Clothing firm taken to the cleaners

November 17, 2000

The Ivy League group of American universities has won a trademark dispute with a New Zealand company over the use of the term for a line of clothing.

In January, Patent Office New Zealand ruled that clothing company Pacific Dunlop (Asia) could register Ivy League as a trademark for clothing, footwear and headgear, despite opposition from the Ivy League group.

In his ruling, the assistant commissioner of trademarks, W. D. Howie, said he was not convinced that the Ivy League had a sufficient reputation in New Zealand for Pacific Dunlop's use of the trademark to cause "deception or confusion in the market place".

However, the Council of Ivy Group Presidents, trading as the Ivy League, successfully challenged the ruling in the High Court of New Zealand last month. Presiding judge John Hansen upheld the group's appeal, ruling that the registration of the trademark by Pacific Dunlop should not be allowed to proceed.

Andrew Brown, the barrister acting for the Ivy League, said the eight prestigious American universities comprising the league had been using the name and the trademark for more than 50 years.

He said most university graduates in New Zealand would know what the term meant and would be able to name at least some of the Ivy League universities.

The judge accepted Mr Brown's argument that the use on clothing labels of terms such as "genuine" and "authentic", coupled with "Ivy League", meant there was a high likelihood of confusion over the origin of the goods. The judgment also concluded that the awareness of the term Ivy League did not have to relate specifically to clothing.

A New Zealand patent attorney, Nigel Robb of A. J. Park, said the decision was interesting in that, just as with famous personalities and sports teams, it indicated a public expectation that educational institutes would be involved in brand extension and merchandising of their names.

Solicitors for Pacific Dunlop did not appear at the appeal hearing, and said beforehand they would abide by the court's decision.

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