Well-known fashion company unsuccessful in opposition proceedings

New Zealand
In Prada SA v The Farmers Trading Company Limited (CIV 2010-485-58 [2010] NZHC 1888, September 21 2010), the High Court has considered whether the trademark MIMI was similar to Prada SA's trademark MIU MIU. 
 
Prada is a well-known European-based manufacturer and distributor of designer clothing and accessories. The Farmers Trading Company Limited is a well-known New Zealand retailer. It operates department stores throughout New Zealand, offering, among other things, low-price clothing and accessories. In New Zealand, Prada owns various MIU MIU marks, including the following:

 

In October 2007 Farmers applied for the registration of the word mark MIMI and a stylised version of the word 'mimi':



The stylisation of the word 'mimi' was quite close to the stylisation of the MIU MIU mark, as used and registered by Prada. Prada opposed. The assistant commissioner of trademarks ruled that Farmers' MIMI marks were not similar to Prada’s MIU MIU marks. Prada appealed.
 
On appeal, the court found there to be only four similarities between the marks and seven differences. In particular, the court found that:

  • both MIU MIU and MIMI start with 'mi';
  • both marks are in a similar lower case font; and
  • both contain two syllables which are repeated, each syllable starting with the letter 'M'.
However, the similarities were said to be superficial and strongly outweighed by the differences. The differences were said to include the following:

  • MIU MIU consists of two words, while MIMI is only one word;
  • the marks have a different pronunciation;
  • MIU MIU has distinctive gaps at the top of the letters 'M' and 'U';
  • MIMI has a dot over the letter 'I', while MIU MIU has not;
  • MIMI has underlining, while MIU MIU has not;
  • MIMI has two letters repeated in the same order, while MIU MIU has three;
  • MIMI has one consonant and one vowel, while MIU MIU has one consonant and two vowels.
The marks were thus said to be visually, aurally and conceptually different.
 
The court noted that Prada had failed in similar cases overseas, albeit in the context of different statutory regimes. It did however consider that the overseas decisions reinforced the view that both the court and the assistant commissioner had reached - that is, that there was unlikely to be any confusion and deception.

The court’s analysis of the similarities and differences was so detailed that it is far removed from one that any consumer would make. The court appears to have failed to stand back and consider whether consumers would be confused when presented with the MIMI mark in use, even though the decision indicates that the court does not accept that a casual buyer would confuse MIMI with MIU MIU.
 
Kate Duckworth, Baldwins, Wellington

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