppositions based on Levi’s arcuate mark had not succeeded, those cases could be distinguished on their facts.
- The fact that no examination report was issued against Yugen’s application was not binding on the Hearing Officer.
- Yugen could not on the evidence rely on the exceptions to section 44.
Comment
The outcome is uncontroversial given the visual similarities between the marks, and reinforces the value of registering pocket stitching marks.
What is notable in terms of strategy is that an opposition was filed without first making a request to revoke acceptance of Yugen’s application under section 38 (on the basis that one or more of the earlier registrations relied on in the opposition should have been raised as citation objections during examination). Such a request would have had good persuasive value, particularly given the uncertainties inherent in conducting searches for device marks of this nature during examination, and the similarities between the marks. If the revocation request was successful, the substantial costs and time involved in the opposition would have been saved.
On the other hand, the decision could serve as a useful precedent for Levi Strauss in future enforcement cases, on top of its value as a deterrent.
The case citation is Levi Strauss & Co v Yugen Kaisha Shimura (Shimura, Ltd) [2016] ATMO 67 (2 September 2016) and it can be seen online at http://www.austlii.edu.au/au/cases/cth/ATMO/2016/67.html.
