Champion swimmer blows THORPEDO opposition out of the water

Australia

In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited, the Federal Court of Australia has dismissed the claimant's opposition to the registration of THORPEDO by a company owned by the parents of Ian Thorpe - a swimmer nicknamed 'Thorpedo'.

Thorpedo Enterprises applied to register Thorpe's nickname as a trademark. The registration was opposed by Torpedoes Sportswear - the owner of earlier registrations for the marks PARADISE LEGENDS TORPEDOES and TORPEDOES and T device for swimwear - on the grounds that it was confusingly similar to its marks. The registrar of trademarks dismissed the opposition and Torpedoes Sportswear appealed.

The Federal Court dismissed the appeal, concluding that the opponent had not established a likelihood of confusion arising from use of the THORPEDO trademark. It rejected Torpedoes Sportswear's argument of 'reverse confusion' - that is, that registration should be refused because the earlier registered mark might be confused with a later mark (here, THORPEDO) rather than the later mark being confused with the earlier mark. The court was of the view that the provisions of the Trademarks Act 1995 relating to confusion arising from the concurrent use of two marks do not require refusal of registration in such circumstances.

An interesting issue was the argument over whether Thorpe's company was the true proprietor of the THORPEDO trademark, given that the press coined the name. The court resolved this by stating that although Thorpe's company did not invent the word, it was his company that first (i) entered into an agreement permitting the use of THORPEDO as a trademark, and (ii) applied to register THORPEDO.

Perhaps the most important aspect of the case was the extent of the onus imposed on Torpedoes Sportswear to establish its case. It is nothing new to say that the opponent usually bears this responsibility. However, following the THORPEDO decision, the opponent has to establish that the mark should "clearly not be registered". In this regard, it was important to the final decision that there was no evidence establishing Torpedoes Sportswear's arguments that the visual and phonetic similarities, similarities in ideas, market circumstances and prior reputation would result in the likelihood of confusion. While in some previous decisions, courts have considered evidence on such subjective issues to be of limited weight, the THORPEDO Case indicates that it is of importance.

It is arguable whether the case raises the bar too high and may deter opponents with valid claims. Nevertheless, as the court noted, each case turns on its particular facts and in the present case the facts that Thorpe has a reputation in the nickname 'Thorpedo' and is a very famous sports star were of importance.

Sean McManis, Baldwin Shelston Waters, Sydney

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