Lucasfilm Ltd LLC v Stephen Muller - [2018] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Lucasfilm Ltd LLC to registration of trade mark application 1723562(32) - theforceawakens - in the name of Stephen Muller.

Delegate:	M. Cooper
Representation:	Opponent: Written submissions from Shelston IP Applicant: Written submissions from Applicant
Decision:	2018 ATMO 13 Opposition under s.52 of the Trade Marks Act 1995: s.43 considered – use of the opposed trade mark likely to deceive or cause confusion because of connotation - registration refused

Background

This matter concerns an opposition by Lucasfilm Ltd. LLC (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Stephen Muller (‘the Applicant’):
Application Number: 1723562
Trade Mark: theforceawakens (‘the Trade Mark’)
Filing Date: 29 September 2015
Specification of Goods:
Class 32: Aerated beverages (non-alcoholic); Alcohol free beverages; Beverages consisting of a blend of fruit and vegetable juices; Beverages containing not more than 1.15% (by volume) of alcohol; Beverages made from fruit concentrates; Coconut milk (beverages); Edible essences for making beverages; Electrolyte replacement beverages for general and sports purposes; Essences for making beverages; Extracts of vegetables (beverages); Fruit beverages; Fruit concentrates for making beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice extracts (beverages or for making beverages); Fruit juice nectar (beverages or for making beverages); Fruit syrup (beverages or for making beverages); Grain based non-alcoholic beverages; Hop concentrates for use in the preparation of beverages; Hop essences for use in the preparation of beverages; Hop extracts for use in the preparation of beverages; Isotonic beverages; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Malt based preparations for making beverages; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Mineral water (beverages); Non-alcoholic barley based beverages; Non-alcoholic beverages (except non-alcoholic beer); Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Preparations for making beverages; Seltzers (beverages); Sherbets (beverages); Sorbets (beverages); Soya based beverages (not being dairy substitutes); Soya-based beverages, other than milk substitutes; Spring water (beverages), other than for medical purposes; Squashes (non-alcoholic beverages); Syrup for making beverages; Syrup powder for beverages; Syrups for beverages; Tisanes (non-medicated beverages and other than tea based); Tonic water (non-medicated beverages); Tropical fruit squash (beverages); Vegetable extracts (beverages); Vegetable juice concentrates (beverages); Vegetable juices (beverages); Waters (beverages); Whey beverages
The Trade Mark was examined and advertised as accepted for possible registration on 25 February 2016 in the Australian Official Journal of Trade Marks.
On 22 April 2016, Lucasfilm Ltd. LLC (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. On 20 May 2016, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42, 43, 58, 59, 60 and 62A of the Act.
A Notice of Intention to Defend was received from the Applicant on 4 July 2016.
Evidence in…

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.

Keep reading for free

Create a free CaseChat account to read Lucasfilm Ltd LLC v Stephen Muller and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2018] ATMO 13
Decision Date: 2 February 2018

CaseChat Overview and Summary

Lucasfilm Ltd LLC (the Opponent) opposed the registration of a trade mark application by Stephen Muller (the Applicant) before the Registrar of Trade Marks. The dispute concerned the registrability of the Applicant's trade mark.

The primary legal issue before the Registrar was whether to register the Applicant's trade mark, having regard to the grounds on which the application was opposed. The Registrar was required to decide whether any of these grounds had been established to the extent that registration should be refused.

The Registrar's decision was guided by section 55 of the *Trade Marks Act 1995* (Cth). This section mandates that the Registrar must decide to refuse or register a trade mark application, considering any established grounds of opposition. In this instance, the Registrar found that the grounds of opposition had been established, leading to the refusal of the application. The Registrar also awarded costs against the Applicant in favour of the Opponent, to be assessed according to Schedule 8 of the *Trade Mark Regulations 1995* (Cth).

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Section 55 of the Act relevantly provides:Decision(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.Note: For limitations see section 6. Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1723562. The Opponent has requested its costs and I accordingly award costs against the Applicant at the scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.