Pockets. Most jeans have them.
Many of us look at them in admiration, often because they adorn the backsides of others (though in the age of the selfie it’s probably more common to be checking out our own …).
When we look at these pockets, we will commonly know the brand of the jeans without reference to a name, just by seeing the stitching on the pockets. For example, few could doubt that Levi’s arcuate device functions as a brand, and a strong one at that, without needing to see the famous Red Tab ®:
Even if we don’t know the brand name, I would venture that we would often still recognize that the stitching is aimed at differentiating the source of the jeans from those of other traders (though there will be exceptions to this where the stitching is commonplace). If we like the design we would be prompted to find out the brand name behind it so we could buy a pair for ourselves.
But the acceptance of this at law has, as ever, lagged behind the market.
So it’s great to see a recent appeal decision from New Zealand’s High Court that is keeping in tune with the times, even in circumstances where the stitching is not seen when the jeans are worn. In order to achieve this result, NYDJ had to make some concessions (eg. limit the goods and amend the description), but it remains a positive decision.
The first instance decision
We reported earlier this year (see our note here) on the NZ Assistant Commissioner’s rejection of NYDJ’s stitching mark:
It was considered that the mark had a low level of distinctive character, such that it fell foul of section 18(1)(b) of the NZ TMA (which, we noted, only prevents the registration of marks with no distinctive character). The case for acquired distinctiveness under section 18(2) also failed.
We referred to the earlier decision as a backwards step, including by reference to the fact that the same mark had been registered in Australia under section 41(5).
The decision on appeal – NYDJ Apparel LLC v Commissioner of Trade Marks  NZHC 2678 (30 October 2014)
Mallon J accepted the following:
- NYDJ’s jeans “that they flatten the belly and lower abdomen which can make the wearer look smaller in size. This is achieved through panels that are sewn on the inside of the front pockets. These panels create a horizontal band across the front of the jeans which reduces the stretch in that area, and in turn controls the tummy”;
- NYDJ wanted customers “to easily identify and know that the jeans they were purchasing had these slimming panels” and so “adopted a criss-cross stitching pattern applied to the inside of the two front pockets for this purpose. This stitching does not perform any other function”;
- The colour and pattern of the stitching were chosen “with the intention of distinguishing the pattern from functional stitching ordinarily present on garments”;
- “The stitching is on the inside of the jeans for two reasons: first, it is thought that consumers may find the stitching visually unattractive; and secondly, it means that others will not be able to tell that a person is wearing NYDJ jeans so that the wearer gains the full benefit of the slimming effect”;
- “The stitching is, however, visible to the wearer when trying on the jeans and, once purchased, each time they are worn”.
- The pattern was first used in the US in 2004 and in Australia and New Zealand in 2007.
- Sales figures in NZ have been “not insubstantial” and at relatively consistent levels since 2007.
- NYDJ also utilized marketing activities such as “Fit Days” in which a representative (“a fitting expert”) assisted customers with the selection and fit of jeans.
- The stitching is easy to see when the jeans are tried on and customers recognize this as a brand belonging to NYDJ (on the basis of evidence form Ms Chismon, a fashion buyer for Smith & Caughey, a leading department store in Auckland);
- “Brands of jeans are commonly distinguished by their stitching and that stitching is commonly simple and plain” (referring to NYDJ’s arguments). The following third party examples of registered NZ TMs in class 25 were provided:
Turning to the law,Mallon J accepted that stitching on jeans is capable of distinguishing the goods (referring to Levi Strauss & Co v Vivat Holdings Plc (2000) 49 IPR 141). Whilst the type of stitching was not distinctive, an overall consideration was needed. Mallon J took the view that the mark would have been distinctive if it appeared on the outside of the pockets.
