Bauer Consumer Media Ltd v Evergreen Television Pty Ltd

[2017] FCA 507

FEDERAL COURT OF AUSTRALIA

Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507

Appeal from:

Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd [2014] ATMO 78

File numbers:

NSD 935 of 2014
NSD 682 of 2015

Judge:

PERRY J

Date of judgment:

12 May 2017

Catchwords:

TRADE MARKS – appeal under s 56, Trade Marks Act 1995 (Cth), from decision of delegate of the Registrar of Trademarks refusing opposition to registration of trade mark and allowing registration – registration opposed on ground that applicant for registration was not owner of the mark – failure by opponent to establish first use of the mark – first use by applicant for registration by entry into licencing agreement - whether intention to use the mark in good faith– whether registration application made in bad faith – whether use of mark likely to deceive or confuse – whether use of mark contrary to law – whether leave required to consider new ground raised in closing address on appeal – appeal dismissed

TRADE MARKS – application under s 101(2) of Trade Marks Act for removal of trade mark – removal under s 92(4)(a) or (b) on grounds of alleged non-use – where conduct of applicant for removal presented insurmountable obstacle to use for the purposes of s 100(3)(c) – application dismissed

EVIDENCE – impact of passage of time on quality of evidence – application of Jones v Dunkel where failure by a party to call potential witnesses – whether necessary for potential witness to be a person over whom the party had control – drawing of adverse inferences where no satisfactory explanation for failure to produce documents

Legislation:

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Trade Marks Act 1955 (Cth)

Trade Marks Act 1995 (Cth)

Trade Practices Act 1974 (Cth)

Cases cited:

Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511

Arnautovic v Cvitznovic [2011] FCA 809; (2011) 199 FCR 1

Aston v Harlee Manufacturing Company (1960) 103 CLR 391

Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39; (2011) 202 FCR 462

Australian Securities and Investments Commission (ASIC) v Hellicar [2012] HCA 17; (2012) 247 CLR 345

Blatch v Archer (1774) 1 Cowp 63

Briginshaw v Briginshaw (1938) 60 CLR 336

Brisbane South Regional Health Authority v Taylor (1996) 186 CLR 541

Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45

Conquip Holdings Pty Ltd v S & A Restaurant Corporation [2000] AIPC 91

Re Carl Zeiss Pty Ltd’s Application  (1969) 122 CLR 1

Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939

Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd (1967) 116 CLR 254

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9

Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012 ] FCA 81; (2012) 201 FCR 565

Ho v Powell [2001] NSWCA 168; (2001) 51 NSWLR 572 at 576

Jafferjee v Scarlett (1937) 57 CLR 115

Jones v Dunkel (1959) 101 CLR 298

Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119

Moorgate Tobacco Co Ltd v Phillip Morris Limited (No. 2) (1984) 156 CLR 414

O’Donnell v Reichard [1975] VR 916

Payne v Parker [1976] 1 NSWLR 191

PioneerKabushiki Kaisha v Registrar of Trade Mark (1977) 137 CLR 670

Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365

RHG Mortgage Limited v Rosario Ianni [2015] NSWCA 56

Sapient Australia Pty Ltd v SAP AG (2002) 55 IPR 638

Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121

Southcorp Brands Pty Ltd v CAN Industries Pty Ltd [2014] ATMO 27

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Suyen Corporation v Americana International Limited [2008] ATMO 4

SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152

Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388

UCP Gen Pharma AG v Mesoblast Inc  [2012] FCA 210

Unilever Australia Ltd v Karounos and Another [2001] FCA 1132; (2001) 113 FCR 322

Unity Insurance Brokers Pty Ltd v Rocco Pezzano Pty Ltd (1998) 154 ALR 361

Watson v Foxman and Others (1995) 49 NSWLR 315

Woolly Bull Enterprises [2001] FCA 261; (2001) 107 FCR 166

Date of hearing:

11-15 April 2016, 3 May 2016, 8 June 2016, 25 July 2016

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Category:

Catchwords

Number of paragraphs:

394

Counsel for the Appellants/Applicants:

Ms Baird SC and Mr Fox

Solicitor for the Appellants/Applicants:

Dibbs Barker

Counsel for the Respondent:

Mr Stuckey

Solicitor for the Respondent:

Wisewould Mahony

ORDERS

NSD 935 of 2014

BETWEEN:

BAUER CONSUMER MEDIA LIMITED

First Appellant

BAUER MEDIA PTY LTD

Second Appellant

AND:

EVERGREEN TELEVISION PTY LTD

Respondent

JUDGE:	PERRY J
DATE OF ORDER:	12 May 2017

THE COURT ORDERS THAT:

1.The appeal from the decision of the Registrar of Trade Marks given by her delegate on 25 August 2014 is dismissed.

2.The first and second appellants are to pay the respondent’s costs as agreed or assessed.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

NSD 682 of 2015

BETWEEN:

BAUER CONSUMER MEDIA LIMITED

First Applicant

BAUER MEDIA PTY LTD

Second Applicant

AND:

EVERGREEN TELEVISION PTY LTD

Respondent

JUDGE:	PERRY J
DATE OF ORDER:	12 May 2017

THE COURT ORDERS THAT:

1.The application for an order pursuant to section 101(2) of the Trade Marks Act 1995 (Cth) that the Registrar of Trade Marks remove the Trade Mark Application Number 1324177 from the Registrar of Trade Marks is dismissed.

2.The first and second applicants are to pay the respondent’s costs of the application as agreed or assessed. 

