Qantas uses a variety of "kangaroo" trade marks as
part of its business, including the "kangaroo tail fin"
logo below which it registered in Australia in 1996 for
advertising, marketing and merchandising services and
financial, investment and banking services associated with the use
and promotion of credit cards and charge cards (Registration
In a recent Federal Court case, Qantas has unsuccessfully
opposed an application by Mr Luke Edwards to register the following
"kangaroo t-shirt" logo as a trade mark:
Mr Edwards operates an online retail store selling a range of
goods including clothing and apparel. In 2010, Mr Edwards applied
to register his "kangaroo t-shirt" logo above as a trade
mark, for use in relation to clothing; footwear; headwear;
shirts; T-shirts. At the time, Mr Edwards's online store
offered t-shirts branded with his "kangaroo t-shirt"
Qantas formally opposed the registration of the "kangaroo
t-shirt" logo on a number of grounds but the Delegate of the
Registrar of Trade Marks found in favour of Mr Edwards.
Qantas appealed the decision to the Federal Court, claiming that
the "kangaroo t-shirt" trade mark was deceptively similar
in appearance to Qantas's existing Trade Mark Registration No.
711454 for the "kangaroo tail fin" logo. In addition,
Qantas claimed that the goods/services covered by the two marks
were closely related, ie that Mr Edwards's clothing;
footwear; headwear; shirts; T-shirts were closely related to
Qantas's advertising, marketing and merchandising
Qantas also claimed that it had a strong reputation in Australia
in relation to various registered and unregistered
"kangaroo" trade marks it had used for many years and,
because of this reputation, Mr Edwards's use of his
"kangaroo t-shirt" trade mark would be likely to deceive
or confuse consumers. Qantas argued that consumers would simply see
Mr Edwards's "kangaroo t-shirt" logo on clothing as
an extension of the Qantas brand.
The Federal Court dismissed both grounds of opposition and found
in favour of Mr Edwards.
The Court held that Qantas and Mr Edwards's trade marks were
not deceptively similar in appearance, as each of the marks has a
separate, distinctive element apart from a kangaroo. The Court also
held that the goods/services covered by the two marks were not
closely related. The Court noted that Qantas's advertising,
marketing and merchandising services were no more or less
related to Mr Edward's clothing; footwear; headwear;
shirts; T-shirts than 'any other goods or services that
can be advertised, marketed or merchandised' and that there
was, therefore, no close relationship between the two.
In assessing Qantas's reputation in its various
"kangaroo" trade marks, the Court found that two of these
"kangaroo" marks 'would have been recognised by a
substantial number of ordinary members of the public as marks
denoting [Qantas's] airline services'. However, the Court
determined that there was no likelihood that consumers would be
deceived or confused on seeing Mr Edwards's "kangaroo
t-shirt" trade mark used for clothing; footwear; headwear;
shirts; T-shirts given the differences between the marks.
Qantas has now filed a new application for the
"kangaroo" logo below covering a wide range of
goods/services in 15 classes including various items of clothing
(No. 1703712). Mr Edwards has opposed this application and it will
be interesting to see the outcome of these proceedings.
This case highlights the importance of considering the different
types of marks which are important to your business. In addition to
registering brand names as trade marks, logos and other types of
trade marks are also registrable and may be just as valuable.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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