Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Bauer Consumer Media Ltd and Bauer Media Pty Ltd to registration of trade mark application 1324177(41) – Discover Downunder – filed in the name of Evergreen Television Pty Ltd.

Delegate:	Debrett G. Lyons
Representation:	Opponents: Luke Merrick of Counsel, instructed by the Opponents’ in-house lawyer, Macek Rubetzki Applicant: Colin Parrôt and Warren Parrôt
Decision:	2014 ATMO 78 S52 opposition to registration; ss 41, 42(b), 58, 59, 60 and 62A pressed – none established – opposition unsuccessful. Costs: awarded against Opponents.

Introduction

This matter is an opposition to the registration of a trade mark filed under the Trade Marks Act 1995 (‘the Act’) by Evergreen Television Pty Ltd (‘the Applicant’). Relevant details of the application are:

Application No: 1324177
Priority Date: 9 October 2009

Services:Class 41 : Production of television programs
(‘the Services’)

Trade Mark: Discover Downunder
(‘the Trade Mark’)

Endoresement: Provisions of subsection 41(5) applied. Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

The application was examined as mandated by section 31 of the Act and advertised in the Australian Journal of Trade Marks as accepted for possible registration on 27 January 2011.
On 19 April 2011, Bauer Consumer Media Ltd (‘BCM’) and Bauer Media Pty Ltd (‘BM’) (‘the Opponents’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark.
The parties served and filed evidence as described later after which the matter came for a hearing in Melbourne on 26 May 2014 before me, a delegate of the Registrar of Trade Marks. At the hearing, Luke Merrick of counsel instructed by the Opponents’ in-house lawyer, Macek Rubetzki, represented the Opponents. The Applicant was represented by Colin Parrôt, albeit that Warren Parrôt who was also present, made additional oral representations.
I note here that I interrogated the Parrôts from time to time asking questions of which neither side had notice. Some of the responses were not supported by the evidence of record and I have not taken that information into account in reaching my decision.

Background

The dramatis personae in this matter and how they are connected to each other follows.
Colin Parrôt is something of an entrepreneur and has a detailed knowledge of camping and caravanning in Australia.
Evergreen Pty Ltd (‘Evergreen’) was incorporated in 2001. It produces television programs.
Colin Parrôt has been the sole director and shareholder of Evergreen since 2007. For the purposes of this decision he can be treated as the controlling force of that company at all relevant times.
The Nine Entertainment Co. group of companies (‘Nine’) was involved in publishing, broadcasting, media and entertainment.
Nine Network is the television broadcasting arm of Nine.
Network Ten is another Australian television broadcaster, not part of Nine or connected with the Opponents.
ACP Magazines Pty Ltd (‘ACP’) is Australia’s largest publisher of magazines and was part of Nine until 1 October 2012 when Nine sold its publishing interests to BM.
ACP publishes magazine titles such as Caravan World, Motorhome & Caravan Trader and Campertrailer Australia.
Trade Classifieds (sometimes referred to in the evidence as ‘Trader’ and so adopted herein) is the classified advertising division of ACP.
Warren Parrôt is Colin Parrôt’s son. He was employed by ACP (in the Trader division principally) from 2000 until 2009.
Keith Falconer (‘Falconer’) is the CEO of Trader.
BCM is a company within the broader Bauer Media group and a publisher of magazines in the United Kingdom. It is said to licence the use of several Australian trade mark registrations to BM and so have relevant rights under section 53 of the Act[1].
[1] There has been no need in my decision to question whether BCM had a right or interest in the opposition for the purposes of section 53 of the Act.

Grounds of opposition and primary submissions

The Notice is couched in wide terms but in the days leading up to the hearing and in accordance with the timetable I set, the parties provided me with written outline submissions of their arguments from which it emerged that only those grounds of opposition premised on sections 41, 42(b), 58, 59, 60 and 62A of the Act were pressed by the Opponents.
I treat the remaining grounds listed in the Notice but not pursued at the hearing to have been implicitly abandoned, albeit that the Opponents are free to rely on those grounds should they appeal my decision.
It is the Opponents’ contention that since late 2004, BM has produced (through production companies engaged on a commissioned basis) and promoted a television series relating to caravanning and motorhome holidaying in Australia under the Trade Mark (‘the television series’ or ‘the series’).
It is said that it was their employee, Warren Parrôt, who devised the Trade Mark and was responsible for the development of the series.
The Opponents assert that either BCM or BM is the owner of the Trade Mark in respect of the production of television programs for the following reasons:

because the Trade Mark and the concept for the series were developed by an employee of BM in the course of his employment;
because the Opponents were the first users of the Trade Mark in connection with the production of television programs;
because since 2005 the Opponents have engaged in other activities involving the use of the Trade Mark, including the operation of a website and securing sponsorship arrangements; and
because the Opponents have derived significant income from the use of the Trade Mark.

The Applicant’s submission is that Colin Parrôt created the Trade Mark and that the series came from ideas which he had formed since the late 1980s.
The Applicant submits that neither the Opponents nor any of the Nine businesses played a part in the creation of the series or the Trade Mark and that the Opponents have no rightful claim to ownership of the Trade Mark. Instead, the Applicant is the owner of the Trade Mark and has made lawful use of the Trade Mark.
Throughout, the parties’ submissions focus on this theme of ownership of the Trade Mark. Section 58 provides that “registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.” Something will be said later of the section 41 ground of opposition which more clearly stands apart from the other grounds. However, the grounds under section 42(b) (use of the Trade Mark contrary to law), section 59 (no intention to use the Trade Mark), section 60 (use of the Trade Mark likely to deceive or confuse) and section 62A (application for the Trade Mark made in bad faith) are, at one level, connected with the determination of rightful ownership and user of the Trade Mark. It follows that I should first consider section 58. The section of this decision which precedes that analysis dealing with the evidence of record has been distilled and redacted as required to concentrate on the matters pertinent to ownership of the Trade Mark.

