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Two trade mark opposition decisions were published on 24 December 2008. Both concerned oppositions (by existing rights holders) to new trade mark applications. Both oppositions were unsuccessful. The decisions demonstrate difficulties existing rights holders face when opposing new registrations for marks perceived to be objectionable.

The first case, Toddler Kindy Gymbaroo Pty Ltd & Ors v Invecon Australia [2008] ATMO 102 concerned an application by Invecon to register "KINDEROOS" in relation to childcare services.

The opponent, Gymbaroo, is the owner of a number of existing marks including "KINDYROO," which are used in relation to education of parents and carers.

The Hearing Officer decided that Invecon's "KINDEROOS" mark was deceptively similar to the Gymbaroo mark "KINDYROO". However, there is a provision in the Trade Marks Act which protects an applicant if the applicant's mark has in fact been in use for longer than the opponent's mark, even though the opponent has registered first.

In this case, Invecon was able to show that it had been using "KINDEROOS" since late 2003, even though it had only applied to register the mark in mid-2006. Gymbaroo was not able to prove that it had used its own marks before that date. Because of this finding, Gymbaroo's opposition was unsuccessful, and Invecon's mark was allowed to proceed to registration.

The decision shows that it can be important to prove dates of use of a trade mark, as well as registration dates. Detailed records and examples of use can simplify defence and opposition proceedings.

The second case concerned a far more familiar rights holder. The case is Elvis Presley Enterprises v Elvis Jelcic [2008] ATMO 103 and concerned the opposition by Elvis Presley Enterprises ("EPE") to the registration of "ElvisFINANCE" by Mr Jelcic.

EPE contended that any use of the word "Elvis" would necessarily deceive consumers, essentially because Elvis Presley was such a well-known and loved public figure. The Hearing Officer decided that such a connection was not established by the evidence, and allowed the application to proceed. (The officer did note, presumably as a warning to Mr Jelcic, that embellishment of the ElvisFINANCE brand with "guitars...white jump suits or the like" might give EPE a remedy).

The case demonstrates that even very famous names, in some circumstances, can be used as components of a trade mark for unrelated products, provided there is no likelihood of public deception or confusion.

Patrick Sefton
Brightline Lawyers
12 February 2009
Do not rely on these notes—obtain specific legal advice.