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1         INTRODUCTION	[1]
2         LEGISLATIVE OVERVIEW	[7]
2.1 Date of the Act	[7]
2.2      Concept of a trade mark	[8]
2.3      Application for a trade mark	[11]
2.4      Opposition to registration	[15]
2.5      Appeal from a decision of the Registrar on an opposed application to the Federal Court	[23]
2.6      Application for removal for non-use	[25]
3         WITNESSES	[26]
3.1      General	[26]
3.2      Evidence for Bauer	[28]
3.2.1    Mr Keith Falconer (CEO, Bauer, Trader Media (Formerly Trader/ACP))	[28]
3.2.2    Mr Macek Rubetzki (Media Legal IP)	[32]
3.3      Evidence for the respondent, Evergreen	[34]
3.3.1    Mr Colin Parrôt (Evergreen, Power Pact and Parable Productions)	[34]
3.3.2    Mr Warren Parrôt (former employee, Trader)	[38]
3.3.3    Mr Peter Wright (formerly Executive Officer, Caravan Trade & Industries Association of Victoria)	[40]
4         FINDINGS AS TO CREDIT	[43]
4.1      The impact generally of the passage of time as to the quality of evidence	[43]
4.2      Mr Falconer	[47]
4.3      Mr Colin Parrôt	[52]
4.4      Mr Warren Parrôt	[54]
4.5      Conclusion on credit/reliability of witnesses	[55]
5         DEFICIENCIES IN THE EVIDENCE AND THE DRAWING OF INFERENCES	[56]
5.1      The rule in Jones v Dunkel	[56]
5.2      Does Jones v Dunkel apply with respect to Bauer’s failure to call Miffy Coady, Mike Sinclair and Grant and James Manson?	[64]
5.3      Failure by Bauer to adduce documentary evidence in support of key aspects of its case	[73]
6         FINDINGS OF FACT	[77]
6.1      The importance of the contextual narrative to the parties’ arguments	[77]
6.2      Development of the idea by Colin Parrôt and initial support from the industry	[79]
6.3      Initial approaches to ACP	[88]
6.3.1    Trader’s business strategy relating to sponsored television programs	[88]
6.3.2    Presentation of the opening draft for a pilot program (July 2004)	[92]
6.4      The presentation to ACP on 24 August 2004	[96]
6.5      Follow up after the presentation	[112]
6.6      Next steps as at 20 September 2004	[117]
6.7      The alleged meeting in September 2004 between Mr Falconer and Mr Colin Parrôt	[121]
6.8      Network Nine are not interested (mid to late January 2005)	[122]
6.9      The meeting with the Ten Network on Monday 24 January 2005	[124]
6.10     The pub meeting following the meeting with the Ten Network	[131]
6.11     Filming of the pilot promo for the television program on 25 January 2005	[136]
6.12     Email correspondence on 27 and 28 January 2005	[139]
6.13     Registration of the domain name on 4 February 2005	[151]
6.14     Commissioning of the logo (7-8 February 2005)	[154]
6.15     Email from Miffy Coady on 8 February 2005	[158]
6.16     The promotional video produced in February 2005	[159]
6.17     Conclusion of the licence agreement with Network TEN on 25 February 2005	[164]
6.18     Letter advising ACP of the licencing agreement between Evergreen and Channel Ten (28 February 2005)	[168]
6.19     Preparation for the first series	[172]
6.19.1  Evolution of the concept and rush to produce the first series	[172]
6.19.2  Funding for the first series	[175]
6.19.3  Arrangements between Bauer and Trader	[183]
6.20     The first series	[187]
6.21     Preparation for the second series (second half of 2005)	[192]
6.22     The failure to conclude a contract between Evergreen and Bauer comes to Mr Falconer’s attention and authority to enter into agreements with Evergreen and Channel Ten (July 2005)	[196]
6.23     Series 2 to 5 and the transfer to Network Nine	[201]
6.24     The program ceases to be broadcast nationally in early 2009	[204]
6.25     Initial approaches to Network Seven by Colin Parrôt in early 2009	[206]
6.26     Early stages in developing “What’s Up Down Under”	[208]
6.27     Warren Parrôt’s power point presentation (17 April 2009)	[213]
6.28     Continuing issues with broadcasting the program with Nine and decision to dispense with Evergreen as the producer (March to May 2009)	[218]
6.29     Registration of the domain name and trade mark for What’s Up Down Under on 12 June 2009	[221]
6.30     Warren Parrôt’s redundancy and announcement about the “uncertain future” of Discover Downunder (22-26 June 2009)	[222]
6.31     Evergreen’s continuing negotiations with Channel Seven to broadcast a program with the name Discover Downunder	[223]
6.32     Announcement that Discover Downunder would return (5 October 2009)	[225]
6.33     Application to register the Mark on 9 October 2009	[226]
6.34     Correspondence between the parties following the breakdown in their relationship in relation to the continued production of Discover Downunder with Trader	[227]
6.35     Correspondence between the parties with respect to the broadcast by Channel Seven of “What’s Up Down Under”	[235]
6.36     Findings with respect to contested matters of fact relied upon in support of the parties' respective claims for ownership of the Mark	[236]
6.36.1  Was there a meeting with Mr Falconer in September 2004 at which Warren Parrôt suggested the name Discover DownUnder?	[236]
6.36.2  Who paid the airfares for the meeting with Channel Ten on 24 January 2005?	[247]
6.36.3  When did Colin Parrôt become aware that the domain name had been registered on 4 February 2005?	[252]
7         CONSIDERATION:  THE APPEAL PROCEEDING	[263]
7.1      Issues	[263]
7.2      Summary of key factual findings	[266]
7.3      Issue 1:  Ownership of the Mark (s 58)	[267]
7.3.1    Relevant principles	[267]
7.3.2    Alleged first use by Bauer by the provision of the promotional video in the course of trade	[275]
7.3.2.1       The changes in Bauer’s case in the course of the litigation	[275]
7.3.2.2       Evidence bearing on whether and when the promotional video clip was sent to CDM	[280]
7.3.2.3       Findings:  has Bauer established that the promotional video clip was sent to CDM before conclusion of the licencing agreement with Channel Ten?	[293]
7.3.3    Failure by Bauer to prove first use	[298]
7.4      Issue 2:  Did Evergreen intend to use the Mark in good faith when it applied for registration of the Mark (s 59(a))	[302]
7.4.1    Bauer’s submissions	[302]
7.4.2    Is leave required to raise the registration application construction issue?	[304]
7.4.3    Relevant principles	[318]
7.4.4    The factual use issue:  did Evergreen intend in good faith to use the Mark?	[321]
7.4.4.1       Evidence bearing on the factual use issue	[324]
7.4.4.2       Findings on the factual use issue	[332]
7.5      Issue 3:  Was the application for registration of the Mark made in bad faith? (s 62A)	[340]
7.6      Issue 4:  Alleged confusion by reason of another trade mark having acquired a reputation (s 60)	[343]
7.7      Issue 5:  Whether use of the Mark by Evergreen would be contrary to law (s 42(b))	[354]
8         CONSIDERATION: THE NON-USE PROCEEDING	[357]
8.1      Relevant provisions:  removal from the Register for non-use	[357]
8.2      Issues	[365]
8.3      A preliminary issue	[370]
8.4      The first non-use period	[372]
8.5      The second non-use period	[377]
8.5.1 Circumstances in which non-use is rebutted by an obstacle for the purposes of s 100(3)(c)	[377]
8.5.2 Was there an obstacle to use of the Mark by Evergreen under s 100(3)(c) so as to rebut non-use?	[384]
8.5.3    Exercise of discretion	[387]
9         CONCLUSION	[394]

PERRY J:

1.                 INTRODUCTION

1. Before the Court are two proceedings commenced by the applicants, Bauer Consumer Media Ltd (BCM) and Bauer Media Pty Ltd (BM) (together Bauer), against Evergreen Television Pty Ltd (Evergreen).  The proceedings concern the ownership, registrability and continuance on the Register of Trademarks of trademark application no. 1324177 (the application) for the phrase “Discover Downunder” (in a stylised title case form) (the Mark) in relation to Class 41 of the Register, being “the production of television programs” (the services).

2. The first proceeding, NSD 935 of 2014, (the appeal proceeding) is an appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Act) from the decision of a delegate of the Registrar of Trademarks (the Delegate) given on 25 August 2014 to refuse Bauer’s opposition to registration of the application and to allow the application for the trade mark made on 9 October 2009 to proceed to registration.  In the appeal proceeding, Bauer opposes registration on the following grounds: that Evergreen was not the owner of the Mark (s 58), did not intend to use the Mark in good faith (s 59), or applied for the Mark in bad faith (s 62A); that the use of the Mark would be likely to deceive or cause confusion as at the filing date because of the reputation of Discover Downunder as a prior trade (s 60); and that Evergreen’s use of the Mark would be contrary to the Trade Practices Act 1974 (Cth) (TPA) and therefore contrary to law (s 42). While Bauer initially contended also that the Mark is not capable of distinguishing Evergreen services from similar services of other persons (s 41), in closing submissions Bauer stated that this ground was no longer pressed. It is not in dispute that it would suffice if Bauer were to succeed on any of the grounds which were pressed. Save for s 59 as explained below, Bauer accepts that it bears the onus of establishing on the balance of probabilities that these grounds of opposition are made out: see Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (Food Channel); and Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 at [132]-[134].

3. The second proceeding, NSD 682 of 2015, (the non-use proceeding) is an application pursuant to s 101(2) of the Act seeking removal of the Mark from the Register of Trade Marks on the grounds of non-use under s 92(4)(a) or, in the alternative, s 92(4)(b) of the Act. The non-use proceeding was commenced in this Court rather than initially before the Trade Marks Office by reason of s 92(3) of the Act as the appeal proceeding was already pending in this Court. In these proceedings, Bauer contends that Evergreen must establish genuine use of the Application within two separate non-use periods, namely:

   (1)for the purposes of s 92(4)(a) from the Filing Date of 9 October 2009 to 11 May 2015 (the first non-use Period); and

   (2)for the purposes of s 92(4)(b), from 11 May 2012 to 10 May 2015 (the Second Non-Use Period). 

4. Bauer accepts that it bears a threshold onus to demonstrate that the Mark has not been used in either of the non-use periods but contends that the onus then shifts to Evergreen to establish use in the relevant periods or in the alternative to establish that the Court ought not to order removal of the trade mark in the exercise of discretion.

