MIMI not similar to MIU MIU
In a recent trade mark dispute between The Farmers’ Trading Company Limited (“Farmers”) and Prada S.A. (“Prada”), the High Court has upheld a decision of the Assistant Commissioner that the marks MIMI and MIU MIU are not confusingly similar.
In October 2007, Farmers applied to register the word mark MIMI and 
for “clothing, footwear, headgear” in international class 25 (“Farmers’ MIMI marks”). The Commissioner of Trade Marks accepted both marks for registration.
The applications were opposed by Prada, who is a well known Italian manufacturer of high-end luxurious women’s clothing and accessories. The opposition was based on Prada’s registrations for the stylised MIU MIU trade mark 
and alleged reputation in the trade marks MIU MIU and the sylised MIU MIU trade mark (collectively “Prada’s MIU MIU marks”). Specifically Prada claimed that:
- use of Farmers’ MIMI marks would be likely to deceive or cause confusion due to Prada’s reputation in Prada’s MIU MIU marks (section 17(1)(a) of the Trade Marks Act 2002);
- use of the Farmers’ MIMI marks is contrary to New Zealand law because it would amount to breach of sections 9 and 10 of the Fair Trading Act 1986 and passing off (section 17(1)(b) of the Trade Marks Act 2002);
- Farmers’ MIMI marks are similar to Prada’s stylised MIU MIU trade mark, which is registered for identical goods, use of Farmers’ MIMI marks is likely to deceive or confuse (section 25(1)(b) of the Trade Marks Act 2002); and
- Farmers’ MIMI marks are similar to Prada’s MIU MIU trade marks, which are well known in New Zealand in respect of identical goods, and would be likely to prejudice Prada’s interests.
In relation to the section 17(1)(a) ground of opposition, the Assistant Commissioner found that Prada had established a sufficient awareness in Prada’s MIU MIU marks in New Zealand. However, the Assistant Commissioner considered that the respective marks “are not visually, aurally, or conceptually similar” and therefore, that use of Farmers’ MIMI marks would not deceive or cause confusion.
As Prada did not succeed under section 17(1)(a), the Assistant Commissioner considered that it was unnecessary to consider the 17(1)(b) ground of opposition as there is a higher threshold of confusion required to establish passing off or breach of the Fair Trading Act 1986.
The Assistant Commissioner also found in favour of Farmers under sections 25(1)(b) and 25(1)(c) as she considered that the respective marks are not similar and that Prada’s MIU MIU marks are not well known in New Zealand.
Prada appealed the decision of the Assistant Commissioner to the High Court. The appeal was heard by Priestly J., who upheld the decision of the Assistant Commissioner.
It is noteworthy that unlike the Assistant Commissioner, Priestly J. considered that Prada’s MIU MIU marks met the threshold of being “well known” under section 25(1)(c) of the Act.
Priestly J. also noted that the Assistant Commissioner had erred in considering the fact that the parties operate in different trade channels due to the different quality and price of the respective products, as the goods covered by Farmers’ application were not limited. This reinforces the well established rule that it is the notional use of the mark that is sought to be registered which must be considered.
However, despite these differences, Priestly J. found in favour of Farmers as he considered that the respective marks are not similar, and therefore, that use of the Farmers’ MIMI marks would not deceive or confuse and would not prejudice the Prada’s interests.
Naomi Hand - December 2010
