Luxury brands battle in NZ courts

Advertisements featuring models wearing True Religion clothing. Photo / Supplied

It was a battle of the brands in the New Zealand courts this month as luxury watch maker Omega clashed with high-end US denim brand True Religion.

In a long-running case which questioned the extent of Kiwis' knowledge of the Greek alphabet, Omega insisted that the True Religion design was too similar to their own.

Brand owner of True Religion, Guru Denim, applied for a registration of a trade mark in the design of their u-shaped logo in 2011.

Omega appealed the company's trade mark registration in relation to True Religion's range of watches and jewellery.

The initial opposition failed before the Assistant Commissioner of Trade Marks who argued Omega was already "well known in the relevant market in relation to luxury watches" and said the Guru design was "visually, aurally and conceptually dissimilar" to the Omega mark.

Omega appealed the decision to the High Court where the case was dismissed. Justice MacKenzie, presiding over the case, said the Omega symbol "must be considered as a symbol for the Greek letter," which diminished the possibility of confusion over the logos.

In contrast, MacKenzie did not consider the risk that an observer of the Guru mark would be intended to represent the Greek letter (Omega).

The Court of Appeal took a different view. Though they acknowledged that Omega had a significant enough reputation for their logo to be knowable - through their history in New Zealand since 1945 and the use of their clocks in the Olympics - they did not accept that New Zealanders would recognise the symbol as a letter of the Greek alphabet.

"The assumption is entirely unsupported," the decision read. "We do not consider that the Judge's own knowledge and experience was an adequate basis for the far-reaching conclusion that there is any significant number of New Zealanders who know or assume that the symbol is a Greek letter."

The Court of Appeal "respectfully disagreed" with MacKenzie and proceeded on the basis that the fact that the symbol represents a Greek letter is "irrelevant."

Despite different reasoning, the Court of Appeal found the symbols to be sufficiently dissimilar and dismissed the appeal.

Guru Denim is no stranger to court battles. True Religion jeans, which range in price from roughly $350-$850, have been a frequent target of counterfeiting.

The US denim company has won cases against several counterfeiters across the globe, most of which relate to distributors stitching the signature u-shaped logo on the back pocket of the jeans.

In 2012, Two Auckland distributors were forced to pay $20,000 each and serve community service after the US company discovered they were selling counterfeit jeans in pop-up stores across Auckland.