5. By orders made by consent on 10 November 2015, both proceedings are to be heard and determined together. 

6. For the reasons set out below, I consider that Evergreen is the owner of the Mark and that none of the grounds of opposition are made out.  As such the appeal is dismissed.  I also consider that the non-use proceedings must be dismissed.

   2.                 LEGISLATIVE OVERVIEW

   2.1 Date of the Act

7. It was not in dispute that the Act applies as at the date on which the trade mark application was filed, namely, 9 October 2009. As a result, this appeal is governed by the Act before it was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) which largely took effect from 15 April 2013.

   2.2               Concept of a trade mark

8. A “trade mark” is defined in s 17 of the Act as:

   … a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

9. A “sign” in turn is defined in s 6 to include “the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”  It is not in dispute that “Discover Downunder” is capable of being registered under the Act as a trade mark.

10. Registration of a trade mark confers upon the registered owner the exclusive rights to use the trade mark and to authorise other persons to use it in relation to the goods and/or services in respect of which the trade mark is registered, together with the right to obtain relief under the Act for infringement (ss 21 and 22 of the Act).

    2.3               Application for a trade mark

11. Section 27 of the Act provides that “[a] person may apply for registration of a trademark in respect of goods and/or services if:

    (a) the person claims to be the owner of the trademark; and

    (b) one of the following applies:

    (i) the person is using or intends to use the trademark in relation to the goods and/or services;

    (ii) the person has authorised or intends to use another person to use the trade mark in relation to the goods and/or services;

    (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

1. As such, the Act allows an applicant to obtain title to a trade mark prior to use, so long as the requirements in s 27 are met: Food Channel at [49] (the Court).

2. Under s 31, the Registrar must examine and report on whether the application has been made in accordance with the Act and whether there are grounds under the Act for rejecting it. After the examination, the Registrar must accept the application unless she or he is satisfied that it is not made in accordance with the Act or there are grounds under the Act for rejecting it (s 33).

3. It is apparent from the criteria in s 27(b), the grounds of opposition, and the capacity to apply to remove a trade mark for non-use that, while it is an object of the 1995 Act to create, by registration of trade marks, a species of tradeable property in the form of monopoly, that right is to be conferred only where such marks are connected with actual or contemplated trade in goods or services. In this regard, as High Court considered with respect to the 1955 Act in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 (“Nike”), in observing that the Act struck a balance between various disparate interests:

   42.  …[T]he Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests.  There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin.  There is the interest of traders, both in protecting their goodwill through the creating of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment …

   2.4               Opposition to registration

4. If the Registrar has accepted an application for the registration of a trade mark, a person may oppose registration by filing a notice of opposition under s 52 of the Act. Section 52(4) provides that “[t]he registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.” Section 57 of Division 2 of Part 5 of the Act in turn provides that:

   The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.

5. The grounds of opposition are specified in the Act. Relevantly, in the first place, registration may be opposed under s 58 on the ground that the applicant “is not the owner of the trade mark” which is to be assessed as at the date of the application for registration. 

6. Secondly, registration may be opposed under s 59 on the ground that:

   … the applicant does not intend:

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

   (b)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 specified in the application.

7. Thirdly, registration may be opposed under s 62A on the ground that “the application was made in bad faith”.

8. Fourthly registration may be opposed under s 60 on the ground that the use of the trade mark would be likely to deceive or confuse because another trade mark had previously acquired a reputation in Australia in respect of the same goods or services.

9. Finally, s 42 provides that:

   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.

10. In this case it is said that at the time of the application for registration, Evergreen’s use of the Mark would be misleading or deceptive contrary to the Trade Practices Act 1974 (Cth) (being the law then in force at the filing date) and therefore contrary to law under s 42 of the Act.

11. Where, as here, the application is opposed, the Registrar must give the opponent and applicant an opportunity to be heard in accordance with s 54 and must thereafter under s 55:

    …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.

    2.5               Appeal from a decision of the Registrar on an opposed application to the Federal Court

12. A right of appeal from a decision of the Registrar to the Federal Court under s 55 is provided for by s 56 of the Act. It is important to bear in mind that, notwithstanding its description as an “appeal”, an appeal under s 56 of Act is a proceeding in the original jurisdiction of the Court in which the Court in the exercise of judicial power determines the same statutory questions as those determined by the Registrar in the exercise of executive power: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [32]; Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119 (Malibu) at [6] (Finkelstein J). The Court therefore determines for itself the merits of the application and grounds of opposition, and is not limited to determining whether the Registrar’s decision was correct in law: Jafferjee v Scarlett (1937) 57 CLR 115 at 126; Malibu at [6]. In this regard, Yates J in Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 explained the manner in which the Court should approach the weight to be given to the decision of the Registrar:

    23        What is required in that regard is a hearing de novo in which the Court approaches the matter “afresh and without undue concern as to the ratio decidendi of the Registrar”:  Rowntree PLC v Rollbits Pty Ltd (1988) 90 FLR 398 at 403. That said, weight should be given to the Registrar’s opinion as “a skilled and experienced person”: Jafferjee at 126. On some occasions, it has been said that “due weight” should be given to the Registrar’s opinion: Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 at 308. On other occasions, it has been said that “great weight” (Eclipse at 321; Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 41) or “very considerable importance” (Joseph Bancroft & Sons Co v Registrar of Trade Marks (1957) 99 CLR 453 at 457) should be given to the Registrar’s opinion.

    24        I do not think that, by using these varying expressions, the cases intend to convey different notions of deference.  Nevertheless, the degree to which weight should be given to the Registrar’s opinion will, no doubt, depend on the circumstances of each case and the particular question involved.  For example, in the present case, both parties accepted that the weight to be given to the Registrar’s opinion may be affected by the fact that evidence has been adduced in the appeal which was not before the delegate.

    25        In Woolworths, French J observed (at 377):

    … Weight can be given to the Registrar’s opinion without compromising the duty of the Court to construe the relevant legal criteria.  When the proper principles are applied to the manner in which a judgment is to be made about an issue such as “deceptive similarity” there is room for a degree of deference to the evaluative judgment actually made by the Registrar.  That does not mean that the Court is bound to accept the Registrar’s factual judgment.  Rather it can be treated as a factor relevant to the Court’s own evaluation.

    26 Although these observations were made in the context of considering whether a ground of rejection existed under s 44 of the Act in respect of a particular application, they are apposite to a case concerning the application of s 41 of the Act.

13. In other words, while the weight to be given to the evaluation of the Registrar should take account of the Registrar’s expertise and experience, nonetheless it will be affected by the particular circumstances and the particular issue in question.

    2.6               Application for removal for non-use

14. Section 92(3) of the Act provides that a person may apply to the Court for orders requiring the Registrar to remove a trade mark from the Register for non-use. Under s 92(4), such an application may be made either on the ground that: (a) when the application for registration was filed, the applicant had no intention in good faith to use or authorise the use of the trade mark in Australia and has not used it in relation to those goods or services at any time up to one month before the non-use application was filed; or (b) where the trade mark has been registered for three years ending one month before the non-use application, at no time during that period has the registered owner used the trade mark in good faith in Australia in relation to the goods or services to which it relates. These provisions are considered in more detail later in these reasons.

    3.                 WITNESSES

    3.1               General

15. On the final day of the hearing, orders were made such that the evidence in one proceeding would be received in evidence in the other proceeding, subject to relevance and the rulings made on objections.  That notwithstanding, as I note below, evidence was initially filed separately in the appeal and non-use proceedings and it is apparent (as the parties accept) that not all of the evidence filed in each proceeding is relevant to determination of the issues in the other proceeding.

16. I also note that while initially certain annexures/exhibits to affidavits on which Bauer sought to rely were identified as confidential, on the first day of the trial Bauer abandoned any application for orders to protect the confidentiality of any of those documents.

