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major league baseball properties inc v philip morris brands sarl

This case demonstrates the application of these Trade Marks Act 1995 (Cth) opposition grounds, in relation to international brands and their reputations:

  1. s42(b) (the use of a mark would be contrary to law – via s18 and s 29(1)(g) of the ACL); and
  2. s60 (the opposed mark is similar to one that has already acquired a reputation in Australia).

opponent’s evidence

The Opponent’s evidence showed that there were:

  • Viewers in Australia;
  • Programs with Australian schools via their organisation; and
  • That a match had been televised in Australia between the Los Angeles Dodgers and the Arizona Diamondbacks.

However, it didn’t show:

  • That there were any Australian teams in the league;
  • What the viewing audience or statistics were for any Australian television screenings; and
  • That the match (mentioned above) actually used the MLB mark.

Some of the opponent’s evidence also post-dated the priority date which was disregarded.


The Opponent (Major League Basketball Properties Inc.) failed to prove that the international registration for ‘MLB’ (filed a tobacco company) should be refused.

The decisive factor was that the Hearing Officer held the Opponent only had a reputation in Australia for goods/services (for sportswear clothing) that were different to those of the opposed trade mark (tobacco and e-cigarettes) and that there were two distinct trade channels.

This meant that-

  1. There was no likelihood of confusion or deception
  2. There would be no damage to the Opponent’s goodwill even if there was a misrepresentation

While the Applicant won the case, the Hearing Officer rejected their argument that an adverse inference should be drawn from the fact that the Opponent didn’t pursue/press objections under ss44 (substantially identical or deceptively similar) and 58 (Applicant not true owner of the mark).

key takeaways

  • The relevant date for assessing s60 is the priority date of the opposed trade mark.
  • The relevant date for assessing s42(b) is the filing date of the opposed trade mark.
  • The standard for s42(b) is proving that use of the mark would rather than could be contrary to law
  • For opposition grounds s60 and s42(b), it is imperative to establish that the Opponent has a reputation in the goods/services of the opposed trade mark.