RUBI, RUBY, RUBI SHOES … the ongoing battle between two retailers over the right to use the word RUBY or RUBI for clothing and shoes
The Intellectual Property Office New Zealand (“IPONZ”) has ruled in favour of designer fashion company Ruby Apparel (2008) Limited (“Ruby”) in a trade mark dispute with Cotton On Clothing (New Zealand) Limited (“Cotton On”).
New Zealand based Ruby was launched in 2001 and has four boutiques in New Zealand, which sell clothing and footwear under Ruby’s three in-house labels – RUBY, MADAME HAWK and IT IS WHAT IT IS, as well as under non-Ruby labels. Ruby branded products are also available from a number of shops throughout New Zealand and online.
Rubi Shoes is a low price shoe brand and is one of a number of brands under the Australian-based Cotton On umbrella. Cotton On applied to register the mark RUBI SHOES as a trade mark in New Zealand in November 2008 and launched Rubi Shoes in New Zealand in 2009. Ruby was reported as being, not surprisingly, shocked at Rubi Shoes’ launch and trade mark registration.
Ruby owned trade mark registrations for a number of marks, including two logo marks (both of which included the word RUBY).
However, it did not own a registration for the word mark RUBY. Ruby’s logo registrations did not prevent the registration of Cotton On’s RUBI SHOES mark.
In May 2009, Ruby applied to register the word mark RUBY for clothing, footwear and headgear. This application was accepted for registration by IPONZ but was opposed by Cotton On in September 2009. Also in September 2009, Ruby applied for a declaration of invalidity of Cotton On’s trade mark registration for the mark RUBI SHOES.
The two proceedings were heard together and a joint judgment of Assistant Commissioner Walden issued in October.
Opposition Proceedings
In the opposition proceedings, Cotton On argued that the mark RUBY was descriptive of ruby coloured clothing and therefore, was ineligible for registration under section 18(1) of the Act which prohibits the registration of a sign that is not a trade mark, a trade mark that has no distinctive character, or a trade mark that consists only of signs or indications that may serve in trade to designate a characteristic of the specified goods or that have become customary in the current language or in the bona fide and established practices of trade.
The Assistant Commissioner agreed that the mark RUBY had no inherent distinctive character as other traders may legitimately desire to use the word “ruby” to describe ruby coloured clothing. However, ultimately the Assistant Commissioner found in favour of Ruby on the grounds that the mark RUBY had acquired distinctive character through extensive use and was therefore, eligible for registration under section 18(2) of the Act which provides that the Commissioner must not refuse to register a trade mark under section 18(1) if, before the date of application for registration, as a result of the use made of it, the trade mark has acquired a distinctive character.
Invalidity Proceedings
In its Application for a Declaration of Invalidity, Ruby alleged a number of grounds, namely:
i. that Cotton On was not the owner of the mark RUBI (section 32 of the Act);
ii. that use of the mark RUBI by Cotton On would be likely to deceive or cause confusion (section 17(1)(a) of the Act);
iii. that use of the mark RUBI by Cotton On is contrary to law (specifically to section 10 of the Fair Trading Act) (Section 17(1)(b) of the Act);
iv. that the mark RUBI is similar to Ruby’s registered logo marks and its use would be likely to deceive or confuse (section 25(1)(b) of the Act); and
v. that the mark RUBI is similar to the mark RUBY, which is well known in New Zealand for identical goods, and use of the mark RUBI would be likely to prejudice Ruby’s interests (section 25(1)(c) of the Act).
The Assistant Commissioner found in Ruby’s favour on all points except: that Cotton On was not the owner of the mark RUBI (section 32); and that the mark RUBI is similar to Ruby’s registered logo marks and its use would be likely to deceive or confuse (section 25(1)(b)).
The result of these findings would be that Ruby’s RUBY trade mark would be registered and Cotton On’s registration for the mark RUBI SHOES would be removed from the Register with the effect as if it had never been registered.
However, this is not the end of the matter as both decisions of the Assistant Commissioner have been appealed to the High Court. We also note that both Ruby and Cotton On have filed further applications which the other party is currently opposing or is likely to oppose once the applications are advertised for opposition purposes.
Naomi Hand – November 2010.
