Kiwi company brand restricted

MICHAEL FOREMAN
Last updated 15:26 04/02/2014

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A New Zealand clothing maker will be restricted from using its Timberline brand after United States giant rival The Timberland Co successfully argued the brands were too similar.

Styx Mill Clothing, which makes outdoor clothing and a wide range of protective gear, applied to register Timberline as a trade mark with the Intellectual Property Office (Iponz) in 2009.

But Timberland opposed the application, saying that Styx Mill's use of the Timberline brand was likely to cause deception or confusion and would amount to "passing off" its goods as those of Timberland.

Timberland said its trademark was registered in about 150 countries worldwide and its products had been retailed in New Zealand since at least 1986.

Timberland products were now available at retail outlets and stores, including branded Timberland stores in Auckland and Christchurch.

The words Timberland and Timberline were of equal length, Timberland said, and both contained the word "timber" and the letters "l' and "n".

It submitted that, without careful inspection of the marks, they would look the same.

Christchurch-based Styx Mill said it had used the Timberline brand since 1994 and the mark had coexisted with Timberland's brand in the New Zealand market since then.

This amounted to "honest concurrent use" under the Trade Marks Act, the company said.

Gregory Mitchell, chief executive of Styx Mill, said the Timberline name was chosen because it was initially used in relation to a range of forestry products - hence the association with "timber".

However, the range of goods and services offered under the "Timberline" brand had since grown.

More recent products included an oilskin range, search and rescue coats and farm safety products.

Iponz assistant commissioner of trade marks Warwick Smith found that Timberland's opposition to the Timberline trademark had succeeded in some areas of Styx Mill's product line but not in others.

One key question in law was whether consumers in a particular market would be likely to wonder whether there was some commercial connection between the makers of "Timberline" and "Timberland" products or services.

Accordingly, Smith found that Styx Mill could not register the Timberline trade mark for goods and services in the clothing, headwear or footwear category with the exception of specialised items such as hard hats and harness vests.

However, unless an appeal was made, Styx Mill could register Timberline as its trademark for its textile and sailing equipment ranges.

According to Iponz, either party could appeal a trade-mark decision within 20 working days. Such an appeal must be made to the High Court.

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Paul Davies, director of intellectual property at Auckland law firm EveredgeIP, said Iponz did not have the power to prevent Styx Mill from using the Timberline brand.

However it would be "prudent" for Styx Mill to consider using another brand name, partly to avoid potential trade-mark infringement action and also because Styx Mill could not protect most of its existing brand by trade mark.

- Fairfax Media

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