Long Way Home Holdings Pty Ltd v Saroo Brierley Enterprises Pty Ltd [2020] ATMO 109 (23 June 2020) 

A recent Australian Trade Marks Office decision has confirmed that the name of a film is not a trade mark. 

This was determined following opposition to an application filed by Saroo Brierley Enterprises Pty Ltd to register the LION trade mark in respect of various services in Class 41. Saroo Brierley Enterprises Pty Ltd is a company run by Saroo Brierley as a sole director/secretary. Mr. Brierley is the subject of the feature film Lion  (2016) which was adapted from his autobiography A Long Way Home

Long Way Home Holdings Pty Ltd ("Long Way Home") which is a subsidiary of one of the companies that produced Lion  (2016) opposed the registration of the LION trade mark on the basis that: 

  • Saroo Brierley Enterprises Pty Ltd was not the owner of the LION trade mark because Long Way Home was the first user of the LION trade mark in Australia (section 58); 
  • due to the reputation of the LION trade mark acquired through use by Long Way Home that the use of the LION trade mark by Saroo Brierley Enterprises Pty Ltd would deceive or confuse (section 60); 
  • the use of the LION trade mark by Saroo Brierley Enterprises Pty Ltd would be contrary to Australian Consumer Law (ACL) and constitute passing off (section 42(b)); and
  • the application to register the LION trade mark was filed by Saroo Brierley Enterprises Pty Ltd in bad faith (section 62A)

The Delegate determined based on written submissions filed by both parties that none of the grounds of opposition pressed by Long Way Home had been established. 

Notwithstanding the highly successful release of the film Lion, the Delegate found that the use of LION as a film title did not constitute use of LION as a trade mark. This was held to be a sign of artistic origin rather than the commercial origin of the film.1 Therefore, the section 58 and 60 grounds were not established as there had been no use of the LION trade mark as such by Long Way Home. 

For the same reasoning, the ground of opposition under section 42(b) was not established. The use of the LION trade mark by Saroo Brierley Enterprises Pty Ltd was not likely to contravene the ACL given the use of the sign LION as a film title was not likely to be taken as an indicator of trade source. The Delegate also found that passing off had not been established, and further noted if there was any association between the use of the sign LION as a film title and another entity, that entity was likely to be Mr Brierley as the subject of that film. 

The Delegate also held that the application to register the LION trade mark had not been filed in bad faith. Long Way Home alleged that Mr Brierley only sought to use and register the LION trade mark following the success of Lion  (2016). This was not enough to support a finding of bad faith because even if Mr Brierley's conduct in seeking registration of the LION trade mark was only to improve his bargaining position in his licensing negotiations with others, this did not fall short of acceptable commercial standards. That LION is a reference to Mr Brierley being the title of a film based on his life story factored into the Delegate's determination as to whether this application was made in bad faith. As there had been no use of the sign LION as a trade mark by Long Way Home, this was also relevant in this determination. 

Overall, this opposition did not succeed for failure to show use of the trade mark by the opponent. 

This decision is an important reminder that the use of a sign as a trade mark ought not be considered as a presumption by opponents. 

Footnote

1 Danjaq LLC v OHIM (T-435/05) [2009] Decision of The Court of First Instance of The European Communities (Second Chamber)

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