In Levi Strauss & Co and Levi Strauss (New Zealand) Limited v. Robertsons Ltd., the High Court overturned an earlier decision on an interim injunction application by deciding that the use of a tab device on the back pocket of jeans, regardless of whether the tab protrudes completely from the jeans or is folded over the pocket and stitched along the seams, constituted an infringement of Levi's trademark registrations for the tab device, and also constituted passing-off and misleading and deceptive conduct under the Fair Trading Act. At the interim injunction stage, the court based its decision on the Trademark Office's extract of the Register, which did not conform exactly to the Trademark Register entry. The court ruled that there was no trademark infringement, since Levi's registered rights were limited to the pictorial representation of the mark (a protruding tab on the left side of a pocket) and were not defined by the verbal description of the mark which referred to a protruding tab of contrasting color located on the structural seam of a patch pocket.

However, in a decision on the merits of the case, the court found that the Trademark Office extract was misleading, since the verbal description of the mark also delineated Levi's rights in the mark, and, based upon survey evidence indicating that Levi Strauss had created a substantial reputation in the tab device as a trademark, the court found in favor of the plaintiffs. This decision was consistent with an earlier case against a different company, Kimbyr Investments Ltd., also over the use of a confusingly similar tab device.

The case illustrates the important role which verbal descriptions of three-dimensional marks play in defining the scope of registered trademark rights.

June 1994 Index