    3.2               Evidence for Bauer

    3.2.1Mr Keith Falconer (CEO, Bauer, Trader Media (Formerly Trader/ACP))

17. Bauer relied primarily upon the evidence of Keith Falconer who is the Chief Executive Officer (CEO) of Bauer Trader Media and has held that position since March 2004.  In that role he had responsibility for approximately 200 staff, 20 to 30 magazines, 5 to 10 websites, and 2 television programmes, the Car Show and the Boat Show.  Bauer Trader Media was formerly Trader Classifieds (Trader).  Trader was the name of the business division of Bauer Media Pty Ltd, and was formerly known by different names being, chronologically, ACP Publishing Pty Ltd, ACP Magazines Ltd and finally Bauer Media Limited. 

18. Prior to his appointment as CEO of Trader, Mr Falconer held the position of Chief Operations Officer for Trader commencing in April 2002.  Mr Falconer has worked in the media industry for approximately 29 years and in particular since 1993 for businesses operating in New Zealand and Australia through various corporate ownership structures forming part of the broader Bauer Media group, including when Bauer Media was owned by Publishing and Broadcasting Ltd (PBL) and then by Nine Entertainment Code Pty Ltd.

19. Mr Falconer gave evidence by affidavit sworn on 17 June 2015 and 7 September 2015 filed in the appeal proceeding and in cross-examination.  Mr Falconer’s declarations dated 21 December 2011 and 7 December 2012 in the opposition proceeding before the Registrar were also received in evidence as part of Exhibit A19.

20. Mr Falconer also gave evidence by affidavits sworn on 6 October 2015 and 10 November 2015 which were filed in support of the application in the non-use proceedings.

    3.2.2Mr Macek Rubetzki (Media Legal IP)

21. Bauer also relied upon the affidavit of Macek Rubetzki, the Principal Solicitor of Media Legal IP law firm, sworn on 2 October 2015.  Mr Rubetzki was not cross-examined.  He assisted the applicants’ solicitors in relation to the conduct of the non-use and opposition proceedings before the Registrar including in the undertaking of various searches.  He has a solicitor/client relationship with the second applicant, Bauer Media. 

22. Those parts of Mr Rubetzki’s declaration dated 15 November 2011 in the opposition proceeding before the Registrar which are contained in Exhibit A19 were also tendered and received in evidence.

    3.3               Evidence for the respondent, Evergreen

    3.3.1Mr Colin Parrôt (Evergreen, Power Pact and Parable Productions)

23. Colin (or “Col”) Parrôt, a producer, was the primary witness for Evergreen and gave evidence by affidavit sworn on 10 August 2015 (filed in the appeal proceeding) and 21 October 2015 (filed in the non-use proceeding).  In addition, the declarations of Colin Parrôt dated 9 December 2011, 13 or 14 April 2012, and 7 August 2012 were received in evidence as part of Exhibit A19.  He was also cross-examined at length.

24. Colin Parrôt established the respondent, Evergreen, in 2001 with cameraman Simon Hearn.  They were joint directors and shareholders until 22 November 2007 when Mr Hearn ceased being a director and shareholder and Colin Parrôt became the sole director and shareholder.  Evergreen was established to produce television programs for broadcast. 

25. Prior to establishing Evergreen, Colin Parrôt worked in the advertising industry producing advertisements.  He had an advertising business called Impact Advertising which was established in 1979.  From 1998 Colin Parrôt ran an advertising business from an entity called Power Pact Advertising and owned the company Power Pact Advertising Pty Ltd (Power Pact).  Power Pact was incorporated in 1998 and engaged in advertising.

26. In addition, on 23 September 2009 Colin Parrôt incorporated Parable Productions Pty Limited (Parable Productions) and was its sole director.  Parable Productions was incorporated to produce the program “What’s up down under” and entered into an agreement with Channel Seven for that purpose on 24 September 2009, as I later explain.

    3.3.2Mr Warren Parrôt (former employee, Trader)

27. Warren Parrôt is Colin Parrôt’s son.  He was employed between 2000 and 2009 by ACP initially in sales as a Senior Accounts Manager and then in April 2004 as National Corporate Advertising Manager in Trader.  In the latter position, Warren Parrôt was responsible for managing an external sales force of contract salesmen engaged to sell advertising space across a portfolio of some 16 magazine titles published by ACP.  He also assisted in selling ACP’s online services which were effectively classified advertising websites.  In addition, Warren Parrôt was responsible for managing sales in relation to an arrangement between ACP and Q Media, the latter being a company belonging to Mr Glenn Ridge.  ACP owned The Boat Show to promote a website and its magazines “Trailer Boat” and “Trade-a-Boat”, while Q Media owned The Car Show which ACP used to promote sales through its website and a magazine called “Unique Cars”. 

28. Evergreen relied upon the affidavit of Warren Parrôt sworn on 10 August 2015 filed in the appeal.  Warren Parrôt’s declaration dated 10 April 2012 in the opposition proceeding before the Registrar was also received in evidence as part of Exhibit A19.  Warren Parrôt was also cross-examined.

    3.3.3Mr Peter Wright (formerly Executive Officer, Caravan Trade & Industries Association of Victoria)

29. Evergreen also relied upon the affidavit evidence of Peter Matthew Wright, retired, sworn on 17 July 2015.  Mr Wright was also cross-examined.  

30. Mr Wright was the Executive Officer of the Caravan Trade & Industries Association of Victoria (CTIAV) from about July 2001 until 2011 when he retired from that position.  The CTIAV is a representative body for trade and retail businesses in the caravan industry in Victoria.  Its members are typically manufacturers, retailers and service providers of caravan and camping products.  Its objectives included promoting the services of its members to customers.  As I later explain, the CTIAV was a principal sponsor of the program, Discover Downunder in the first and second series and agreed to continue funding when the show moved to Channel Nine.  As the Executive Officer of the CTIAV, Mr Wright managed its day-to-day operations and was responsible among other things for managing advertising and for sourcing ideas for sponsorship and promotional activities.  

31. The CTIAV was one of a number of caravan industry associations at state and territory level, albeit that some such associations had broader membership base (including, for example, caravan parks) than other state associations where caravan parks had a separate association as was the case in Victoria.  These associations came under the umbrella of a national association, Caravan Industry Australia (CIA). 

    4.                 FINDINGS AS TO CREDIT

    4.1               The impact generally of the passage of time as to the quality of evidence

32. In assessing the evidence, it is important to bear in mind the impact generally of the passage of time upon the quality of evidence available in the case.  In particular, the principal events relevant to the appeal proceeding on the basis of which the parties respectively claim ownership of the mark occurred between early 2004 and early 2005.  In this regard, as McHugh J in Brisbane South Regional Health Authority v Taylor (1996) 186 CLR 541 at 551 (Brisbane South) explained in identifying the policy underlying the enactment of limitations periods, the impact of the passage of time on the quality of both documentary evidence and the evidence of witness is insidious and cannot necessarily be measured:

    The enactment of time limitations has been driven by the general perception that “[w]here there is delay the whole quality of justice deteriorates”.  Sometimes the deterioration in quality is palpable, as in the case where a crucial witness is dead or an important document has been destroyed.  But sometimes, perhaps more often than we realise, the deterioration in quality is not recognisable even by the parties.  Prejudice may exist without the parties or anybody else realising that it exists.  As the United States Supreme Court pointed out in Barker v Wingo, “what has been forgotten can rarely be shown”.  So, it must often happen that important, perhaps decisive, evidence has disappeared without anybody now “knowing” that it ever existed.  Similarly, it must often happen that time will diminish the significance of a known fact or circumstance because its relationship to the cause of action is no longer as apparent as it was when the cause of action arose.  A verdict may appear well based on the evidence given in the proceedings but, if the tribunal of fact had all the evidence concerning the matter, an opposite result may have ensued.  The longer the delay in commencing proceedings, the more likely it is that the case will be decided on less evidence than was available to the parties at the time that the cause of action arose.

