Steven Logan v Matthew James Coulter

This matter concerns an opposition lodged by Matthew James Coulter against the registration of Trade Mark application number 581639 by Steven Logan. The applicant sought registration for a mark comprising four cartoon characters and the words "AUSSIE TEAM" for services including "education, providing of training, entertainment". The opponent based his opposition on grounds of deceptive similarity to his own mark, lack of intention to use the mark by the applicant, and prior use of his mark.

The delegate of the Registrar of Trade Marks was required to determine whether the applicant's mark was deceptively similar to the opponent's mark, whether the applicant lacked a bona fide intention to use the mark, and whether the opponent had established proprietorship of a mark through prior use that would preclude the applicant's registration. The delegate also considered the applicant's claim of copyright protection as a basis for proprietorship.

Regarding deceptive similarity, the delegate noted that while claimed in the opposition, no submissions were made at the hearing. Furthermore, even if similarity existed, the applicant's mark had an earlier lodgment date, thus not contravening section 33(2) of the Act. The ground of lack of intention to use was dismissed, as the onus rested on the opponent to prove absence of intention, and the applicant's statement of intended use, accompanied by the application itself, constituted prima facie evidence of such intention. The delegate also noted that the question of copyright subsistence was outside the Registrar's jurisdiction.

On the issue of prior use, the delegate found that while the opponent had provided evidence of using the mark "THE KANGAROO KID" in various entertainment contexts since 1989, the marks themselves were not substantially identical. The applicant's mark featured multiple characters and the words "AUSSIE TEAM" prominently, with only "KANGAROO KID" being a common element. Applying the criteria for comparing marks, the delegate concluded that the marks would be perceived as different by users. Consequently, the opponent's claim to proprietorship through prior use was unsuccessful, and the opposition was dismissed on all grounds.