NBA Properties Inc. V. Kris

NBA Properties Inc. v. Kris John Gaunt

Factual Summary

Kris John Gaunt (Defendant) filed Trade Mark application (number 728289) with the Australian Registrar of Trade Marks on 20 February 1997. Defendant sought registration of "a cartoonlike representation of a dinosaur stepping past a circular device and holding a pizza in its left paw. The words RAPTOR PIZZA boldly feature and surround the dinosaur character." The mark is strikingly similar to the logo of the Toronto Raptors basketball team, whose logo and merchandizing rights are owned by NBA Properties, Inc. (Plaintiff). Plaintiff filed a timely notice to oppose registration. The grounds of opposition allege:

Defendant's trade mark violates of section 42 of the Trade Marks Act 1995,

regulating copyrights;

Plaintiff, and not Defendant, owns the application mark pursuant to section 58 of the Act; and

Use of the application mark would be likely to cause deception and confusion as defined in section 60 of the Act and that Plaintiff has a reputation in this trade mark.

Plaintiff filed a single declaration in support of its opposition and was represented by local counsel at the hearing. Defendant had filed no evidence in support of his application and was not present or represented at the hearing.

Issues Before The Court

Plaintiff's opposition contends three violations of the Act which separately and collectively warrant rejection of Defendant's application. These alleged violations form the bases for the issues.

Issue 1: Violation of Section 42 (Copyright) of the Trade Marks Act 1995

Issue 1a. Under section 1263 of the Copyright Act 1968, does a copyright presume to subsist in work if the defendant does not put in issue the subsistence of the copyright. If so, under section 184 of the Copyright Act 1968 (as well as regulation 4 of the Copyright

International Protection Regulations which requires the Australian Copyright Act to find that, for purposes of litigation, works first published in the U.S.A. are to be treated as if they were first made and published in Australia), is plaintiff presumed to be the owner of the copyright pursuant to section 42 of the Trade Marks Act 1995 if s/he claims to be the owner and the defendant does not dispute that claim?

Issue 1b. If both of the above are answered in the affirmative does this confer upon the Registrar jurisdiction to determine that defendant's application should be rejected based on this section?

Issue 2: Violation of Section 58 (Ownership) of the Trade Marks Act 1995

Issue 2a. Under Section 58 of the Trade Marks Act 1995, is an applicant precluded from claiming proprietorship of a trade mark if that claim depends on a breach of the law, to wit: the defendant's mark is a copy of the mark previously created and owned by defendant.

Issue 2b. Further, does the failure of the applicant to respond to the allegation of breach require that the Registrar find that the applicant has no proper claim.

Issue 3: Section 60 (Prior Reputation) of the Trade Marks Act 1995

Is the Defendant's trade mark substantially identical with, or deceptively similar to, Plaintiff's trade mark, and likely to deceive or cause confusion because of the reputation of Plaintiff's trade mark, in violation of Section 60 of the Trade Marks Act 1995?

Court's Decision And Rationale

The registrar ruled against Defendant on Issues 1 and 2 for lack of proper jurisdiction. The Registrar ruled in Plaintiff's favor on Issue 3 (Prior Reputation) and accordingly, denied Defendant's trademark application.

In denying Plaintiff's first two grounds for opposition, the Registrar held that she did not have competent jurisdiction to decide matters of copyright infringement. Therefore questions under sections 52, 126 and 184 of the Copyright Act or to determine the operation and effect of regulation 4 of the Copyright International Protection Regulations also lie outside the jurisdiction of the Registrar. Because the Registrar does not have the jurisdiction to rule on the issue of copyright and ownership, there is no discussion as to the actual merits of Plaintiff's claims.

In affirming Plaintiff's objections to the application on the grounds of Prior Reputation, the registrar found that the two marks were substantially identical and that Plaintiff offered compelling evidence of prior reputation in its mark prior to the application priority date in Defendant's mark.

Specifically, the Registrar finds that the marks so resemble each other, that "without a careful side by side comparison, one is likely to be mistaken for the other…They clearly agree in the central and essential features…and the overall construction or design." While there are numerous differences in the marks, the Registrar concludes that these offer "very little practical help in differentiating marks which hold so much spectacular graphic and textual material in common."

The Registrar further determined that Plaintiff's mark did have a prior reputation and Defendant's mark was likely to cause people to wonder whether this mark indicates sponsorship, or a franchise arrangement, or some other trade connection, with Plaintiff. As there is no trade connection between the two, the applicant's mark violates Section 60 of the Copyright Act 1995. The registrar relied on evidence submitted on behalf of Plaintiff which showed a significant and ongoing marketing presence in Australia by Plaintiff pre-dating the priority date of the application.

Standards Relied On And Established