33. Further, McLelland CJ in Equity speaking of the fallibility of human memory in Watson v Foxman and Others (1995) 49 NSWLR 315 (Watson) at 319 pointedly explained the kinds of influences that may impact upon the processes of memory with the passing of time:

    …human memory of what was said in a conversation is fallible for a variety of reasons, and ordinarily the degree of fallibility increases with the passage of time, particularly where disputes or litigation intervene, and the processes of memory are overlaid, often subconsciously, by perceptions or self-interest as well as conscious consideration of what should have been said or could have been said.  All too often what is actually remembered is little more than an impression from which plausible details are then, again often subconsciously, constructed.  All this is a matter of ordinary human experience.

34. To similar effect, Katzmann J stated in Arnautovic v Cvitznovic [2011] FCA 809 at [73] that:

    In the absence of notes it is, generally speaking, impossible to accurately recall the terms of any conversation six months after it took place.  Human memory is notoriously unreliable.  As Spigelman CJ recently observed (“Truth and the Law”, The 2011 Sir Maurice Byers Lecture, 26 May 2011):

    Witnesses can, without any dissimulation or propensity to lie, confidently assert the truth of conversations, observations and events which did not happen.  The plasticity of memory impedes the truth finding process.  This is not an uncommon phenomenon…

1. These observations apply with particular force in this case where, as I observe, there were significant differences in the accounts of the primary witnesses for each party including as to whether or not particular meetings took place, what was said and so forth, the credibility of the principal witnesses was very much in issue, and the primary witnesses for both parties had a considerable stake in the outcome of the proceedings.  This means that in the case in particular of Mr Falconer’s evidence and that of Colin and Warren Parrôt, I have given greater weight to evidence which is corroborated by the contemporaneous documents.  On the other hand, both parties accepted that Mr Wright had no personal stake in the proceedings and his evidence, subject to the inevitable impact of time, was the more reliable. 

   4.2               Mr Falconer

2. In controversial matters, I do not consider that Mr Falconer’s evidence can be relied upon absent corroboration.  First, there were significant inconsistencies in his evidence before the Registrar and on the appeal.  An example concerns the critical issue of when and by whom the name “Discover Downunder” was devised.   

3. Secondly, he engaged to some extent in reconstructing events. An example is his evidence attempting to explain how he recalled only in these proceedings that he had had a meeting with Warren and Colin Parrôt in September 2004 at which he says that Warren Parrôt suggested the name “Discover Down Under”: see below at [236]-[239] below.

4. Thirdly, as Evergreen submits, Mr Falconer gave a vague and unsatisfactory account of the efforts undertaken by others to locate documents within Bauer which might have supported his account on matters such as the alleged internal use of Discover Downunder for the program from September 2004: see further at [73]-[76] below.

5. Fourthly, I do not accept Bauer’s submission that Mr Falconer’s evidence, in contrast to that of Colin and Warren Parrôt, was unaffected by advocacy.  I formed the impression that vindicating Bauer’s position in the litigation meant a lot to him personally and that is scarcely surprising given his lengthy role within the Bauer group of companies and his level of seniority.

6. In finding Mr Falconer’s evidence on controversial matters is not reliable unless corroborated by documentary evidence or Mr Wright’s evidence, I emphasise that I find only that the likelihood is that this is the result of the passage of time and of the kinds of subconscious influences which may lead to the unconscious reconstruction of events of which McLelland CJ in Equity spoke in Watson (as quoted at [44] above). It is also no doubt affected by the fact that Mr Falconer had many other responsibilities and on his own evidence had limited personal involvement only in the program Discovery Downunder throughout its development and running. That limited involvement is only to be expected given the scale of his responsibilities as CEO of Trader: see above at [28]. In this regard, as I later explain I have also taken into account when relevant the failure by Bauer to call witnesses with personal knowledge of relevant events: see below at [64]-[72].

   4.3               Mr Colin Parrôt

7. Overall I formed a favourable view of Colin Parrôt’s honesty.  He was straightforward in his answers and his evidence was unshaken by extensive and often vigorous cross-examination.  There were matters on which he felt confident in his recollection of events and he gave credible answers when pressed as to why he might recall those events.  Equally he did not hesitate to state where he could not recall events.  That notwithstanding, not surprisingly there was also a degree of reconstruction in his recollection of events by reference to documents, as he accepted for example in his recollection of when the Pilot Promo for the  first series was filmed.  He was also prepared to stand corrected when he was proved wrong.  For example, when the discrepancy between his recollection of the date of an important meeting with Bruce Gordon in 2009 with the date as referenced in his diary and in an email sent the following day was pointed out to him in cross-examination, he immediately accepted the documentary record as correct and was in my view genuinely apologetic about the error saying “I stand corrected.  It’s my mistake on that.”  He did not doggedly stand by his recollection and try to explain away the documentary evidence. 

8. It is, however, also fair to say that Colin Parrôt felt very strongly that he had been wronged by Bauer and that this came out repeatedly in his evidence.  I have no doubt that his feeling that he had been wronged was genuinely felt.  I also consider that it is likely that his recollection of events was clearer and more specific than that of Mr Falconer, not least because this was a really important matter personally to him.  The concept of a program like Discover Downunder was something he had conceived initially back in the late 1980’s and it meant a lot to him to see it brought to fruition.  Nonetheless the fact that he gave evidence confidently does not mean that time has not also impacted upon his recollection of events; nor that his strong perception that he is “in the right” may not have subconsciously impacted on his recollection of events and conversations.  However, unlike Mr Falconer, in general Colin Parrôt’s recollections on contentious matters are corroborated by contemporaneous records. 

   4.4               Mr Warren Parrôt

9. Warren Parrôt also clearly felt that he and his father had been wronged, including in the manner in which he personally had been treated in the lead up to his redundancy from Bauer.  No doubt, together with the passage of time, that emotional state impacted to some degree upon his evidence.  However, I accept him as honest and straightforward.  His evidence is largely consistent with his father’s evidence and, more importantly, with the documentary record.  I do not accept that his credibility was damaged by cross-examination which was at times extensive and vigorous, including on a series of documents put to him in cross-examination for the purpose of damaging his credibility.  For example, one of the major attacks upon his credibility related to a PowerPoint presentation which he prepared in the months leading up to his dismissal.  In closing submissions, Bauer submitted that Warren Parrôt’s evidence regarding the circumstances in which he had developed the business plan represented in the PowerPoint presentation for a re-branded television show “was clearly an unreliable reconstruction which he devised in the course of giving his oral evidence.”  For reasons I later explain, I do not accept that submission and find credible as against vigorous cross-examination his unshaken and persuasive testimony that he prepared the plan as a backup plan at a time when he was under great stress at Bauer in the period leading up to his dismissal:  see below at [213]-[215]. 

   4.5               Conclusion on credit/reliability of witnesses

10. In short, each of the key witnesses, Mr Falconer for Bauer, and Colin and Warren Parrôt for Evergreen, can fairly be described as advocates for a favourable outcome in their respective interests and I accept that each genuinely believed the claim to ownership of the Mark by their respective party.  However, as Evergreen submits, a major point of distinction between them is that the evidence of Colin and Warren Parrôt on the critical facts in issue is substantially supported by contemporaneous documentation and the independent evidence of Mr Wright.  On the other hand, Mr Falconer’s evidence on controversial matters is substantially inconsistent with the evidence in the documents or uncorroborated by documentary evidence including as to the alleged meeting with Colin and Warren Parrôt on 24 September 2004 at which he said that Warren came up with the name Discover Downunder and the alleged internal use of the name “Discover Downunder” thereafter (see below at [236]-[245]).   

    5.                 DEFICIENCIES IN THE EVIDENCE AND THE DRAWING OF INFERENCES

    5.1               The rule in Jones v Dunkel

11. One significant issue between the parties concerned whether adverse inferences should be drawn on the basis of the rule in Jones v Dunkel (1959) 101 CLR 298 (Jones v Dunkel) against Bauer by reason of its failure to call Ms Coady, Messrs Grant and James Manson, and to a lesser extent, Mr Sinclair.

