Natural Paper Pty Limited v Spastic Center of the New South Wales and the New South Wales Society for Children and Young Adults with Physical Disabilities

This matter concerns an opposition by the Spastic Centre of New South Wales and the New South Wales Society for Children and Young Adults with Physical Disabilities to the registration of Trade Mark application number 567570 by Natural Paper Pty Limited. The application sought registration for the mark "BUSH BABY" in respect of clothing, footwear, and headgear. The opposition was based on several grounds, including non-use or intention to use by the applicant, claims of proprietorship, and the likelihood of deception or confusion due to the mark's similarity to the well-known works of May Gibbs, particularly her "Bush Babies" characters.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the applicant had established proprietorship of the mark, whether the opponents had substantiated their claims of non-use or lack of intention to use by the applicant, and whether the proposed registration was likely to deceive or cause confusion under section 28(a) of the relevant Act, or otherwise be disentitled to protection in a court of justice under section 28(d). The delegate also considered whether the marks were substantially identical or deceptively similar.

In determining the issue of proprietorship and use, the delegate noted that the applicant's statement of intention to use the mark was prima facie evidence, and the opponents had failed to displace this claim or prove non-use. Regarding the likelihood of deception or confusion, the delegate considered the extensive evidence presented by the opponents concerning the May Gibbs characters and their association with the term "Bush Babies." However, the delegate found that while the "Bush Babies" characters were well-known, the applicant's mark, which included the words "WE LOVE ANIMALS" and was presented in a specific oval design, was sufficiently distinct from the May Gibbs publications and licensed products. Crucially, the delegate found no clear evidence that, as of the application date, a substantial number of people would be caused to wonder if the applicant's goods originated from the same source as the opponents' licensed products, nor was there evidence to support the claim that the mark was otherwise disentitled to protection in a court of justice.

Consequently, the delegate found against the opponents on all grounds of opposition. The opposition was dismissed, and the applicant was awarded costs.