NYDJ Apparel successful in registering cross-stitch pattern for jeans

In NYDJ Apparel LLC v Commissioner of Trademarks ([2014] NZHC 2678, October 30 2014), the High Court has overturned an earlier decision by the commissioner to refuse NYDJ Apparel LLC’s application to register the criss-cross stitching pattern used by NYDJ in the inside pocket of its jeans.

NYDJ applied to register a cross-stitch pattern from the inside pocket of a pair of jeans, as shown below:

A feature of the jeans is panels sewn on the inside of the front pockets, which flatten the belly and lower abdomen, making the wearer look smaller in size. To allow customers to easily identify that the jeans they are purchasing have the slimming panels, NYDJ applied the criss-cross pattern to the inside of the two front pockets, with the stitching for the pattern being either red or purple (with the other (functional) stitching in yellow).

As required under New Zealand practice, in its application NYDJ provided the following written description of the mark:

"The mark consists of a criss-cross stitching pattern on the inside pocket of a pair of jeans, as shown in the representation of 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 NYDJ’s second attempt to register the mark. The first application was refused on the grounds that the mark lacked sufficient distinctive character. NYDJ tried to overcome this obstacle by filing evidence of use in support of the application. Despite being of the view that the evidence was “not insignificant”, the commissioner did not consider it was sufficient to show that the mark had acquired a distinctive character. 

By the time NYDJ came to file its second application for the mark, it had been used in New Zealand for nearly four years.   

The application was once again refused under Section 18(1)(b) of the Trademarks Act 2002, which prohibits the commissioner from registering a mark which has no distinctive character. Given the nature of the mark, and as it is common practice for clothing manufacturers (and particularly jeans manufacturers) to apply a stitching pattern to their goods, the commissioner considered other traders would likely want to use the same or a similar mark, in the ordinary course of business and without improper motive, in relation to clothing. As such, granting NYDJ rights in such a non-distinctive mark would adversely impact other traders in what they wished to do without improper motive. 

NYDJ argued that although the mark was simple, it was also unique. Further, the mark did not achieve a technical result, but rather was “a whimsical design to enable retailers and consumers to identify the applicant’s goods”. As such, NYDJ argued that the commissioner’s view that the mark had no distinctive character was incorrect.

NYDJ again filed evidence of use in support of the application. Under Section 18(2) of the act, an objection under Section 18(1)(b) can be overcome if the applicant can show that the mark has, as at the date of the application, acquired a distinctive character, as a result of either use of the mark, or of any other circumstances.  As well as evidence of use of the mark in New Zealand, NYDJ provided details of the international marketing and advertising for the mark, details of corresponding international trademark registrations and applications for the mark, and evidence from the trade. 

There was some debate, given that the mark was located on the inside of the goods and was not normally visible to consumers, as to whether the evidence of use could be attributed to the subject mark alone, given that the goods were promoted and sold by reference to other brand names, such as TUMMY TUCK or NOT YOUR DAUGHTERS JEANS. NYDJ’s attorneys correctly pointed out that there is no specific requirement that a trademark be visible to consumers at all times, but despite this the commissioner remained of the view that the mark was not eligible for registration, and that NYDJ’s use of the mark was not sufficient to demonstrate acquired distinctiveness. 

NYDJ requested a hearing to determine the matter, at which the decision to refuse the application was maintained. NYDJ appealed to the High Court.

The court considered two issues:

• Was the commissioner correct in her finding that the mark had no distinctive character whatsoever, and therefore the mark was ineligible for registration under Section 18(1)(b)?
• If so, was the commissioner right in deciding that NYDJ could not rely on the provisions of Section 18(2) regarding acquired distinctiveness or other circumstances?

On the first issue the court’s starting point was that stitching on jeans is capable of distinguishing the goods, but the question to be decided was whether the particular cross-stitching used by NYDJ has distinctive character given the type of stitching used is not in itself distinctive, and whether the fact that the stitching was on the inside of the jeans meant that the stitching would be seen as nothing more than functional. In the court’s view, NYDJ’s use of a contrasting colour for the cross-stitching suggested that this was not the case, and commented that a trademark can be both decorative and functional while also serving to distinguish NYDJ’s goods from those of other traders.

Without the contrast in colour, the court considered that the mark was less distinctive and consumers could see the cross-stitching as simply being part of the general, functional stitching of the jeans. There was also a greater risk that other traders would inadvertently infringe NYDJ’s mark. To clarify how the mark was actually being used, NYDJ agreed to limit the goods covered by the application from “articles of clothing” to “jeans”, and the written description for the mark to the following:

"The mark consist of a non-functional criss-cross 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." 

NYDJ also agreed to the entry of the following disclaimer: "Registration of this trademark shall give no right to the exclusive use of stitching in a criss-cross pattern, except in the form shown and explained in the registration." 

The court held that, with these amendments and the disclaimer, the mark had a distinctive character, and as such the mark was not caught under Section 18(1)(b).  Although not necessary given this conclusion, the court went on to consider whether the mark had acquired distinctiveness through use. 

On this point the court found that the commissioner had been wrong to consider that the criss-cross stitching had a low level of distinctiveness and, consequently, she had set the bar too high for NYDJ to prove that the mark had acquired distinctive character through use . Bearing in mind that, in the market for jeans, stitching is regularly used to indicate trade source, the court was satisfied that NYDJ’s promotion of its jeans with the criss-cross symbol served to link the criss-cross pattern to NYDJ. It followed that the court considered that, if required, NYDJ’s evidence of use would have been sufficient to show that the mark had acquired distinctiveness, given jeans are commonly identified by its stitching.

The appeal was allowed.

In the circumstances, NYDJ rightly chose to pursue the registration of its mark, and was rewarded with the correct result. The decision illustrates the importance of correctly assessing evidence of use in respect of acquired distinctiveness in the context of how the mark is actually used, taking into account any circumstances and practices specific to the market for the goods in question, thus ensuring the evidence is given proper weight.

Carrick Robinson, James & Wells, Auckland