Maker of The Matrix fails in opposition to MATRIX EYEWEAR

Australia

In Time Warner Entertainment Company v Just Spectacles Pty Ltd, the registrar of trademarks has refused the plaintiff's opposition to the registration of MATRIX EYEWEAR. The plaintiff claimed that the mark was to be used for unauthorized spin-off merchandizing from its popular The Matrix series of films. The registrar disagreed, holding that it had failed to prove that the mark had a meaning other than its literal or dictionary meaning, or that confusion or deception would occur.

Just Spectacles, an Australian company, applied to register the mark MATRIX EYEWEAR for optical goods, including spectacles, sunglasses, lenses, frames and cases. Time Warner Entertainment opposed the registration. It has released a series of films under the name The Matrix. The films have been extremely successful around the world. The films' main characters frequently wear sleek black sunglasses and, according to Time Warner, the 'sunglasses look' in the promotional materials was a deliberate strategic point of identification, giving rise to an expectation by the public that it would manufacture and sell sunglasses under the Matrix name. It argued that Just Spectacles use of the MATRIX EYEWEAR mark constituted passing off and/or would cause confusion in the marketplace.

The registrar of trademarks rejected Time Warner's opposition. He found that Time Warner had failed to prove that use of the mark would result in passing off or misleading and deceptive conduct pursuant to the Trade Practices Act 1974. Although sunglasses were heavily featured in the films, the same could be said for many other films. The registrar also rejected Time Warner's argument that the primary connotation of the name Matrix is with its series of films. He noted that there are a number of meanings for the word 'matrix' in the dictionary and there was no evidence that consumers would first think of the series of films when they saw Just Spectacles's mark. Nor was there any evidence that Time Warner had produced its own Matrix brand of products. In addition, he held that there was no proof that Time Warner had used the title The Matrix as a trademark to indicate the trade origin of the films.

In some ways this decision can be criticized as it is perhaps stretching credulity to suggest that Just Spectacles chose the mark MATRIX EYEWEAR without any intention to piggyback on the goodwill attached to the series of films.

There are two lessons to take from this case: (i) if Time Warner had engaged in more aggressive merchandizing of products using a registered mark, it would have had a stronger base from which to oppose Just Spectacles's registration, and (ii) where there is no trademark in existence, and copyright cannot be relied upon, a mark owner must supply strong evidence of public confusion, and the connection between its sign and the disputed mark.

Julian Gyngell, Clayton Utz, Sydney

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