TAMMY and TOMMY can live together

In Tommy Hilfiger Licensing Inc v Etam, the assistant commissioner of trademarks at the Intellectual Property Office of New Zealand has dismissed both parties' complaints and has ruled that Tommy Hilfiger Licensing's TOMMY mark and fashion company Etam's TAMMY mark were not confusingly similar.

In September 2002 Etam filed two applications to register the trademark TAMMY, one for clothing, footwear and headgear in Class 25 of the Nice Classification, the other for cosmetic products and other goods in Class 3. Tommy Hilfiger opposed the Class 25 application. The Class 3 application matured to registration in March 2003. However, in September 2003 Tommy Hilfiger filed an application to invalidate the registration.

In January 2003 Tommy Hilfiger filed an application to register the trademark TOMMY, covering a variety of Class 25 goods. Etam opposed this application in April 2003.

Tommy Hilfiger filed evidence regarding its use of the TOMMY HILFIGER and TOMMY trademarks since the Tommy Hilfiger brand was launched in 1985. This included evidence showing Tommy Hilfiger goods were available in New Zealand since late 1996, and that TOMMY is commonly used to refer to Tommy Hilfiger. Also, evidence was provided from a marketing expert that there was a strong likelihood consumers would confuse the TOMMY and TAMMY marks.

Etam's evidence in relation to its opposition to the registration of TOMMY concerned its use of the TAMMY trademark since the brand was launched in 1972. The mark had been used extensively overseas and Etam intended to launch the TAMMY range in a number of other countries, including New Zealand, in the near future. Etam pointed out that there were several countries where the TAMMY and TOMMY trademarks had been registered side by side, and products had been sold under the marks in a number of countries, including Belgium, France, Italy, Spain and the United Kingdom without any evidence of confusion. Etam also provided evidence from an independent marketing expert, who stated it was unlikely consumers would confuse TOMMY and TAMMY.

Tommy Hilfiger argued that TAMMY was confusingly similar to TOMMY, and therefore use of TAMMY would be likely to deceive consumers or cause confusion. Also, Tommy Hilfiger argued that as its various TOMMY trademarks are well known in New Zealand, use of TAMMY would be taken as indicating a connection in the course of trade between Tommy Hilfiger's goods and Etam, and Tommy Hilfiger would be prejudiced as a result.

Similarly, Etam argued that the registration of TOMMY should be refused given TAMMY and TOMMY were confusingly similar marks, and therefore use of TOMMY would be likely to deceive or cause confusion.

As a result of the evidence filed in support of the proceedings, the assistant commissioner held that by September 2002 the TOMMY brand was well known in New Zealand. However, after comparing the TOMMY and TAMMY marks, she held that they were not confusingly similar. While the marks look similar, they sound different. Also, the assistant commissioner put considerable weight on the conceptual difference between the marks:

"In my view, the most important difference between the marks is the conceptual difference - that TOMMY is the name of a male and TAMMY is the name of a female. It is difficult to envisage how a substantial number of persons in the relevant market are likely to be deceived or confused by these two marks, which have such a significant difference as this."

Accordingly, neither Tommy Hilfiger nor Etam were successful in these proceedings.

Carrick Robinson, James & Wells, Auckland