Well known airline, Qantas, has failed on appeal to the Federal Court of Australia in its opposition to a class 25 device mark featuring a kangaroo.
Brand owners seeking to rely on a brand extension argument in future cases will likely need to show a clear link between the core services of the business and the applicant’s goods or services. Applicants should also carefully consider their filing strategy with a view to relying on registrations for services against applications covering specific goods.
The kangaroo t-shirt logo
The respondent, Mr Edwards, sought registration of the following logo (T-Shirt Logo) in respect of “clothing; footwear; headwear; shirts; t-shirts” in class 25:
The appellant, Qantas Airways Limited, unsuccessfully opposed registration of the T-Shirt Logo before the Australian Trade Marks Office.
Qantas claims t-shirt logo is deceptively similar to its own trade mark
On appeal, Qantas argued that the T-Shirt Logo was deceptively similar to its prior registration for the following logo (1984 Tail Fin Logo):
The 1984 Tail Fin Logo was registered for (among other things) “advertising, marketing and merchandising services” in class 35. Qantas argued these services are closely related to the applied for goods.
What was the decision?
Yates J held that “clothing; footwear; headwear; shirts; t-shirts” were not closely related to “advertising, marketing and merchandising services“.
While accepting that clothing and headgear are typically used as promotional items, Yates J stated that the respondent’s goods “are no more and no less related to ‘advertising, marketing and merchandising services’ than any other goods or services that can be advertised, marketed or merchandised” which could be limitless. He contrasted the case with one involving a more specific claim for services related to particular goods, such as television repair services and televisions.
If the merchandising services were directed to clothing specifically, it is unclear whether the same decision would have been reached. This has interesting implications for the filing strategies we might recommend to our clients.
Qantas could have amended its claim to include “merchandising in relation to clothing, footwear and headgear” and may have had a better chance of success.
In any case, Yates J also considered the marks were not deceptively similar. While accepting that the stylised kangaroo was a prominent element of each mark, he emphasized that the contrasting triangular element of the 1984 Triangle Logo and the t-shirt shaped outline of the T-Shirt logo were also important aspects of the respective marks which provide memorable context to the kangaroo elements. These were considered significant points of distinction.
The extent to which the crowded state of the Register with respect to kangaroo device marks in class 25 was a basis for the decision is unclear. Evidence of the state of the Register was considered in detail by Yates J in summarizing the evidence but was not explicitly referred to as a basis for his finding on deceptive similarity.
Qantas claims t-shirt logo would likely cause confusion
Qantas argued that it had, at the priority date, a significant reputation in the following logos such that the use of the T-Shirt Logo would be likely to deceive or cause confusion:
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(1984 Tail Fin Logo) |
(1984 Kangaroo Logo) |
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(2007 Tail Fin Logo) |
(2007 Kangaroo Logo) |
Qantas had first adopted a kangaroo device as part of its branding in 1944. Qantas’ core services are air transportation services, but the 1984 and 2007 marks had been used in relation to a range of other services, ancillary products, merchandise and sponsorship activities.
What was the decision?
Yates J was satisfied that the 1984 Triangle Logo and the 2007 Triangle Logo would have been recognised by a substantial number of ordinary members of the public as denoting Qantas’ airline services at the priority date. He was less certain about the recognition of the 1984 Kangaroo Logo and the 2007 Kangaroo Logo.
Absent a finding of deceptive similarity, Yates J was not satisfied that the use of the opposed mark in respect of the respondent’s goods would have been likely to deceive or cause confusion.
His Honour considered that general consumer awareness of brand evolution and brand extension were not factors that had any significant role to play in the case, or that ordinary members of the public would have seen the T-Shirt Logo as a development of any of the 1984 or 2007 marks. The differences in the T-Shirt Logo and the Qantas marks were held to be too profound to be seen as an evolutionary change to the brand.
Qantas’ evidence of use of its marks on promotional and sponsorship items (including use of the Tail Fin marks on Kolotex “Sheer Relief” pantyhose and Ambra flight socks, and use on sports’ team uniforms – including for the Wallabies and the Socceroos) was considered to be evidence of use for promotional or sponsorship purposes denoting the appellant as a supplier of airline services, and not trade mark use in relation to the goods themselves.
Take home points for brand owners
Brand owners should carefully consider their filing strategies, and particularly the breadth or specificity with which their goods and services are defined, with respect to blocking applications for subsequently filed marks.
Brand owners should also carefully consider the format in which they apply for their trade marks. In this case, his Honour considered that use of the opposed mark in a manner in which the t-shirt element is subordinated to the shape of the goods would not be normal and fair use of the opposed mark. This is because the t-shirt element of the combination relinquishes its trade mark significance, leaving only the kangaroo mark as having any significance. Therefore, if Mr Edwards launches the opposed mark across a t-shirt, rather than as a small logo on the label or corner of the t-shirt, his use may not be use of his trade mark and so his registration may not provide him with a defence to infringement.
On a separate point, the relevance of the fact that the Register was crowded with registrations for kangaroo devices was unclear in this case. The case highlights the importance of monitoring and opposing relevant third party marks to avoid risking an adverse finding if it is perceived that the rights in a trade mark have become diluted.
Owners of well known marks should also consider seeking defensive registrations for a broader array of goods and services than those for which their marks are, or might be in future, used.
“This article is adapted from the article as it first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”