#921 Ruby VS Rubi


Imagine this scenario. You’re a small, New Zealand based clothing business named Ruby. You’ve been operating for nine years. Cotton On, a large, multinational Australian company applies to IPONZ for a name to be trademarked that is very similar to yours – Rubi. It’s accepted. The multinational opens its doors. All of a sudden your customers start calling you up asking about the new stores. You say it has nothing to do with you. Confusion ensues. You investigate, only to discover that the trademark application has already gone through, so you’re basically left with two options – allow the multinational to trade under the same name as you, or follow the lengthy and expensive process of applying to have them deregistered. It gets worse. In a classic big business, bully-tactic move, Cotton On has just applied to IPONZ to have Ruby’s trademark deregistered.

So says Ruby’s owner Christine Vere:

“Basically the situation is that IPONZ (Intellectual Property Office of New Zealand) has granted Cotton On the registration of Rubi Shoes in the same categories as us.
This effectively has not only taken away our right to stop them trading under the same name as us but also removed our opportunity of ever opening RUBY shoes. Our only option is to go through IPONZ’s process of protesting or just let Rubi shoes operate in the same market.
Two weeks ago Cotton On applied for the RUBY trademark to be deregistered. We are now in the process of defending our trademark through the IPONZ system. This is not only totally unfair, expensive and stressful – but we are now in a position of protecting something that New Zealand’s supposed business security system should never allow. It’s very frustrating and something all New Zealand businesses should be wary of.”

Close Up ran a story on Ruby VS Rubi a couple of weeks ago, and in the piece Cotton On was quoted as saying they were “Unaware of the existence of Ruby Apparel until recently,” and that they believe that the two Ruby(i)s “Can coexist in New Zealand without creating consumer confusion [due to the] vast differences between the look and feel of each brand, and the price”.

Obviously this is a ridiculously unfair situation, so here’s what you can do to help. Email IPONZ at hearings@iponz.govt.nz to voice your concerns about Rubi Shoes being granted registration and more importantly your outrage at Cotton On’s application to have Ruby deregistered.

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Comments

  1. oldgirl says

    this happen to a good friend. She did fight it and after a couple years it was settled it nearly cost her everthing but she did get to keep her name and is doing well in her busness. It should not have gone as far as it did and the so called big named designer should have left it as most people do not like a small company being picked on. I think Ruby should fight it and the media attention is always good they love the underdog.GO RUBY

  2. Anonymous says

    Sent:

    To whom it may concern,

    As a supporter of the New Zealand retail community, I would like to voice my opposition to Cotton On’s application to have Ruby Boutique’s trademark deregistered. They have been trading for several years under this name, building up a successful and well-recognised business and it is simply unethical to force them to rebrand themselves. In this situation ‘first come, first served’ should apply, as should common sense. Please support the intellectual property rights of Kiwi businesses and allow Ruby Boutique to continue trading under their rightful name.

  3. says

    That really sucks! I’ll definitely spread the word and send some angry emails.. I know nothing about this stuff but thought it would be hard to get Ruby deregistered as Ruby was there first?
    “..unaware..” is a load of bollocks from Cotton On, like a big company doesn’t do its research first…

  4. Gen says

    How odd. I would have thought that the Rubi mark would have been declined on the basis of similarity – I can’t see why the examiners allowed it through. Maybe someone at IPONZ was half asleep.

    The grounds for removing a mark are: non-use, TM should not have been registered, TM has become generic (e.g. arguably jandals), expired patent, TM owner’s consent – or general powers of Commissioner. I can’t see any grounds there that would be successful in seeing the Ruby TM struck off, unless they’re hoping to rely on the last one.

  5. says

    I have only ever purchased a single mens tee-one that shrunk and twisted after one wash- from cotton on and that’s the way it’s gonna stay. BOOOO!!! Cotton On and IPONZ. You get the Turd Award of the Year 2009 for crapping (is that a swear?)on Kiwi business.

  6. Anonymous says

    This is truly outrageous – let’s spread this message far and wide and make sure you send in a submission in support of RUBY!

  7. gen says

    not the company, the trademark.

    Isaac do you have any more details on the grounds on which Cotton On are looking to get the Ruby TM removed?

  8. Leonie says

    That is appalling. Surely the original company has the high ground here. Remember Katy Perry vs Katie Perry? I’m not on Cotton On’s side, but does NZ business law allow them to do this? If so, it must be challenged. It’s morally wrong.

  9. Gen says

    That’s weird.

    Ruby is in use and has been registered since 2000. I just checked. With 4 boutiques using both the word and the logo I don’t see how Cotton On are arguing non-use. Makes their lawyers look pretty silly.

  10. says

    Old Cotton On…at it again. They have moved on from copying other businesses designs to wanting to get their business name- not surprising.

    I remember some time back there was a copyright case; Elwood VRS Cotton On. Basically Cotton on had ripped off an Elwood t-shirt print layout and copied everything but the actual words that were printed.