12. The rule in Jones v Dunkel is based on common sense, namely, that an unexplained failure by a party to call a witness may, in appropriate circumstances, base an inference that the evidence of that witness would not have assisted that party's case:  Jones v Dunkel at 308 (Kitto J), 312 (Menzies J) and 320-321 (Windeyer J). While the rule may make certain evidence or the inferences which may be drawn from the evidence more probable, it cannot fill gaps in the evidence, or convert conjecture and suspicion into inference: Jones v Dunkel; Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121 at [53] (Gleeson CJ and McHugh J). As for example, Newton and Norris JJ held in O’Donnell v Reichard [1975] VR 916 at 929 in explaining the proper manner in which the rule may be applied;

    …where a party without explanation fails to call as a witness a person whom he might reasonably be expected to call, if that person’s evidence would be favourable to him, then, although the jury may not treat as evidence what they may as a matter of speculation think that that person would have said if he had been called as a witness, nevertheless it is open to the jury to infer that that person’s evidence would not have helped that party’s case; if the jury draw that inference, then they may properly take it into account against the party in question for two purposes, namely: 

    (a) in deciding whether to accept any particular evidence, which has in fact been given, either for or against that party, and which relates to a matter with respect to which the person not called as a witness could have spoken; and

    (b) in deciding whether to draw inferences of fact, which are open to them upon evidence which has been given, again in relation to matters with respect to which the person not called as a witness could have spoken.

    (emphasis in the original)

13. Underpinning Jones v Dunkel is the general principle tracing back to the remarks of Lord Mansfield in Blatch v Archer (1774) 1 Cowp 63 at 65 that “all evidence is to be weighed according to the proof which it was in the power of one side to have produced, and in the power of the other to have contradicted”.  As Hodgson JA (with whose reasons Beazley JA agreed) explained in Ho v Powell [2001] NSWCA 168; (2001) 51 NSWLR 572:

    14.  … in deciding facts according to the civil standard of proof, the court is dealing with two questions:  not just what are the probabilities on the limited material which the court has, but also whether that limited material is an appropriate basis on which to reach a reasonable decision… 

    15.  In considering the second question, it is important to have regard to the ability of parties, particularly parties bearing the onus of proof, to lead evidence on a particular matter, and the extent to which they have in fact done so…

    (citations omitted)

14. This principle is not limited to the failure to call a particular witness:  other instances where it may be relied upon include a failure to adduce any evidence at all, a failure to produce a particular document, or a failure to prove a particular fact (Payne v Parker [1976] 1 NSWLR 191 (Payne) at 201(3) (Glass JA)).

15. Importantly, Glass JA in Payne at 201 identified three conditions for the existence of the principle in Jones v Dunkel, namely:  “(a) the missing witness would be expected to be called by one party rather than the other, (b) his evidence would elucidate a particular matter, (c) his absence is unexplained.”   As to the first condition, Glass JA explained at 201 that:

    The first condition is also described as existing where it would be natural for one party to produce the witness: … or the witness would be expected to be available to one party rather than the other… or where the circumstances excuse one party from calling the witness, but require the other party to call him… or where he might be regarded as in the camp of one party, so as to make it unrealistic for the other party to call him… or where the witness’ knowledge may be regarded as the knowledge of one party rather than the other… or where his absence should be regarded as adverse to the case of one party rather than the other…It has been observed that the higher the missing witness stands in the confidence of one party, the more reason there will be for thinking that his knowledge is available to that party rather than his adversary…  If the witness is equally available to both parties, for example, a police officer, the condition, generally speaking, stands unsatisfied.  There is, however, some judicial opinion that this is not necessarily so….  Evidence capable of satisfying this condition has been held to exist in relation to a party’s foreman… his safety officer… his accountant… his treating doctor…

    (citations omitted)

16. While Glass JA was in dissent in the result in Payne, these passages were accepted as correctly stating the relevant principles in RHG Mortgage Limited v Rosario Ianni [2015] NSWCA 56 (RHG Mortgage) at [78] per McColl JA (Sackville AJA agreeing).

17. As to Glass JA’s second condition, McColl AJA in RHG Mortgage at [76] explained that “The circumstances for drawing a Jones v Dunkel inference are found where the uncalled witness is ‘a person presumably able to put the true complexion on the facts relied on [by a party] as the ground’ for any inference favourable to the plaintiff”.

18. As to the third condition, her Honour explained in RHG Mortgage that:

    75. Any “explanation” such as unavailability or absence of recollection for the failure to call the witness must be established by evidence: West v Government Insurance Office (NSW) [1981] HCA 38; (1981) 148 CLR 62 (at 70) per Murphy J; Rowell v Larter (1986) 6 NSWLR 21 (at 24 – 25) per Young J (as his Honour then was).

    5.2               Does Jones v Dunkel apply with respect to Bauer’s failure to call Miffy Coady, Mike Sinclair and Grant and James Manson?

19. Evergreen contends that on each of the points on which Mr Falconer’s sole testimony is the only evidence, there are other witnesses “in the Bauer camp” who ought to have been capable of corroborating his evidence.  Specifically, Evergreen relied upon the failure by Bauer to call the following witnesses whose relevant knowledge may be summarised as follows:

    (1)Miffy Coady who had immediate supervision of Warren Parrôt at Trader.  In particular, as I later explain, Ms Coady was the author of an email on 27 January 2005 describing the show as “Discover Down Under” and it was her diary entries on 27 and 28 January 2005 which variously described the show as “Discovery Downunder” and “Discover Downunder”, each of which were annexed to Mr Falconer’s affidavit evidence.  Bauer relied upon these documents in support of its claim to ownership of the Mark on the basis that they demonstrated that the name Discover Downunder was being used internally within Bauer before Colin Parrôt alleges that the name was settled upon (see further at [140] and [246]);

    (2)Mike Sinclair, who was Bauer’s editor-in-chief and had direct dealings with Colin and Warren Parrôt and the program, including being implicated in certain key controversial events (e.g. the question of who paid the airfares for the meeting with Channel Ten on 24 January 2005 (see at [247] below));

    (3)Grant and James Manson from Cameron Damon Media (CDM) to whom among other things a promotional video had allegedly been sent by Bauer before execution of the contract between Evergreen and Channel Ten, being the act allegedly constituting Bauer’s first use of the Mark.  I also note that, despite changing its case as to first use in the course of the trial from the alleged distribution of the promotional video by CDM to potential clients, to Bauer sending the promotional video to CDM (see below at [275]-[279]), Grant and/or James Manson would have had relevant knowledge on either case.

20. With respect to these persons, Mr Falconer gave evidence that:

    (1)Miffy Coady lived only a few streets away from him in Melbourne;

    (2)Mike Sinclair subsequently went to Carsales.com.au (a business which Bauer sold in 2005) and was still there;

    (3)CDM were ACP’s media sales representatives at all relevant times, there is still a commercial relationship between Bauer and CDM for media sales, and James and Grant Manson are still at CDM in Melbourne; and,

    (4)all of these people would have been available to Mr Falconer if he wished to speak to them.

21. Bauer, however, submitted that it was not suggested in evidence (nor is it the case) that any of those persons is a present employee of Bauer or a person over whom Bauer had any control.  As such in its submission there is no basis for drawing any adverse inference against Bauer by reason of it not eliciting testimony from them and to do so would misapply Jones v Dunkel.  Rather, Bauer submits that either party could potentially have called any of Ms Coady, Mr Sinclair, or Messrs Manson.  In its submission, the fact that neither party called any of these witnesses ought not to have the consequence that a failure to do so should result in an adverse inference being drawn against it.

