Universal City Studios LLC v Philip Gorecki

Universal City Studios LLC (the Opponent) opposed the registration of two trade marks, a Word Trade Mark and a Logo Trade Mark, by Philip Gorecki (the Applicant). The dispute concerned whether the Applicant's trade marks should be registered, with the Opponent arguing on grounds including section 42(b), 60, and 62A of the *Trade Marks Act 1995* (Cth). The decision was made by Adrian Richards.

The court was required to determine whether the Opponent had established any of the grounds of opposition. Specifically, the Opponent contended that the registration of the Applicant's trade marks should be refused because another trade mark had acquired a reputation in Australia prior to the priority dates of the Applicant's trade marks, and that the use of the Applicant's trade marks would be likely to deceive or cause confusion due to this reputation, pursuant to section 60 of the Act. The Opponent also relied on grounds under sections 42(b) and 62A. The onus was on the Opponent to establish these grounds on the balance of probabilities.

The court found that the Opponent had failed to make out any of the grounds of opposition. The evidence presented by the Opponent, primarily concerning the film *National Lampoon's Animal House*, did not sufficiently demonstrate that the Applicant's trade marks would be likely to deceive or cause confusion. Consequently, the court decided to register the trade marks.

The applications for both the Logo Trade Mark and the Word Trade Mark were permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The court awarded costs against the Opponent in relation to the Logo Trade Mark, and awarded reduced costs against the Opponent at 20% of the official scale in relation to the Word Trade Mark.