Onus

The Opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[2] In its written submissions the Opponents accept that statement of the law.
[2] Pfizer Products Inc v Karam [2006] FCA 1663.
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

The evidence comprises declarations from:

Evidence in Support

§Macek Rubetzki dated 15 November 2011;
§Macek Rubetzki dated 21 November 2011; and
§Keith Falconer dated 21 December 2011;

Evidence in Answer

§Colin James Parrôt dated 9 December 2011;
§Warren Parrôt dated 10 April 2012;
§Colin James Parrôt, undated but made on either 13 or 14 April 2012; and
§Colin James Parrôt dated 7 August 2012.

Evidence in Reply

§Macek Rubetzki dated 22 August 2012; and
§Keith Falconer dated 7 December 2012.

Genesis of the Trade Mark

For the purposes of section 58, I have determined that anything of core importance happened in 2004 or 2005. Later events have been given appropriate weight in terms of how they might shed light on the evidence before 2006.
Synoptically, the Applicant’s submissions are that in 2004 it approached Warren Parrôt in order to put to ACP (and so, indirectly, Nine Network) the idea of a general caravan and camping television show. It is said that Nine Network turned down the idea after which the Applicant met with Network Ten which in early 2005 agreed to broadcast eight episodes of the series under the Trade Mark.
The Applicant states that during 2005, Network Ten and its regional affiliated network, Southern Cross Television, broadcast those eight episodes (‘the First Series’) and in 2006 those same networks broadcast a further twelve episodes (‘the Second Series’).
Later, between 2007 and 2009, the Nine Network broadcast the third to seventh series.
The declaration of Warren Parrôt dated 10 April 2012 provides greater detail, stating that in July 2004 Colin Parrôt came to him with the idea of a camping and caravanning television show under the working name of “Caravan Australia”.
Warren Parrôt declares that he took the idea to an ACP executive, Mike Sinclair, which was followed by a 25 August 2004 meeting with Colin Parrôt and a group of others mainly from ACP, then a later meeting with Falconer.
It is said that Falconer liked the idea if it could be put “on TV at no cost to Trader” since it would promote the sale of Trader’s stable of caravanning, camping and 4WD magazines.
The evidence from both sides is then consistent. Warren Parrôt and Falconer declare that in a subsequent meeting with Nine Network executives, the idea was turned down. Recollections differ slightly – Falconer stating that it was because of tight 2005 scheduling; Warren Parrôt remembering that the idea was viewed as not being “sexy enough”.
The evidence from both sides is also in accord that after that rejection the idea was taken to Network Ten. Falconer declares that the meeting was at his suggestion and with his approval, but that he did not attend the meeting. Falconer declares that although Nine Network was “the natural home for the … series”, it was not able to place the series in its 2005 schedule and:
Accordingly, with my authority, Warren Parrot approached Network Ten and was successful in placing the series on that network for 2005. … In persuading Network Ten to be involved, Warren Parrot was assisted by his father. …
The Network Ten meeting was attended by Colin Parrôt, Warren Parrôt and another person from an industry organization who has not given evidence. Colin Parrôt’s evidence is that on 26 January 2005 he met with Network Ten program manager Tim Clucas in Sydney who liked the idea but the “project name Caravan & Motorhome Downunder required a re-think”.
Warren Parrôt’s evidence is that he and Colin Parrôt met with Mr Clucas on 24 January 2005 (a timing discrepancy which Rubetzki, the Opponent’s in-house counsel admits is of no significance) and that the meeting was followed by a 27 January 2005 email from Colin Parrôt to Mr Clucas (annexed to Warren Parrôt’s declaration) stating in part:
On behalf of Warren, Peter and myself many thanks for your time and suggestions last Monday re our proposed TV show for Caravans & Motorhomes renamed “Discover Downunder Now”.

Colin Parrôt declares that on 28 January 2005 Mr Clucas responded saying: “drop the NOW, and go ahead with 8 episodes”.
At another place, Colin Parrôt states that Channel Ten “helped manicure the title Discover Downunder”.
Warren Parrôt’s declaration in fact annexes a copy of the 28 January 2005 reply email from Mr Clucas which reads in part:
I like the new name but, although I understand the reason for it, I don’t think the “Now” in title adds anything. “Discover Downunder” rolls off the tongue ….”

For its part, the Opponents’ primary evidence is given by Falconer who states that:
It was in or around April 2004 that Warren Parrot devised the name Discover Downunder for the series and commenced work on the series development.

The Network Ten agreements

There is no dispute that the First and Second Series were broadcast by Network Ten and its regional affiliate, Southern Cross Television, entities with no connection to the Opponents.
Annexed to Colin Parrôt’s undated 12 April 2012 declaration is a letter from Elissa McIntyre, Legal Assistant – Broadcasting at Network Ten Pty Ltd to the Applicant enclosing “a fully executed agreement between Ten and Evergreen Television Pty Ltd for your records.”
With that letter there are in fact two agreements, one dated 25 February 2005 and another dated 27 October 2005. Both are described as a “Television Program Licence Agreement” and they are in broadly similar terms (‘the Network Ten agreements’). In each case, they name the Applicant as the licensor. The Applicant grants Network Ten a broadcast licence for, in the earlier agreement, eight 30-minute episodes of a program title “Discover Down Under”, and in the later agreement, twelve 30-minute episodes of a program title, “Discover Down Under – Series 2”. In the former agreement the licence term is 2 years from 1 April 2005 and in the latter agreement the term is 2 years from 1 January 2006.
Clause 2A of the Terms and Conditions to the Network ten agreements states that “The Licensor shall have the right to vary the title of any Program during the licence ….”. In clause 10(a) the Applicant warrants that it owns the complete unfettered and exclusive rights in each Program and in clause 10(c) the Applicant warrants that it has not acted in any way that might give rise to an impediment to the grant of the licence.

