Swamp Productions Pty Ltd v D.C. Comics Inc

This decision concerns an opposition by D.C. Comics Inc. to the registration of two trade mark applications, numbers 470416 and 470417, by Swamp Productions Pty Ltd. Swamp Productions sought to register the word "SWAMP" for goods including paper, cardboard, stationery, and printed matter (application 470416), and for games and playthings (application 470417), with the latter application having an endorsement that it would only be used on games and playthings featuring characters from the "SWAMP" cartoon strip. D.C. Comics Inc. opposed these applications on several grounds, including proprietorship, distinctiveness, and similarity to an existing registered trade mark.

The delegate was required to determine whether D.C. Comics Inc. had established prior proprietorship of the mark "SWAMP THING" in Australia, whether the mark "SWAMP" was distinctive or capable of becoming distinctive for the goods in question, and whether application 470417 was deceptively similar to a registered trade mark, A283553, for "SWAMP FOX". The delegate considered evidence of use from both parties, noting the lack of firm evidence of first use and treating the statutory declarations at face value. Submissions focused on the distinctiveness of the word "SWAMP" as a common English word with direct descriptive reference to certain types of land and its potential use in various contexts, including literature, music, and fashion.

The delegate found that D.C. Comics Inc. had demonstrated prior use of "SWAMP THING" in Australia for comic books, which fell within the specification of application 470416. However, the delegate determined that games and playthings were not goods of the same description as comic books, thus D.C. Comics Inc. had not established prior rights in relation to application 470417. Regarding distinctiveness, the delegate concluded that while "SWAMP" had a direct reference to some printed matter, it was not descriptive of paper, cardboard, or stationery. The delegate found that the mark could proceed to registration for "printed matter being cartoon strips" under application 470416, as it was not a word other traders would need to use in good faith for cartoon strips. For application 470417, the delegate found "SWAMP" had no apt meaning for the normal description of games and playthings. However, the delegate found that application 470417 was barred under section 33 of the Trade Marks Act due to deceptive similarity to the registered mark "SWAMP FOX", and that there was insufficient evidence to support honest concurrent use under section 34.

Ultimately, the opposition was dismissed on the grounds of proprietorship for both applications. Application 470416 was allowed to proceed to registration for specific printed matter, namely cartoon strips, in addition to paper, cardboard, and stationery, subject to amendment within two months. Application 470417 was refused registration due to deceptive similarity to the registered mark "SWAMP FOX". Each party was directed to bear its own costs, as each had been partly successful.