MAX mark screened from IMAX opposition

Thursday 24th April 2008

IMAX and Village Roadshow MAX trade marks not similar.

IMAX is a Canadian Corporation specialising in large screen and large format, motion simulator entertainment. IMAX opened one of its theatres in a prominent position on one of the main streets of Auckland, New Zealand in July 1999. That theatre closed in April 2002 and the trade mark IMAX has not been used again in New Zealand. IMAX is the registered owner of New Zealand the trade mark IMAX in class 41 for, inter alia, entertainment services provided through the medium of motion picture theatres.

Village Roadshow Corporation applied for a stylised “max or “Vmax” for more or less the same services:

It claimed it wished to use the mark for large screen cinema services in New Zealand. There was some debate between the parties as to how the trade mark would be pronounced by the public. Village claimed it was just a stylised “max”. IMAX claimed it would be pronounced “vmax”.

IMAX opposed Village Roadshow’s application on the basis of its trade mark registration and it use made of the trade mark IMAX between 1999 and 2002. IMAX was unsuccessful before the Assistant Commissioner of Trade Marks on the basis that the trade marks were not similar and no confusion or deception was likely.

IMAX appealed to the High Court. The hearing was held on 5 December 2005 and a decision issued on 29 March 2006 (IMAX Corporation v Village Roadshow Corporation Limited (unreported, 29 March 2006, CIV-2005-404-3248, Williams J)).

Williams J gave no firm view of how Village Roadshow’s trade mark would be seen, pronounced or written by the public, but suggested that if it were referred to as “VMAX” that would not in fact be use of the trade mark, because the mark is a layered “v” stylised logo. He believed it likely that people will write the mark as “Village Roadshow Max”. Williams J considered that however it was seen, written or pronounced it was not similar to the IMAX trade mark.

On the question of similarity of services, Williams J noted that Village Roadshow specialised in blockbusters, whereas IMAX’s films were mostly documentaries. In William’s J view, consumers go to cinemas to see a particular film. They identify it by name and may select for the type of film, actors, story or director. He concluded that there was little in the evidence to suggest consumer choice was influenced by it being an IMAX or Village Roadshow product. There was no consideration in Williams’ J decision of the level of service, pricing or physical environment of the cinema being a factor in consumer choices. One would have thought that one of the key factors when consumers choose a cinema is the quality of the environment provided, such as the size of the seats and the size of the screen.

Williams J accepted that there was some overlap of services but agreed with the Assistant Commissioner, and found that she had not erred, in finding that the trade marks at issue were not sufficiently similar for confusion or deception to be likely to occur.

The appeal was rejected. Unless IMAX file an appeal at the Court of Appeal, the Village Roadshow trade mark will proceed to registration.

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