Michael Hiscock & Others v Lee Wood & Others

This decision concerns an opposition filed by Michael Hiscock, Robert Hayes, and Jason Marler (the opponents) against the trade mark application number 741837, filed by Lee Wood, Larry Leach, and Craig Rodger (the applicants) for the mark MYRIAD across classes 9, 16, 25, and 41. The applicants sought to register the trade mark for apparatus for transmission or reproduction of sound or images, photographic and cinematographic apparatus, printed matter, photographs, stationery, clothing, footwear, headgear, and musical entertainment services provided by a rock band. The opposition was brought before a delegate of the Registrar of Trade Marks.

The opponents based their opposition on sections 59 and 60 of the Trade Marks Act. Section 59 concerns the applicant's intention to use the trade mark, while section 60 addresses situations where a trade mark is substantially identical or deceptively similar to a mark that has already acquired a reputation in Australia, and its use is likely to deceive or cause confusion. The core legal issues were whether the applicants intended to use the trade mark MYRIAD in Australia and whether the opponents had established a reputation in the mark MYRIAD prior to the applicants' filing date, such that the applicants' use would likely cause deception or confusion.

The delegate found that the opposition under section 59 failed, as the act of applying for a trade mark is prima facie evidence of an intention to use it, and the applicants' evidence, though minimal, suggested some use prior to application. However, the opposition succeeded under section 60. The opponents demonstrated use of the name MYRIAD as a rock band since at least 1995, including evidence of rehearsals, demo tapes, and winning a band competition in 1996, establishing a reputation in the music field before the applicants' filing date. The delegate considered that the existence of two rock bands named MYRIAD would likely cause confusion among music enthusiasts, as evidenced by a magazine article from 1998 noting this confusion.

Consequently, the delegate ordered that the trade mark application be refused in its entirety due to the success of the opposition under section 60 concerning classes 9 (apparatus for sound/images) and 41 (musical entertainment services). However, the applicants were given one month to amend their application by deleting these classes. If amended, the trade mark could be registered for the remaining goods in classes 16 (printed matter) and 25 (clothing).