Oarsome Foursome sneak another victory

In Simply Oarsome Pty Ltd v Oarsome Foursome Pty Ltd, the Australian Trademarks Office has allowed Oarsome Foursome's application for registration of the trademark OARSOME FOURSOME, on the proviso that the application is amended to exclude association with rowing equipment and apparel.

The expression 'The Oarsome Foursome' became widely used as the name of an Australian rowing team that won a number of Olympic and world championship competitions between 1990 and 2000. In 1997 the team's marketing company, Oarsome Foursome Pty Ltd, filed an application for registration of 'Oarsome Foursome' alone and with a device in Classes 25 and 35. Although accepted, the application was opposed by Simply Oarsome Pty Ltd, a manufacturer of specialist rowing equipment and sports clothing.

Simply Oarsome has been using the trademark and business name OARSOME since 1990, and registered the marks OARSOME and SIMPLY OARSOME in 1996. It argued that registration of the OARSOME FOURSOME marks was prohibited under the Trademarks Act 1995 because (i) their use would be likely to deceive or cause confusion, and (ii) they were substantially identical or deceptively similar to Simply Oarsome's marks.

The hearing officer dismissed the allegation that the marks were likely to deceive or cause confusion but upheld, in part, the opposition based on Section 44 of the act that the trademarks were deceptively similar to Simply Oarsome's prior registered marks. This ground of opposition was dismissed in relation to the Class 35 application but upheld in relation to the application in Class 25, insofar as it covered specialist rowing apparel and equipment.

The hearing officer, adopting the reasoning of the Full Federal Court in Woolworths Ltd v The Registrar of Trademarks, held that the expression 'Oarsome Foursome' is well known to the general Australian public, dispelling any reasonable likelihood of deception or confusion occurring in relation to the marks as applied to general items of clothing, but not in relation to specialist rowing articles.

Oarsome Foursome was therefore afforded the opportunity to amend the statement of goods in the Class 25 application to exclude "suits, uniforms, apparel, equipment or accessories designed for use in rowing".

Desmond Ryan, Davies Collison Cave Solicitors, Melbourne