Powell, Larry v Glow Zone Products Pty Ltd [1997] FCA 1401

Powell, Larry v Glow Zone Products Pty Ltd [1997] FCA 1401

The mark "CAPS THE GAME" was not adapted to distinguish the appellant's goods as at the application date. The word "caps" was a generic description of the discs in the United States, had been used to some extent in Australian trade before 31 May 1994, and was a word that Australian traders acting reasonably and in...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
11 December 1997
Procedural Posture
Trade Mark Appeal / Appeal From a Judge of the Federal Court of Australia
Outcome
Appeal dismissed with costs.
Legal Topics
['validity of Registered Trade Mark' 'distinctiveness' 'generic Use' 'expungement From Register of Trade Marks' 'trade Mark Infringement' 'deceptive Similarity']
['trade Marks' 'intellectual Property'] ['validity of Registered Trade Mark' 'distinctiveness' 'generic Use' 'expungement From Register of Trade Marks' 'trade Mark Infringement' 'deceptive Similarity']

Source-derived case record

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Procedural Posture

Trade Mark Appeal / Appeal From a Judge of the Federal Court of Australia

Legal Issues

  1. 1 ['Whether the mark "CAPS THE GAME" was adapted to distinguish the appellant\'s goods as at 31 May 1994.' 'Whether generic use of the word "caps" in the United States and limited use in trade in Australia prevented distinctiveness in Australia.' 'Whether any distinctiveness was lost by operation of s 56 of the Trade Marks Act 1955 (Cth).' 'Whether the respondent\'s use of "GLO-CAPS" infringed the registered mark "CAPS THE GAME" by deceptive similarity.']

Ratio Decidendi

The mark "CAPS THE GAME" was not adapted to distinguish the appellant's goods as at the application date. The word "caps" was a generic description of the discs in the United States, had been used to some extent in Australian trade before 31 May 1994, and was a word that Australian traders acting reasonably and in good faith would be likely to wish to use for similar goods. The registration was wrongly made and expungement was upheld, so the appeal failed.

Court Disposition

Appeal dismissed with costs.

Orders

  • ['The appeal be dismissed with costs.']