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 its brand.
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 brand:
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 brand.
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 service.