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

Bauer Consumer Media Ltd and Bauer Media Pty Ltd (the Opponents) opposed the registration of the trade mark DISCOVER DOWNUNDER by Evergreen Television Pty Ltd (the Applicant). The Opponents contended that the Applicant's use of the trade mark would contravene sections 18 and 29(1)(g) and (h) of the Australian Consumer Law (formerly the Trade Practices Act 1974) and constitute passing-off, based on their alleged substantial reputation in the DISCOVER DOWNUNDER trade mark.

The court was required to determine whether the Opponents had established a substantial reputation in the DISCOVER DOWNUNDER trade mark such that the Applicant's proposed use of the mark would falsely convey a connection between the Applicant or its services and the Opponents. This involved considering whether the Applicant's conduct would be misleading or deceptive, or likely to mislead or deceive, and whether it would involve false or misleading representations regarding sponsorship, approval, or affiliation. The court also had to consider the relevant law as it stood at the priority date of the application, which was 9 October 2009.

The court found that the evidence did not support the Opponents' claim to registration and use of the domain name since 2005, noting a significant break in evidence of use and that the first registration and use postdated the production and broadcast of the Applicant's First Series. The court also noted that the Opponents' reliance on section 42(b) of the Act, while historically viewed with reluctance by the Registrar, was considered in light of the straightforward nature of the alleged unlawful conduct. Ultimately, the court determined that no ground of opposition had been established.

The application for registration of the trade mark DISCOVER DOWNUNDER was permitted to proceed to registration one month from the date of the decision. The Applicant was also awarded costs against the Opponents on the official scale.