Name of television series can constitute trademark

The Australian Trademarks Office has dismissed the opposition filed by Home Box Office Inc (HBO), the distributor of the Sex and the City series, against the registration of the trademark SIX IN THE CITY.
Susan Stigwood Pty Ltd applied for the registration of the trademark SIX IN THE CITY in respect of the following services:
"Personal and social services meeting the needs of individuals, services of providing dining experiences and/or organizing dinners, personal introduction agencies, services to expand the social life of individuals, services that promote ways of meeting people, services that assist individuals to organize life, and socializing services."
HBO opposed the application on several grounds. The first ground of opposition was that SIX IN THE CITY was incapable of distinguishing the services at issue as it was descriptive of "six people socializing in the city". The hearings officer rejected this ground of opposition, stating that:
  • the trademark was not directly descriptive; and
  • 'six in the city' was not a phrase that other traders would need to use without improper motive.
The second ground of opposition relied upon was that the trademark was likely to deceive or cause confusion among consumers. HBO argued that SIX IN THE CITY so closely resembled Sex and the City that use of the SIX IN THE CITY trademark would give rise to the necessary misleading connotation (ie, some form of connection or affiliation with HBO). It argued that one of the main themes of the Sex and the City series was dating; therefore, if the SIX IN THE CITY trademark was used for personal services, people would assume that there was a connection between these services and the Sex and the City series. Moreover, the risk of confusion was increased as the SIX IN THE CITY mark "virtually reproduced the framework of [HBO]'s trademark in exactly the same number of words and using virtually identical lettering". 
The hearings officer accepted that:
  • the Sex and the City series was well known in Australia;
  • viewers would be aware that the series dealt with singles dating in the city; and
  • the audience for the television series would be the same as the demographic seeking the personal services offered by Susan Stigwood. 
However, the hearings officer did not believe that people would connect the two parties as there was no evidence that the SEX AND THE CITY trademark was being franchised (or was likely to be franchised) in relation to personal services. In addition, the trademarks themselves did not suggest a nexus, as the words 'in the city' are common in every day use, and the words 'six' and 'sex' are different. Therefore, this ground of opposition failed.
HBO also failed in its remaining grounds of opposition as the hearings officer maintained the view that there was no "significant risk of confusion" resulting from the coexistence of the SEX AND THE CITY and SIX IN THE CITY trademarks. However, most importantly, the hearings officer acknowledged that use of the words 'sex and the city', being the name of an ongoing series of television programmes, constituted use of a trademark.
For the sake of completeness, the hearings officer also considered whether the SEX AND THE CITY and SIX IN THE CITY trademarks were deceptively similar. HBO had presented evidence that the SEX AND THE CITY trademark was commonly recalled as 'sex in the city'. The hearings officer acknowledged that this was likely and that the trademarks "have a degree of similarity", but that they did not so nearly resemble each other that they were likely to deceive or cause confusion. He stated that the initial elements of the trademarks were different (ie, 'six' and 'sex') and that these words "bring to mind strongly divergent ideas". Therefore, there was no realistic likelihood of actual mistake or confusion. The opposition proceedings were thus dismissed.
This decision is significant as it supports the view that the name of a television series can constitute a trademark. However, in order to be successful in a case such as this, it is likely to be necessary to demonstrate that merchandising or franchising will extend to the relevant goods and services covered by the application being opposed.
Lisa Ritson and Melissa Preston, Blake Dawson, Sydney

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