What you need to know
- On 3 May 2019 the Full Court of the Federal Court handed down its decision refusing registration by Evergreen Television Pty Ltd of trade mark DISCOVER DOWNUNDER in class 41 for "production of television programs".
- The Full Court held that the primary judge erred in refusing to permit Bauer to argue that Evergreen had no intention to use the mark in respect of the services covered by its application.
- In considering that argument, the Full Court held that Evergreen had not demonstrated its intention to use the mark for the services of producing television programs, but rather only as the name or title of a television program.
What you need to do
- Records confirming first use and ownership of a trade mark should be kept in the event that ownership of the mark is disputed by another party.
- Trade mark applications must be carefully drafted to ensure that the intended use of the mark is accurately captured in the description of the goods and services.
- When bringing proceedings before the Court, ensure that all claims are clearly pleaded so there can be no dispute by the other party about the allegations it is facing.
Background
Evergreen Television Pty Ltd (Evergreen) applied for registration of the trade mark DISCOVER DOWNUNDER in class 41 for "production of television programs". The application was accepted by the Trade Marks Office but was then opposed by Bauer Consumer Media Ltd (Bauer).The opposition was dismissed by a Delegate of the Registrar of Trade Marks.
Evergreen argued that the mark, which was the name of a TV show conceptualised by Evergreen's director Colin Parrot in 2004, was first used in 2005 when the show was aired on Channel 10. Bauer asserted that ACP Publishing Ltd (ACP), a previous company name of Bauer, used the mark as early as 2004 in its promotion and production of the show, as Colin Parrot was an employee of ACP at the time the program was first pitched.
Bauer brought two applications before the Federal Court at first instance:
- an opposition to the registration of the mark on the grounds that Evergreen was not the owner of the mark (s 58), did not intend to use the mark in good faith (s 59), or applied for the mark in bad faith (s 62A); that the use of the mark would be likely to deceive or cause confusion as at the filing date because of the reputation of Discover Downunder as a prior trade mark (s 60); and that Evergreen’s use of the mark would be contrary to the Trade Practices Act 1974 (Cth) (now the Australian Consumer Law) and therefore contrary to law (s 42); and
- an application pursuant to s 92(4) of the Act to remove the mark from the Register for non-use, on the basis that Evergreen had no intention in good faith to use the trade mark.
The primary judge considered the applications together and dismissed both. The opposition failed on all grounds and the primary judge concluded that the evidence established that Evergreen was the first user of the mark. In relation to the section 59 ground, the primary judge held that Bauer did not put its case that Evergreen had only intended to use the mark as a name of a program, rather than for the services of producing of programs, until too late in the proceedings for the submission to be considered and accepted.
In relation to the non-use proceedings, while it was not in issue that Evergreen had not used the mark during the relevant period, the primary judge accepted that there was an obstacle to use under s 100(3) of the Act being the broadcast by Bauer in conjunction with Channel 9 of a television program under the name Discover Downunder making it for all practical purposes impossible for Evergreen to use the mark for the intended services.
The key issue in the appeal to the Full Court was whether the primary judge erred in refusing to allow Bauer to advance its argument based on section 59(a) (no intention to use).
The pleading issue
Justices Burley and Greenwood (Justice Rangiah dissenting), disagreed with the findings of the primary judge that the no intention to use argument was not properly raised and held that Bauer had in fact framed its contention of lack of intention to use in relation to the specified services as early as the filing of the Amended Statement of Claim, and as such, Evergreen was on appropriate notice of this contention during the course of the proceedings. This placed the contention within the pleadings put forward by Bauer on which relief could be claimed. Further, the Full Court held that as Evergreen did not raise any request for particulars in relation to the amended pleadings, and did they raise any objection in cross-examination when questions relating to this contention were put to Evergreen's witnesses, Evergreen was on notice of the contention and not unfairly prejudiced by the contention being considered by the Court.
The s 59 issue
On the basis of the Court's finding on the pleading issue, the Court was required to consider the s 59 issue: whether Evergreen had an intention to use the DISCOVER DOWNUNDER trade mark for the specified services, being the production of television programs. Bauer argued that Evergreen never intended to use the mark other than as the name of the television program.
The Full Court agreed with Bauer and held that the evidence established that Evergreen did not intend to use the trade mark for the production of television programs, but only as the name of a television program it produced and therefore the opposition should succeed based on s 59. Justice Burley stated "a distinction is to be drawn between the acts of production of a television program and the result of that process". Justice Burley concluded that the name used in relation to the production of television programs was in fact "Evergreen".
Justice Burley stated that the non-use proceedings would succeed for substantially the same reasons as the section 59 ground and did not discuss that ground any further given it would not alter the result of the appeal.
Accordingly, leave to appeal was granted to Bauer, and the appeal was allowed. Evergreen was refused registration of the DISCOVER DOWNUNDER trade mark and required to pay Bauer's costs.
Authors: Maggie Kearney, Lawyer and Lisa Ritson, Partner.
