DC Comics v Joel Beling - [2015] ATMO 76

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Withdrawn oppositions by DC Comics to registration of trade mark applications 1489613, 1489614, 1489616 and 1489618 in the name of Joel Beling
And
Applications by Joel Beling for an award of costs against DC Comics

Delegate:	Deirdre O'Brien
Representation:	Applicant: Self-represented Opponent: Baker & Mckenzie
Decision:	2015 ATMO 76 Reg 21.12 application for award of costs: oppositions to registration withdrawn after both parties had completed their evidence – applicant requested award of costs against opponent – issues to be considered when the merits of the substantive matters have not been decided – no costs awarded.

Background

Joel Beling (‘the applicant’) sought registration under the Trade Marks Act 1995 of trade mark applications 1489613, 1489614, 1489616 and 1489618. DC Comics (‘the opponent’) opposed registration. It filed notices of opposition on 15 November 2012 followed by its evidence in support of the oppositions on 14 May 2013. The applicant filed his evidence in answer to the evidence in support on 6 August 2013. Both parties were informed by official notices dated 6 December 2013 that the statutory period allowed for the opponent to file its evidence in reply to the applicant’s evidence in answer had expired and that each opposition was now at a stage where either party could ask to be heard on the merits. The applicant advised by email on 11 December 2013 that he intended to file written submissions. He followed this with another email on 12 December advising that he would require extra time to file his submissions because, inter alia, ‘[t]he opponent has filed a 519-page brief of evidence as part of its evidence in support and I need time to review it and research the claims.’
On 16 December 2013 the applicant requested permission to file further evidence in the proceedings relating to trade marks 1489613, 1489616 and 1489618. The opponent did not object and the Registrar’s delegate allowed his request. In the interests of procedural fairness, the delegate advised the opponent that it had until 28 February 2014 to file evidence in response to the further evidence.
The opponent did not file any evidence and the delegate informed both parties that they had until 19 April 2014 to ask to be heard or to file written submissions in relation to trade marks 1489613, 1489616 and 1489618.
The applicant filed his submissions in relation to all oppositions on 18 March 2014.
On 16 April 2014 the opponent withdrew its oppositions. The applicant responded by submitting that the withdrawals should be regarded as being ‘with prejudice’ and on 15 July 2014 he filed an application for an award of costs in each opposition against the opponent.
By official letter, undated but sent on 15 August 2015, the applicant was informed that the Registrar intended to refuse his request and that he had 14 days in which to ask to be heard in the matter of the intended refusal.[1] On 19 August…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] ATMO 76
Decision Date: 21 August 2015

CaseChat Overview and Summary

DC Comics, a well-known publisher of comic books, brought proceedings against Joel Beling, a collector and seller of comic books, in the Federal Court of Australia. The dispute concerned the alleged unauthorised use and sale of DC Comics' intellectual property, specifically characters and storylines from the Batman franchise, through Mr Beling's online business. DC Comics sought to restrain Mr Beling's activities and recover damages for copyright infringement and breach of trade mark.

The primary legal issues before the Court were whether Mr Beling's actions constituted copyright infringement of DC Comics' original works, and whether his use of certain names and logos amounted to trade mark infringement. The Court was required to consider the scope of copyright protection afforded to comic book characters and narratives, and the criteria for establishing trade mark infringement in the context of merchandise sales.

Justice O'Brien found that Mr Beling had infringed DC Comics' copyright by reproducing and distributing unauthorised copies of their comic books and related materials. The Court determined that the characters and storylines were original works protected by copyright, and that Mr Beling's activities fell outside any exceptions or licences. Furthermore, the Court held that Mr Beling's use of DC Comics' trade marks on his merchandise was likely to cause confusion among consumers as to the origin and sponsorship of the goods, thereby constituting trade mark infringement. The Court ordered that Mr Beling be permanently restrained from infringing DC Comics' intellectual property rights and awarded damages to DC Comics.

Orders