Erbak-Uludag Mesrubatve Gida Sanayi Anonim Sirketi v Michael Rainbow and Yaser Yuksel

This matter concerned an opposition filed by Erbak-Uludag Mesrubatve Gida Sanayi Anonim Sirketi (the opponent) against the trade mark application no. 789859, filed by Michael Rainbow and Yaser Yuksel (the applicants), for the mark "ULUDAG SONDUR ATESINI AND DEVICE" in class 32, covering various beverages. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the applicants' trade mark application should be refused registration on several grounds, including that its use would be contrary to law under section 42 of the *Trade Marks Act 1995* (Cth), specifically alleging copyright infringement and contravention of the *Trade Practices Act 1974* (Cth). The delegate also considered whether the opponent was the owner of the trade mark under section 58 of the *Trade Marks Act 1995* (Cth), and whether the mark had acquired a reputation in Australia such that its use would be likely to deceive or cause confusion under section 60 of the *Trade Marks Act 1995* (Cth).

The delegate found that the opponent had established its case under section 42(b) of the *Trade Marks Act 1995* (Cth), reasoning that the fire extinguisher device within the applicants' mark was an original artistic work protected by copyright under the *Copyright Act 1968* (Cth), and that the opponent, as the owner of that copyright, had not authorised its use. Following the reasoning in *Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd*, the delegate concluded that use of the applicants' mark would therefore be contrary to law. The delegate also found the opposition successful on the grounds of ownership under section 58, noting substantial identity between the marks and prior commercial use by the opponent, and under section 60, finding that the opponent's trade marks had acquired a reputation in Australia such that the applicants' mark would likely cause deception or confusion.

Consequently, the delegate refused to register the trade mark application no. 789859. Costs were awarded against the applicants.