Winton Shire Council v Lomas [2002] FCA 288

FEDERAL COURT OF AUSTRALIA

Winton Shire Council v Lomas [2002] FCA 288

TRADE MARKS – appeal pursuant to s 56 Trade Marks Act 1995 (Cth) from the Delegate of the Registrar of Trade Marks whereby the Delegate dismissed the applicants' opposition to registration of the respondent's trade mark – whether the respondent is the owner of the mark the subject of the opposed application – whether there was a use prior to the Priority Date of the mark "Waltzing Matilda" in respect of the goods and services identified in the opposed application – whether use of the opposed mark is likely to deceive or cause confusion – whether opposed application is substantially identical or similar to two other trade marks the Priority Date for which is earlier than the Priority Date for the mark in question – due weight to be given to the opinion of the Delegate as that of a skilled and experienced person – the relationship between goods and closely related services is defined by the function of the services with respect to the goods. Trade Marks Act 1995 (Cth), ss 56, 58, 43, 60, 44, 14(1) Trade Marks Act 1955 (Cth), s 40 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR 592, applied Blount v Registrar of Trade Marks (1998) 40 IPR 498, applied Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, applied The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, cited Aston v Harlee Manufacturing Company (1960) 103 CLR 391, cited Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] (1983-1984) 156 CLR 414, distinguished Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, applied Buying Systems (Australia) Pty Ltd v Studio SRL (1995) 30 IPR 517, cited In Re Hicks's Trademark (1897) 22 VLR 636, applied Eclipse Sleep Products Inc v The Registrar of Trade Marks (1957) 99 CLR 300, applied Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, applied Elkington, B., Hall, M. and D. Kell (2000) Trade Mark Law In Australia, Sydney: Butterworths