Gregory John Thompson v Mirage Studios

This matter concerns an opposition by Mirage Studios to the registration of two trade mark applications, numbers 542571 and 543311, filed by Gregory John Thompson. Application 542571 sought registration for sportswear and casual wear in class 25, while application 543311 sought registration for transportable swimming pools, surfboards, games, and sporting articles in class 28. The opposition was based on the claim that Mr. Thompson was not the proprietor of the marks.

The delegate was required to determine who was the proprietor of the trade marks in question, specifically whether Mr. Thompson had established proprietorship through use in Australia prior to the lodgement of his applications, and whether Mirage Studios had established prior use of the mark as a trade mark. The delegate also had to consider whether the use by Mirage Studios, if any, was as a trade mark or as part of a larger composite mark, and whether the goods for which Mr. Thompson sought registration were of the same description as those on which he could demonstrate use.

The delegate applied the common law principle that proprietorship of a trade mark is acquired by the first person to use it in Australia in connection with goods or services, indicating a connection in the course of trade. The delegate found that Mirage Studios had failed to demonstrate use of the word "COWABUNGA" as a trade mark, concluding that its use was subordinate to the "Teenage Mutant Ninja Turtles" branding and appeared as an exclamation or phrase rather than an indicator of origin. Conversely, Mr. Thompson provided evidence of using the mark "COWABUNGA" (and its earlier form "COWA BUNGA") on clothing and surfboards since 1982. Despite some inconsistencies in the evidence regarding the exact timing of the change from two words to one, and the lack of evidence for all goods listed in the applications, the delegate found that Mr. Thompson had discharged the onus of establishing proprietorship. This was supported by his intention to use the mark on all goods, which, coupled with authorship and application for registration, is sufficient to establish proprietorship for unused marks, particularly when the opponent has failed to displace this claim.

The delegate dismissed the opposition, finding that Mirage Studios had failed to displace Mr. Thompson's claim to proprietorship. Mr. Thompson was awarded costs.