MARGARITAVILLE ENTERPRISES, LLC V LOOM WINE GROUP PTY LTD [2015] ATMO 91

Margaritaville, an entity owned by Jimmy Buffett and Alan Jackson, opposed the registration of the trade mark ‘fiveoclocksomewhere’ filed by Loom Wine in respect of wine and the provision of drinks.

As background, Jimmy Buffett and Alan Jackson were responsible for the 2003 song IT’S FIVE O’CLOCK SOMEWHERE, which reportedly enjoyed considerable success worldwide. Margaritaville is the legal owner of the rights, including any accrued rights at common law, in relation to that song.

The main ground pressed was section 60, that because of the common law trade mark rights owned by Margaritaville in relation to IT’S FIVE O’CLOCK SOMEWHERE, there would be likely consumer deception or confusion as a result of the use and registration of ‘fiveoclocksomewhere’ by Loom Wine.

In its evidence, Margaritaville attested to having opened a restaurant in Sydney’s Darling Harbour under the name Margaritaville with a bar named IT’S FIVE O’CLOCK SOMEWHERE. Margaritaville alleged that its restaurant and bar were opened in September 2012, however, late evidence from the other side demonstrated that the premises in question did not open until after the filing date of the opposed mark (November 2012).

As such, Margaritaville was left to rely only on its overseas use of the trade mark IT’S FIVE O’CLOCK SOMEWHERE, which the Hearing Officer found was not sufficient use to ‘satisfy me that the s 60 Mark had the requisite reputation as a trade mark contemplated by s 60 as at the Relevant Date’.

Having failed to establish a reputation under section 60, Margaritaville was doomed to also failed under section 42.

The opposition was dismissed and the application is to proceed.

To view the Office decision, click here.