News & Insights

Most of you will have heard of Taylor Swift and even have some of her music. She is a singer of considerable renown who released her ninth studio album “Evermore” on 11 December 2020. That album debuted at number one on the Billboard 200.

But not all appears well in the world of the singer sometimes known as Tay Tay. Apparently “Evermore” is also the name of a theme park in Utah, USA.

Since Tay Tay’s album release, its website has seen a “dramatic departure from typical levels” of traffic.

There now appears to be a bit of bad blood, as the park owners have now sued her for trade mark infringement. In relation to the name “Evermore”, the theme park owners are saying “you belong to me”.

Taylor Swift’s lawyers have been reported as responding that “there is no basis” for the claim. That doesn’t mean that she is out of the woods, but we’ll monitor it with interest.

In the meantime, it is interesting to consider whether, if this type of suit was brought in Australia, she could just shake it off or would she be dealt the JJJ Hottest 100 treatment?

would tay tay be in trouble in australia?

In order for a trade mark that is registered under the Trade Marks Act 1995 (Cth) to be infringed by the use of a sign (ie name, logo, shape, etc), there are three requirements:

1. the alleged infringer must be using their sign “as a trade mark”;
2. the alleged infringer’s sign must be either substantially identical or deceptively similar to the registered trade mark; and
3. the alleged infringer must be using their sign in relation to goods or services that are similar to the goods or services in respect of which the trade mark is registered, or in relation to services or goods that are closely related to those goods or services.

Critical is what it means for a sign to be used “as a trade mark”.  As defined in the Trade Marks Act 1995, a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.

This was illustrated in 2020 by an IP Australia decision in the case of Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd [2020] ATMO 109. Saroo Brierly Enterprises Pty Ltd (SBE) is the company of Saroo Brierly, the subject of the Oscar-nominated biographical movie “Lion”.

SBE applied to register the trade mark “LION” in Australia in relation to theatre productions, musical productions and similar services. That application was opposed by Long Way Home Holdings Pty Ltd (LWH), a company related to the producers of the film “Lion”.

In rejecting LWH’s opposition, IP Australia followed the 2009 decision of The Court of First Instance of The European Communities (Second Chamber) in Danjaq LLC v OHIM (T-435/05) [2009]. That case related to the film title “Dr No” and decided that a film title is an expression of artistic, but not commercial, origin and as such not a trade mark. If a film title is not a trade mark, then LWH was not the true owner of the “Lion” trade mark and failed in opposing SBE’s application on that basis.

While both cases involved film titles, the Registrar’s representative fully accepted the position in the “Dr No” case, which in turn had stated that “comic books, music recordings, books and posters” bearing the “Dr No” signs were also not using them as trade marks. As such, this position is not restricted to films.

take away points

So Tay Tay would likely be safe & sound in Australia.

What are the lessons?

Even if there is no risk of trade mark infringement, presenting or promoting a book, film, album etc in the wrong way could still be misleading and deceptive contravening the Australian Consumer Law.

So it is best to go in with your eyes open and if in doubt get some advice. The Macpherson Kelley IP team is here to help.