TGI Friday's Inc v Weller Hotels & Taverns Pty Ltd

This matter concerned an opposition by Weller Hotels & Taverns Pty Ltd to three trade mark applications lodged by TGI Friday's Inc. The applications sought registration of the trade mark T.G.I. FRIDAY'S in relation to goods in Class 16 (paper, cardboard, printed matter, stationery), clothing in Class 25, and services in Class 42 (restaurant and alcoholic beverage bar services). The opposition was heard by a Delegate of the Registrar of Trade Marks.

The opponent based its opposition on several grounds, including claims of misleading or confusing use, infringement of rights, contravention of law or public interest, disentitlement to protection, lack of proprietorship, lack of distinctiveness, and a general submission that the Registrar ought to refuse registration. The opponent primarily relied on grounds under sections 40, 28, and 33 of the relevant Act, asserting that its prior use and reputation in the mark FRIDAYS, and its earlier filed applications for similar marks, should prevent the applicant's registration. The relevant date for assessing these claims was the filing date of the applicant's applications, 19 December 1985.

The Delegate first considered the ground under section 40 concerning proprietorship. The opponent argued it was the proprietor of the FRIDAYS mark due to earlier use, commencing as early as 1982 for planning, 1984 for a bar, and November 1985 for a complex. However, the Delegate found that for proprietorship to arise, the marks must be identical or substantially identical. Comparing the opponent's FRIDAYS mark with the applicant's T.G.I. FRIDAY'S mark, the Delegate concluded that the addition of "T.G.I." constituted a substantial alteration, meaning the marks were not substantially identical. Consequently, the opponent's claim to proprietorship under section 40 was unsuccessful.

Turning to section 33, which concerns deceptive similarity, the Delegate found that while the opponent's mark was not substantially identical to the applicant's, they were deceptively similar. The key issue then became whether the opponent's services, described as "discotheque" in its earlier applications, were of the same description or closely related to the applicant's goods and services. The Delegate determined that the opponent's discotheque services were not closely related to the applicant's Class 16 and 25 goods. However, regarding the applicant's "alcoholic beverage bar services," the Delegate found them to be of the same description as the opponent's discotheque services, as both involve the provision of alcoholic drinks and share similar uses and trade channels. Therefore, the opposition succeeded on this ground to the extent that application 438365 could not be registered for "alcoholic beverage bar services." The opposition was unsuccessful on the ground under section 28, as the Delegate was not satisfied that the opponent had established sufficient reputation by 19 December 1985 to cause deception or confusion. The Delegate ordered that application 438365 could proceed to registration for "restaurant services" if amended appropriately, and applications 438363 and 438364 were free to proceed. The applicant was awarded 80% of its costs.