Bangkok Broadcasting & T.V. Co Ltd v Seven Network (Operations) Limited

[2021] ATMO 78

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Bangkok Broadcasting & T.V. Co., Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Seven Network (Operations) Limited for removal of trade mark number 1146867 (9, 38, 41) – 7 (Figurative) – in the name of Bangkok Broadcasting & T.V. Co., Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Sam Hallahan of Counsel instructed by Davies Collison Cave Pty Ltd Applicant: Renee Burgess of Herbert Smith Freehills
Decision:	2021 ATMO 78 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(a) and (b) application for removal - Removal Opponent’s evidence shows use of the Trade Mark for some of the services during the relevant period - No obstacle to use shown – Registrar’s discretion under s 101(3) not exercised in favour of the Opponent for the remaining goods and services – trade mark to remain on Register for some of the services

Background

1. This decision is pursuant to an application made on 1 August 2019 under ss 92(4)(a) and (b) of the Trade Marks Act 1995 (‘Act’) by Seven Network (Operations) Limited (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods and services for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	1146867
Lodgement date	16 November 2006
Goods and Services	Class 9: Computers, compact discs, CD-ROMs, audio compact discs, diskettes, magnetic data discs, phonograph records, video compact disc, DVDs, videotapes, cassette tapes, cinematographic film Class 38: Television broadcasting, radio broadcasting, cable television broadcasting, cellular telephone communication, news agencies, satellite transmission, teleconferencing services, wire services, hi-speed Internet or broadband Internet broadcasting; telecommunication broadcasting through both wire and wireless systems; and satellite broadcasting Class 41: Radio and television programs production, television drama production, performance and shows production, videotape film production, television entertainment, digital imaging services, entertainer services, entertainment information, modelling for artists, rental of motion pictures, movie studios, providing movie theatre facilities, music composition services, news reporter services, providing karaoke services, radio entertainment, recording studios services, rental of videotapes, video editing (‘Registered Goods and Services’)
Owner	Bangkok Broadcasting & T.V. Co., Ltd
Trade Mark	(‘Trade Mark’)

2. Bangkok Broadcasting & T.V. Co., Ltd (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 25 September 2019 and a Statement of Grounds and Particulars (‘SGP’) on 21 October 2019.  The Applicant filed a Notice of Intention to Defend on 23 December 2019.

1. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

   4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 2 October 2020 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 6 July 2021.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 4 May 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 22 June 2021 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 29 June 2021 (‘Applicant’s Submissions’).  At the hearing Sam Hallahan of Counsel instructed by Adam Sears of Davies Collison Cave represented the Opponent and Renee Burgess of Herbert Smith Freehills (accompanied by Ike Papageorge and Tim Burn-Francis) represented the Applicant, both appearing by video conference. 

2. On 29 June 2021 the Applicant filed additional evidence, which it sought to rely upon in the hearing.  By direction on 30 June 2021, I indicated that the late filed material would not be considered.  On the morning of the hearing the Opponent sought to file additional evidence which it sought to rely on in the hearing.  The Opponent submitted that the new evidence would be highly probative and for that reason (notwithstanding that there was no reason why this material could not have been adduced as part of its EIS or EIR) I should have regard to that material.  In such circumstance I decline to exercise my discretion under either 21.15(4) or 21.19 of the Regulations to consider the late filed material and note the comments of the Delegate in Ion Asset Management Ltd v Ion Trading UK Limited set out below which I consider to be relevant to this matter and indeed other matters where a party seeks to file new evidence (that could have been filed in accordance with the Regulations) solely because they have been made aware of a gap in their evidence by reason of the other party’s submissions:

   For whatever reasons, the Opponent in this case chose to provide evidence in support of its opposition which is of a standard which falls well short of that required to establish use. It is of no surprise that the Applicant was highly critical of that evidence in its written and oral submissions. Further, there is no obligation on the Applicant that it draw the Opponent’s attention to shortcomings it considers exist in the Opponent’s evidence at any stage earlier than it did. It was incumbent upon the Opponent, in conjunction with its representatives, to provide, if possible, evidence to show that it has used its trade mark during the Relevant Period. That evidence should be appropriately prepared at the appropriate time. To attempt to rectify the shortcomings in their evidence on the day before the hearing is far from appropriate.