Other agreements

There is no disagreement that Warren Parrôt was employed by ACP from 2000 to 2009. The Opponents’ evidence includes a copy of an offer of employment letter from ACP to Warren Parrôt as “Senior Account Manager, Youth Titles and Ralph Magazine”. Falconer declares that in April 2004 Warren Parrôt’s position became “National Corporate Sales Manager”. In 2009 he was made redundant.
There is no evidence of a written agreement between ACP or any other Nine company and the Applicant. Falconer states that it would have been “common practice” for the Opponents to have involved their legal department in the formalization of a contract between ACP and Evergreen and that he “[does] not know why this was not done”.
So far as the terms of an unwritten agreement between ACP and the Applicant might be understood, Falconer states that “such an agreement would certainly have followed industry norms, and would have included explicit provisions acknowledging that Evergreen would not ... acquire any intellectual property rights.”
Falconer continues:
The terms of that agreement, whilst not the subject of a single written production services agreement signed by both parties, included amongst other things, implicit provisions [as to rights ownership] …

Later, in his evidence in reply, he declares that “all discussions [at the Network Ten meeting] were predicated on the clear basis that ACP Magazines would own all rights in the series, including owning the title.”
The Opponents rely on an internal email dated 6 July 2005 in which Warren Parrôt stated:
In regards to our agreement with Col & Evergreen to produce eight episodes we didn’t have a written agreement as such (an oversight by me due to the fact that he is my father), the agreement was:
$25,000 + gst per episode;
Total - $200,000 + gst

However, there is a context to that email which requires inclusion. Warren Parrôt received, third hand, an email enquiry from the PA to Falconer which read:
Hi Warren,
Can you please get me a copy of the Contract for Discover Down Under, Keith [Falconer] doesn’t seem to have it on file.
Thanks, Lee

Warren Parrôt replied 45 minutes later and the first sentence of his reply (edited out in the Opponents’ submissions and their declaratory statements) reads:
I have just called Col as he received the ‘purchase order’ from Channel 10 for the eight episodes. He is making a copy and sending it over.

There is no evidence of a written television broadcasting agreement between ACP or any other Nine company and Network Ten. Falconer states that:
As with the television production services agreement with Evergreen, I had expected that Warren Parrot would involve ACP Magazines’ legal department in the drawing up/review of the television broadcasting agreement between ACP Magazines and Ten Network.

The website

The Opponents assert that they have owned the domain name <discoverdownunder.com.au> and have operated a corresponding website at since 2005.

“Series Creator”

The First and Second series consist of episodes which conclude with credits which list Warren Parrôt as the “Series Creator”.
Falconer declares that “the use of the word “creator” is common in television production to acknowledge the identity of the person who devised a television program, including the title.”
Colin Parrôt has sought to explain this as “a dad building his son’s ego and career.”

Financing

The Opponents’ evidence is laden with invoices it received from the Applicant and with proof of various payments to the Applicant.
It is the Opponents’ submission that these show the type of agreement they had with the Applicant which they characterize as commissioned television production services, no more.
It is the Applicant’s submission that these are not proof of who is the rightful owner of the Trade Mark.
For reasons which follow it has not been necessary to describe this (or other) evidence.

Section 58

To succeed under section 58, the Opponents must establish that someone other than the Applicant first used the Trade Mark (or one “substantially identical” thereto) in Australia for services adjudged to be “the same kind of thing” as the Services before the 9 October 2009 Priority Date, or before the Applicant’s first use of the Trade Mark for relevant services, whichever is the earlier[3].
[3] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375
Both sides have an interest in the exact same services. Both sides claim use of the Trade Mark before 9 October 2009 and so that date is of no further significance.
There is no dispute between the parties as to the application of the law. Had the Applicant been professionally represented there might very well have been. It is clear to me that the Applicant has the untutored understanding of “ownership” of a trade mark largely consistent with how ordinary members of the public conceive trade mark ownership.
The Act provides its own definition of many words and phrases it uses but the term “owner” is not defined. Over the years courts have considered its meaning and have long distinguished the concepts of “authorship” and “ownership”. So, for example, in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 Fullagar, J said (at [19]):
I do not think that the requirement of “authorship” means that the applicant must be the true and first inventor: he has not to establish anything analogous to what an applicant for letters patent for an invention must establish. I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely “I thought of it first”, or even “I thought of it first and communicated it to the applicant.”
There are statements from Colin Parrôt which make it plain that he thinks the Applicant’s stake to ownership of the Trade Mark is firmly planted in the claim that he thought of the Trade Mark first. That matter is not so simple. Put basically, ownership of a trade mark in relation to particular goods or services resides with the party who first uses it as a trade mark for those goods or services.

The Opponents referred me to a decision of the United Kingdom Trade Marks Office – In the matter of application No. 2110335 by Basil Davis (SRIS O-048/00). In that case Mr Davis applied to register the trade mark BLACK MIX in relation to “radio broadcasting services, radio programmes”. The BBC funded and broadcast the BLACK MIX radio program. Mr Davis was a member of the production team of the radio program, but he was not a BBC employee. Hearing Officer Reynolds accepted Mr Davis’ claim that he devised the trade mark. However, Hearing Officer Reynolds also found that the BBC had the power to approve (or veto) the name for the program. Hearing Officer Reynolds held that:
On the basis of the evidence I fail to see anything in the nature of Mr Davis’ relationship with the BBC that might confer ownership of BLACK MIX (or a mark incorporating that element) on him. The role of freelance producer does not in my view bring with it proprietorial rights absent some very clear understanding or contractual arrangement between the producer and the broadcaster/commissioner of the programme.
…
Presenters (and less frequently perhaps producers) will often be strongly associated with the programmes they present. In fact it is frequently the drawing power of the presenter that is the key to a programme’s success. But that does not make the presenter the proprietor of the programme or the title of the programme.

