Long Way Home Holdings Pty Ltd v Saroo Brierley Enterprises Pty Ltd  ATMO 109 (23 June 2020)
This Decision of a Delegate of IP Australia concerns an application for the registration of the trade mark LION by Saroo Brierley Enterprises Pty Ltd (‘Applicant’) in relation to theatre productions, musical performances, presentation and production of live performances and other similar services.
An opposition to registration was filed by Long Way Home Holdings Pty Ltd (‘the Opponent’), as a subsidiary of See-Saw Films Pty Ltd (‘See-Saw’) on the basis of: prior use by the Opponent, use by the Applicant contrary to law, reputation of the Opponent in relation to the mark, and that the Applicant had filed the mark in bad faith.
See-Saw is the Australian film and television production company behind the critically acclaimed 2016 film Lion, which follows the story of Saroo Brierley and how after being separated from his family in India for 25 years, he sets out to find them. The movie is an adaptation of the 2013 book A Long Way Home by Saroo Brierley.
Saroo Brierly is the sole director for the Applicant and the person on which the movie is based.
In 2017, after the enormous success of the film, the Applicant filed a trade mark application in Australia for the word mark LION in relation to theatre, musical and live production services as the Applicant believed this name referred to himself personally as well as his brand. The Opponent, as the producer of the movie believed LION was their brand.
The Hearing Officer referred to the European Decision in Danjaq LLC v OHIM[i] (‘the Dr No case’) where the court upheld that film titles:
do not indicate the commercial origin of the films, but rather their artistic origin
Whilst the name of a film may in certain instances function as a trade mark[ii], in a majority of cases, such as the Dr No case, use ‘as a trade mark ‘will not be established. The use of Dr No in merchandising goods (comic books, posters and music recordings) was taken as a descriptive reference to items from the movie and would only indicate the artistic origin of the goods. Similarly, for other types of goods like memorabilia watches or cars, these would still be items that the consumer would understand as ’the model of car‘, or ’the same watch‘ that was used in the film, rather than directing the consumer to the commercial origin of the goods.
In the present case, the Opponent argued that it was the first user of the mark as it had used the word LION in merchandising and promotional activities for the film and therefore that as a result of the popularity of the film and promotional activities it had a reputation in the trade mark.
While it was not contested that the film was extremely successful, this alone could not be taken as an indicator of trade. Evidence provided clearly showed that LION was only used as a reference to the film in order to promote it.
Since no use ‘as a trade mark’ could be established by the Opponent, grounds of prior use, reputation and use contrary to law were not established.
In relation to the remaining ground, the Opponent submitted that the Applicant had filed the mark in bad faith on the basis of the commercial relationship between the parties. Negative comments from the Applicant during the production of the film, in relation to the title, allegedly implied he had only shown interest in this name after the popularity of the film. The Applicant explained that the name LION was the phonetic Hindi equivalent of his name.
I consider that Lion is my name and also part of my journey
This fact was also explained in his memoir, which in turn preceded the film. For the Applicant, the application for the mark was as a consolidation of his brand, which he intended to use as leverage for future commercial negotiations.
The Hearing Officer indicated that whether the Applicant liked the movie title was irrelevant. The decision to apply for LION was not a random act by the Applicant. The Hearing Officer indicated that it was a natural approach for Mr. Brierley to have seen monetary value in the trade mark and had sought to improve his bargaining position in negotiations in respect of his rights by applying to register LION. This would not be understood as unscrupulous, underhand or unconscientious behaviour by persons adopting proper standards. Together with the finding that the Opponent had not used LION as a trade mark at any given time, it was found that the mark had not been filed in bad faith.
- While movie titles may superficially seem like trade marks, it is important to remember that trade marks are signs used to distinguish goods and services of one trader from the goods and services of other traders. If the sign does not fall under this definition, any use of that sign will not be considered as use in a trade mark sense.
- Merely presenting evidence of promotional use risks such material being considered as an indication of artistic origin and not of the commercial source. In the case of movie titles, more often than not, the title will lead the consumer to the creative work (the film), rather than the commercial source regardless of the popularity of the work.
- To succeed on bad faith ground there must be evidence of behaviour which is likely to be seen as unscrupulous, underhand or unconscientious in character by persons adopting proper standards, a prior commercial relationship between the parties will not suffice by itself.
- (T-435/05)  Decision of The Court of First Instance of The European Communities (Second Chamber)
- James Bond 007 is a registered mark in relation to clothing, games and other decorations; Die Hard is registered in relation to computer games and cassettes; STAR WARS is registered in relation to several goods and services.