Studio 54 is a name synonymous with the disco era [ed: an era, for some us, that continues to this day]. When the New York nightclub finally closed down in the mid-1990s, the Las Vegas casino and hotel, MGM Grand, acquired the rights to the “STUDIO 54” trade mark and it opened a replica club inside its premises. Recently, however, an Australian company applied to register “studio 54 nightclub” as a trade mark for entertainment services including pub, cabaret, nightclub and theatre restaurant entertainment services. MGM filed an opposition against this application but the Australian Trade Marks Office has rejected MGM’s opposition and allowed the application proceed to registration.
MGM opposed the applicant’s “studio 54 nightclub” under s 60 and s 42(b) of the Trade Marks Act. In his determination, the Hearing Officer emphasised that there are two separate and distinct reputations in consideration here. One is the New York nightclub, which has been described as “the most notorious nightclub in history.” The other is the “STUDIO 54” facility inside the MGM Grand Hotel and Casino in Las Vegas, which alleges that it has acquired sufficient reputation in Australia.
On the s 60 ground, the Hearing Officer accepted that the respective marks are substantially identical. However, he found that MGM Grand’s “STUDIO 54” had not acquired a reputation in Australia after noting authority in ConAgra and McCormick requiring that a substantial or significant number of people must be likely to be deceived or confused. The Office considered that the use of the mark on MGM Grand’s website carried little weight, that use of the mark has only been in relation to the nightclub in Las Vegas with no business being conducted in Australia and that Australian patronage to the hotel was insignificant and did not mean that guests were familiar with the mark. He commented that Australians who were familiar with “STUDIO 54” would identify it as being connected with the original New York nightclub or perhaps the “54” movie rather than with the business of the MGM Grand.
The s 42(b) contrary to law argument along with Trade Practices Act s 52 and s 53 grounds were also unsuccessful. The threshold test of reputation had not been made out and there was no evidence to indicate that the applicant had made representations associating itself with the opponent.