North Face unsuccessfully appealed a High Court decision that upheld an Assistant Commissioner’s decision to allow Sanyang’s application to be registered. North Face opposed Sanyang’s device mark application on the basis of its similarity to North Face’s unregistered, but prior used, device marks. Sanyang’s device mark can be construed as a 90º clock-wise rotation of the North Face S device contained within a circle with a red background. Sanyang’s device mark does, though, use shading which gives a 3-D effect, whereas the North Face S device mark is 2-D.
The Court of Appeal first had to determine the nature and extent of North Face’s use of its device marks prior to Sanyang’s application. North Face had only established use of its S device mark on gloves and mittens, but claimed wider use based on a composite mark containing the words SUMMIT SERIES below the S device. However, the Court of Appeal held that the composite mark is indivisible and so cannot count as use of the S device. The Court of Appeal also rejected North Face’s fallback submission that the use on gloves and mittens extended ownership to all items in class 25. While items in class 25 could all be described as clothing it does not mean they are all the same kind of thing. Further, the statutory framework requires registration in respect of particular goods or services and cannot be in respect of all goods or services unless justified by use.
North Face also argued that it is the true owner of Sanyang’s mark, because the latter incorporates or subsumes North Face’s S device. However, the Court of Appeal rejected that argument. The correct enquiry is not whether Sanyang’s mark took, included, incorporated or absorbed North Face’s S device, but rather whether Sanyang possesses all the proprietary rights in its mark. The Court of Appeal concluded that Sanyang did because North Face could not establish prior use and nor had it maintained pleadings or led any evidence on deception or confusion in respect of an identical or similar mark.
