Trade marks: The Valleygirl judgment

The Valleygirl decision analysed the law on the proprietorship of trade marks in New Zealand and confirmed the orthodox view that the starting point is that there is no prohibition on a trader registering a foreign mark for use in New Zealand, where there has been no prior use of the mark in New Zealand.

This was an appeal of a decision by the Assistant Commissioner of Trade Marks which said that the appellant's application for the trade mark VALLEYGIRL not proceed to registration.

The questions to be determined by the appeal were whether the Assistant Commissioner had erred in finding that:

1. the respondents had a reputation in the mark VALLEYGIRL in New Zealand on or before the application date;



2. use of the VALLEYGIRL mark by the Appellant in New Zealand was likely to deceive and cause confusion in the relevant market; and



3. the respondents, rather than the appellant, were the true proprietors of the trade mark.

The respondents owned and used the trade mark VALLEYGIRL in Australia for clothing and accessories. The business was substantial and the mark had been in use there since 1996.

The sole director of the appellant had formerly supplied garments and materials to the respondents until about December 2002. Shortly after that relationship ended, the appellant applied for registration of the mark VALLEYGIRL in New Zealand for "retail clothing".

Justice Miller held that:

1. The respondents had established the necessary awareness of their mark in New Zealand, based on the nature and extent of its use in Australia and the travel statistics showing the numbers of travellers between New Zealand and Australia upon which they relied.



2. Because the marks were identical, any person who was aware of the Australian mark was likely to be confused or deceived on seeing the appellant's proposed mark in New Zealand.



3. Evidence of confusion after the priority date may be strongly probative of likely confusion.



4. The Assistant Commissioner's conclusion that registration of the appellant's mark would be likely to cause confusion or deception was open to her.



5. An advertisement placed by the respondents in the Australian magazine Dolly was not sufficient to establish prior use of the mark in New Zealand as it was directed to the Australian market and not the New Zealand market.



6. The respondents' alleged intention to offer goods under the mark VALLEYGIRL at some indefinite future time was not sufficient to establish a sufficiently definite intention to use the mark. There was no evidence that the respondents were ready and willing to respond to orders in New Zealand at the priority date. Accordingly, the respondents failed to establish proprietorship in New Zealand at the application date.



7. The appellant failed to establish proprietorship, but for the reason that there was no evidence that the appellant used or intended to use the mark in New Zealand at the application date and not, as the Assistant Commissioner found, because the respondents had established proprietorship in New Zealand.



8. The starting point when determining whether a trade mark application has been made in bad faith in the circumstances that were before the court is that there is no prohibition on a trader registering a foreign mark for use in New Zealand, where there has been no prior use of the mark in New Zealand. Accordingly, something more than appropriation of a foreign mark must be shown in order to establish bad faith. Since that is all the respondents could point to, their objection to the appellant's claim to proprietorship failed so far as it was based on bad faith or breach of duty.



9. The appeal should be dismissed.

Enquiries and information

For more information on trade marks, please email or call Garry Williams on 64 9 916 8661.