FremantleMedia Ltd & 19 TV Ltd v Zhidi Liu

FremantleMedia Ltd and 19 TV Ltd (the opponent) opposed the registration of trade mark application 1193217 by Zhidi Liu. The opposition was based on several grounds, but the Hearing Officer, Alison Windsor, ultimately decided the matter solely on the ground provided for under section 60 of the relevant Act. The opponent's evidence, primarily a statutory declaration from Steven Rosser, Director of Legal and Business Affairs for FremantleMedia Australia Pty Ltd, detailed the extensive use and promotion of the "Australian Idol" television series and its associated trade marks since 2003. This included evidence of the global success of the "Pop Idol" format, its adoption in over 38 countries, and the opponent's registration of numerous "idol" trade marks worldwide.

The legal issue before the Hearing Officer was whether the opponent had established a valid ground for opposing the registration of the applicant's trade mark. Specifically, the decision focused on the ground under section 60 of the Act, which concerns the use of trade marks in a way that is likely to deceive or cause confusion. The opponent argued that its extensive use of "Australian Idol" and other "idol" trade marks in relation to a popular television singing competition and associated merchandising had created a strong association in the public mind, and that the applicant's mark would likely cause confusion.

The Hearing Officer found that the evidence presented by the opponent sufficiently supported the ground of opposition under section 60. The extensive use of the "Australian Idol" trade mark, its association with a well-known television format, and the global adoption of similar "idol" trade marks by the opponent and its related entities, demonstrated a significant level of public recognition and association. This evidence led the Hearing Officer to conclude that the applicant's proposed trade mark would likely lead to deception or confusion among consumers.

Consequently, the Hearing Officer ruled that the opponent had successfully established a ground of opposition. As a result, the trade mark application 1193217 was refused registration. The opponent was also awarded costs against the applicant, to be assessed according to the official scale.