The case requires closer study because, not unlike the facts in the case before me, Mr Davis claimed that he devised and originated the title of the programme, persuaded the BBC to broadcast it and acted as the producer of it.
The BBC alleged that it developed the format of the programme after consultation with Mr Davis. Mr Davis was to work on the programme under the BBC’s editorial control. It was the BBC which used the trade mark in relation to a radio programme, which was produced under its editorial control and broadcast by it. A series of training sessions was conducted by a BBC staff member. About sixty people, including Mr Davis, were taught skills such as researching a program, script writing, interviewing, using a portable tape recorder, and basic studio skills.
Hearing Officer Reynolds had this to say of the ground of opposition under section 3(6) of the UK Trade Marks Act 1994:
The Section reads:
“3(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.”
The opponents’ objection falls under two main headings. Firstly, it is said that the applicant cannot claim to be the proprietor of the mark and secondly that he did not have a bona fide intention to use it at the time the application was made. I will deal with the proprietorship point first because it is the issue at the heart of this dispute.
…
The BBC concedes that “the programme title may have come from the applicant but the decision to use this name lay solely with the BBC.” I am inclined to accept Mr Davis’ claim that he proposed the title BLACK MIX.
…
I go on to consider whether there was anything in Mr Davis’ working relationship with the BBC which might point to him having a proprietorial interest in the programme or the title. Firstly and most obviously I do not think he made any ownership claims clear at the outset though that on its own is not conclusive. Mr Davis stresses that he exercised control over the format and content as producer of the programme. There is a conflict of evidence as to the degree of overall supervision and editorial control exercised by the BBC. Mr Davis believes he was or became a free agent and claims not to have been aware of any overt editorial control. The BBC say that they had final editorial control and that this continued throughout Mr Davis’ tenure as producer. I do not think it is critical for me to resolve this apparent conflict. The truth is probably that as Mr Davis and his team became more experienced there was a consequential diminution in the need for intervention by the broadcaster. In any case the functions exercised by Mr Davis as producer presumably corresponded to the role that an internal producer (BBC employee) would have been expected to assume. In other words to fulfil the function of a producer he needed to generate content and come up with an end product with minimum need for intervention by the BBC.
What then was Mr Davis’ status? He describes himself as an independent producer. He was not on my reading of the evidence an employee of the BBC but equally he was not acting as an independent production company devising and developing a programme for sale or license to a broadcaster (BLACK MIX was not a piece of "bought-in" programming). Rather he was employed on a freelance basis to produce a programme using BBC resources. The BBC say that Mr Davis “was paid for his duties in producing each programme in accordance with the rate for a reporter’s eight hour shift”. In support of this Ms Reid exhibits at AFHR5 a copy of a local radio contract of the type that was said to be standard at the time for freelance producers. It is said that such a contract was sent to Mr Davis each week.

In reaching his decision that Mr Davis was not the “owner” of the trade mark, Hearing Officer Reynolds took account of the following factors:
… that the decision whether to have a programme or not rested with the BBC (and still does); that the BBC exercised overall control over choice of key personnel and their training; that the contract between the BBC and Mr Davis suggests that the latter’s role was a limited one; Mr Davis’ association with the programme did not in itself confer proprietorial rights; there is no evidence that any claims to ownership of the title, format or content of the programme were asserted during the period leading up to the broadcasting of the programme; and that the BBC has continued to broadcast the programme under the title BLACK MIX since Mr Davis’ departure.

