Lucasfilm Entertainment Company Ltd, the company behind the Star Wars franchise have recently successfully opposed a trademark in Australia for BIODROIDS relying on Section 60 of the Australian Trade Marks Act 1995 to prevent registration of the trademark.
BIODROID Entertainment, Lda filed trademark application no 1247070 for BIODROIDS (actually an international registration designating Australia or “IRDA”) on 3 March 2008 (having a priority date of 3 September 2007) in a number of classes ( including games and toys). Lucasfilm opposed the registration of the trademark.
In the Australian Trademark Office decision, Hearing Officer Jock McDonagh focused on the Section 60 ground of opposition and found Lucasfilm’s evidence (that they created the mark “droid” and developed numerous “droid characters” since 1977 and that they had an extensive reputation in Australia such that DROID can be regarded as well known) persuasive – so he did not need to consider the remaining grounds of opposition, namely Section 41, 58, 58a, 59 and 62a. So to paraphrase Luke Skywalker: “it was as easy as bullseye-ing womp rats in my T-16 back home”.
Helpfully, the Lucasfilm’s evidence clarified purpose and type of each “droid” :
The nature or purpose of each type of DROID is often conveyed by the script of additional word elements such as “astromech droids” (such as the R2-D2 character), “protocol droids” (such as the C-3PO character), “battle droids” to name just a few.
Hearing Officer McDonagh was satisfied that there was a significant likelihood of deception or confusion if the trademark applicant were to use its BIODROIDS trademark in connection with any of the goods or services covered by the registration. No jedi mind tricks were required by Lucasfilm. The trademark was refused in respect of all of the goods or services listed.
Lucasfilm also relied on an earlier trademark registration for DROIDWORKS which had a convention priority date of 22 May 1998, slightly before the 3 March 2007 priority date of the opposed trademark application. Interestingly, Lucasfilm had at one stage a number of “droid” marks registered (since the mid 1980’s) but many of these lapsed in the early 1990’s due to non-payment of renewal fees. A subsequent DROID mark was filed on 5 December 2008 but this trademark has a later priority date than the opposed application.
As it turns out, there are over 40 currently registered trademarks for star wars characters in Australia….
Click on the trademark number to reveal trademark details, or click on the mark itself to be informed of the character from the Star Wars Wookiepedia.