What you need to know
- The Trade Marks Office has confirmed that use of the name of a film, as a general rule, will not constitute use of that name as a trade mark.
- However, it depends on the particular circumstances of use. For example, where a name is used for a series of films, use of that name may constitute trade mark use depending on the nature and extent of that use (eg, Star Wars).
Opposition to registration of the mark LION
Saroo Brierly was adopted from an Indian orphanage by an Australian family at the age of 5. Later in life he tracked down his birth family in India and subsequently wrote a memoir about his life which was initially called "A Long Way Home". The book was later turned into a film which was released under the name "Lion". The name Lion was chosen because Mr Brierly's name was originally Sheru which means Lion in Hindu.
Mr Brierly, via a company of which he is the sole director, applied to register the trade mark LION for class 41 services, specifically live performances including theatre and musical performances. The application was opposed before the Trade Marks Office by Long Way Home Holdings Pty Ltd, a subsidiary of the entity which produced the film "Lion".
The application was opposed on the grounds of sections 42(b) (contrary to law), 58 (not the first user), 60 (use would be deceptive or confusing due to the reputation of the Opponent's mark) and 62A (bad faith) of the Trade Marks Act 1995. The opposition failed on all grounds and the trade mark application was allowed to proceed to registration.
The determinative issue in this case was whether the name of a film fits within the definition of a trade mark in the Trade Marks Act 1995. That is, is it a sign used, or intended to be used, to distinguish goods or services dealt with in the course of trade by a person from goods or services so dealt with or provided by any other person?
Name of film as a trade mark
The Hearing Officer followed the decision of the Court of First Instance of the European Communities in Danjaq LLC v OHIM (T-435/05) which dealt with "Dr. No", the name of the first film in the James Bond series. While that decision was made under the European legislative regime, the Hearing Officer stated that it was a relevant precedent because the provisions relating to trade marks as a badge of origin are directly applicable to Australian trade mark matters.
Following that decision, the Hearing Officer concluded that the way in which the Opponent used the name Lion was only as the title of the film and as a reference to the film. None of the evidence indicated that the name LION was used to indicate the trade source of the film. While the evidence demonstrated that the film was very successful and therefore became very well known, that was not enough to mean that the name of the film was used as an indicator of trade source.
Outcome of opposition
The opposition grounds under sections 42(b), 58 and 60 failed for the same reason; the fact that the Opponent had not used the name LION as a trade mark. Both sections 58 and 60 rely on the Opponent showing use of the trade mark. However, in this case the Opponent could not do so because the Hearing Officer found that it had only used the name LION as the name of the film.
In relation to section 42(b), the Opponent relied on the Australian Consumer Law (specifically the provisions dealing with misleading and deceptive conduct) and passing off. The Opponent argued that consumers associate the sign LION with the Opponent. However, the Hearing Officer found that the evidence did not support this argument, again because the use was as the name of a film, not as an indicator of the Opponent as the trade source.
The final opposition ground, section 62A (application was made in bad faith) also failed. The Hearing Officer stated that it is likely that Mr Brierly might have seen the financial benefit to registering the name LION and that filing the application seemed to be a natural approach, rather than conduct which would be considered to be in bad faith.
Authors: Annika Barrett, Senior Expertise Lawyer; Lisa Ritson, Partner.
