The North Face fails to prevent registration of device mark

In The North Face Apparel Corp v Sanyang Industry Co Limited ([2012] NZHC 2259, September 4 2012), the High Court has dismissed The North Face Apparel Corp's appeal.

In January this year, North Face lost its opposition against a trademark application in Classes 7, 16, 25 and 35 of the Nice Classification by Sanyang Industries Co Limited for the following device:

North Face’s opposition was based on its use of the following unregistered mark prior to Sanyang’s application date:

North Face relied only on the use it had made, and therefore claimed it was the proprietor of its mark, it did not rely on an earlier reputation. In the opposition proceedings, the assistant commissioner found that North Face had used its trademark in New Zealand, but focused on the following trademark:

Referring back to the test for proprietorship, the assistant commissioner concluded that the SUMMIT SERIES device mark was not substantially identical to the Sanyang trademark.

North Face appealed to the High Court. 

On appeal, the judge reviewed the evidence to assess North Face’s claim that it had used its device mark before Sanyang’s date of application. The judge concluded that North Face was able to show that it used its device mark on three styles of gloves/ mittens in New Zealand prior to Sanyang’s application date.

North Face asked the court to rotate Sanyang's trademark and then compare it with its own mark. North Face submitted that this was an accurate way to make a comparison because the marks may be viewed from various angles when worn on clothing, particularly gloves or mittens.

The court viewed this as a side by side comparison, and deemed this not to be the correct way to view trademarks. Even if it was the correct comparison, the judge ruled the marks not to be substantially identical, even side by side.

The conceptual differences between the marks were said to be strong. North Face's mark was said to be reminiscent of a mountain, whereas Sanyang's mark was said to be reminiscent of a badge used on vehicles.

It is hard to see how the marks could not be viewed as substantially identical when viewed side by side as above.  If marks are similar when viewed side by side, then imperfect recollection would render them even more similar.  Had North Face had a reputation in the trademark, or filed its own application, prior to the date of Sanyang’s application, the result may well have been different

Kate Duckworth, Baldwins, Wellington