Assessment of the section 58 evidence

Notwithstanding the bifurcation of ownership and authorship that is made under section 58, it remains the case that the determination of authorship is a factor which informs the final decision about ownership. In this case authorship is far from clear.
The Opponents’ declaratory evidence is given by Messrs Rubetski and Falconer. Mr Rubetzki has been employed by the Opponents since 2007, later, as I have already indicated, than most of the key events. He is not in a position to give a firsthand account of any of the events surrounding creation of the name, but nor, in fairness to him, has he attempted to recreate those events.
By his own evidence, Falconer started with the Trader arm of ACP in “early 2004”. He declares that “[d]uring the whole term of Warren Parrot’s employment by ACP magazines, I was always his manager”, a statement which is inaccurate since Warren Parrôt had been employed by ACP for four years before Falconer’s engagement there. Further, I note here that in his 10 April 2012 declaration, Warren Parrôt states he “was quite surprised to see Keith’s [Falconer’s] affidavit at all considering the very little he had to do with the [Discover Downunder] project for the time that I served at Trader.”
Falconer’s unsupported submission is that “in or around April 2004 … Warren Parrot devised the name Discover Downunder for the series and commenced work on the series development.” At another place Falconer states that “[t]o the best of the Bauer Companies’ knowledge, Warren Parrot devised the Trade Mark.”
Warren Parrôt’s account is that it was in July 2004 when Colin Parrôt came to him with the idea of a camping and caravanning television show under the working name of “Caravan Australia”. As already mentioned, it is said that Falconer liked the idea if it could be put “on TV at no cost to Trader”.
As mentioned, the Network Ten meeting was attended by Colin Parrôt, Warren Parrôt and another who has not given evidence. Colin Parrôt’s evidence is that one outcome of the Network Ten meeting was that the “project name Caravan & Motorhome Downunder required a re-think”. There is contemporaneous evidence from the 27 January 2005 email from Colin Parrôt to Mr Clucas that the revised name put to Network Ten was “Discover Downunder Now”. There is Colin Parrôt’s admission that Network Ten “helped manicure the title” and there is contemporaneous evidence in the form of the 28 January 2005 email from Mr Clucas that he didn’t “think the ‘Now’ in title adds anything. “Discover Downunder” rolls off the tongue …”
Falconer acknowledges that he was not at the Network Ten meeting and that he does not understand the references to “renaming” and “the old name”. He postulated that “Colin Parrot may have taken it upon himself to add the word “Now” to the title ACP magazines had developed...” I note Colin Parrôt’s retort that “Mr Falconer was hypothesising about all his evidence as he didn’t attend any business meetings, bring anything to the table or have any involvement on any matter. How else could you describe his fanciful vision of what went on in the Channel Ten meeting…”
I note too that the Opponents’ did not adduce evidence from the third person who attended the meeting.
Throughout the Opponents’ submissions there is a noticeable reluctance to discuss the Network Ten agreements. Those agreements are termed “licences” and the licensor is the Applicant. They are signed by both parties to the agreements. The Applicant retains naming rights. Warranties are given. Presumably, given Falconer’s comments about industry practices, Network Ten’s legal department drafted and reviewed the contracts.
Finally, Warren Parrôt’s employment at ACP was first as “Senior Account Manager, Youth Titles and Ralph Magazine” and later as “National Corporate Sales Manager”. In so far as he describes his duties at ACP (the magazine and publishing arm of Nine) and taking account of his described reporting responsibilities to Falconer and other ACP executives, it is not immediately obvious to me that he would have been empowered to take independent decisions as to the title creation of commissioned television shows.
Based on these observations I find that ACP is the least eligible candidate for authorship of the name, Discover Downunder. For reasons which follow a conclusive decision on that point is not required, but I would think that the likely author is either the Applicant, or the Applicant and Network Ten jointly (a determination which might partly depend on whether DISCOVER DOWNUNDER and DISCOVER DOWNUNDER NOW are substantially identical for the purposes of sections 7 and 58).
It remains, as in the case involving Mr Davis and the BBC, to look at the other circumstances, including the relationship between the parties, to decide the matter of ownership.
As mentioned, there is no written agreement between ACP or any other Nine company and the Applicant. In spite of Falconer’s declaration that Warren Parrôt reported to him at all times, Falconer states that he does not know why there was no such contract.
So far as Falconer’s statements that such an agreement, if it existed, would certainly have followed industry norms, and would have included explicit provisions acknowledging that Evergreen would not ... acquire any intellectual property rights” is concerned, there is simply no proof of those matters. I do not know what those “industry norms” might be and the Opponents’ have not provided evidence of other written agreements ACP might have with third parties in a similar position to the Applicant.
I can therefore attach very little weight to Falconer’s statement that “[t]he terms of that agreement … included amongst other things, implicit provisions [as to rights ownership] …”.
It follows that his declaration that “all discussions [at the Network Ten meeting] were predicated on the clear basis that ACP Magazines would own all rights in the series, including owning the title” can be given light weight since those matters are, on the contrary, far from clear.
Of concern, too, is the 6 July 2005 email exchange between Warren Parrôt and Falconer’s PA. The dialogue is initiated by Falconer who “doesn’t seem to have [the contract] on file.” The response from Warren Parrôt is that he has requested it from Colin Parrôt who “is making a copy and sending it over.” There is nothing in the evidence to suggest that it did not arrive or was not made available to Falconer. On the evidence there is no indication that Falconer or anyone else within the Opponents’ camp took exception to the terms of the Network Ten agreements.
Moreover, as mentioned, there is no evidence of a written television broadcasting agreement between ACP or any other Nine company and the Ten Network. As before, Falconer, who has already declared himself to have been Warren Parrôt’s manager, cannot clearly explain why there is no contract between Nine and the Network Ten.
Accordingly, there is nothing in the evidence before me of an unwritten contractual arrangement showing with any satisfactory degree of illumination who might be the true owner of the Trade Mark.
All that remains is a small handful of anomalous facts which do not, of themselves, carry sufficient combined weight to cause me to decide one party or the other is the owner of the Trade Mark.
First is the Opponents’ reliance on ownership and use of the domain name <discoverdownunder.com.au>. The Opponents exhibit a copy of a “WhoIs” search of the domain name. It shows that ACP is the current owner of the name. It does not show the creation date and so the Opponents took the additional step of writing to .au Domain Administration Ltd and they exhibit a letter in reply which Mr Rubetzki describes as “indicating that the domain name … was first registered by ACP Magazines on 4 February 2005.”
The letter says no such thing. It merely states that “the creation date of discoverdownunder.com.au is 4 February 2005. There is no indication that ACP was the original registrant and it is common for domain names to be assigned.
Exhibited by Falconer is a most rudimentary page capture of from July 2005 obtained from the Wayback Machine internet archive[4]. There is then a two year break with no evidence of use at all, after which follows evidence of some substance in 2007.
[4] At < >. This website is a digital archive of the World Wide Web and other information on the Internet created by the Internet Archive, a non-profit organization, based in San Francisco, California. It contains over 373 billion web pages saved at various time intervals and is searchable via the relevant URL of interest.
Accordingly, the Opponents’ claim to registration and use of the domain name since 2005 is not supported by the evidence. Moreover, the first registration and use of the domain name postdate both the production of the First Series by the Applicant and its first broadcast by Network Ten. There is any number of explanations as to how the domain name came into the hands of ACP and nothing in this evidence that assists a better understanding of ownership of the Trade Mark[5].
[5] All that can be said is that there is evidence that by July 2007 Colin Parrot was aware of that website.

100. As mentioned, the First and Second Series consist of episodes which conclude with credits which list Warren Parrôt as the “Series Creator”. Colin Parrôt’s explanation of that credit carries no particular force. Falconer declares that “the use of the word “creator” is common in television production to acknowledge the identity of the person who devised a television program, including the title” but, as with Falconer’s earlier claims about “industry norms”, there is no supporting evidence of this claim.

101. Finally, as to the plentiful evidence of invoices the Opponents received from the Applicant and of various payments to the Applicant, little can actually be deduced. The Opponents’ characterization of the agreement with the Applicant as one for commissioned television production services is not made more credible by the relentless incantation of that description in the declaratory evidence; moreover, a good deal of this evidence is entirely consistent with the Applicant’s alternative position that the arrangement was “fee per episode”.

102. Taking the evidence as a whole, there is much to underpin an interpretation that ACP was motivated to support the television series and see it brought to air, if necessary on a rival network, for the sole reason to boost circulation of its stable of camping and caravanning magazines if that could be done without cost to it and (so it follows) with as little commitment from it as was required to bring that about.

103. It is unclear to me why the Opponents’ sought to rely on the UK case of In the matter of application No. 2110335 by Basil Davis. Mr Merrick wisely conceded that there were points of distinction. I would go further by saying that virtually all of the key factors which influenced Hearing Officer Reynolds in reaching his decision are not present in the case here.

