Treliske trounces Trelise

After an 18-month dispute, fashion designer Trelise Cooper has given up the battle to use her first name as a trademark, settling out of court with a knitwear company which had a similar-sounding trademark.

After an 18-month dispute, fashion designer Trelise Cooper has given up the battle to use her first name as a trademark, settling out of court with a knitwear company which had a similar-sounding trademark.

Cooper's trademark Trelise has been deregistered ahead of a High Court case this month, after an out-of-court settlement with the complainant, Central Otago organic farm Treliske.

Treliske is one of the biggest organic farm businesses in New Zealand, producing wool and knitwear, beef and lamb. Its knitwear products are exported to the United States and the farm has been using the name Treliske since 1946.

In 2006, Cooper was able to register the name Trelise as a trademark with the Intellectual Property Office of New Zealand (IPONZ) for use in the clothing category, despite its similarity to the trademark Treliske, registered in 1993 in the same category.

Treliske director Jackie Aitchison took issue with IPONZ's decision, saying it would cause confusion in the marketplace.

In July 2007, Aitchison asked IPONZ to deregister the Trelise trademark but was told by the office it had determined that aurally and conceptually the name Trelise was unlikely to cause confusion or deception to consumers. Aitchison was told to contact her patent attorney for advice as the office's role was solely to examine trademarks under the Trade Marks Act 2002.

Treliske disputed the Trelise trademark under section 25.1.b of the Act, which prevents the registration of a trademark similar to another registered or pending trademark that has earlier priority for the same or similar goods or services, and where use of the applicant's trade mark is likely to deceive or confuse.

Cooper contested the application, but Aitchison says both companies have recently come to an "amicable settlement" out of court.

Cooper has agreed not to use the name Trelise on clothing, and has deregistered the trademark. In return, Treliske has agreed not to use its trademark on perfume or interior design products.

Aitchison says while this was a "satisfactory outcome" the whole process had cost Treliske "many thousands of dollars" in legal fees. "There's been no financial gain in all of this. People may have thought it was about money it was never about money.

"It was about retaining our name."

She believes there are other companies which have been put in the situation of having to defend their trademark, but have backed down due to the legal costs involved.

"We've owned our trademark for so long it's our name and we weren't prepared to do that."

Trelise Cooper chief executive Alex Brandon said he wasn't prepared to comment on the process undertaken by the Office in registering trademarks.

However Aitchison says she now has a "grudge" with IPONZ and believes the law regarding trademarks is antiquated and needs a major overhaul.

 "We've spent tens of thousands of dollars on trade-marking. I'd like to see some value for money and up until now we certainly haven't had it. Any other business, if they behaved in that manner, or didn't answer consumer concerns, then I think the Commerce Commission would be looking into their affairs pretty smart."

- © Fairfax NZ News