   It would constitute an unfair and unwarranted imposition upon the Applicant for me to consider the Opponent’s Reg 21.19 Evidence in arriving at my decision in this matter. The Applicant prepared for the hearing on the basis of evidence which was filed in accordance with the Regulations. Procedural fairness—reflected in reg 21.19(1)(e)—demands that the Applicant be given a reasonable opportunity to make representations about the Opponent’s Reg 21.19 Evidence were I to take it into account. This would cause an unwarranted delay in the proceeding of, potentially, many months.

   I therefore do not intend to take the Opponent’s Reg 21.19 Evidence into account in making my decision in these proceedings. Neither am I satisfied, for similar reasons, that it is appropriate that I consider it under the power available to me pursuant to reg 21.15(4).[1]

   [1] [2015] ATMO 124, [62]-[64].

   6. I am a Delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the submissions made at the hearing:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s EIS;

   ·The Applicant’s EIA;

   ·The Opponent’s EIR;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Provisions

   7. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)  to use the trade mark in Australia; or

   (ii)  to authorise the use of the trade mark in Australia; or

   (iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)  has not used the trade mark in Australia; or

   (v)  has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

   8. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 1 July 2019 (‘relevant period’).

   9. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[2] and I confirm that five years since filing the application have in fact passed.

   [2] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

   10. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i) to use the trade mark in Australia; or
   (ii) to authorise the use of the trade mark in Australia; or
   (iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the opposed application relates ( relevant goods and/or services ); or
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

   11.     I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[3]

   [3] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   12.     In accordance with s 101 the Registrar may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

   13. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[4] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[5]

   [4] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

   [5] Nodoz Trade Mark (1962) RPC 1, 7.

   Opponent’s Evidence

3. The Opponent’s EIS in this matter consists of a declaration jointly made on 20 March 2020 by Yaowalak Poolthong and Mr Pattanapong Nuphan, the Managing Director and Assistant Managing Director of the Opponent, with exhibits PS-1 to PS-13 (‘Poolthong Declaration’). 

4. The Poolthong Declaration states that the Opponent is a company, based in Thailand that has used the number 7 in its branding since 1967.   It states that the Opponent has used the Trade Mark in Australia continuously since 2012 in relation to a broad range of goods and services relating to the radio and television broadcasting industry.  In particular:

   ·The Opponent operates a website at <ch7.com> available in Australia and accessed by users in Australia that promotes its live broadcasting services, including providing extracts of its news and video clips.

   ·The Opponent operates a digital streaming platform called BUGABOO INTER from a platform at <inter.bugaboo.tv> which since June 2018 is available and has been accessed by users in Australia.  Users subscribed to the BUGABOO INTER streaming services can view a broad range of programs offered by the Opponent.  These services are accessible through various mobile applications which have been offered by the Opponent throughout the relevant period.

   ·The Opponent also operates an official YouTube channel featuring the Trade Mark.  The Opponent’s YouTube channel has operated continuously since 2010, is accessible from Australia, and displays various video clips, television programs and extracts from television programs.  Such programs generally display the Trade Mark in the corner of the screen.

   Both the Opponent’s website and Opponent’s streaming platform and mobile applications display the Trade Mark on many of the programs displayed, either as part of the title or as an on screen watermark.  

5. The Poolthong Declaration states that the Opponent produces original content and has obtained global licenses to stream certain content worldwide including to Australian viewers.  The Opponent also provides confidential information about the number of Australian subscribers and revenue in Australia during the relevant period, the numbers being small but not negligible.   Finally the Opponent provides evidence of its global marketing expenditure including its social media presence through Facebook, Twitter, and Instagram.  The Opponent asserts that by reason of its activities it has a significant reputation both in Australia and internationally and removal of the Trade Mark would cause confusion in the Australian marketplace.