22. I do not accept Bauer’s submissions. 

23. First, the test is not whether the potential witness is a present employee or someone over whom a party had “control”.  The question is whether it would have been natural for Bauer or Evergreen to produce the witness.  Given that Miffy Coady and Mike Sinclair had previously been employed by Bauer and the issues on which they could have given relevant evidence related to matters of which they would have had knowledge by reason of their former employment with Bauer, they were plainly in the Bauer camp, and it was unrealistic to expect Evergreen to call them.  The same is the case with respect to James and Grant Manson who remain in a longstanding business relationship with Bauer.  The submission by Bauer that Jones v Dunkel cannot be invoked by Evergreen because the 2005 contract between CDM and Bauer states that CDM is not the agent for Bauer is premised upon the erroneous assumption that the rule applies only where a party has control over the person not called.

24. Secondly, the evidence did not demonstrate that these persons were unavailable.  To the contrary, as earlier stated Mr Falconer knew where they were and accepted that he could have spoken to any of them.  Indeed, Mr Falconer relied in his evidence upon statements which he attributed to Grant Manson about the use to which CDM put the video (see below at [290]-[291]). 

25. Thirdly, Bauer did not dispute that these people could have given relevant evidence.  To the contrary it is apparent from the evidence that they would have had personal knowledge of highly relevant facts in issue. 

26. Finally, there is no evidence explaining why these persons were not called by Bauer.

27. In those circumstances, as I later explain there are a number of issues in relation to which I consider that an adverse inference ought properly to be drawn against Bauer in line with Blatch v Archer and Jones v Dunkel by reason of Bauer’s failure to call these individuals.

    5.3               Failure by Bauer to adduce documentary evidence in support of key aspects of its case

28. Nor is the evidence as to the lack of documents in support of Bauer’s case satisfactory.  Mr Falconer gave evidence that in 2004, ACP had no system in place for keeping all of the records relating to a particular transaction together, and that it had “a very manual process around billing” and keeping files in particular matters.  While he accepted that Bauer was using email extensively in 2004, that emails back to at least 2003 had been produced, and that Bauer has retained a substantial quantity of its communications, he said that he did not think that Bauer had access to all emails back then – only “[a]t a general level” - and he thought there had been some issues with archiving historic documentation.  Significantly there was no direct evidence as to the scope of searches of ACP/Trader documentation that had been undertaken and any difficulties in archiving.  Mr Falconer did not personally inspect the records but instructed Macek Rubetzki in the legal department to do so.  While Mr Falconer said that he believed that all of the relevant documents that might be found among the records had been found, that was only “[b]ecause that’s what we asked them to do”.  He had never asked Mr Rubetzki if he thought that that was what he had done.  While Mr Falconer gave evidence that, in making inquiries of other officers at Bauer about what had taken place he “spoke to anyone who was – who I believe was relevant in preparing any affidavit”, when pressed he said that Mr Rubetzki “would be the main person who coordinated it” even though Mr Rubetzki was not involved with the operations of Trader in any way in 2004.  Mr Falconer’s evidence ultimately as to the research undertaken remained vague, with Mr Falconer saying that “We would  - we checked all facts.  We look at – talked to people who would  - who were still employed to work during that period.  We checked all the facts that we had readily available in the timeframe that we had.  So, yes, we talked to a number of people.”

1. As earlier mentioned, Bauer relied upon an affidavit of Mr Rubetszki sworn on 2 October 2015.  While Mr Rubetszki had a solicitor/client relationship with Bauer at the time of these proceedings, he was employed by the Nine Entertainment Co group of companies (of which the second applicant, the ACP Magazines Limited, was part) in the role of Trade Marks Counsel.  However, Mr Rubetszki did not give any evidence as to the scope of searches undertaken by him within Bauer/ACP/Trader internally; nor does he identify any deficiencies within those organisations in locating historical documents.  As such, his evidence takes this issue no further.  Indeed, Bauer’s failure to lead evidence from Mr Rubetszki on this issue suggests that any evidence which he might have given on the issue would not have supported Mr Falconer’s evidence as to the completeness of the searches; nor Mr Falconer’s explanation for the lack of documents supporting important aspects of Bauer’s case.  

2. The lack of clarity as the nature and scope of the research undertaken into the documentary records, coupled Mr Falconer’s limited or lack of involvement in relevant events, constitutes a serious weakness in Bauer’s case.  In particular, it meant that Bauer ran an essentially inferential case despite persons with direct knowledge of contentious matters being within its camp and available to be called.  

3. Conversely, the fact that no person, such as Mr Rubetszki, with actual knowledge of any difficulties with locating or archiving documents and the scope of searches undertaken to locate missing documents gave evidence, coupled with the vagueness of Mr Falconer’s evidence on these subjects, mean that I do not accept that a satisfactory explanation has been given for the failure to produce documents that would have been expected to exist on Bauer’s case.  These include any documents evidencing the use of the name “Discover Downunder” internally within ACP/Trader before 27 January 2005.

   6.                 FINDINGS OF FACT

   6.1               The importance of the contextual narrative to the parties’ arguments

4. The cases for each party as to the circumstances in which the series and the Mark were created were diametrically opposed and hotly contested.  There were, as I have earlier mentioned, strongly held views particularly by Mr Falconer for Bauer, on the one hand, and Mr Colin Parrôt, on the other hand, as to these circumstances.  Strictly speaking the fundamental question of ownership of the Mark turns simply upon who first used the Mark.  However, both parties relied upon their perception of the background to the creation of the series and authorship of the Mark to support their respective cases as to first use.  This was particularly so with respect to Bauer.  As its case for first use was inferential, the “narrative” on the basis of which the Court was asked to draw inferences was pivotal.  Furthermore, the question of who authored the Mark and who was the main driver in creating the program and in getting it funded and “up and running” is relevant to a consideration of Bauer’s case that Evergreen did not intend to use the Mark in good faith, or applied for the Mark in bad faith.  Relevant also to the latter two issues are the circumstances in which the show “What’s up Downunder” came to be created after the relationship between Evergreen and Bauer had broken down and Warren Parrôt had been made redundant.

5. In these circumstances, it is necessary to set out with care my findings as to these contextual matters notwithstanding that ultimately I find that Bauer’s primary case on ownership falls on the simple point that it failed to establish a proper foundation on the basis of which to infer that the first use of the Mark was by Bauer.  In effect, as Evergreen submitted, “[t]his is that comparatively rare class of case where the absence of evidence is in fact evidence of absence.”

   6.2               Development of the idea by Colin Parrôt and initial support from the industry

6. Colin Parrôt had long held an interest in the caravan and camping industry.  During his career in advertising, he produced advertisements for the caravan industry.  He became involved in caravans and camping and was known to manufacturers, retailers and distributors of parts and accessories in that industry.  His clients included the caravan manufacturers Viscount and Jayco, and retailers including World of Caravans.  He often advertised his client’s products through Caravan World Magazine which was a magazine owned by ACP.  He worked with officials of the representative bodies in the caravan industry on a number of advertising projects and was acquainted with people at high levels in state caravan associations, state tourism bodies, and camping and National Park bodies.

7. In or around the late 1980’s, Colin Parrôt had the idea of producing a caravan and camping lifestyle program as a platform for advertising the caravan and camping industry and its products and services.  He discussed this concept with various people in the caravan industry.  However it was not until the late 1990’s that the concept gained any momentum.  From about 2000, Colin Parrôt began to receive encouragement for this idea from Kevin Clark, President of the CTIAV, and Peter Wright, the CEO of the CTIAV, to whom Kevin introduced Colin Parrôt.  

8. In early 2004, Colin Parrôt had discussions with Peter Wright to find a way in which the CTIAV could be involved in the program to the benefit of its members.  In the course of those discussions a name for the program was discussed.  Peter Wright indicated that he “was interested in a name which identified the industry.”  The name first proposed by Colin Parrôt was “Caravans and Motorhomes Downunder” which Peter Wright agreed to “as it effectively described the products and services relating to the program.”