However, as the mark was on the inside of the jeans, the question raised was whether it was functional. On this point, Mallon J took the view that the contrasting colour of the stitching suggested that it was not functional. But that was not the mark applied for:
“Without this contrasting colour the mark is less distinctive and consumers could well regard the stitching as a part of the general, functional stitching of the jeans. There is also a greater risk that other traders would inadvertently infringe the mark. It is also important in my view that the mark is used in relation to jeans”
NYDJ had indicated that it would be willing to:
(a) restrict the specification from “articles of clothing” to “jeans”;
(b) amend the “Explanation” of the mark to read “the mark consists of a non-functional crisscross stitching pattern, in a contrasting red or purple colour, on the inside pocket of a pair of jeans, as shown in the representation attached to the application. The leg and jeans outline shown in broken lines in the representation forms no part of the mark, but is included to show the location of the mark in use”; and
(c) insert a disclaimer as follows: “registration of the trade mark shall give no right to the exclusive use of stitching in a crisscross pattern, except in the form shown and explained in the registration”.
On this basis, Mallon J considered that the mark had a distinctive character.
While it was not strictly necessary to do so, Mallon J also considered the application of section 18(2) which provides that a mark without distinctive character under section 18(1)(b) can still be registered if “as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character”. Here Mallon J noted that the Assistant Commissioner had erred in stating that the mark was at the low end of the distinctiveness scale, and that error meant that the bar for acquired distinctiveness was set too high. Mallon J concluded as follows:
“Here the evidence is that NYDJ promotes its jeans with the criss-cross symbol. Although that symbol is smaller than the other NYDJ marks, it serves to link the criss-cross pattern to NYDJ. That is likely to serve to reinforce the consumers’ link between the criss-cross stitching and NYDJ. There is also evidence that at fitting days the criss-cross stitching is pointed out to customers. There is further evidence from established and significant retailers that the criss-cross stitching on the inside of the jeans is distinctive and that they associate that stitching with NYDJ and not others. Had it been necessary to decide the appeal on this basis I would have considered this evidence to be sufficient to show that distinctiveness has been acquired, particularly in the context of a market where jeans are commonly identified by their stitching.”
Jeans are great. They’re comfortable, and you can dress them up or down. They’re also big business, and we commonly buy based on brand.
The importance of jeans is reflected in various hard fought cases, where the issues often revolve around whether the sign is a mark and whether it is used as such, and whether the mark is sufficiently distinctive:
(a) The General Court in Case T-388/09 Rosenruist v OHIM considered the jeans pocket mark below (as mentioned in our earlier NYDJ post), but rejected it on absolute grounds:
(b) The CJEU last year in Case C-12/12 Colloseum Holding AG v Levi Strauss & Co (18 April 2013). In Colloseum, the issue was whether the use of Levi’s well known Red Tab mark containing the word LEVI’S (shown below left, the subject of a separate registration), accrued to the benefit of Levi Strauss’ registration for its red tab mark that did not contain the word LEVI’S (shown below right). The short answer was “yes”.
The New Zealand High Court’s NYDJ decision can be seen as a positive step for brand owners in the jeans market. It brings the treatment of these marks into line with the Australian approach (that is, each country accepts in principle that the marks have a measure of inherent distinctive character), and it reflects the reality of the market, namely that consumers in this day and age can recognize jean pockets as indicating source from the outset.
On the other hand, the NYDJ may need to file again later to cover clothing beyond jeans if these are of interest (the application in Australia was accepted under s41(5) for a broader claim, namely ”clothing, namely, capri pants, walking shorts, trousers, jeans and skirts”).
Finally, it is also notable that Mallon J made the following reference to Christian Louboutin’s Red Sole trade mark (an example of a simple but nevertheless distinctive mark) in a footnote:
“I think it can be said that high end shoe purchasers have no difficulty in recognising a Christian Louboutin shoe by the red sole. It may be that the mark was registered on the basis of acquired distinctiveness. However high end shoes do not usually have red soles. The red sole is visually striking and sets Christian Louboutin shoes apart from others”