Are hidden Trade Marks registrable?
Dr. Victoria Longshaw and Mr. David Franklin
In a recent decision by the High Court of New Zealand, NYDJ Apparel LLC v Commissioner of Trade Marks  NZHC 2678, the Court considered the registrability of a Trade Mark that is not typically displayed in plain sight.
The background of the case
NYDJ Apparel LLC (“NYDJ”), a US company, has since 2003 been manufacturing and selling jeans designed for curvy or older women. The jeans are designed to flatten the belly and the lower abdomen by way of inner panels sewn to the inside of the front pockets, which create a horizontal band across the front of the abdomen, reducing the stretch of the garment in that area.
The jeans are sold in many countries around the world under the Trade Marks “Tummy Tuck” and “Not Your Daughters Jeans” and include a criss-cross stitching pattern applied to the inside of the two front pockets to designate that the jeans have the slimming panels, as follows:
NYDJ jeans bearing this stitching pattern have been sold in New Zealand since 2007 in both small boutiques and department stores.
Marketing activities include promotion of the jeans through “fit days”, involving a “fitting expert” who assists customers with the selection and fit of the jeans and shows customers the stitching on the inside of the jeans. Promotional and marketing activities make use of the following NYDJ Trade Mark which includes two red crosses in a stylised version of the criss-cross stitching:
NYDJ applied to register the Trade Mark in Class 25 as a criss-cross stitching pattern on the inside pocket of a pair of jeans, for articles of clothing as shown in the following representation:
The IPONZ Decision
The Trade Marks Examiner formally rejected the Application on the basis that the Mark was not considered to be distinctive.
The Applicant requested a hearing, at which the Assistant Commissioner directed that the Trade Mark not be registered. The Assistant Commissioner considered that the criss-cross stitching design had a “low level” of inherent distinctiveness.
Since the Mark is not a highly stylised image or device, and comprises a simple criss-cross stitching pattern, the Assistant Commissioner concluded that consumers may assume it to be functional, particularly as the Mark had been selected to highlight a particular technical function of garment.
The location of the stitching design on the inside garment was considered to be one where consumers are less accustomed to finding a trade mark. Consumers were likely to assume that the stitching had a functional purpose for strengthening or reinforcing the jeans, and other traders may wish to incorporate such a simple stitching design on the inside of their garments.
In considering evidence of use of the Mark to determine if it had acquired distinctiveness, the Assistant Commissioner was not convinced that consumers would associate the Mark with NYDJ. Most of the advertising material submitted made little or no reference to the criss-cross stitching, and it was not clear to the Assistant Commissioner that even purchasers of the jeans would see the criss-cross stitching as a Trade Mark. Furthermore, customers who had already purchased the jeans would not become “walking advertisements” for the Mark, because it was located inside the garment. NYDJ failed to convince the Assistant Commissioner that consumers would recognise the stitching both as a trade mark and as a trade mark connected with NYDJ.
The Appeal Decision
On appeal to the High Court, NYDJ argued that plain and simple Trade Marks can nevertheless be distinctive, and gave the red sole of a Christian Louboutin shoe as an example. Furthermore, jeans are commonly distinguished by the stitching applied to, for example, the pockets of Levis, Wrangler and Lee jeans, some of which are registered Trade Marks.
The Court considered two issues: (1) whether the Trade Mark had an inherent distinctive character and (2) whether the Trade Mark had acquired a distinctive character.
(1) Inherent distinctive character of the stitching
The Court acknowledged that stitching on jeans is capable of distinguishing the goods. However, since the stitching was ordinary machine stitching, it held that the contrasting red and purple colours made the difference and enhanced the distinctive character of the Mark. Without the colour contrast, the Court considered that the Mark was less inherently distinctive and consumers could well regard the stitching as having a general functional purpose.
(2) Acquired distinctiveness through use
In assessing whether the Mark had acquired distinctiveness through use, the Court said that the Assistant Commissioner had raised the bar too high. It also regarded the use of the criss-cross Mark in the “NYDJ” logo Mark as serving to link the criss-cross pattern to NYDJ. The fitting days assisted in pointing out the criss-cross stitching to customers, and NYDJ’s evidence showed that many retailers also regarded the stitching on the inside of the jeans as distinctive and associated with NYDJ. The Court ruled the evidence was sufficient to show that distinctiveness had been acquired through the use made by NYDJ of the Trade Mark.
The Commissioner concluded that the Trade Mark was therefore distinctive and registrable subject to the Application being amended as follows:
- The Explanation of the Mark be amended to say a “non-functional criss-cross stitching pattern in a contrasting red or purple colour, on the inside pocket of a pair of jeans,…”
- The Goods “articles of clothing” be limited to “jeans;” and
- A disclaimer be included that the registration of the Trade Mark gives “no right to the exclusive use of stitching in a criss-cross pattern except in the form shown and explained in the registration.”
Interestingly, the relatively hidden location of the Mark in this case on the inside of the garment, was not considered to be a bar to its registrability. Once purchased, it was not necessary for distinctiveness purposes for the Mark to be visible on the goods. Accordingly, if it can be demonstrated that consumers are aware of the hidden Mark before and at the time of purchase and that it serves to distinguish a trader’s goods from others, then the Mark is arguably distinctive.