In a decision of June 23, 2016, Australian airline Qantas failed on appeal to the Federal Court of Australia in its opposition to a Class 25 device mark featuring a kangaroo. Qantas Airways Limited v. Edwards
 FCA 729 (23 June 2016).
The respondent, Mr. Edwards, sought registration of the following T-shirt logo with respect to “clothing; footwear; headwear; shirts; t-shirts” in Class 25:
The appellant, Qantas Airways Limited, unsuccessfully opposed the registration of the T-shirt logo before the Australian Trade Marks Office.
On appeal, Qantas argued that the T-shirt logo was deceptively similar to its prior registration for the following 1984 tail fin logo:
The 1984 tail fin logo was registered for (among other things) “advertising, marketing and merchandising services” in Class 35. Qantas argued these services were closely related to the applied-for goods.
Mr. Justice Yates (Yates J) held that “clothing; footwear; headwear; shirts; t-shirts” were not closely related to “advertising, marketing and merchandising services.” While accepting that clothing and headgear are typically used as promotional items, Yates J stated that the respondent’s goods “are no more and no less related to ‘advertising, marketing and merchandising services’ than any other goods or services that can be advertised, marketed or merchandised,” which could be limitless. He contrasted the case with one involving a more specific claim for services related to particular goods, such as television repair services and televisions.
Yates J also considered the marks were not deceptively similar. While accepting that the stylized kangaroo was a prominent element of each mark, he emphasized that the contrasting triangular element of the 1984 triangle logo and the T-shirt-shaped outline of the T-Shirt logo were also important aspects of the respective marks, which provided memorable context to the kangaroo elements. These were considered significant points of distinction.
Qantas argued that it had, at the priority date, a significant reputation in the following logos such that the use of the T-shirt logo would be likely to deceive or cause confusion:
(1984 tail fin logo) (1984 kangaroo logo)
(2007 tail fin logo) (2007 kangaroo logo)
Qantas had first adopted a kangaroo device as part of its branding in 1944. Qantas’s core services are air transportation services, but the 1984 and 2007 marks had been used in relation to a range of other services, ancillary products, merchandise, and sponsorship activities.
Yates J was satisfied that the 1984 triangle logo and the 2007 triangle logo would have been recognized by a substantial number of ordinary members of the public as denoting Qantas’s airline services at the priority date. He was less certain about the recognition of the 1984 kangaroo logo and the 2007 kangaroo logo.
Absent a finding of deceptive similarity, Yates J was not satisfied that the use of the opposed mark with respect to the respondent’s goods would have been likely to deceive or cause confusion.
His Honor considered that general consumer awareness of brand evolution and brand extension were not factors that had any significant role to play in the case, or that ordinary members of the public would have seen the T-shirt logo as a development of any of the 1984 or 2007 marks. Qantas’s evidence of use of its marks on promotional and sponsorship items was considered to be evidence of use for promotional or sponsorship purposes denoting the appellant as a supplier of airline services, and not trademark use in relation to the goods themselves.
Brand owners seeking to rely on a brand extension argument in future cases will likely need to show a clear connection between the core services of their business and the applicant’s goods or services. Applicants should also carefully consider their filing strategy with a view to relying on registrations for services against applications covering specific goods.
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