The Trade Marks Office has rejected Nicklaus Companies LLC’s opposition to the registration of the trade mark shown below filed in the name of Michael Randazzo in Nicklaus Companies LLC v Michael Randazzo [2009] ATMO 63.
Nicklaus Companies LLC relied on its prior registration for the mark GOLDEN BEAR in support of its section 44 ground of opposition, as well as the notoriety of the GOLDEN BEAR brand and its device mark shown below in support of section 60 grounds.
All parties involved, including the hearing officer, accepted that GOLDENBEAR was well known in golfing circles as the nickname of Jack Nicklaus.However, the hearing officer did not agree that the DROP BEAR GOLF Logo was deceptively similar to any of Nicklaus’ marks. He noted that many Australians would be aware that a “drop bear” is a non-existent species of “killer koala”, which is so far from being an ordinary bear that no consumer of golfing products would be confused. The fact that the paw print in the device could not have been made by a koala and was in fact an ordinary bear paw print, was considered to carry very little weight.
The lack of sufficient resemblance between the marks meant that the opposition failed on the section 44, 60 and 42(b) grounds.
The opposition then took an “interesting procedural turn” when Nicklaus Companies challenged the ownership of the opposed mark under section 58. The opposed mark was filed by Michael Randazzo, a director and General Manager of Kialoa Pty Ltd. Subsequent to the filing of the opposed application, Kialoa Pty Ltd commenced use of the opposed mark and an assignment of the mark to Kialoa Pty Ltd was recorded shortly before the opposition hearing. The opponent submitted that the facts established that Kialoa, not Randazzo, was the owner of the mark at the time of filing. The hearing officer held that this argument was “fundamentally flawed”, as there was no evidence that Randazzo lacked the requisite intention to use at the time of filing and Kialoa’s own property rights (based on actual use) did not come into being until later.