The recent ATMO decision of Lucasfilm Ltd LLC v Stephen Muller  ATMO 13 (http://www8.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO//2018/13.html,) involved opposition by Lucasfilm Ltd LLC to an application for ‘theforceawakens’ filed by Mr Stephen Muller. The opposed application covered a variety of beverage products in Class 32. The decision suggests that pre-launch marketing can amass to such a degree that a third party’s adoption of the promoted mark may have an inherently confusing connotation. The launch of new movies, music albums, video games and books, food and beverages are some of the products that this could apply to.
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:
- there were multiple retail and promotional events associated with the movie
- there was a worldwide ‘unboxing’ on 4 September 2015 and over $2 million in merchandise was sold in Australia
- the movie launch was described in reports as a ‘record-breaking retail event’
- a range of pre-launch merchandise included soft drinks and other beverage
- 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’.
Lucasfilm referenced the Braveheart decision (http://www8.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2018/13.html#fn16), in which it was decided that:
“On the undisputed evidence, BRAVEHEART now has significant currency as the name of one of the most successful films of late 1990s. That film has had exceptional critical and popular success and the publicity associated with its acclaim has also been exceptional. On this basis, I think it is very clear that the trade mark BRAVEHEART THE MUSICAL, dominated as it is by the word BRAVEHEART, will openly give rise to a connotation of the film BRAVEHEART. The remaining words — THE MUSICAL — do not detract from that connotation. On the contrary, it seems to me that the overall connotation likely to be imparted to a substantial portion of the Australian public by the trade mark BRAVEHEART THE MUSICAL is that the makers of the film BRAVEHEART are now presenting (by way of a musical production) or promoting (by way of T-shirts or caps) a musical version of the story previously unfolded in the film”.
The Hearings Officer concluded that the The Force Awakens film ‘had exceptional critical and popular success and the publicity associated with its acclaim has also been exceptional’.
On this basis, it was found that the opposed mark clearly connoted the Star Wars film ‘The Force Awakens’.The lack of spacing between the words in the opposed mark did not detract from that connotation as they were virtually the same. Accordingly, the Hearings Office concluded that a substantial portion of the Australian public was aware of THE FORCE AWAKENS when the application was filed by Mr Muller, and the mark would therefore connote an association with Lucasfilm’s film, ‘The Force Awakens’. As it would connote the film, this would give rise to a real likelihood that consumers may mistakenly consider that the beverages were in some way approved or licensed by the Opponent or had come from the same source.
The application was rejected under the ‘connotation’ ground and costs were awarded against the applicant.
This case shows that a substantial reputation can amass in a short time frame for blockbuster movie titles through pre-launch activities, substantial merchandising, and wide media hype Such a substantial reputation can be used to prevent third parties from benefitting.