Cowparade Holdings Corporation v Kelvin Bentley

Cowparade Holdings Corporation ("CHC") opposed the registration of Kelvin Bentley's trade mark application for "COWS ON PARADE" for various goods and services. CHC, an American company, had organised a similar event in Chicago in 1999. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine two main legal issues: whether the applicant's mark had acquired a prior conflicting reputation in Australia under section 60 of the *Trade Marks Act 1995* (Cth), and whether CHC was the owner of the mark under section 58 of the Act.

Regarding the section 60 claim, the delegate found that there was insufficient evidence of a reputation in Australia stemming from the Chicago event, or from Mr. Bolwell's domestic promotional activities. The delegate noted that while some Australians might have been aware of the Chicago event, there was no evidence that they perceived it as a proprietorial matter or that the use of the applicant's mark would likely deceive or cause confusion. The delegate also considered that the trade mark itself, "Cows on Parade," was not inherently distinctive, given the commonality of parades involving cattle and the existence of a prior event in Shepparton involving decorated cows. The delegate concluded that CHC had failed to establish a prior conflicting reputation in Australia.

On the section 58 ownership ground, the delegate found that while the marks "COWPARADE" (used by CHC) and "COWS ON PARADE" (sought by the applicant) were deceptively similar, they were not sufficiently close to support a claim of ownership by CHC to the exclusion of the applicant. The delegate noted that CHC's own promotional material for Australian events consistently referred to "CowParade" or "Cow Parade," drawing a distinction between its mark and the applicant's "Cows on Parade." The delegate also observed that the Brisbane City Council, aware of a potential conflict, was able to distinguish between the two entities' trade marks. Consequently, CHC failed to establish ownership of the mark in a manner that would preclude the applicant's registration. The delegate directed that the application proceed to registration and ordered CHC to pay the applicant's costs.