Rubi v Ruby in copyright stoush

Rubi_1_280In a cautionary tale for local brands planning to export, Australian fashion footwear chain Rubi Shoes has fallen foul of New Zealand’s intellectual property system.

The Intellectual Property Office of New Zealand (IPONZ) has ruled the trademark Rubi Shoes is to be treated as if it has not been registered, while an application by New Zealand owned fashion business Ruby should be accepted.

Owned by Australian retail group Cotton On Clothing, Rubi Shoes operates a chain of budget footwear stores in New Zealand. Meanwhile New Zealand entity Ruby Apparel, which sells both clothes and shoes, is the owner of four Ruby Boutique stores and three fashion labels.

As reported by the New Zealand Herald, Ruby lodged a complaint with IPONZ that the Rubi Shoes trademark was invalid because Cotton On didn’t own it and the name and logo were likely to deceive shoppers.

Ruby, which had previously only trademarked its logo, also told the IPONZ that use of the Rubi Shoes trademark would tarnish its brand, disrupt its business and take unfair advantage of its reputation.

In their evidence, Ruby sales staff said customers had phoned Ruby stores on numerous occasions with enquiries relating to Rubi Shoes.

Ruby argued it was a well-known fashion brand in New Zealand. The IPONZ agreed with Ruby that it was a well-known brand, that registering Rubi Shoes was likely to cause confusion and that it breached the Fair Trading Act.

Trade Mark rights are territorial, based on geographical location, meaning the IPONZ decision regarding Rubi Shoes applies in New Zealand only.

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