104. As noted, it is the Opponents who bear the onus of proof in these proceedings and weighing the evidence on section 58, there is not enough to convince me that the Applicant is not the owner of the Trade Mark, or rather, that a person other than the Applicant is the owner of the Trade Mark. In reaching that decision it is helpful to refer to much of what Hearing Officer Kirov wrote in Taj Food Sales Pty Ltd v Gerson Rangel (2012 ATMO 84) which is of relevance to the matter before me:

The Applicant has nothing to prove in these proceedings and the onus of establishing its s 58 ground rests squarely with the Opponent throughout. … That is to say, in the case of s 58 there is no “shift in onus” from an opponent to an applicant in circumstances where, like here, an opponent merely alludes to a possibility that a party other than the applicant might have a better claim to ownership.
The Full Federal Court (Keane CJ, Stone and Jagot JJ) explored this issue in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 (“Food Channel”), where it was considering whether the trial judge “had erred in proceeding on the footing that [the trade mark applicant] was obliged to satisfy an evidentiary onus to negative the grounds of opposition under ss 58 and 59 of the Act”.
…
While noting that there was some authority for there being a shift in onus in certain circumstances in the case of s 59, the Full Court was clear that such was not the case for s 58, stating at [37] to [39]:
[37] We turn to consider [the opponent’s] alternative argument in relation to the shifting onus of proof in relation to the grounds of opposition in ss 58 and 59 of the Act. The judge below recognised that there are no cases concerning s 58 in which the onus has been held to shift, in any way, to the applicants: Her Honour said (at [34]):
[34] The principle that the evidentiary onus in relation to ownership shifts in the circumstances submitted by the applicant has previously been promulgated in the context of opposition to a trade mark on the basis of s 59 (Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 ; [2008] FCA 100 at [163]) but not, so far as I am aware, s 58.
[38] The concerns specific to opposition under s 59 of the Act do not readily translate to s 58 of the Act. In Health World, a case concerned with opposition under s 59 of the Act, Jacobson J said at [2008] FCA 100; (2008) 75 IPR 478 at [161]–[163]:
[161] The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; A Dufty and J Lahore, Lahore, Patents Trade Marks and Related Rights, LexisNexis Butterworths, Sydney, 2006 at [55,580].
[162] However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

[163] The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.
[39] The difficulties of showing intention to use do not attend an attempt by an opponent to establish ownership through prior user; the opponent either has a case or it does not. Thus, there is no evident reason why a shift in the onus could arise in proceedings involving a ground of objection under s 58 of the Act.

In Food Channel the opponent had based its s 58 ground of opposition on statements in the applicant’s evidence by a Mr Lawrence, managing director of the company “Network” (which was the applicant for the trade mark) and controller of another company, “Channel”, which may also have been an early user of the trade mark in suit. As the Full Court put it, the opponent argued:
that the evidence as to ownership of the mark at the time of registration was so confused that no finding could reasonably be made as to who was the real owner with the consequence that Network had failed to discharge the evidentiary onus which had shifted to it.

The Full Court was however very critical of the trial judge for having accepted the opponent’s argument regarding a shift of onus on the s 58 issue, stating at [48]:
[48] If the evidence was not sufficiently clear to enable a finding of fact to be made about ownership of the mark at the time of registration then [the opponent] had to fail on that issue: it bore the onus of proof. The primary judge reached the opposite conclusion. Her Honour reached that conclusion, in part at least, because of the unnecessary distraction of [the opponent’s] argument about shifting onus. There are a number of other reasons why we consider that her Honour erred in reaching that conclusion.

In particular, the Full Court noted that:
s 27(1)(a) merely requires that an applicant “claims to be the owner of the mark” and the trial judge had (as has Ms Champion in the present opposition) “interpreted the requirement in s 27(1)(a) as being equivalent to proven, rather than claimed, ‘ownership’” (at [49]);
“The first user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.” (at [55]);
“Each of Mr Lawrence, Network, and Channel could have satisfied the basic requirement in s 27(1)(a) in the sense that, from the admittedly imprecise affidavit of Mr Lawrence, it could be inferred that each could “claim” to be owner of the mark.” (at [54]);
“The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other.” (at [61]);
“In any event, a finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the opponent] to establish any ground of opposition.” (at [66]); and
“In conclusion in relation to the ground of opposition under s 58 of the Act, we consider that on the very limited evidence before the court as to the way in which the mark was used before the date of registration, it well may be said that both Network and Channel used the mark, but it cannot be said that Network rather than Channel was the first party to use the mark as a trade mark in relation to goods in class 16 or at all. And it cannot be said that Channel was not the first party use the mark in such a way. In this state of confusion, the incidence of the onus of proof means that the lack of clear evidence as to prior use is a fatal deficit in the opponent’s case, not in the applicant’s.” (at [71]).

105. The Opponents have failed to discharge the onus and so have not established the section 58 ground.

Section 60

106. Section 60 of the Act provides:

60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.

107. Since the parties claim an interest in the same trade mark and in the same services what remains for the Opponents is that they establish both the reputation of the Trade Mark and the likelihood of deception or confusion.

108. There is abundant proof that the Opponents’ have received revenue from use of the Trade Mark both before and after the Priority Date. Recently, in the so far unreported case of Opposition by Fairmont Hotel Management L.P. to registration of trade mark application 1400100(43) - FAIRMONT - filed in the name of Schwartz Family Co. Pty Limited, 2014 ATMO 69, Hearing Officer Thompson found that section 60 is not subject to 58. He wrote:

It is … possible for an applicant to show that it is, in effect, the owner of a trade mark via … section 58 and yet have it found that the reputation of an opponent’s trade mark is such that the use of the applied-for trade mark would confuse and deceive because of the greater reputation of the opponent’s trade mark.

109. Nevertheless, in this case proof of likelihood of confusion or deception is hampered by the uncertainties I have discussed with respect to ownership of the Trade Mark. In my assessment it is by no means certain that members of the public would associate the Trade Mark with the Opponents or that there is a real and tangible likelihood of confusion or deception created by the Applicant’s use of the Trade Mark. The ground of opposition under section 60 fails.

