Lucasfilm has won its case against a Stephen Muller who tried to trademark ‘theforceawakens’ in Australia in September 2015 for a range of beverages in what appeared to be a very clear-cut case.
Lucasfilm pursued numerous opposition grounds, but ultimately was successful on the ‘connotation ground’ under Section 43 of the Trade Marks Act. This ground requires that an application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The case shows the enormous extent of pre-launch movie activities that can occur, and which in this case enabled Lucasfilm to prevent registration of an offending mark which encompassed the title of its seventh Star Wars movie.
In support of the opposition, Lucasfilm filed details of its ‘Star Wars’ franchise, including numerous films, animated TV series, comic books, and associated merchandise over more than 30 years. Its trade mark portfolio notably included trade mark registrations in Australia for ‘THE FORCE AWAKENS’, as this was the title of the seventh Star Wars film it produced.
The title of THE FORCE AWAKENS was announced on 6 November 2014 and there was much media hype around the movie.
Lucasfilms’ evidence demonstrated:
1) there were multiple retail and promotional events associated with the movie
2) there was a worldwide ‘unboxing’ on 4 September 2015 and over $2 million in merchandise was sold in Australia
3) the movie launch was described in reports as a ‘record-breaking retail event’
4) a range of pre-launch merchandise included soft drinks and other beverage
5) use of THE FORCE AWAKENS on beverage containers
The Lucasfilm declarant declared that ‘it is common for major movie producing companies to widely merchandise and license the use of movie titles in relation to product. This leverages equity in the movie title’.
Notably, Mr Muller’s evidence appeared to be scant, and there was no actual evidence tendered to show use or intended use of the ‘theforceawakens’ mark by him.
Lucasfilm submitted that given the high level of pre-release promotional activity and public interest, a ‘reasonable and honest trader’ would have known that the name ‘The Force Awakens’ was associated with Lucasfilm when Muller filed his mark ‘theforceawakens’.
The Hearings Officer agreed with the Lucasfilm contention that by virtue of its activities, pre-release publicity and the public interest, use of the ‘theforceawakens’ mark would likely deceive or cause confusion because of the connotation conveyed by the mark – that is, that it has a direct association with the Opponent’s movie, ‘The Force Awakens’.
Perhaps Lucasfilm celebrated their win with a nice beverage…
