18 April 2006

A fashion in names: Tsubi vs Tsubo.

Fashion naming and branding is sometimes a complex affair or is made out to be. Often companies in different markets compete for the same or similar names without anyone batting an eyelid. In Sydney everyone knows that there is a Hermes Leathergoods who make handbags in St Peters, yet they are allowed to exist by the Hermes conglomerate, who own the more luxurious moniker among other names. So when two marginal funky brands - Tsubo, out of Los Angeles and specialising in shoes and Tsubi, out of Sydney and originally a jeans maker venturing into clothing and accessories - start arguing, you wonder if this a beatup by Tsubo or the Sydney Morning Herald http://www.smh.com.au/articles/2006/04/17/1145126056425.html, who report it.

In what seems a parochial story, the Herald’s article claims that Tsubo's founders think the Tsubi name is “too similar to their own brand name, established in 1998 and registered in Australia in March 2000”. So what we ask? Registering a name in a foreign market does not give necessary exclusivity, nor does it mean passing off as the name goes through domestic business name and trademark checks for any similarity. According to the Australian Securities and Investments Commission (ASIC) Tsubi registered its company name in November 2000 and its first trademark in 2002. Tsubo, on the evidence of our ASIC search, is not even registered in Australia as a business name or a company.

However, it seems that the matter is likely to play out in U.S. courts where, the Herald reports, that “after years of informal requests for Tsubi to change the name, Tsubo had started legal proceedings” against Tsubi in the Federal Court in New York. And surely this is perhaps where the money is and the real issue lies.

Also at dispute is the similarity between the two logos, with Tsubo claiming both brandmark fonts and logo design are similar. Interestingly, Tsubi’s logo is only registered in Australia for use on it’s newly launched sunglass range. Again, DIFFUSION wonders whether there is anything to dispute here. We know Tsubi only registered a mark for it’s eyewear label but otherwise the mark has been somewhat fluid (we couldn’t even find a definitive version on tsubi.com), so only have these two to compare.

The important thing is that both brands operate in distinct sections of the fashion market and while both are marketed and sold in Australia and U.S., any name confusion is going to have to prove some level of economic damage. It’s going to be difficult for Tsubo to prove that either its name or logo are being either traded-on deliberately by Tsubi or that Tsubi has deliberately copied aspects of the Tsubo logo as Tsubi’s mark, has been up to this time fluid and is not, as far as we are aware, registered for use in the U.S.

However, Tsubi, which probably has more of an international brand name to protect, would do well to look at both name registation and trademark registration in all markets it operates in and intends to market in, otherwise this action is likely to continue. Perhaps Tsubi’s owners are either being na├»ve or deliberately so?