Turner Entertainment Company v Yo-Merri Todd

Turner Entertainment Company (the opponent) sought to register the trade mark THE WIZARD OF OZ in Australia for a range of goods and services, including computer games, clothing, toys, and entertainment services. Yo-Merri Todd (the applicant) opposed this registration. The dispute concerned whether the opponent's proposed use of the trade mark would be misleading or deceptive under Australian consumer law, or otherwise contrary to law.

The court was required to determine whether the trade mark THE WIZARD OF OZ, when applied to the goods and services specified in the application, would be likely to mislead or deceive the Australian public. This involved considering the extent to which the mark had acquired a reputation in Australia and whether its use in relation to the proposed goods and services would create a false impression about their origin or endorsement. The court also had to consider the provisions of section 42 of the *Trade Marks Act 1995* (Cth), which mandates rejection of a trade mark application if its use would be contrary to law.

The court reasoned that the expression THE WIZARD OF OZ had permeated the Australian language to the extent that it connotes the well-known 1939 motion picture. It found that, by the priority date of the application, the opponent's trade mark had acquired a reputation in Australia in relation to various merchandise, including mouse pads, figurines, soft toys, drinking glasses, mugs, key rings, Christmas ornaments, dolls, and clothing, often sold in connection with a theme park. The court considered the child-oriented nature of the film's theme and how this was reflected in the marketing of associated goods. Applying principles from cases such as *Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd*, the court acknowledged that while registrars may face challenges in assessing legal questions, the threshold for refusal under section 42 is whether use "would" be contrary to law, not merely "could" be. The court also referred to section 52 of the *Trade Practices Act 1974* (Cth) concerning misleading or deceptive conduct.

The court concluded that the opponent's trade mark had a significant reputation in Australia and that its use in relation to the specified goods and services was likely to mislead or deceive the public into believing that these goods and services were endorsed by or associated with the well-known motion picture and its associated rights holders. Consequently, the court found that the use of the trade mark would be contrary to law under section 42 of the *Trade Marks Act 1995* (Cth) and section 52 of the *Trade Practices Act 1974* (Cth). The application for registration was therefore rejected.