6. The Opponent’s EIR in this matter consists of a declaration made on 26 June 2020 by Claire Groves, Trade Mark Attorney employed by the Opponent’s representative, with Exhibits CG-1 to CG-13 (‘Groves Declaration’).  The Groves Declaration states that the Declarant, in August 2020, was able to download the Opponent’s smartphone application on her smartphone.  This application displayed the Trade Mark and enabled the Declarant to watch various television shows through her smartphone.  The Groves Declaration also exhibits details of the Australian viewership of programs streamed through the Opponent’s smartphone app and YouTube channel in the relevant period.     

   Applicant’s Evidence

7. The Applicant’s EIA in this matter consists of declarations made on 26 June 2020 by Veronique Helene Maury, Senior Legal Counsel for the Opponent, with Exhibits VM-1 to VM-32 (‘Maury Declaration’) and Timothy Burn-Francis, Solicitor at Herbert Smith Freehills, the Applicant’s representative, with exhibits TKB-1 to TKB-18 (‘Burn-Francis Declaration’). 

8. The Maury Declaration provides details of the Applicant and its reputation in Australia, including details of its use of various logos containing the number ‘7’ and its use of various marks containing or consisting of the number ‘7’ for its services and promotions, both in respect of its primary television broadcasting service as well as for retail, merchandise, lifestyle, and other entertainment goods and services. It concludes that the Declarant considers that by reason of the reputation of the Applicant in its various ‘7’ logos, retention of the Trade Mark on the Register would likely result in consumers being misled and deceived.

9. The Burn-Francis Declaration provides evidence of the Applicant’s registered trade marks that contain or consist of the number ‘7’. It also provides evidence that the Opponent is not the holder of any licence (broadcasting or otherwise) from the Australian Communications and Media Authority.  It also suggests that the Opponent’s smart phone applications were geoblocked and listed as not being available in Australia.

   Discussion

10. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) is considered to effectively merge with paragraph (b) once a trade mark has been registered for five years.[6] As the Trade Mark had been registered for more than five years as at the date of the application I need only consider the application for removal under s 92(4)(b) in this case. Therefore, to successfully oppose the Application the Opponent must establish that it has used the Trade Mark pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by another person who was authorised by the Opponent is taken to be use of the Trade Mark by the Opponent[7]. 

    [6] M Davison Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.510].

    [7] s 7(3) of the Act.

11. If the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Mark should not be removed from the Register.

    Use of the Trade Mark in the relevant period

1. Prior to considering the evidence of use, there is an initial argument that I must resolve.  The Applicant submitted that any use of the image set out below (with the Trade Mark to the right), is not use of the Trade Mark as the image contains additions or alterations that substantially affect its identity.  

2. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

3. I do not accept the Applicant’s submissions on this point.  The respective images involve the exact same shapes, colour combinations and use of the number 7 in a distinct font.  The additional HD element is clearly meant as a descriptive (in the context of the services) abbreviation for ‘high definition’ and is not an essential feature of the image above.  The remaining differences are de minimus and amount to some minor shading that provides the Trade Mark with a more three-dimensional feel.  Having regard to the essential features of each mark I consider that a total impression of resemblance emerges from the comparison.  I now consider the evidence of use.

   [8] (1963) 109 CLR 407, 414.

4. Having reviewed the EIS, I find that the Opponent has offered a streaming service through its BUGABOO INTER mobile and internet application which was available in Australia in the relevant period and during that period, was signed up to by a small but not insignificant number of Australians[9].  While the Opponent is based out of Thailand, its use of the Trade Mark on its mobile and Internet application satisfies the requirements as set out in Ward Group Pty Ltd v Brodie & Stone plc:

   In summary, the use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[10]  

   [9] There was some dispute between the parties as to the number of Australians signed up with the Opponent; with the Applicant positing that a table provided by the Opponent indicated the raw number of subscribers each month as opposed to the number of new subscribers signed up each month.  I accept the Opponent’s evidence that the table shows the latter, noting that such evidence is entirely consistent with the Opponent’s evidence as to the number of shows watched and revenue for the BUGABOO INTER app.

   [10] (2005) 143 FCR 479, [43].

   27.     The Applicant has submitted that the Opponent’s BUGABOO INTER App did not involve the use of the Trade Mark as the app and streaming services were offered under the BUGABOO INTER mark.  The Opponent provides streaming programming through its BUGABOO INTER service.  This programming displays the Trade Mark to distinguish the Opponent’s streaming services from other streaming programming.  I am satisfied by the Opponent’s extensive evidence that there were Australians who, during the relevant period, were customers of the Opponent, and through the BUGABOO INTER App, received the Opponent’s streaming services which were branded with the Trade Mark.

