Sitmar Cruises Ltd v Carnival Cruise Lines Inc

This matter concerned an opposition by Carnival Cruise Lines Inc. (the opponent) to six trade mark applications made by Sitmar Cruises Ltd (the applicant). The applications sought registration for marks including "SITMAR'S FUNSHIP" and "FAIRSTAR THE FUNSHIP" for services related to ship cruises. The opponent contended that it was the first user of the mark "FUNSHIP" in Australia in relation to similar services and that the applicant was not entitled to be considered the proprietor of the mark under section 40 of the relevant Act. The opponent also argued that the applicant's use of "Funship" was merely a laudatory slogan and inherently non-distinctive, and that its use would lead to deception and confusion under section 28.

The delegate was required to determine whether the opponent had acquired proprietorship of the mark "FUNSHIP" in Australia through prior use, and whether the applicant's proposed use of its marks would be reasonably likely to cause deception and confusion amongst a substantial number of persons, having regard to any reputation acquired by the opponent's mark. The delegate also considered the nature of "use" required to establish proprietorship under the Act, particularly in relation to services provided overseas but advertised and booked in Australia.

The delegate reasoned that for a trade mark to acquire proprietorship in Australia, there must be use of the mark in Australia in relation to services provided in Australia. While the opponent had advertised its cruises and received bookings in Australia, all its cruises originated from North American ports and were consumed overseas. Drawing on established principles and analogous decisions, the delegate concluded that this did not constitute use in the sense required by the Act to establish proprietorship in Australia, as the services themselves were not performed within the country. Furthermore, the delegate found that as at the relevant dates of application, the opponent's reputation in Australia was insufficient to establish that the applicant's marks would be reasonably likely to cause deception and confusion.

Consequently, the opposition was dismissed. The delegate found that the opponent had not established proprietorship through prior use and lacked the necessary reputation to displace the applicant's rights under section 28. The delegate directed that the applications proceed to registration and awarded costs to the applicant.