Blockbuster Entertainment Inc v Civic Video Pty Ltd

Civic Video Pty Ltd opposed two trade mark applications by Blockbuster Entertainment Inc. The applications sought to register the trade mark MAKE IT A BLOCKBUSTER NIGHT, TONIGHT for a range of services including video rental and entertainment, and for goods such as paper products and printed matter. The opposition was heard by a delegate of the Registrar of Trade Marks.

The opponent raised four grounds for opposition: that the mark was not capable of distinguishing the applicant's goods and services; that its use would be likely to deceive or cause confusion; that the applicant was not the owner of the mark; and that the mark was substantially identical with or deceptively similar to a trade mark that had acquired a reputation in Australia, such that its use would likely deceive or cause confusion. The opponent relied on its use of the trade mark MAKE IT A CIVIC VIDEO TONIGHT since 1993, often in conjunction with its primary trade mark, CIVIC VIDEO. The applicant relied on its extensive use of the BLOCKBUSTER VIDEO trade mark and the proposed mark in Australia since 1991 and 1995 respectively.

The delegate considered each ground of opposition. Regarding the capability of distinguishing, the delegate found that while the mark was not highly inherently adapted to distinguish, extensive use of the mark in conjunction with the BLOCKBUSTER VIDEO trade mark would lead it to distinguish the applicant's goods and services. On the ground of deception or confusion, the delegate concluded that common sense would prevent customers from assuming all videos offered were blockbusters, thus avoiding deception. The delegate found the marks MAKE IT A CIVIC VIDEO TONIGHT and MAKE IT A BLOCKBUSTER NIGHT, TONIGHT were not substantially identical or deceptively similar, noting the significant differences between "CIVIC VIDEO" and "BLOCKBUSTER" as the prominent elements.

The delegate dismissed all grounds of opposition. The delegate found that the applicant's trade mark was capable of distinguishing the applicant's goods and services, and that its use would not be likely to deceive or cause confusion. The delegate also found that the marks were not substantially identical or deceptively similar to the opponent's mark, and that the applicant was the owner of the mark. Consequently, the delegate allowed the applications to proceed to registration.