Wiley Publishing Inc v Moondance Pictures Pty Ltd

This decision concerns an application by Wiley Publishing Inc. to register a trade mark, opposed by Moondance Pictures Pty Ltd. The dispute centred on whether Wiley's proposed trade mark, a device, would be likely to deceive or cause confusion under section 60 of the *Trade Marks Act 1995* (Cth). The matter was heard by Terry Williams, a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was to determine if the use of Wiley's device as a trade mark, in its own right and absent its association with the "…For Dummies" series, would be likely to deceive or cause confusion among consumers. This required an assessment of the reputation of the device as a trade mark, distinct from its role as a feature of specific book series.

The Hearing Officer found that while the device had been used extensively, much of this use was in conjunction with the "…For Dummies" branding. He was not satisfied that the device possessed a reputation independent of this context, nor that its normal and fair use absent such context would lead to deception or confusion. Consequently, the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any appeal. Wiley was ordered to pay the applicant's costs.