In a case you could be forgiven for believing would only happen
in New Zealand, Box Office, Inc (HBO), the distributor of the
famous 'Sex and the City' television
series, has unsuccessfully opposed a trade mark application filed
by a Brisbane based dating services company for the similar
sounding 'Six in the City'.
Although Six in the City was successfully
registered, this not so steamy affair highlights some of the issues
that need to be considered when registering and protecting trade
Is it just me, or do we have a
One of the issues raised was whether the Six in the
City trade mark suggested a connection or affiliation
between HBO and the applicant that was likely to either deceive,
cause confusion or give rise to a misleading connotation
– all grounds for opposition under various sections of
the Trade Marks Act and Trade Practices Act. To
be able to successfully make such an argument, HBO had to establish
Sex in the City had the requisite reputation and
was well known.
Are you leading me on?
HBO also submitted that the use of the Six in the
City trade mark might be misleading if it was used in
relation to services rendered in organising social engagements for
any number of people other than six. They argued that the trade
mark would be likely to deceive or cause confusion under section 43
of the Trade Marks Act and likely to be in breach of the
misleading and deceptive provisions (section 52) of the Trade
Can you describe what you're doing for
As a general rule, highly descriptive trade marks for business,
product or service names are not capable of registration. HBO
argued that Six in the City was descriptive of the
applicant's dating services because it involved six compatible
people meeting for dinner. It also argued that the mark was not
capable of distinguishing the service, as arranging dinners for six
people was an established concept, with reference made to other
dating agencies that use the mark, including the registered mark
'Dinner for Six'.
The Delegate of the Registrar of Trade Marks, while finding that
HBO had established the requisite reputation and was well known,
did not consider that there was a significant risk of confusion
arising between the marks. HBO failed to establish any of the
grounds of its opposition and the mark for Six in the
City was successfully registered.
This case goes to show that there is nothing sexy about trade
mark infringement, and highlights some of the issues that should be
considered when registering and protecting trade marks. If you are
seeking to register trade marks or enforce your rights in relation
to them, gadens lawyers can help.
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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