Last waltz for Winton opposition


In Lomas v Winton Shire Council, the Full Court of the Federal Court has reversed a first instance decision, and therefore allowed the registration of the words 'Waltzing Matilda' as a service mark in relation to food outlets. The decision is a reminder that a clear intention to use is a key factor in determining prior ownership of a mark.

Brenda Lomas filed an application to register the phrase 'Waltzing Matilda' - the title of a popular Queensland song - as a service mark in relation to food outlets. Winton Shire Council opposed the application on the grounds that it had secured prior ownership of the mark in relation to the same services by using 'Waltzing Matilda' once in an advertisement. The trademark registrar rejected Winton Council's argument, finding that a single advertisement does not constitute use of a mark. The opposition was therefore rejected. Winton Council appealed to the Federal Court.

A single judge at the Federal Court reversed the registrar's decision. It considered the following:
  • The mark used by Winton Council in the advertisement was identical to the one Lomas was seeking to register;

  • The publication of the advertisement was evidence of "an existing intention to offer or supply [services] bearing the mark in trade"; and

  • The services of that prior use were the same as those in Lomas's application.

The judge concluded that Winton Council was therefore the owner of the mark and thus, opposition should succeed. Lomas appealed to the Full Court.

The Full Court found that the evidence showed that Winton Council had lacked consistency in using 'Waltzing Matilda' in relation to food outlets and that it had failed to show that it intended to use the mark in that context. The court therefore concluded that Winton Council should not be permitted to claim prior ownership of the mark nor oppose Lomas's registration.

Stephen Stern and Roanne Demenezes, Corrs Chambers Westgarth, Melbourne

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