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.

Background

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.

Footnotes

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

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Chelsea Parker
 
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