VERAGE is confusingly similar to VERGE, but not VERSACE
Legal updates: case law analysis and intelligence
In Hangzhou Gema Suitcases & Bags Co Ltd v Gianni Versace SPA (Case T12/2008, May 19 2008), the Intellectual Property Office of New Zealand has ruled that VERAGE was confusing similar to VERGE, but not to VERSACE.
Hangzhou Gema Suitcases & Bags Co Ltd filed an application for the registration of VERAGE (in stylized format) for goods in Classes 18 and 25 of the Nice Classification. Gianni Versace SPA opposed the application on numerous grounds, including that the registration of VERAGE was likely to deceive or cause confusion among the public because VERAGE was confusingly similar to:
- Versace’s registered trademark VERSACE; and
- the trademark VERGE, which is owned by an unrelated company, Verge Sportswear Limited.
Versace’s further grounds of opposition included the following:
- The registration of VERAGE would be contrary to law, as it would be misleading and deceptive under the Fair Trading Act 1986;
- Use of the VERAGE mark would amount to passing off in respect of the VERSACE mark;
- The VERAGE mark lacked any distinctive character and would always be confusingly associated with VERSACE and VERGE;
- VERAGE was confusingly similar to VERGE and VERSACE; and
- Use of the VERAGE mark would indicate a connection in the course of trade between Hangzhou Gema and Versace, as VERSACE is a well-known mark.
Versace successfully established that the word marks VERSACE and VERGE had sufficient reputation in New Zealand, but failed to adduce enough evidence to establish a reputation in respect of the stylized device marks which include the word 'Versace'.
In comparing VERSACE with VERAGE, the assistant commissioner considered that the marks were different in look, sound and concept. Therefore, VERSACE and VERAGE were not deemed to be confusingly similar.
On the other hand, the assistant commissioner considered that VERGE and VERAGE looked almost identical, as there was a significant possibility that the public would overlook the additional letter 'A' in VERAGE. In assessing whether the two marks sounded confusingly similar, the assistant commissioner acknowledged that VERAGE was intended to be a device mark but closely resembled a word mark, as it merely consisted of the word 'verage' in a stylized format. Therefore, the assistant commissioner considered that VERAGE and VERGE sounded similar, particularly if they were not spoken clearly.
In relation to conceptual similarity, the assistant commissioner pointed out that 'verage' was an invented word with no obvious meaning. Consequently, the similarities in look and sound were significant enough to make it reasonably likely that a substantial number of the public would be confused into believing that VERAGE and VERGE were the same mark.
Therefore, the opposition succeeded on two of the six grounds raised. The assistant commissioner found that:
- registration of VERAGE would be likely to deceive or cause confusion because it was confusingly similar to VERGE; and
- registration of VERAGE would be contrary to law, as it would breach the Fair Trading Act - that is, use of the VERAGE mark by Hangzhou Gema would amount to, or be likely to amount to, misleading and deceiving conduct.
Accordingly, the assistant commissioner held that VERAGE could not be registered as a trademark in New Zealand.
Kate Duckworth, Baldwins, Wellington
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10