Sections 42

Section 42 provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.

The Opponents submit that use of the Trade Mark by the Applicant would contravene sections 18 and 29(1)(g) and (h) of the Australian Consumer Law and would constitute passing-off. They state that:
The foundation for this ground of opposition is the Bauer Companies’ submission that they have a substantial reputation in the DISCOVER DOWNUNDER trade mark. The Bauer Companies submit that, by reason of that reputation, if Evergreen were to use the DISCOVER DOWNUNDER trade mark without the Bauer Companies’ approval, it would falsely convey to the relevant members of the public (including the trade) that Evergreen or its services are connected with the Bauer Companies. The Bauer Companies recognise that the Registrar has historically been reluctant to accept oppositions based on s 42(b) of the Act. While that reluctance has faded somewhat in recent years, it should not trouble the Registrar here. The unlawful conduct contended for by the Bauer Companies is straight-forward and compelling on the face of Evergreen’s proposed conduct. This is not a nuanced case where there are significant differences between the competing marks or a lack of overlap in the business activities in question.

Section 18 of the Competition and Consumer Act 2010 is a prohibition on conduct which is misleading or deceptive or likely to mislead or deceive. Section 29(1)(g) prohibits the making of false or misleading representations that goods or services have sponsorship or approval. Section 29(1)(h) prohibits the making of false or misleading representations that the person making the representation has a sponsorship, approval or affiliation.
I note once more that the Priority Date is 9 October 2009. As Hearing Officer Kirov wrote in Universal Health International Pty Ltd v Universal Protein Supplements Corporation [2014] ATMO 64:
I firstly note that the Trade Practices Act 1974 (“the TPA”), which was in force at the Priority Date, is on the face of it the relevant Federal law rather than the CCA. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010, which replaced the TPA, only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
That said, ss 18 and 29 of the CCA mentioned by Dr Bablis essentially correspond to ss 52 and 53 of the TPA. Insofar as relevant to the present matter, accordingly, ss 52 and 53 of the TPA are reproduced below:
s 52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
s 53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have a particular history or particular previous use;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have.
I do not find that the evidence shows any actionable misrepresentation.
In so far section 52 of the TPA is concerned, I note that word ‘confuse’ in section 60 of the Act refers to a different state of bewilderment than does the word ‘mislead’ which occurs in section 52 of the TPA. Confusion amounts to a wonderment or indefiniteness of mind. As stated in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at p174 by Lord Denning of the differences between ‘confusion’ and ‘deception’:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

116. It necessarily follows that if the Opponents cannot establish their ground under the lower standard of section 60 of the Act, the ground under section 42(b) which invokes the higher standard of the TPA must also fail: see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 49 FLR 455; (1980) 33 ALR 394; 134 ATPR 40-833; [1980] TPRS 31461 and Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd [1980] FCA 73; (1980) 43 FLR 405; (1980) 31 ALR 73. Further, in view of what I have already said about reputation, there is no possibility that the section 42(b) grounds can be supported by an argument of passing-off.

117. The Opponents have not established their opposition to registration under the provisions of section 42(b) of the Act.

Section 59

Section 59(a) of the Act provides for opposition to registration of the Trade Mark on the ground that the Applicant does not intend to use, or authorise the use of, the Trade Mark in in relation to the Services.
The Opponents submit that:
From a time unknown to the Bauer Companies (but which appears to be as early as mid-2009), Evergreen (in conjunction with a company named Parable Productions Pty Ltd (Parable), both of which have Colin Parrot as their sole director and appear to be under the same control) has produced and caused to be broadcast a television program relating to caravanning and motor home holidaying using the trade mark WHAT’S UP DOWNUNDER. This program is a direct competitor of the Discover Downunder Series, given the similar subject matter that they cover. There is strong evidence that Evergreen (in conjunction with Parable) intends to use the trade mark WHAT’S UP DOWNUNDER (rather than DISCOVER DOWNUNDER) in the future.
(a)     First, Evergreen’s WHAT’S UP DOWNUNDER programs have been broadcast and made available for viewing over the Internet on a regular basis since early 2010. As at September 2011, it was apparent that 46 half hour episodes of WHAT’S UP DOWNUNDER had been broadcast.
(b)     Secondly, Evergreen has registered the domain name and operates the web site located at that domain name.
(c)     Thirdly, on 12 June 2009, Evergreen applied to register the trade mark WHAT’S UP DOWNUNDER? in respect of “Production of radio and television programs” (class 41).
(d)     Fourthly, Parable has registered the Victorian business name WHAT’S UP DOWNUNDER in respect of a business described as “television production”.
(e)     Fifthly, despite the issue of Evergreen’s intention to use the mark DISCOVER DOWNUNDER being placed squarely in issue, there is no evidence (beyond mere assertion) of Evergreen’s plans to use that mark. For example, there are no business plans, budgets or correspondence supporting any such intention.
Taken together, the matters referred to … above make it inherently improbable that Evergreen has any intention at all to use the DISCOVER DOWNUNDER trade mark. Evergreen has plainly made a significant investment in its WHAT’S UP DOWNUNDER trade mark. It would be uncommercial to abandon that investment by changing to a different trade mark without some imperative to do so. It is also most unlikely that Evergreen would set about developing a different program under the name DISCOVER DOWNUNDER which would compete with its existing offering in this area.

120. As noted earlier, the grounds of opposition must be established at the Priority Date. Mr Merrick rightly adds the corollary that in the case of section 59, events which take place afterwards might give an understanding of an applicant’s intentions at the time of filing (noted already from Food Channel considered above). But so, too, actions before the Priority Date have some bearing on the matter.

121. In this case the Applicants have used the Trade Mark. There is no conclusive evidence that use inured to the benefit of the Opponents. Use of the Trade Mark before the time of filing must have a major influence on the question of whether the Applicant’s intended to use the Trade Mark at the date of filing the application.

