All England Lawn Tennis Club (Wimbleton) Limited v Jae Hwan Kim

The All England Lawn Tennis Club (Wimbledon) Limited (the opponent) opposed the registration of a composite word and device trade mark application by Jae Hwan Kim (the applicant) for watches, clocks, and their parts. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine several grounds of opposition, including whether the applicant's trade mark was capable of distinguishing the applicant's goods under section 41, whether it contained a false geographical indication under section 61(1)(a), whether it was identical or deceptively similar to registered trade marks of the opponent under section 44, and whether it was deceptively similar to a trade mark that had acquired a reputation in Australia under section 60.

The delegate found that the applicant's composite mark, which included the word "WIMBLEDON" alongside a tennis racquet device and the letter "W", was capable of distinguishing the applicant's goods, and therefore the opposition under section 41 was unsuccessful. Similarly, the opposition under section 61(1)(a) failed as there was no evidence that the word "WIMBLEDON" indicated a particular quality or characteristic of watches and clocks attributable to that geographical origin. The delegate also found that the applicant's mark was neither substantially identical nor deceptively similar to the opponent's registered trade marks under section 44, noting significant visual and aural differences. However, the delegate found that the opponent had established a substantial reputation in Australia for the word "WIMBLEDON" as a trade mark, particularly in relation to the organisation of the tennis championships and the marketing of associated merchandise. Despite the applicant's goods being watches and clocks, the delegate considered that these fell within the category of souvenir goods that the public might expect the opponent to market, and that the use of the applicant's mark was likely to deceive or cause confusion due to this reputation.

Consequently, the delegate upheld the opposition under section 60 of the Act, and the applicant's trade mark application was rejected.