A great summer in New Zealand has seen Havaianas footwear in hot
demand for protecting beachgoers feet. Unfortunately for the owner
of the HAVAIANAS trade mark, it has not been so lucky in protecting
Sao Paulo Alpargatas ("SPA") launched
the HAVAIANAS brand in 1941 and started importing Havaianas into
New Zealand in 2004.
Three steps for protecting your brand
SPA had taken three important steps for protecting its
1. SPA registered its trade mark in New Zealand in 1998
– it therefore had brand protection even before it
launched its brand here, as otherwise it would have had to rely on
consumer protection legislation (which requires the brand owner to
show reputation in New Zealand);
2. SPA clearly mark its goods as being protected by trade marks
i.e. with the TM symbol and/or ® symbol . Although marking your
goods is not compulsory in New Zealand, it can act as a strong
deterrent to potential infringers; and
3. SPA has been vigorous in protecting its brand. It is
essential to monitor the market for any use of the same or similar
brands, to prevent other businesses establishing rights in a
similar competing brand.
Showing other businesses that you will actively prosecute any
perceived infringement can also make competitors think twice before
risking the costs of having to defend their actions. To be
successful, however, it is important to first consider whether the
proposed trade mark is likely to cause confusion with your own
Recently, SPA has opposed registration of two trade marks that
were to be used in relation to footwear.
CUBANAS v HAVAIANAS
In the most recent case, SPA opposed registration of a mark
consisting of the word "CUBANAS" below the stylised
drawing of a man wearing circular headwear made of leaves. In her
decision in November 2010, the Assistant Commissioner considered
that the only similarity between CUBANAS and HAVAIANAS was the end
of the marks (namely "ANAS") and possibly an
"underlying tropical theme to each mark". She held that
there was no obvious meaning in either mark as the words were
likely to be perceived as invented or foreign words, and the strong
visual and aural differences would cause the marks to be perceived
as conceptually different. The CUBANAS logo was therefore allowed
to proceed to registration.
The CUBANAS decision shows how subjective these issues are. Many
people will see HAVAI as a reference to Hawaii and CUBA as a
reference to Cuba. When these two island names are combined with
the suffix ANAS to produce CUBANAS and HAVAIANAS they certainly
look related. But perhaps due to the phonetic differences of the
first parts of each mark, consumers would not readily confuse the
two brands or think that there were associated with each other. The
CUBANAS decision therefore has some merit.
HAVAA v HAVAIANAS
However, the decision of the Assistant Commissioner in 2009 in
relation to SPA's opposition to registration of the mark HAVAA
is more questionable.
In the HAVAA case, the Assistant Commissioner held that the
marks HAVAA and HAVAIANAS were visually and aurally different. She
also noted that the word HAVAA is Hindi for "air, wind, and
breeze" and that the word HAVAIANAS is Portugese for
"Hawaiian". As a consequence she decided the marks were
conceptually different even though she appreciated it was
"unclear how many persons in the relevant market would
understand both meanings" .
The observation about the conceptual differences in the marks is
contradictory, because if consumers knew the meanings then they
would see the marks as being conceptually different. On the other
hand, if consumers were unaware of the meanings of the words then
they would see the two marks as similar invented words, with the
only difference being the suffix "A" in the HAVAA mark,
and the suffix "IANAS" in the HAVAIANAS mark. It is well
recognised in case law that the first part of a mark is the most
significant to consumers in remembering a brand, particularly given
the New Zealand tendency to slur the end of our words. It is
therefore at least arguable that consumers struggling with
imperfectly recollection of the HAVAIANAS brand, might think that
the HAVAA brand related to goods originating from SPA or that were
at least affiliated with that company.
Despite SPA's lack of success in both its oppositions, the
mere fact that it brought the oppositions should act as a further
deterrent to any of SPA's competitors intending to launch
similar brands in relation to footwear.
If you are concerned about another businesses brand then consult
with a trade mark attorney to discuss your options.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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