Kris John Gaunt v NBA Properties, Inc

This matter concerned an opposition by NBA Properties, Inc. to an application by Kris John Gaunt for the registration of trade mark number 728289. The application sought registration for pizza products in class 30, featuring a cartoon dinosaur holding a pizza, with the words "raptor pizza" prominently displayed. NBA Properties opposed the registration on several grounds, including alleged violation of copyright, that Mr Gaunt was not the owner of the mark, and that the use of the mark would be likely to cause deception and confusion due to NBA Properties' prior reputation in a similar trade mark. The hearing took place before a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the proposed trade mark infringed NBA Properties' copyright, whether Mr Gaunt was the rightful owner of the mark, and crucially, whether the proposed mark was substantially identical with or deceptively similar to a trade mark that had acquired a reputation in Australia prior to the application's priority date, such that its use would be likely to deceive or cause confusion under section 60 of the *Trade Marks Act 1995*. NBA Properties also argued that Mr Gaunt's claim to proprietorship was invalid if it depended on a breach of law, specifically copyright.

The delegate determined that it was outside the Registrar's competence to rule on copyright matters, including the interpretation of provisions of the *Copyright Act 1968* or the *Copyright International Protection Regulations*. Consequently, the opposition could not succeed on the grounds of copyright violation or ownership derived from copyright. However, regarding the section 60 ground, the delegate found that the applicant's proposed mark, the "pizza raptor mark," was substantially identical to NBA Properties' "basketball raptor mark." The delegate reasoned that despite minor differences, the essential features, including a cartoon dinosaur and the word "raptor," were common to both marks. Furthermore, evidence demonstrated that NBA Properties had established a significant reputation in Australia through extensive merchandising of its "raptors" team logo and associated products prior to the application's priority date. Applying contemporary commercial understanding of product endorsement and sponsorship, the delegate concluded that the use of the "pizza raptor mark" on pizza products would be likely to deceive or cause confusion, leading the public to believe there was an association or authorisation by NBA Properties.

Accordingly, the delegate found that the opposition succeeded on the ground of section 60 of the *Trade Marks Act 1995*. The registration of trade mark application number 728289 was refused. NBA Properties, as the successful party, was awarded costs, to be taxed and certified by a trade marks officer.