Discovery Holiday Parks Pty Ltd v G’day Baby Pty Ltd 2023 ATMO 4 – Case Summary

Author: Jasmine Burrows, Progressive Legal

Facts

This case involves a trademark opposition between two companies, Discovery Holiday Parks Pty Ltd (the Opponent) and G’day Baby Pty Ltd (the Applicant).

The Opponent has been offering vacation park services since 2004 and owns several related trademarks. They use the term “G’DAY” in their branding.

The Applicant, on the other hand, designs and sells baby and children’s clothing and accessories under the name “G’day Baby.”

The Opponent argued that the priority date for the registration of the Applicant’s trade marks are not earlier than that of the Opponent’s trade marks in respect of the similar goods under s 44 of the Trade Marks Act 1995 (The Act).

The Opponent also argued that the Applicant’s trade marks were similar to their own which had acquired reputation in Australia under s 60 of The Act.

The Relevant Date is 15 August 2018.

Issues

Was the Applicant in breach of s 44 and s 60 of The Act?

Decision

The Applicant was in breach of s 44 of The Act.

The Applicant was not in breach of s 60 of The Act.

Costs were awarded against the Applicant.

Reasoning

S 44 of The Act

The priority date of the Opponent’s Marks is 21 December 2017 and it was found that there had been continuous use until the Relevant Date.

The Applicant claims that they have been using the trade marks since 2013 when they registered the names “G’DAY BABY” and “G’DAY KIDS” as a company and business names. However, there is not much written evidence to prove that they have been using the trademarks since 2013. A lot of the evidence doesn’t have a date on it or is dated from 2018.

It was thus found that the Applicant had not used the Trade Marks in respect of the Conflicting Goods and Services before the priority date of the Opponent’s Marks.

The decision further looked at whether the Applicant’s Goods and Services were similar or closely related to the goods and services of the Opponent’s Marks.

It was concluded that concluded some of the Opponent’s services, such as retailing clothing and campers’ requisites, were similar to the Applicant’s services and goods, like baby and children’s clothing and accessories.

Moreover, the decision discussed the likelihood of the Applicant’s marks to cause deception or confusion. The marks were decided to likely cause deception or confusion due to the distinctive ‘G’DAY’ element of the marks, even though the Applicant’s marks contained additional descriptive elements like “KIDS” or “BABY.”

The decision analysed how the term “G’DAY” is common and related to Australia, but it also has a connection to the Opponent’s services. It was found that ordinary consumers might think the Applicant’s goods and services were affiliated with the Opponent.

It was satisfied that the Opponent could oppose the Applicant’s trademarks under section 44 of the law.

S 60 of The Act

It was found that Discovery Holiday Parks would have only acquired a limited reputation in the Opponent’s Marks before the Relevant Date and that any reputation was limited to Park Services.

If the Opponent had a reputation in the Opponent’s Marks for Park Services at the Relevant Date, that reputation was not so extensive that use of the Trade Marks by the Applicant for the Relevant Class 24 Goods would be likely to deceive or cause confusion.

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