[Cross-posted] If you read between the lines, you probably could detect I wasn‚Äôt terribly thrilled about the Trelise Cooper Ltd. v. Cooper and other case from 2005 to 2007. It was brand-damaging for Trelise Cooper, probably stressful for Tamsin Cooper, and at the end of the day, I had my doubts on whether the burden of proof could have been discharged. We the public might never know.
That damage to Trelise‚Äôs brand has had some rub their hands in glee over a new complaint over her registered trade mark, namely her first name being used for a brand extension. Karma‚Äôs a bitch, they say, sneeringly.
But it still seems unnecessary. The complainant‚Äôs trade mark is Treliske, registered in 1993 by a partnership called Treliske Wools. It‚Äôs not happy that the Trade Marks‚Äô Registrar allowed Trelise to get her name registered in 2005, actually just after the legal threats were made against Tamsin Cooper. A challenge was mounted in September 2007, but it hit the media in late January.
This time around, Trelise Cooper might find herself quoting from the Tamsin Cooper playbook: ‚ÄėI‚Äôve been Trelise longer than they have been Treliske.‚Äô Never mind when the mark was entered on the register.
I would have thought that if one were in the fashion business with a trade mark called Treliske, one would naturally have kept an eye on Trelise Cooper. Complaining now seems late, given how high-profile Cooper has been. She‚Äôs been in the public eye especially over Cooper v. Cooper. She‚Äôs formed a lot of goodwill over her brands to the point where many of us identify any Trelise Cooper line garment as ‚Äėa Trelise‚Äô.
I don‚Äôt know the exact details of the case, largely as it hasn‚Äôt been filed. The challenge is presently with the Registrar. The hypothetical plaintiff would argue that Treliske and Trelise have to exist in the same market-place. Their mutual existence would confuse the reasonable New Zealand consumer into thinking the goods of one originated from the other.
Here‚Äôs where an interesting point arises. Almost because of the Cooper v. Cooper matter, Trelise Cooper is unlikely to have any brand of hers confused with Treliske. Funnily enough, that was one of the claimed reasons over why Cooper v. Cooper was settled. The mere publicity that this new case has given, thanks largely to the ‚Äúkarma‚Äôs a bitch‚ÄĚ feeling that some in the mainstream media feel, helps distinguish the two, probably even in the minds of people who might never buy from either Cooper or Treliske.
I‚Äôm not sure how to pronounce Treliske. I immediately see two short vowels with stress on the first syllable compared with two long ones for Trelise and a stress on the second. I may be totally wrong.
The complaint probably could succeed on the grounds (and supporting evidence) that someone less versed with the fashion market would confuse the two, but Trelise Cooper is so darned known in the business to anyone with a passing interest in it.
Who, then, in law, is the reasonable consumer who is the test in such cases?
That same reasonable consumer, I would think, would not find Trelise Cooper and Tamsin Cooper related, especially given the suit‚Äôs publicity. Trelise Cooper, that time, would have said that such a consumer would be someone in the market for fashion regardless of segment. Treliske is bound to do the same thing, but Cooper may well get off for exactly the same reasons. Thanks to the press, few can be confused now.
Strangely, despite the similarity of the names, this case is actually less clear-cut than the Tamsin Cooper one. There, the parties were arguing name, appearance, sound and design, under trade mark, copyright and passing off. Here, only the name and appearance are really at issue, assuming my pronunciation is right, and design doesn‚Äôt come into it. Perhaps there are precedents I am unaware of, and the own-name exception is definitely more cloudy than it used to be in the past. Treliske isn‚Äôt without a leg to stand on, but it‚Äôll be hard proving market-place.
We shall see how the parties play it, but I agree with the Irish newspaper here, even if its well-meaning editorial‚Äôs reasoning, which oddly takes us into non-fashion market-places, is off: ‚ÄėMaking lawyers rich is a mug‚Äôs game.‚Äô