Australia: Analysis on Onus of Proof in Trade Mark Oppositions Following Waltzing Matilda Dispute

In Lomas v. Winton Shire Council and The Waltzing Matilda Centre Ltd [2002] FCAFC 413 (11 December 2002) the Full Federal Court issued its first decision arising from an appeal in trade mark opposition proceedings under current legislation. The joint judgement contains a useful analysis on the onus of proof in oppositions.

Brenda Lomas (Lomas) applied, on 20 November 1997, to register the trade mark WALTZING MATILDA for various foods and food related services. Winton Shire Council and The Waltzing Matilda Centre Ltd (Opponents) were unsuccessful in their opposition before the Registrar, but were successful in their appeal before Spender J in the Court below. Lomas was subsequently successful in her appeal to the Full Federal Court which held that the Opponents had not established any relevant prior trade mark use of WALTZING MATILDA sufficient to defeat Lomas’ claim to statutory ownership of this trade mark.

The Waltzing Matilda song was written by A B (Banjo) Patterson and first performed in the town of Winton in 1895. This song is very well known in Australia and may be characterised as an unofficial national anthem. The Opponents hosted celebrations in 1995 to commemorate the centenary of the first performance of this song and subsequently developed a permanent attraction in Winton called The Waltzing Matilda Centre (Centre). The issue before the Court was whether the Opponents’ promotional activities in relation to the Centre constituted a prior use sufficient to defeat Lomas’ claim to ownership of WALTZING MATILDA as a trade mark.

The case ultimately was decided on its facts, particularly whether an advertisement published on behalf of the Opponents on 1 November 1997 and which included references to Waltzing Matilda Centre, Waltzing Matilda General Store and Waltzing Matilda Country Kitchen constituted an existing intention to offer or supply foodstuffs and restaurant services under the WALTZING MATILDA trade mark.

The Court was influenced by the fact that the country kitchen within the Centre was ultimately called the Coolabah Country Kitchen and found that the Opponents did not have a settled intention, at the time of publishing the advertisement, as to the name under which the country kitchen facility would trade. The advertisement could not be relied upon to establish prior use of WALTZING MATILDA as a trade mark.

The Court applied established case law on trade mark ownership, but made some useful comments on the onus in opposition proceedings. It is clear that an opponent has the onus of establishing, at least on the balance of probabilities, the ground of opposition relied on. The Court went on to comment that, on one view, an opponent may carry a higher onus, namely to establish that the relevant trade mark should clearly not be registered.