Edutainments fails in college character mark dispute

Australia

In Edutainments Pty Ltd v JMC Pty Ltd, the Federal Court of Australia has dismissed the plaintiff's claim that the defendant's use of a computer-generated character for educational services (i) infringed its trademarked character, and (ii) passed off the defendant's services as the plaintiff's. The court held that the defendant's use was not trademark use and, in any event, the two characters were not deceptively similar.

Edutainments, trading as the Computer Graphics College, adopted and registered as a trademark a robot-like character for the promotion of its graphic arts and digital animation education and training services. Edutainments' registration was of a seemingly male, mechanized figure with a large transparent plastic head. The character was first used in September 2002 and was thereafter extensively promoted.

JMC, trading as JMC Academy, later adopted a similar character for the same type of services. However, its character appeared to be female and had a plastic as opposed to a mechanical appearance. It also brandished a sword. JMC first advertised using its character on December 14 2002 and Edutainments later filed an action against JMC for trademark infringement and/or passing off. In January 2003 Edutainments obtained an interlocutory injunction preventing JMC from using its character.

At full trial before the Federal Court, Justice Branson held that by December 14 2002 Edutainments had established a reputation in its character and that as at that date, no other institution in the same field had regularly used computer-generated characters as trademarks. She also found that prior to December 14 2002, Edutainments had used its character as a trademark.

Branson next considered the question of trademark infringement. Section 120(i) of the Trademarks Act 1995 states that a finding of infringement requires that the use complained of must be use as a trademark. In considering this issue, Branson adopted the approach of Justice Kitto in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd and stated that the question to be asked was:

"whether, in the setting in which [JMC's] character appeared, it would have appeared to someone seeing the advertisement as possessing the character of a device or brand, which [JMC] was using, or intending to use, in relation to educational services for the purpose of distinguishing, or so as to distinguish, [JMC's] educational services from other educational services?"

In answer to this question, Branson said that JMC was not using its character to distinguish its educational services. This is perhaps surprising as it is difficult to understand Branson's differentiation of the use made by JMC of its character from Edutainments' similar use of its character.

On the question of deceptive similarity, Branson again referred to the Shell Case and found that even taking the likelihood of inaccurate recollection of detail into account, the impression produced by the Edutainments' character would not result in a mistaken belief that the JMC character was the same character. On that basis, she concluded that the characters were not deceptively similar.

In relation to claims based on misleading or deceptive conduct in contravention of Section 52 of the Trade Practices Act 1974 and passing off, Branson held that not even a gullible reader would have confused the two characters.

Accordingly, Branson dismissed Edutainments' action with costs and annulled the earlier injunction.

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne

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