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march 2009 |
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| intellectual property update | ||||||||||||||||||||||||||||
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In a case you could be forgiven for believing would only happen in New Zealand, Box Office, Inc (HBO), the distributor of the famous ‘Sex and the City’ television series, has unsuccessfully opposed a trade mark application filed by a Brisbane based dating services company for the similar sounding ‘Six in the City’. Although Six in the City was successfully registered, this not so steamy affair highlights some of the issues that need to be considered when registering and protecting trade marks. Is it just me, or do we have a connection? One of the issues raised was whether the Six in the City trade mark suggested a connection or affiliation between HBO and the applicant that was likely to either deceive, cause confusion or give rise to a misleading connotation – all grounds for opposition under various sections of the Trade Marks Act and Trade Practices Act. To be able to successfully make such an argument, HBO had to establish Sex in the City had the requisite reputation and was well known. Are you leading me on? HBO also submitted that the use of the Six in the City trade mark might be misleading if it was used in relation to services rendered in organising social engagements for any number of people other than six. They argued that the trade mark would be likely to deceive or cause confusion under section 43 of the Trade Marks Act and likely to be in breach of the misleading and deceptive provisions (section 52) of the Trade Practices Act. Can you describe what you’re doing for me? As a general rule, highly descriptive trade marks for business, product or service names are not capable of registration. HBO argued that Six in the City was descriptive of the applicant’s dating services because it involved six compatible people meeting for dinner. It also argued that the mark was not capable of distinguishing the service, as arranging dinners for six people was an established concept, with reference made to other dating agencies that use the mark, including the registered mark ‘Dinner for Six’. The result The Delegate of the Registrar of Trade Marks, while finding that HBO had established the requisite reputation and was well known, did not consider that there was a significant risk of confusion arising between the marks. HBO failed to establish any of the grounds of its opposition and the mark for Six in the City was successfully registered. This case goes to show that there is nothing sexy about trade mark infringement, and highlights some of the issues that should be considered when registering and protecting trade marks. If you are seeking to register trade marks or enforce your rights in relation to them, gadens lawyers can help. |
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