Australia: Qantas encounters strong headwind in opposition to kangaroo trade mark

Last Updated: 22 August 2016
Article by Chelsea Parker
Services: Competition & Consumer Law, Intellectual Property & Technology

What you need to know

  • Qantas has been unsuccessful in its attempts to prevent the registration of another party's trade mark incorporating a stylistic representation of a kangaroo on a t-shirt.
  • Qantas initially opposed the trade mark, then appealed the decision to the Federal Court of Australia arguing that the t-shirt mark was 'deceptively similar' to some of Qantas' existing trade marks, and that the t-shirt mark would cause confusion in the marketplace.
  • In dismissing Qantas' arguments, the Federal Court's decision is a reminder that competing trade marks must be considered by taking a holistic view that accounts for the similarities and differences between the marks, as well as the context in which a prior mark has been used.

The Federal Court of Australia recently delivered its decision in Qantas Airways Limited v Edwards [2014] FCA 729, which stems from an opposition to a trade mark application that was filed back in April 2010. The Court's findings offer useful guidance for trade mark owners seeking to oppose a trade mark on the basis of 'deceptive similarity', or on the basis that confusion would arise as a result of the reputation acquired in their own mark.


The respondent, Mr Edwards, filed a trade mark application in class 25 for "Clothing; footwear; headwear; shirts; T-shirts'" (the Respondent's Goods) for a logo comprising this stylistic representation of part of a kangaroo, set against a contrasting t-shirt element:

Registration of the T-shirt Mark was opposed by Qantas Airways Limited (Qantas) on multiple grounds of the Trade Marks Act 1995 (Cth) (the Act), including:

  • Section 44, on the basis that the T-shirt Mark was 'deceptively similar' to a number of Qantas trade marks; and
  • Section 60, on the basis that the T-shirt Mark was similar to a number of Qantas trade marks through which Qantas had acquired a prior reputation in Australia, such that use of the T-shirt Mark by Mr Edwards would be likely to deceive consumers, or cause confusion in the market.

Following an unfavourable decision in the Trade Marks Office, Qantas appealed to the Federal Court, seeking to have the T-Shirt Mark refused.

Throughout the opposition and appeal, Qantas relied upon a number of its prior registered marks (together referred to as the Qantas Marks), the earliest of which was adopted by Qantas in 1984.

After considering Qantas' arguments on the basis of sections 44 and 60 of the Act, Justice Yates of the Federal Court dismissed the appeal and held that the T-shirt Mark should be allowed to proceed to registration.

A closer look at Qantas' grounds of appeal

Section 44(1) - 'deceptive similarity'

Qantas relied upon the prior registration of the 1984 Kangaroo/tail fin mark, which was registered in 1996 in class 35 for "advertising, marketing and merchandising services" (Qantas Services). In doing so, Qantas claimed that the Respondent's Goods were 'closely related' to the Qantas Services, and further, that the T-shirt Mark was 'deceptively similar' to the 1984 Kangaroo/tail fin mark.

Justice Yates accepted that the question of deceptive similarity between allegedly conflicting marks will be partly informed by the closeness of the relationship between the goods and services in respect of which the marks are (or are sought to be) registered. However, his Honour held that the two matters were to be considered separately.

Are the Qantas Services 'closely related' to the Respondent's Goods?

Qantas argued that 'merchandising services' are concerned with or related to the promotion or sale of goods and services, and may include the selling or giving away of goods in connection with the promotion of a business. This could include giving away clothing and headgear goods (such as those sold by the Respondent).

However, Justice Yates held that 'all-encompassing services' such as those contemplated by Qantas' Services are not directed towards any particular line of trade or commerce, or any particular goods or services – in fact, they can be provided in respect of any goods or services whatsoever. Yates J held that nothing made the Respondent's Goods related (or closely related) to Qantas' Services, other than that the Respondents Goods are capable of being advertised, marketed or merchandised.1

Is the T-shirt Mark 'deceptively similar' to the 1984 Kangaroo/tail fin mark?

Having found that Qantas' Services were not closely related to the Respondent's Goods,2 Justice Yates could have disposed of the section 44(1) objection entirely. However, his Honour went on to assess whether the T-shirt Mark is deceptively similar to the 1984 Kangaroo/tail fin mark. In doing so, Justice Yates highlighted the need to focus on each mark as a whole, giving equal attention to the elements of each mark that are similar and dissimilar.

While accepting that the stylised kangaroo is a prominent element in each of the marks, Yates J stated that the key points of difference between the marks cannot be ignored. Those differentiators include the contrasting triangular element (the tail fin) in the 1984 Kangaroo/tail fin mark, or the t-shirt element of the T-shirt Mark. When considered in combination, these distinguishing elements contribute to a visual impression of each mark which is quite different to the other.

Even accounting for imperfect recollection of each of the marks, Yates J concluded that an ordinary member of the public would view the two marks as different, and dismissed the ground of opposition.

Section 60 - reputation

Under section 60 of the Act, Justice Yates considered whether the reputation acquired by Qantas in the Qantas Marks at the 'priority date' (April 2010, the date of filing of the trade mark) was such that use of the T-shirt Mark would be likely to deceive or cause confusion in the marketplace.

Unsurprisingly, Yates J accepted that Qantas had attained a reputation through use of the 1984 and 2007 Kangaroo/tail fin marks. However, his Honour was less convinced of a strong reputation by use of the 1984 and 2007 Kangaroo marks.

Yates J also noted that because the Qantas Marks are often used alongside the word 'QANTAS', or on the tail fin of a plane, consumers are not likely to associate the Respondent's Goods with Qantas, unless the T-shirt Mark is used in the context of promoting airline services.

Again, Yates J highlighted that when comparing the overall impression created by each of the T-shirt Mark and the Qantas Marks, and assessing the potential for consumers to be confused between the marks, one should focus on the differences between marks (such as the t-shirt element in the T-shirt Mark), not just any similarities. On that assessment, Justice Yates held that the dissimilarities between the marks were too profound to be seen as being related to the Qantas Marks, and therefore unlikely to deceive or cause confusion in the marketplace.

His Honour was also not persuaded that brand evolution and extension had a part to play in the appeal.

Key takeaways

Justice Yates' decision provides a useful summary of the two most frequently relied upon grounds of opposition to registration of a trade mark, and highlights the following:

  1. When relying upon section 44(1) to oppose registration of a later mark, it is important to consider the scope of the prior mark, particularly when assessing whether the goods and services claimed by the marks are 'closely related'.Trade mark specifications should be framed in broad enough terms to protect the registrant's use of the mark in a multitude of circumstances, but not be so broad that they are 'all encompassing', which could result in limited protection under section 44(1) of the Act.
  2. When considering whether a mark is 'deceptively similar' to another mark (under section 44) or whether use of the later mark is likely to cause confusion in the market (under section 60), one should take a holistic view of the marks, by reference to the overall impression given by each of them.If that holistic view suggests that the dissimilarities are more noteworthy than the similarities (as was the case for Qantas), it may be difficult to prove deceptive similarity between the marks.
  3. Where a prior registration is relied upon to prevent a later mark from being registered, it is important to consider the context in which the prior mark is used, particularly when relying on prior reputation under section 60. If the prior mark has been used alongside other identifiers or in unique circumstances (as was the case for Qantas, with its marks being accompanied by the word QANTAS and being used on the tail fin of a plane), it may provide difficult to establish this ground of opposition.


1 At [126].

2 At [129].

This article is intended to provide commentary and general information. It should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this article. Authors listed may not be admitted in all states and territories

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Chelsea Parker
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.