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Omega fails reputation test in trade mark dispute
We say it over and over again: cases are won (and lost) on evidence.
Unfortunately for global watch giant Omega, even well known brands need to bring evidence to prove reputation.
Omega is famous for taking a rigorous approach to brand protection and pre-emptive trade mark actions. So it’s no surprise that it opposed an application for the following logo filed by clothing brand Guru Denim.
Omega’s opposition was based on alleged deceptive similarity between the Guru Denim logo and Omega’s various trade mark registrations (see below).
It also sought to oppose under section 60 of the Trade Marks Act on the grounds that because of Omega’s reputation, Guru Denim’s use of its mark would cause confusion.
What was decided
The Trade Marks Office determined that the competing marks were not deceptively similar. The Delegate took into account the difference in visual appearance as well as the fact that the claimed goods and services (jewellery and watches) were items which were likely to be subjected to close examination before purchase.
On the section 60 reputation ground of opposition, the Delegate carefully examined the evidence filed on behalf of Omega and found it seriously wanting.
Omega’s evidence outlined the history of the company, its Australian trade mark portfolio and examples of how the Omega marks are used on its watches and watch components. However, the evidence failed to address the extent to which the marks had been used in Australia and no Australian sales or advertising figures were provided. The only advertising material filed by Omega post-dated the priority date of the application and so was irrelevant.
Ultimately, the Hearing Officer determined that the evidence before him fell far short of establishing that Omega had a reputation in Australia and the section 60 ground of opposition also failed.
The Omega Speedmaster has been to the moon and back. Recent versions of James Bond can be seen sporting an Omega Seamaster. Omega has been the official timekeeper at the Olympics. All of which makes it very surprising that it failed to provide cogent evidence of its reputation in Australia. It does serve as a warning to well known brands not to take proof of their reputation for granted.
- Evidence is everything, particularly for oppositions relying on existing or earlier reputation.
- It is generally preferable for evidentiary declarations to be made by the brand owner rather than its attorneys as there’s only so much an attorney can attest to (Omega’s primary evidence was a declaration by its attorney).
- Even well known brands can’t assume that their reputation will be recognised – proof of reputation is still required and will be closely examined.
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