   28.     A more difficult question is whether the Opponent’s use of the Trade Mark on its YouTube channel, social media and <ch7.com> website constitutes use in Australia.  While none of this media is specifically targeted at Australia, it is undoubtedly true that Australians have been exposed to this media (with a highly significant number of downloads on the Opponent’s YouTube channel from Australia during the relevant period being a prominent example).  Where there is no evidence of specific targeting of Australians through this media, the Opponent has submitted that one can infer from the number of downloads and the offering of the BUGABOO INTER platform in Australia that Australia was one of a number of jurisdictions that the Opponent intended its use of the Trade Mark to be directed or targeted at when uploading material bearing the Trade Mark to its media pages.

   29.     I am wary of accepting the Opponent’s formulation that one can assume that targeting must have occurred simply by noting the number of viewers of a particular item of media in a particular jurisdiction and am not aware of any cases that support this formulation.  The practical consequences of accepting such a formulation would render almost any use of a trade mark on any website worldwide that was accessed and downloaded in Australia subject to a claim of trade mark infringement in Australia.  As such I am not satisfied that, as a general principle, the Opponent’s use of the Trade Mark on its social media was targeted at Australia.  I reach the same conclusion with the Opponent’s CH7HD YouTube channel.  I am however, prepared to infer that use of the Trade Mark on the Opponent’s BUGABOO INTER YouTube channel was targeted at Australia.  I reach this conclusion by noting that this YouTube channel was specifically created to target viewers living in countries outside Thailand, and that it was created to advertise and support the Opponent’s BUGABOO INTER streaming product, which was a product targeted at Australia.  

   30.     The next question is whether the Opponent’s use of the Trade Mark in Australia as part of its BUGABOO INTER App and YouTube Channel was use in respect of the Registered Goods and Services. The Opponent concedes that this was not use in respect of any of the Goods, rather it submits, at paragraph 34 of the Opponent’s Submissions, that its use was in respect of the following services for which the Trade Mark was registered.  I set out the services in particular categories below:

   (a) Television broadcasting;

   (b) Hi-speed Internet or broadband Internet broadcasting;

   (c) News agencies; News reporter services;

   (d) Radio and television programs production; Television drama production; Performance and shows production; Entertainer services; Video editing

   (e) Television entertainment;

   (f) Entertainment information

   31.     It was essentially undisputed in the hearing that, were I to find that the Opponent’s use of the BUGABOO INTER App to be use of the Trade Mark in Australia, that it would be use for television entertainment.  I find that to be the case[11].   I also consider that the provision of streaming services through an app is clearly Hi-speed Internet or broadband Internet broadcasting, noting the ordinary definition of ‘broadcasting’ is to send out or transmit (something, such as a program).

   [11] I do not accept the Applicant’s submissions that Opponent’s use has been for ‘television entertainment, namely television soap opera programs in Thai language and streamed over the Internet’ and the registration should be restricted in this manner. It is not necessary, in a proceeding under s 92(4)(b) of the Act where a party must show use for a particular good or service, to show use for every possible sub-category of that good or service; indeed a single bona fide use of the Trade Mark in the course of trade during the relevant period can be sufficient to rebut a claim of non use for a particular good or service.

   32.     The Applicant argued that the Opponent’s activities did not amount to Television broadcasting since the Opponent was not the holder of a television broadcast licence in Australia pursuant to the Broadcasting Services Act 1992. The Opponent noted that definition of a ‘broadcasting service’ in the Broadcasting Services Act 1992 includes a ‘service that delivers television programs or radio programs to persons having equipment appropriate for receiving that service, whether the delivery uses the radiofrequency spectrum, cable, optical fibre, satellite or any other means or a combination of those means…’ but a ministerial determination has excluded the requirement of a licence under the Broadcasting Services Act for ‘a service that makes available television programs or radio programs using the internet, other than a service that delivers television programs or radio programs using the broadcasting services bands’.

