In the recent case of Qantas v Edwards1, Yates J upheld a Trade Marks Office decision to allow registration of Luke Edwards’ kangaroo t-shirt logo (Figure 1), in respect of clothing, footwear and headwear, finding that Qantas was unable to make out either of its grounds of opposition based on deceptive similarity (section 44) or prior reputation (section 60).

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Deceptive similarity – Section 44

Section 57 of the Trade Marks Act 1995 (the Act) allows for opposition to registration based on the grounds for which an application may be rejected during examination. One of the grounds, which is provided under Section 44, states ‘a trade mark application may be rejected if it is substantially identical with, or deceptively similar to, an earlier registration for similar goods or closely-related services’.

Qantas relied on its 1984 kangaroo/tail fin mark (Figure 2) as the basis for its opposition on section 44 grounds.

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The mark consists of the stylised kangaroo set against the triangular ‘tail fin’ background. In considering the issue of deceptive similarity, the Court noted the broad similarity of the Qantas mark and the opposed mark because both marks include ‘kangaroo-like’ features. However, his Honour was cautious about placing too much weight on the kangaroo features and not excluding the other elements of the trade marks. In his Honour’s view, the conspicuous t-shirt element of the opposed mark distinguished it from the Qantas 1984 kangaroo/tail fin mark to the extent that visually, the opposed mark was considered ‘far removed from the earlier Qantas mark’.

The decision against Qantas with respect to deceptive similarity turned partly on the finding that Qantas’ ‘merchandising services’ are not closely related to the Respondent’s ‘clothing, footwear and headwear’ goods in Class 25. The fact that the Class 25 goods are capable of being used for merchandising did not render them any ‘more or less related to [Qantas’] advertising, marketing and merchandising services’ than any other goods or services that can be advertised marketed or merchandised. To this end, his Honour pointed out that Qantas’ registration for services in Class 35 ‘is not a registration for goods or services in respect of which’ those services might be supplied or provided.

Relying on the decision in the Registrar of Trade Marks v Woolworths Ltd2, Qantas argued that the decision of whether the services and goods were closely related was ‘intimately bound up with the question of whether the two marks are substantially identical or deceptively similar’. However, his Honour rejected Qantas’ line of argument and clarified that French J’s analysis in the Woolworths case was directed specifically at a consideration of deceptive similarity and not on the closeness of the relationship between goods and services.

His Honour was also not swayed by the expert evidence supplied by Qantas with respect to the likely consumer perception of Qantas’ brand. On the contrary, his Honour pointed out that the question of likely consumer perception is a question of fact to be determined by the Court.

Prior reputation – Section 60

Section 60 of the Act provides that a registration in respect of particular goods or services may be opposed on the ground that another trade mark had, before the priority date of the applied for mark, acquired a reputation in Australia and because of that reputation, the use of the applied for mark would be likely to deceive or cause confusion. Qantas sought to rely on what it described as ‘overwhelming and incontrovertible’ evidence to demonstrate that the reputation of its relevant marks is ‘simply enormous’ to the extent that use of the Respondent’s kangaroo T-shirt mark would be likely to deceive and cause confusion.

This ground of opposition was based on four earlier Qantas marks, two of which consisted of a kangaroo silhouette on a tail fin, the other two being the kangaroo silhouette alone. It was found that the kangaroo/tail fin marks were the dominant marks used by Qantas in the years preceding the priority date of the opposed application.

His Honour found that much of the use of the kangaroo silhouette marks was in fact on Qantas aircraft or with other distinctive elements. Ultimately, Yates J found that the reputation Qantas enjoyed with respect to the kangaroo/tail fin and kangaroo silhouette marks as at the priority date of the opposed application was ‘in relation to airline services or perhaps, more broadly, travel services and the like’. His Honour rejected Qantas’ arguments that its reputation extended to the goods of the opposed application by virtue of brand extension. In particular, that evidence of use demonstrated by Qantas was use on goods simply for endorsement purposes or otherwise, use ‘very closely connected to Qantas’ core activity of providing airline services’. Although his Honour recognised Qantas’ reputation with respect to airline services, he was not satisfied that use by the Respondent as at the priority date, and in relation to the Respondent’s goods, would have been likely to cause deception or confusion.

It’s not over yet

In response to these opposition proceedings, Qantas has filed an application to register its kangaroo silhouette across a range of goods and services, including goods in Class 25. The Respondent in this case has opposed the Qantas application and has also filed further applications for additional kangaroo silhouette trade marks.