Museums Board of Victoria v Maryann Martinek

This matter concerned ten opposed trade mark applications heard by Michael Kirov, acting as delegate of the Registrar of Trade Marks. The Opponent, the Museums Board of Victoria, opposed the applications made by Maryann Martinek for trade marks including "SAM THE KOALA" in relation to various goods and services. The Opponent primarily pressed grounds of opposition based on sections 41, 42(b), and 43 of the *Trade Marks Act 1995* (Cth), though only the grounds under sections 41 and 43 were ultimately considered. The Applicant did not appear at the hearing or file written submissions.

The court was required to determine whether the proposed trade marks were sufficiently adapted to distinguish the applicant's goods and services from those of other traders under section 41, and whether their use would be likely to deceive or cause confusion due to connotations associated with the mark under section 43. The relevant date for assessing the applicant's rights was the filing date of the earliest application, 13 March 2009.

In relation to section 41, the court found that the applicant had not provided sufficient evidence of inherent distinctiveness or of actual or intended future use that would demonstrate the trade marks' ability to distinguish the designated goods and services. Consequently, the opposition ground under section 41 was established. Regarding section 43, the court accepted the Opponent's argument that the name "Sam the Koala" had become widely known and associated with a particular koala, its rescue story, and various volunteer and government organisations. The court reasoned that the use of "Sam the Koala" in relation to the applied-for goods and services was likely to deceive or cause confusion by implying an affiliation, sponsorship, or approval that did not exist, drawing on precedent concerning "famous names" and implied sponsorship.

Accordingly, the Registrar refused to register the ten opposed trade mark applications. The Registrar also awarded costs against the Applicant in favour of the Opponent.