27 September 2022
By Bianca Lopez, Solicitor, and Steffanie Graham, Senior Trade Marks Manager |
Mariah Carey is in the news again, this time with a Christmas-sive problem that raises interesting questions about rights to register trade marks.
In March 2021, Mariah filed trade mark applications with the U.S. Patent and Trademark Office (USPTO), seeking protection of the expressions “QUEEN OF CHRISTMAS” and “PRINCESS CHRISTMAS”. This comes after Mariah previously applied to register “QOC” and “CHRISTMAS PRINCESS” with the USPTO in January 2021, the outcomes of which are still pending.
Trade mark applications must go through a period of examination by trade marks offices, before they are either rejected or accepted for registration, when they must then be published for public opposition for a short period before becoming registered. Mariah’s application for “QUEEN OF CHRISTMAS” was recently accepted for registration by the USPTO and published for opposition on 12 July 2022. The acceptance of the trade mark sparked a multitude of public and media interest, largely around Mariah’s apparent attempt to market herself as the “Queen of Christmas” in relation to an extensive list of goods and services, with the application even including the following endorsement: “The name Queen of Christmas identifies Mariah Carey, a living individual whose consent is of record.”
Leading the charge to “rein” on Mariah’s trade mark parade are popular Christmas singers Darlene Love and Elizabeth Chan, who both publicly criticized Mariah for the applications. Chan, who has devoted her 14-year career to yuletides and released multiple Christmas tracks — even debuting an album titled Queen of Christmas in 2021 – went so far as to file an opposition to Mariah’s trade mark applications for the “QUEEN OF CHRISTMAS”, “PRINCESS CHRISTMAS” and “QOC” trade marks.
This battle of the self-titled Queens of Christmas is an example of an applicant seeking protection for a term that may not be able to be monopolised, and should be available for other traders to use in relation to similar goods and/or services.
Why is this important?
While Mariah has not lodged any applications in Australia for “QUEEN OF CHRISTMAS”, “QOC” or “PRINCESS CHRISTMAS” to date, it is entirely possible given her popularity here, although she may run into similar problems in this market.
In Australia, if any party were to apply for “QUEEN OF CHRISTMAS” or similar expressions, they would likely face an objection under section 41(3) of the Trade Marks Act 1995 (Cth), based on whether the trade mark is capable of distinguishing the goods and/or services from the goods and/or services of other people.
If Mariah were to be faced with these objections they are not easily overcome, and Mariah would be required to lodge extensive evidence to show that the mark did in fact distinguish the designated goods and/or services from those of others, at the time the application was filed. Any evidence of use after the filing date, or information about intended use would not be considered. Again, this refers us back to the extensive specification of goods and services claimed by Mariah, as Mariah would need to show a substantial reputation in relation to all of these goods and services in relation to the trade mark if she expects a monopoly to be given to her.
Notwithstanding the above, if Mariah were to file an application for “QUEEN OF CHRISTMAS” in Australia, and achieve acceptance of the mark, it is possible that Ms Chan would file an opposition to its registration. This would be on the basis that, despite Chan having no registered Australian trade mark for “QUEEN OF CHRISTMAS”, Chan has been using the expression over her 14-year career for at least some of the similar services, and would be able to successfully establish prior use in this market where her usage has taken place.
To elaborate, Chan may have already established ownership rights at common law through extensive use. In recognition of this, if Chan were to file a trade mark application simultaneously with an opposition to Mariah’s mark, the Registrar must accept Chan’s trade mark for registration if there is evidence that the trade mark has been used continuously in relation to the relevant goods and/or services from before the filing date of Mariah’s earlier trade mark.
Further, under section 59 of the Trade Marks Act 1995 (Cth), the act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to all the goods and services nominated (see Aston v Harlee Manufacturing Co (1960) 103 CLR 391). This therefore provides that registration may be opposed on the basis that the applicant did not intend to use the trade mark or to authorise the use of the trade mark in relation to all of the goods and/or services claimed.
As part of an opposition proceeding in Australia, a party that is opposing the registration of a trade mark has the opportunity to outline the specific details that leads them to believe that the trade mark applicant had no intention to use the trade mark in relation to some or all of the goods and/or services claimed, at the time of filing the application. This is set out in the Statement of Grounds and Particulars document, which is required to be lodged in support of the opposition and which sets the tone for the entire opposition proceedings to follow.
In the above cases involving Mariah, the specification of goods and services is extremely extensive. This means that in Australia, Mariah would now need to prove her “real and definite intention” to use the trade marks in relation to all of the goods and services claimed. We are of the view this would be extremely difficult for Mariah to prove, given that trade mark protection is claimed for goods ranging from jewellery, dog collars and clothing masks to milk and fruit juices.
What does this mean for you?
A review of the Australian Trade Marks Register highlights that the majority of the registered marks that include the expression “CHRISTMAS” also feature additional distinctive words or image elements. This should be a reminder that if you are looking to expand your brand to include generic elements, such as “CHRISTMAS”, which cannot be monopolised by one person or company, famous or otherwise, we recommend adding further word elements or creating a distinctive composite mark to differentiate your mark from others. By doing this, you may avoid a myriad of potential legal issues down the track, such as what Mariah Carey is facing now with her trade marks in the USA.
Further, it is also a reminder to extensively consider the goods and services for which you are trying to obtain trade mark protection. In this case, the goods and services are extremely extensive; from fragrances, to milk, beers and sanitary masks. A very specific scope of protection is better than no protection at all, especially in the event that evidence of use is required, and especially where your trade is on the less distinctive end of the spectrum.
For now, we shall watch the arguments play out and await the result. The result of the oppositions in the USA may determine how Mariah will handle possible subsequent trade mark applications internationally. Further, if Mariah is ultimately granted registration for the trade mark QUEEN OF CHRISTMAS, it will be interesting to observe if any action is taken against others who are found to be using the expression on relative goods and/or services.
All Mariah wants is to be the Queen of Christmas and have her trade marks registered – a feat that is feeling a little bit like a sweet, sweet fantasy.
If you would like further information or advice on conducting trade mark clearance searches, filing applications, or lodging opposition proceedings, please contact one of our experts below.