Waltzing Matilda – a trademark?

The media last year picked up on the fact that a Victorian company had applied to IP Australia for a trademark over the phrase “Waltzing Matilda” for goods and services relating to online material, videos, CDs etc.  It was reported that as a result, the town of Winton, which claims it was the birthplace of the song Waltzing Matilda, would be prevented from using the phrase on its promotional and merchandise materials – suggesting instead that it would need to pay for the privilege.

The Mayor is reported as saying:

“We would like not to see it happen, because Winton is the home of Waltzing Matilda and also, Winton is the town that has promoted the song and Banjo Paterson since the 50s, and we’d be sad to see someone is doing this.”

“We’d like to be able to do what we wish with Waltzing Matilda. It is an important part of Queensland and Australia’s history.”

The term “Waltzing Matilda” was actually first trademarked in 1968, by the same Victorian company (WM Productions Pty Ltd) in relation to beverage products and the general film industry.  So over the years, the Victorian company has had to renew the trade mark registration every 10 years, to prevent anyone else applying for its registration.  Nevertheless, over the past 47 years since initial registration, there have been a number of oppositions lodged by other companies interested in securing the rights over the iconic term, usually by claiming that the original trademark holder has not “used” the trademark, therefore the registration should lapse.

Opponents of the renewed trademark have included, amongst others, the Winton Shire Council, the Waltzing Matilda Centre Limited, and Jolly Swagmen Pty Ltd.

Gavel

What is non-use?

As the owner of a trademark, you are required to use the trademark in the course of trade.  Otherwise, the trademark registration may be removed because of “non-use”.  Anyone can lodge an application with IP Australia for a trademark to be removed because of non-use – being either:

(a) the fact that the registered owner lodged the original registration with no intention of using the trademark (section 92(4)(a)); or

(b) the fact that the registered trademark has not been used for the 3 years prior to the application being lodged (see section 92 of the Trade Marks Act 1995).

Anyone who opposes the application can lodge evidence as to use of the trademark, warranting its continued registration.

One application leads to another, and another …

Interestingly, on the same day as the above media report appeared, an individual (with a contact address in Winton, Queensland) also applied for registration of the trademark “Waltzing Matilda” in so far as it relates to “paper postcards, picture postcards and postcards” (all within class 16).

And 5 days after the above media report appeared, another individual applied for registration of the trademark “Waltzin’ Matilda” for the same classes of goods and services as WM Productions Pty Ltd has applied for (being classes 16 and 41).

“Show cause”

As it turns out, the Victorian company’s application for the registration of “Waltzing Matilda” in the broader range of products was rejected, and the applicant now has until December 2016 to argue their case.

Watch this space …

_______________________________________

If you have a specific term or phrase that you would like to prevent your competitors from using, you should consider registering a trademark – contact Melissa Lammers on 95263444 or mlammers@shirelegal.com.au to discuss how Shire Legal can help you with the trademark registration process.

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