Australian Football League & Major League Baseball Slug it Out Over Trademarks

Major League Baseball properties have opposed a raft of trademark non-use removal actions brought against them by the Australian Football League.  It’s the SAN FRANCISCO GIANTS vs the GREATER WESTERN SYDNEY GIANTS in a trademark showdown.

The Australian Football League (AFL) has been in operation for well over 100 years.  It expanded the national competition in 2009 to include an additional team in Western Sydney called the Greater Western Sydney Giants.

The AFL have filed a number of trademarks in respect of the Greater Western Sydney brand but reached an impasse with a number of existing GIANT marks likely blocking their registration.  In December 2012, attorneys for the AFL filed a raft of trademark non-use removal actions against Major League Baseball’s “Giants” trademarks.  These include:

Trademark	Owner	Non-Use Applicant
429036	Major League Baseball Properties Inc.	Australian Football League.
518568	Major League Baseball Properties Inc.	Australian Football League.
554860	Major League Baseball. Properties Inc.	Australian Football League.
555016	Major League Baseball Properties Inc.	Australian Football League.
555018	Major League Baseball Properties Inc.	Australian Football League.
555020	Major League Baseball Properties Inc.	Australian Football League.
555021	Major League Baseball Properties Inc.	Australian Football League.
1027085	Major League Baseball Properties, Inc.	Australian Football League.

Recently we reported on a trademark war between two breweries, CUB and Thunder Road Brewery in which a number of CUB marks were attacked for non-use by Thunder Road Breweries.

This is another high profile case in which the trademark owner, Major League Baseball, Properties Inc will need to show that they have been using the marks on the goods and services for which they are registered in order to retain the marks on the trademark register. Under the Australian Trademarks Act 1995, a trademark that has not been “in use” for a continuous period of three years or more may be removed (whole or in part) from the trademarks register.  The burden is now on Major League Baseball Properties Inc (i.e. the owner of the trademarks) to establish use of the trademarks.

Evidence in Support of the opposition is due on 10 July 2013 (extendible) – so don’t expect a decision any time before the end of this year.