Qantas successfully opposes registration of “Flying Kangaroo” wines–without a trade mark
QANTAS Airways Limited v Danniel Amadio  ATMO 84 (25 August 2011)
Qantas has successfully opposed an application for registration of the words “Flying Kangaroo” for wines in a decision which is noteworthy because Qantas succeeded due to its reputation in words which were deemed not to be a trade mark.
Qantas’ grounds of opposition
In January 2009, Danniel Amadio applied for registration of the trade mark “Flying Kangaroo” for wines in Class 33. The application was accepted, however Qantas opposed registration on two grounds:
- due to Qantas’ pre-existing reputation in “Flying Kangaroo” as a trade mark, the registration of Flying Kangaroo for wines would be likely to cause confusion and deception: section 60 of the Trade Marks Act 1995; and
- that the use of the Flying Kangaroo mark for wines would be contrary to law: section 42(b) of the Trade Marks Act 1995. Specifically, Qantas submitted that prior reputation in “Flying Kangaroo” meant that any use of Flying Kangaroo by Mr Amadio would contravene section 52 of the Trade Practices Act 1974 (now section 18 of the Australian Consumer Law) which prohibits misleading and deceptive conduct in the course of trade.
Qantas’ use of the Flying Kangaroo
Qantas filed evidence of its history of using a flying kangaroo logo and the words “Flying Kangaroo”. The evidence documented the adoption in January 1947 of the winged kangaroo symbol, created by Sydney designer Gert Sellheim, and the periodic updates and modernization of the flying kangaroo logo. The evidence showed that the expression “the flying kangaroo” was used at least once in Qantas’ advertisements, and in the titles and content of newspaper and magazine articles. The Hearing Officer accepted that the phrase “Flying Kangaroo” is used by the travel industry generally to refer to Qantas and that the flying kangaroo logo is identified by reference to the words “the flying kangaroo”.
Qantas also filed convincing evidence of its strong association with the wine industry.
The applicant did not file evidence.
Qantas’ “Flying Kangaroo” not used as a trade mark
Hearing Officer Thompson considered Qantas’ use of the words “Flying Kangaroo” but held that it was not used “as a trade mark”: it was not used by Qantas to distinguish its airline services from other airline services in the course of trade. He acknowledged that Qantas does use its flying kangaroo logo as a trade mark, but held that use of the logo was not equivalent to use of the words “Flying Kangaroo”. The words “Flying Kangaroo” were not used as a trade mark so the use could not be relied upon by Qantas to support its section 60 ground of opposition.
Use of “Flying Kangaroo” by Mr Amadio would be contrary to law
Although he decided that Qantas had not used the words Flying Kangaroo as a trade mark, the Hearing Officer held that the expression is widely identified with Qantas and is commonly used by industry commentators with the knowledge that it will be immediately understood as a reference to Qantas or its kangaroo logo. Considering this, together with Qantas’ association with the wine industry, the Hearing Officer concluded that it is almost inevitable that a significant number of people seeing the applicant’s wine with the trade mark “Flying Kangaroo” would be misled into believing that it has the endorsement or approval of Qantas or has been selected by Qantas for service to passengers on airline flights. Accordingly the Hearing Officer concluded that such use would be contrary to section 52 of the Trade Practices Act, and hence contrary to law. The opposition therefore succeeded under section 42(b).
Lessons for trade mark owners
This was an unusual trade mark opposition decision because the opponent’s success was based on its reputation in a phrase that was deemed not to be “a trade mark”. Consequently, the decision provides:
- A useful precedent for a situation where an applicant or opponent wishes to rely on a reputation established in an expression which is not a trade mark.
- A reminder of the importance of broad searches of common law resources when selecting a new trade mark – and not dismissing rights in a phrase on the basis that it is not used “as a trade mark”.