Prada and Farmers: “MIU MIU” versus “MIMI”
Italian fashion powerhouse Prada recently made news as their claim of confusion between their “MIU MIU” brand and New Zealand-wide retail chain Farmers’ “MIMI” trade mark was rejected. In September 2010 Judge Priestly J of the High Court upheld the earlier decision of the Assistant Commissioner to allow the Farmers’ mark, finding the similarities between the marks to be superficial, and unlikely to deceive or cause confusion.
He listed the similarities and differences between the words, namely:
-The MIMI mark deploys two letters of the alphabet repeated in the same order totaling four letters in the one word. The MIU MIU mark deploys three of the letters of the alphabet forming one word, that word being repeated.
-MIMI deploys one consonant and one vowel. MIU MIU deploys one consonant and two vowels.
…and he went on to note there are four points of similarity and seven points of difference in total between the marks.
Interestingly, in the judgment, Priestly J agreed with Prada that the channels employed by the companies were not relevant in the decision and should not have been considered. Furthermore, while the markets for the brands are “unlikely ever to be the same” (Prada’s MIU MIU products are in the high-end of women's fashion clothing, shoes and handbags, whereas Farmers’ MIMI shoes are priced in the $29.99 to $39.99 range), on a notional fair use basis as far as the trade mark applications were concerned, the Farmers’ goods were not restricted to the current range of more affordable products. Nevertheless the admission did not change the verdict and the decision was upheld.
Prada has failed to uphold trade mark claims against the word MIMI previously in other jurisdictions, which further reinforced the conclusion.
Read the full judgement.
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