Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

On the uncontested evidence, copyright subsisted in the applicant's trade mark as an original artistic work, and the first respondent's mark reproduced a substantial part of it. Because the first respondent had no licence from either possible copyright owner, use of the first respondent's mark would involve...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
08 June 2001
Procedural Posture
Appeal From a Decision of a Delegate of the Registrar of Trade Marks in Trade Mark Opposition Proceedings / Federal Court Appeal Determined as a Hearing De Novo
Outcome
Appeal allowed; opposition to registration allowed; trade mark application No. 747367 refused; first respondent ordered to pay the applicant's costs; no costs order between the applicant and the Registrar.
Legal Topics
['opposition to Trade Mark Registration' 'use of Trade Mark Contrary to Law' 'copyright Infringement by Use of a Trade Mark' 'role of the Registrar of Trade Marks' 'costs Where Registrar Intervenes']
['trade Marks' 'copyright' 'costs'] ['opposition to Trade Mark Registration' 'use of Trade Mark Contrary to Law' 'copyright Infringement by Use of a Trade Mark' 'role of the Registrar of Trade Marks' 'costs Where Registrar Intervenes']

Source-derived case record

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Procedural Posture

Appeal From a Decision of a Delegate of the Registrar of Trade Marks in Trade Mark Opposition Proceedings / Federal Court Appeal Determined as a Hearing De Novo

Legal Issues

  1. 1 ["Whether the first respondent's trade mark application should be refused because use of the mark would be contrary to law under s 42(b) of the Trade Marks Act 1995 (Cth)." "Whether use of the first respondent's mark would infringe copyright in the applicant's trade mark." 'Whether the Registrar of Trade Marks may determine, in opposition proceedings, whether use of a mark would be contrary to law where the alleged contrariety involves legislation outside trade mark law.' 'Whether a costs order should be made against the Registrar after the Registrar appeared in the appeal.']

Ratio Decidendi

On the uncontested evidence, copyright subsisted in the applicant's trade mark as an original artistic work, and the first respondent's mark reproduced a substantial part of it. Because the first respondent had no licence from either possible copyright owner, use of the first respondent's mark would involve reproduction and publication contrary to the Copyright Act 1968 (Cth). Use of the mark would therefore be contrary to law for the purposes of s 42(b) of the Trade Marks Act 1995 (Cth), so the opposition was made out and the trade mark application had to be refused.

Court Disposition

Appeal allowed; opposition to registration allowed; trade mark application No. 747367 refused; first respondent ordered to pay the applicant's costs; no costs order between the applicant and the Registrar.

Orders

  • ['The appeal be allowed.' 'The opposition to the registration of trade mark application No. 747367 be allowed.' 'The trade mark application No. 747367 be refused.' 'As between the applicant and the second respondent, the parties are to bear their own costs.' "The first respondent pay the applicant's costs of the...