122. Additionally, there is a world of a difference between being prevented through circumstances from being able to use a trade mark and not having any intention to use it.

123. Further, I think there is sufficient indication that the WHAT’S UP DOWNUNDER trade mark is intended for and applied to a different type of “product”, albeit one with common subject matter.

124. I find that, at the date of filing, the Applicant intended to use the Trade Mark and so I find that the Opponents have not established the section 59 ground of opposition.

Section 62A

Section 62A of the Act states registration of the Trade Mark may be opposed on the ground that the application was made in bad faith.
The Opponents submit that the Applicant’s conduct demonstrates that the application was made in bad faith for the following reasons.
First, as noted above, Evergreen has derived substantial revenue from providing services to Bauer Media in connection with the Discover Downunder Series.
Secondly, during the five years that Evergreen provided production services to Bauer Media in relation to the Discover Downunder Series, Evergreen did not at any time make any claim to proprietorship of the DISCOVER DOWNUNDER trade mark.
Thirdly, after Bauer Media terminated Warren Parrot’s employment and announced that the future of the Discover Downunder Series was uncertain, Evergreen set about independently producing and promoting its competing product, the WHAT’S UP DOWNUNDER program. This course of action is telling - Evergreen did not respond to Bauer Media’s announcement by claiming proprietorship of the DISCOVER DOWNUNDER trade mark or informing Bauer Media (or, indeed, the trade and the public) that it would itself continue to produce and promote the Discover Downunder Series. Evergreen only took steps to make a claim to proprietorship of the DISCOVER DOWNUNDER trade mark after Bauer Media announced the continuation of the Discover Downunder Series in conjunction with a new production partner.
Fourthly, for the reasons [set out earlier in the submissions], it is apparent that Evergreen’s conduct in making the Application is, at least in part, motivated by the Parrots’ sense that they have been treated unfairly by Bauer Media.

The final reference is to - sometimes rancorous - language in the Applicant’s submissions and declaratory statements which show a general hostility towards the Opponents. That is undeniable and indeed spilled over at times during the oral hearing.
Whether I should treat that attitude as proof of a motivating bad faith influence at the time of filing of the Trade Mark application is another question. Certainly, it is enough to colour that action were there no other evidence. However, other evidence does exist to explain the Applicant’s apparent hostility - evidence which need not show bad faith intentions with respect to the Trade Mark application. So, for example, at one point the Applicant had to take the Opponents to court to recover monies owing in relation to production of the series. For example, Warren Parrot was made redundant after nine years of service because it was said that tougher financial times made it unviable to continue the series, but relatively soon after his departure the series was revitalized and given to another production company without reference to the Applicant. The evidence also shows that the Opponents interfered in the Applicant’s attempts to show WHAT’S UP DOWNUNDER on the Seven Network by writing to the Seven Network asserting rights in the Trade Mark.
In short, I do not endorse the Applicant’s use of “florid” language, as Mr Merrick has labelled it, but I do consider that there is some explanation to it which need not disfigure the Applicant’s genuine intentions at the time the application was filed.
In In the matter of application No. 2110335 by Basil Davis, Hearing Officer Reynolds wrote:
The second leg of the Section 3(6) attack is that the applicant has no bona fide intention to use the mark applied for. Implicit, I think, in this objection is the suggestion that Mr Davis may have had some ulterior motive. The point arises because the application was filed very shortly (a matter of days) after Mr Davis parted company with the BBC in circumstances which the parties have preferred not to bring out in the evidence. Thus it is suggested that Mr Davis did not have a bona fide intention to use the mark as required by Section 32(3). Allied to this it is said that Mr Davis’ intention could only have been a contingent one. An issue may arise in 5 this respect as to the interpretation to be placed on the requirement of a bona fide intention to use and whether it relates purely to the applicants’ own beliefs at the time of application or whether it extends to situations where, notwithstanding the genuineness of the applicants’ belief, his intentions can only be considered to be contingent ones. That is not an issue I need to decide here as I do not think either ground has been made out.
In the event Mr Gold accepted, I think, that Mr Davis’ action in filing the action could be characterised as honest but misguided. That is also my view of the matter. The basis for Mr Davis’ claim is well documented in his evidence. It reflects what I consider to be a genuine and strongly held belief on his part that he was entitled to the mark and could apply for registration. The fact that I have concluded otherwise does not undermine his position in this respect.

As I have indicated already, I am not able on the evidence to reach a conclusion that the Applicant was misguided when it filed the Trade Mark application. However, I am satisfied that it acted honestly for many of the same reasons that applied to Mr Davis. I do not think there is evidence that the Applicant’s action fell below the standards of acceptable commercial behavior described in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 and I find that the section 62A ground of opposition has not been established.

Section 41

The Opponents’ submission is that the application should be rejected because the Trade Mark is not capable of distinguishing the Services from the goods or services of other persons.
The Opponents rightly state that the law to be applied is as it stood prior to the amendment of section 41 by the Intellectual Property Laws Amendment (Raising the Bar) Act and in that respect I note that the Examiner of the application accepted the Trade Mark under the provisions of section 41(5) of the Act as it stood at the time.
The Opponents’ evidence includes register extracts which show, in general terms, that the words “Discover” and “Downunder” are commonly used and are relatively non-distinctive. That evidence suggests to me that the Examiner was correct to consider the Trade Mark for acceptance under section 41(5) and not section 41(3).
The Opponents might have been satisfied with that result if I was also prepared to accept that the use of the Trade Mark was use which inured to the benefit of the Opponents and not to the Applicant. I have already indicated that I am not prepared to make that finding.
The acceptance under section 41(5) stands and the ground of opposition fails.

Decision

At the relevant date subsection 55(1) of the Act provided:
55Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
No ground of opposition has been established and so application number 1324177 may proceed to registration one month from the date of this decision.

Costs

Having successfully defended the opposition, the Applicant is entitled to its costs which I order against the Opponents at the official scale.

Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
25 August 2014

[2014] ATMO 78

25 August 2014

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