HBO Fails in Opposition to Six in the City

19 November 2012

Home Box Office, the distributor of the “Sex in the City” television series, has unsuccessfully opposed a trademark application filed by a Brisbane-based dating service for the similar sounding “Six in the City,” according to Gadens lawyer Alexia Marinos, writing on the firm’s website.

HBO questioned whether the Six in the City trademark suggested a connection or affiliation between HBO and the applicant that was likely to deceive, cause confusion or give rise to a misleading connotation – all grounds for opposition under various sections of the Trade Marks Act and Trade Practices Act, said Marinos. “To be able to successfully make such an argument, HBO had to establish ‘Sex in the City’ had the requisite reputation and was well known.”

HBO also submitted that the use of the Six in the City trademark might be misleading if it was used in relation to services rendered in organising social engagements for any number of people other than six, Marinos said. “They argued that the trademark would be likely to deceive or cause confusion under section 43 of the Trade Marks Act and likely to be in breach of the misleading and deceptive provisions (section 52) of the Trade Practices Act.

As a general rule, highly descriptive trade marks for business, product or service names are not capable of registration, said Marinos. HBO argued that Six in the City was descriptive of the applicant’s dating services because it involved six compatible people meeting for dinner. It also argued that the mark was not capable of distinguishing the service, as arranging dinners for six people was an established concept, with reference made to other dating agencies that use the mark, including the registered mark “Dinner for Six.”

“The Delegate of the Registrar of Trade Marks, while finding that HBO had established the requisite reputation and was well-known, did not consider that there was a significant risk of confusion arising between the marks,” Marinos says. “HBO failed to establish any of the grounds of its opposition and the mark for Six in the City was successfully registered.”