Clive Palmer: billionaire businessman, occasional politician, joint secretary general of the World Leadership Alliance and, er, trade marks expert.
“I think it will be OK”, Mr Palmer is this week reported to have said about the plans of his company Blue Star Line – you know, the one hoping to build the second Titanic – to trade mark a variety of words including Titanic, Titanic 2, Titanic II, Titanic 3, Titanic III and Gigantic. “You don’t have ownership of a word with a trade mark, it is in association with a use,” Mr Palmer helpfully explained.
An examination of the IP Australia search engine indicates that Blue Star Line has ambitiously attempted to register certain of the trade marks, such as Titanic, Titanic II and Gigantic, across each of the 45 different trade mark classes.
Let’s have a look at the barriers Blue Star Line will need to overcome.
In respect of Blue Star Line’s application to register Gigantic, the trade mark examiner will consider whether Gigantic is capable of distinguishing Blue Star Line’s goods and services in the relevant class from the goods and services of others in the relevant class. This can be difficult to establish for descriptive terms or words that are already in existence, especially where the trade mark applicant has not or has barely used the trade mark prior to filing the trade mark application. Trade marks such as COLLEGE OF LAW, CRANBERRY CLASSIC, SCHOOLIES and CHEEZY TWISTS are all examples of descriptive trade marks that have been rejected when considered by the Courts.
Moving onto Blue Star Line’s application to register Titanic , either on its own or followed by an assortment of numbers or Roman numerals, Blue Star Line may run into the problem that Twentieth Century Fox, the American film studio which made the Kate and Leo tearjerker, already has a trade mark for Titanic in class 41, the class covering movies. Even though Blue Star Line has sought to register its trade mark in other classes too, the possibility remains that the trade mark examiner will find that they are likely to deceive or cause confusion in relation to goods or services in those classes. Twentieth Century Fox may also choose to oppose Blue Star Line’s registration applications.
Some of Blue Star Line’s trade marks are currently under examination, while others will be shortly. We’ll be following with interest to see whether Mr Palmer’s prediction is proven correct.