The Registrar ruled in Plaintiff's favor on Issue 3 (Prior Reputation) and accordingly, denied Defendant's trademark application.
In denying Plaintiff's first two grounds for opposition, the Registrar held that she did not have competent jurisdiction to decide matters of copyright infringement. Therefore questions under sections 52, 126 and 184 of the Copyright Act or to determine the operation and effect of regulation 4 of the Copyright International Protection Regulations also lie outside the jurisdiction of the Registrar. Because the Registrar does not have the jurisdiction to rule on the issue of copyright and ownership, there is no discussion as to the actual merits of Plaintiff's claims.
In affirming Plaintiff's objections to the application on the grounds of Prior Reputation, the registrar found that the two marks were substantially identical and that Plaintiff offered compelling evidence of prior reputation in its mark prior to the application priority date in Defendant's mark.
Specifically, the Registrar finds that the marks so resemble each other, that "without a careful side by side comparison, one is likely to be mistaken for the other…They clearly agree in the central and essential features…and the overall construction or design." While there are numerous differences in the marks, the Registrar concludes that these offer "very little practical help in differentiating marks which hold so much spectacular graphic and textual material in common."
The Registrar further determined that Plaintiff's mark did have a prior reputation and Defendant's mark was likely to cause people to wonder whether this mark indicates sponsorship, or a franchise arrangement, or some other trade...
As there is no trade connection between the two, the applicant's mark violates Section 60 of the Copyright Act 1995. The registrar relied on evidence submitted on behalf of Plaintiff which showed a significant and ongoing marketing presence in Australia by Plaintiff pre-dating the priority date of the application.
Standards Relied On And Established
The Registrar relies on the opinion of a very recent Registrar hearing to limit the jurisdiction of the Registrar to those Copyright Act claims where the injured party has obtained a judgment and took appropriate action under the Trade Marks Act to preserve or maintain his rights. Sea World, Inc. v ANZ Executors & Trustees Company Limited.
The standard for determining a substantially similar mark using a side by side comparison is found in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited, 109 CLR 407 at 414 (1961-63), which holds that "the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison." Case law also provides the standard that the modern commercial reality of strong public awareness of professional sports merchandizing is likely to cause deception or confusion on behalf consumers. Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited, 91 CLR 592 at 608 (1954).
Significance Of Case
This case is significant because it demonstrates how legal issues impact and are impacted by an expanding global economy. It also demonstrates how law will adapt to a changing society as witnessed by Registrar Hardie's treatment of…
