Kiwi company wins its Ruby

The Intellectual Property Office of New Zealand said registering Rubi Shoes was likely to cause customer confusion. Photo / Janna Dixon

A stoush between a local fashion retailer and an Australian shoe chain over similar names has gone in favour of the Kiwi company, with the Australian operator being told its trademark is invalid.

The Intellectual Property Office of New Zealand has ruled the trademark Rubi Shoes is to be treated as if it had not been registered, and an application by locally owned fashion business Ruby should be accepted.

Rubi Shoes is a chain of nine budget footwear stores owned by the Australian retailer Cotton On Clothing.

Ruby Apparel is the owner of four Ruby Boutique stores and three fashion labels. It sells clothes and shoes.

Ruby complained to the IPONZ saying the Rubi Shoes trademark was invalid because Cotton On didn't own it, that the name and logo were likely to deceive shoppers, and that it breached the Fair Trading Act.

It argued Ruby was a well-known fashion brand in New Zealand. The IPONZ agreed with Ruby that it was a well-known brand, that registering Rubi Shoes was likely to cause confusion and that it breached the Fair Trading Act.

However, it said the logos were not similar and it dismissed the argument that Cotton On did not own the name Rubi Shoes.

Cotton On argued "Ruby" was not a trademark but a descriptive term for ruby-coloured clothing and that it had no distinctive character in relation to the goods.

The IPONZ dismissed most of Cotton On's arguments. It said Ruby had acquired distinctiveness through use of the name.

It declared Rubi Shoes' trademark application invalid, and that Ruby's application in May last year to trademark its name should be accepted once the appeal period had expired.

Ruby had previously only trademarked its logo. Ruby told the IPONZ that use of the Rubi Shoes trademark would tarnish its brand, disrupt its business and take unfair advantage of its reputation.

In their evidence, sales assistants at Ruby's boutiques told of numerous occasions when customers had rung the stores wanting location and other details about Rubi Shoes.

Cotton On argued Rubi Shoes' market was affordable footwear for young women.

However, assistant commissioner of trademarks, Jennie Walden, said the Rubi Shoes trademark only referred to "retailing of footwear" with no limitations on price points, gender or age. Ruby had established itself as a fashion brand for women, including a collaboration with well-known local shoe designer Kathryn Wilson.

"It is my view that a potential purchaser who heard Rubi Shoes would be triggered into thinking about Ruby shoes.

"I consider that, on the evidence before me, use of the relevant marks would be likely to prejudice the interests of Ruby Apparel because the use of Rubi Shoes is likely to deceive or cause confusion."

The Herald on Sunday understands Ruby Apparel has spent up to $200,000 on the the case. The IPONZ awarded it costs of $7700.

Fashion Industry New Zealand executive officer Mapihi Opai said it was an area of wider concern for the industry.

Most small Kiwi fashion businesses did not have the resources to defend their name against a large overseas operator coming into the country.

"This sort of thing can pretty much put a New Zealand brand out of business.

"The general feeling is that IPONZ needs to protect local brands. Rubi should probably never have been allowed registration in the first place."