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Valleygirl trademark fight dismissed

Last updated 12:48 06/12/2013

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An uncle's trademark claim against his nephew selling women's clothing and accessories at Valleygirl and TEMT stores across the country has been dismissed.

In August this year Jim Marr appealed a judgment which dismissed the claim that his nephew Michael Ma had infringed on the Valleygirl and TEMT trademarks at 28 stores in New Zealand.

The two have been selling women's clothing in Australia since the early 1990s, from which Marr registered the Valleygirl trademark logo in 1999.

In 2002 he had also registered the trademark TEMT in Australia.

But from 2006, Ma had sold from Valleygirl and TEMT stores in New Zealand.

Ma sold Valleygirl products in Sydney, with his uncle's agreement from 1996, and in 2003 a third party attempted to register the Valleygirl trademark in New Zealand.

Ma and Marr successfully opposed the application on the grounds the brand's reputation had spilled over to New Zealand, despite the product never having been sold here.

In September of 2003 Ma set up and registered the Valleygirl and TEMT business in New Zealand, from which the main dispute arose.

Ma argued his uncle had encouraged him to set up the business, while Marr said he only learned of the move in 2006.

The pair's relationship began deteriorating from 2007, and Marr has claimed his nephew owed him a substantial debt.

This contention is the subject of Supreme Court proceedings in New South Wales.

Marr alleged his nephew had infringed the trademarks in New Zealand at the High Court in March, 2011.

But the High Court in Auckland ruled in favour of Ma, granting an injunction which restrained the uncle from selling clothing and accessories in New Zealand bearing the Valleygirl or TEMT trademarks.

Ma has been selling Chicabooti- and Paper Scissors-labelled products in 16 Valleygirl and 12 TEMT outlets since 2006.

Marr appealed the decision at the Court of Appeal in August, but a judgment released yesterday has dismissed his claims.

The judgment said Marr knew his nephew had registered and applied for the trademarks in New Zealand in 2003, and in fact encouraged him to do so.

It was only in 2010 that Marr objected to his nephew owning the trademarks in New Zealand, despite knowing of it for seven years.

Marr had shown no interest in establishing a business in New Zealand and had focussed on opportunities in Korea from 2005, the Appeal Court judgment said.

The judges said it was odd for Ma's Valleygirl and TEMT stores to not stock those brands and instead feature Chicabooti and Paper Scissors, but as he rightfully owned the trademarks, he was free to use them as he saw fit.

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