    Not cool Cotton On, not cool.

    IPONZ has alot to answer for too. How on earth did the Rubi Shoes manage to not only get ‘Rubi’ but in the same classification?!

    So much for brand protection…

  11. Anonymous says

    from what i can tell, a reason why ruby’s registrations weren’t cited against the RUBI SHOES application might be because ruby never had a prior registration or application for the word “RUBY” alone. only now does ruby have an appication for “RUBY” alone. their earlier registrations are for RUBY with a logo, madame hawke and “it is what it is”.

    if the RUBY with logo trade marks havent been used for 3 years then they can be revoked. i don’t know if they are used though.

    ruby would probably have a go at cotton on under fair trading act and passing off. ie: use of RUBI SHOES is deceiving and confusing etc.

  12. Gen says

    Hmm, interesting! So Ruby has only ever been registered in tandem with the rectangular device. You’re right, I’m not sure if they use that logo any more. They should have updated their TM.

    Cotton On might be onto something.

    I think they could try passing off, and if they genuinely have peopel calling asking about thier “new store in sylvia park” they should get those people’s details to use in evidence.

    I doubt FTA would extend in these circumstances when CO have the Rubi TM and are entitled to use it.

  13. Anonymous says

    yeh, kinda sad, but registrations are use it or lose it.

    i guess the examiner at iponz didnt look too closely though, because the RUBI SHOES application seems to have gone through without objection (application filed and accepted within a week or so, which is standard for a straight-forward application).

  14. gen says

    I doubt that Ruby could be restrained from actually using the name to trade with anyway, regardless of whether they have the TM or not, on the basis of prior use.

  15. Anonymous says

    To comments above-
    Ruby definitely are still using their gem logo, it is on this blog, and is also definitely on their swing tags- I am looking at one now. It sounds like such rubbish that Cotton On are claiming that they had no idea of the existence of Ruby Apparel. I just typed Ruby into Google and Ruby Boutique was one of the top on the list, so unless they are mindless idiots I don’t believe this for a second. Ruby has grown in leaps and bounds over the past year and such a shame that this has happened.

  16. IPONZ says

    Dear Isaac likes

    In response to your posting, Ruby vs Rubi, your readers need to be aware that your summation of this commercial dispute is incorrect and has omitted some key facts.

    As some of your readers have noted, the trade marks concerned are not simply the plain word marks RUBI and RUBY as implied in your posting. Rather, one mark consists of a large red ruby logo in combination with the word RUBY in small font underneath it while the other mark consists only of the plain words RUBI SHOES.

    In the present case, both parties have instigated proceedings against each other that may result in a Hearing. The Hearings process is independent from the examination of trade marks, so it would be inappropriate for us to comment on the specifics of this case.

    However, I think it is important to explain the role of IPONZ.

    Our role is that of a Registry. It is our job to examine trade mark applications to decide whether the trade mark is eligible for registration under the Trade Marks Act 2002. It is not our role, and would be entirely inappropriate, for us to intervene in commercial disputes. Trade mark registrations are private property rights, and must be enforced by the owner.

    It is important to note, that when we examine trade mark applications, we are restricted to the information provided in the trade mark application and the details of existing trade mark applications/registrations as shown on the trade marks register. In this case, we considered the trade marks described above. We cannot look behind this information to other factors that may exist in the marketplace.

    Under the Act, there are two main grounds that we examine for. The first is whether the mark is “inherently” registrable under the Act. If the mark is inherently registrable, the next question is whether the mark is “too similar” to an earlier trade mark application or registration such that consumers are likely to confuse the marks.

    When considering the second question of similarity between marks, the main points we consider are the look, sound and idea conveyed by the marks. This is a rather simplistic explanation, and in practice, there are many other factors that we must take into account. For example, the goods and/or services on which the trade mark will be used, the relevant market, and the expectations of the consumers of those types of goods and/or services. Fortunately, there is a large body of established case law to help guide our decisions.

    As you can see, when examining trade mark applications there are a lot of things we must consider. IPONZ has a number of checks and quality control measures in our processes to ensure the quality of our decisions. However, we also accept that at times others will not always agree with our decisions.

    Fortunately, the trade mark system has been specifically designed to accommodate conflicting views and provides processes for the resolution of the opposing interests and views of different parties. If a party does not agree that a trade mark should be registered there are steps they can take, such as opposing an accepted application before it is registered, or applying to invalidate or revoke a registered trade mark. There are also measures parties can take to allow the coexistence of their marks on the Register to give effect to commercial agreements.

    We understand the importance of protecting fashion brands through trade mark registration, and are working to make the process easier and more accessible to all businesses, big and small. I would strongly encourage your readers to go to our website http://www.iponz.govt.nz if they would like to know more about protecting their brands through trade mark registration.

    I hope this helps address your readers concerns and can assure you that we put a great deal of effort into ensuring a quality examination of trade mark applications, as we know the importance of trade marks to all businesses.

    IPONZ

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