   33.     Ultimately, I accept that the Opponent’s services involve the broadcasting of television programs in Australia, over the Internet.  I am not persuaded by the Applicant’s submissions that ‘television broadcasting’ must exclusively be conducted over the broadcasting services bands; such an exclusion is contrary to the ordinary meaning of television broadcasting, the technology-neutral definition in the Broadcasting Services Act, and indeed would render a significant proportion of the Applicant’s activities (such as providing its television services through its 7HD App and through cable or optical fibre) as falling outside the definition of television broadcasting.

   34.     I do not find that the Opponent offers entertainment information services under the Trade Mark in Australia.  Providing information about its own entertainment services through its app is merely ancillary to the Opponent’s television broadcasting and television entertainment services.  Equally I do not consider the Opponent provides News agencies; News reporter services under the Trade Mark in Australia.  While the Opponent may provide such services under its <ch7.com> website I have not found that use of the Trade Mark for that website was use in Australia.

   35.     Finally with respect to Radio and television programs production; Television drama production; Performance and shows production; Entertainer services; Video editing, I do not find that the Opponent has offered these services under the Trade Mark in Australia.  The Opponent’s services in Australia involving the streaming of television programs; the fact that it produces a proportion of these programs itself in Thailand (rather than licensing third parties to do so) does not result in the use of the Trade Mark in Australia for television production (and related services).  The Opponent’s reliance on Carnival Cruise Lines Inc v Sitmar Cruises Limited[12] to support its view that broadcasting television programs produced in Thailand amounts to use of the Trade Mark for television programs in Australia is misplaced.  That case involved the advertising in Australia of services available (to Australians) overseas.  The present case involves the Opponent providing a range of services in Australia, involving the streaming of television programs.  There is no evidence that the Opponent has offered television production services (or similar services) to Australians under the Trade Mark.

   [12] [1994] FCA 936.

   36.     I find that the Opponent has used the Trade Mark for ‘Television broadcasting; Hi-speed Internet or broadband Internet broadcasting’ in class 38 and ‘television entertainment’ in class 41 (‘Used Services’).  I find that there is no evidence of any use of the Trade Mark for the Registered Goods and Services that do not fall into the Used Services category (‘Remaining Goods and Services’).

   Obstacles to use

   37. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Mark for the Remaining Goods and Services in the relevant period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Mark, it is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Trade Mark to remain on the Register for any of the Remaining Goods and Services.

   Registrar’s Discretion

   38.     As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[13] However, as indicated at paragraph 12, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

   [13] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

   a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[14]

   [14] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

   Her Honour also noted:

   By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

   There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[15]

   [15] Ibid [171]-[172].

5. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

   Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[16] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[17] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[18]

   [16] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

   [17] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

   [18] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

   40.     Factors that have been found relevant to the consideration of whether to exercise the discretion include:

   ·There had been no abandonment of the trade mark;

   ·The registered proprietor of the mark still had a residual reputation in the mark;

   ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

   ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

   ·The registered proprietor was not aware of the applicant’s sales under the mark.[19]

   [19] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

   41.     In the present case, there is no evidence that the Opponent has ever used the Trade Mark or intends to use the Trade Mark in the future in Australia for any of the Remaining Goods and Services.  Given that, I am unpersuaded that the removal of the Trade Mark for the Remaining Goods and Services would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Registrar I do not consider it appropriate to exercise my discretion not to remove the Trade Mark in respect of any of the Remaining Goods and Services.

   Decision

   42.     I decide that the Opponent has partly established its opposition to removal and the Trade Mark should only be removed from the Register in respect of the Remaining Goods and Services.

   43.     Accordingly, I refuse to remove trade mark registration 1146867 in its entirety but direct that one month from the date of this decision the specifications be amended to the services listed below and the Trade Mark will be removed from the Register in respect of all remaining goods and services. If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

   Class 38: Television broadcasting; Hi-speed Internet or broadband Internet broadcasting.

   Class 41: television entertainment

   Costs

   44.     Both parties have requested their costs. However as both parties have had a degree of success in respect of the application for removal of the Trade Mark I determine that each party should bear their own costs.

   Nicholas Smith
   Hearing Officer
   Hearings and Oppositions
   3 August 2021