9. Peter Wright notified Colin Parrôt that the CTIAV would commit funds for the program if he could arrange to have it broadcast nationally as this would broaden the market for the CTIAV members and create an opportunity for him to obtain funding from caravan associations and other states for the program as a means of defraying the production costs.

10. The CTIAV supported Colin Parrôt’s proposal to submit the program to ACP through his son Warren Parrôt who was then an Account Manager at ACP.  Peter Wright explained that “[t]he sponsorship in a sense was to assist us in promoting, if you like, our caravan shows.  There were situations where we would provide them with a free stand at the show and what would occur there was they would give us, in return, advertising in their magazines.” 

11. The CTIAV already had a sponsorship relationship with ACP/Trader, having advertised in Caravan World, a magazine owned by Trader Classifieds, and possibly other magazines in the Trader suite.  Part of Peter Wright’s role was to develop the relationship with ACP to assist the CTIAV with general advertising to promote his industry’s products and services.   

12. At that time, Peter Wright’s contact at ACP was Ros Bromwich who was the editor of Caravan World.  He explained that he spoke with Ros Bromwich every three to four weeks “in the sense of just trying to understand how we can, as I said, tap into the market a lot better than what we have in the past.  She was very keen on doing more about promoting our shows, and that was, I guess, a great start for both of us to get the ball rolling and improve our relationships.”  At this time, Ros Bromwich was also approaching Peter Wright to try and increase her presence with other industry associations.

13. The CTIAV was keen to participate in an “advertorial” type television program along the lines of the boat and car shows.  When Peter Wright joined CTIAV in 2001, one of his priorities was to hold discussions with other industry associations about working together on national programs, given their potential as a means for promoting the industry associations.  At that time the CIA (the national body) had a relationship with, for example, the show Getaway which was, according to Peter Wright, a “pretty big hit on Network 9” screening on Sunday nights at 7.30pm which “was a very good time slot for us”.  The CIA was trying to get funding from the state organisations to elevate their presence on those programs. 

14. By July 2004, Colin Parrôt had spoken also with Ron Chapman who was the acting CEO of the Queensland group, Stuart Livingstone in South Australia of the Caravan Industry Association, Kevin Clark who was president of the CTIAV, and Jerry Ryan from Jayco Caravans who had been a client of Colin Parrôt’s advertising agency for over 30 years.  Jayco Caravans was the biggest manufacturer of caravans in Australia.  Colin Parrôt explained that “They were all prepared to put their hands in their pockets…. Jerry Ryan was very enthusiastic about supporting anything caravanning, because he is the market leader.…  If I could get it up, they would certainly support me.  That’s what they had said.”

    6.3               Initial approaches to ACP

    6.3.1Trader’s business strategy relating to sponsored television programs

15. As I have earlier mentioned, Trader was a division of the ACP.  The strategy of the Trader business was and is to develop a portfolio of products across print, digital and other media to offer potential advertisers a suite of solutions to meet their advertising and marketing needs.  At the relevant time, Trader published a number of magazine and periodical titles in Australia, including ‘Caravan World’ and ‘Motorhome & Caravan Trader’.  The primary sources of income generated by Trader from these titles were display (or classified) print and digital advertisements and advertorials, and feature sponsorships placed by businesses in these publications.  Each magazine and periodical had its own business model.  The objective of print and digital editorial content was generally to inform readers regarding purchasing options for new and used products.  For example, Caravan World magazine featured editorial content intended to encourage people to buy and sell caravans.

16. In 2003 Trader commenced offering and providing television programs as an additional advertising and editorial platform to its print and digital portfolio.  The two programmes then produced of this kind were “The Boat Show” and “The Car Show”.  Mr Falconer described these shows as “examples of sponsor-funded television programs”.  As a result, by 2004 Trader’s suite of advertising platforms encompassed print, digital and television media platforms.  Mr Falconer explained that:

    … the costs of production of such sponsor funded television programs were not met from receipt of a licensee from the broadcaster and had to be covered from another source of funding.  In the case of the sponsor funded television programs The Car Show and The Boat Show, Trader assumed the cost of having them produced for it as well as the financial risk of failing to obtain sufficient revenue to cover these costs.

17. He further accepted in cross-examination that:

    And the key to a sponsored TV program is that sponsors are found to underwrite the cost of producing the program?‑‑‑That’s a factor, yes.

    That’s why it’s called a sponsored TV program?‑‑‑Correct.

    And typically the type of sponsors that might be interested in providing the money to underwrite a television program, they may well be industry bodies that are – money is subscribed to them by their members in order to promote the industry as a whole?‑‑‑Yes.

18. Mr Falconer explained that Trader sought to achieve a number of outcomes from the strategy of offering to its customers a suite of advertising platforms including market growth.  After a lengthy cross-examination on the point, he eventually accepted that if a television program were successful that would be a contributing factor to the strategy and that, if enough sponsorship money were raised to create the program and broadcast it, “[i]t helps, yes, helps achieve what the end outcome that we’re after”. He further accepted in cross-examination that:

    There will be no contribution to the achievement of your strategies from a sponsored television program if the television program is not made;  that is a fair statement, is it not?‑‑‑Yes, that is.

    And to ensure that it is made, either you raise enough money from sponsors to put it on ‑ ‑ ‑?‑‑‑Yes.

    ‑ ‑ ‑ or Bauer pays the shortfall in the sponsorship?‑‑‑We analyse whether the risk worth taking and we would take the risk, yes.

    Yes.  And you were concerned that programs ideally would be at no net cost to Bauer?‑‑‑That would be a nice outcome, yes.

    6.3.2Presentation of the opening draft for a pilot program (July 2004)

19. In about July 2004, Colin Parrôt approached Warren Parrôt and asked him to try and raise the idea of the program with one of his senior managers at ACP.  Warren Parrôt had assumed the position of National Corporate Sales Manager in Trader in April 2004 as a result of which the Boat Show and the Car Show were among his portfolio of responsibilities.  It was for this reason that Colin Parrôt “presented his television show concept to his son, knowing that it could be of interest to him and his endeavours and to the company that he worked for.”  As earlier mentioned, by this stage Colin Parrôt had had extensive discussions with Mr Clark from the Victorian Caravan Industry, Mr Chapman the acting CEO of the Queensland Caravan Group, Jerry Ryan of Jayco Caravans, and Peter Wright, the CEO of the CTIAV, and each of them had expressed a willingness to contribute sponsorships.  In Colin Parrôt’s words, “They were very keen.”

20. On 15 July 2004 Colin Parrôt prepared an “opening draft for a pilot of the television program” to be broadcast the following year.  He showed this to Warren Parrôt to explain the concept.  The opening draft recorded a possible title of “Inside, Outback, downunder with…” and identified Paul Cronin as a possible host.  The concept was described as: 

    CONCEPT – To present a series of 4 x half hour programs promoting caravans and camping in Australia involving various styles of caravans, campers and pop ups and towing vehicles.  Holiday parks and “Must See” Tourist destinations.  Together with towing tips and great ideas to get the most out of a Caravan/Camping Holiday.

    Segments ) 4 x 2 minutes

    Per Show ) 3 x 1 minute breakers going into or out of.

21. The second page suggested a jingle reciting “Caravan Australia for the things you need to know”. 

22. At some time in August 2004, Colin Parrôt engaged Rusty Nayles Music Pty Ltd (Rusty Nayles) to compose a jingle incorporating the words “Caravans & Motor Homes Downunder.”

    6.4               The presentation to ACP on 24 August 2004

23. Sometime after Colin Parrôt’s initial approach to his son in July 2004, Warren Parrôt told Colin Parrôt that he had discussed the idea with ACP’s Editor-in-Chief, Mike Sinclair, who had expressed interest in it.  A meeting was set up so that the concept could be presented to Mr Sinclair. 

24. In preparation for the meeting, Colin Parrôt put together a written proposal.  Colin Parrôt gave a copy of the presentation or a document very similar to it to Warren Parrôt before the meeting. However, he denied that Warren Parrôt had any input into the proposal save for accepting, when his attention was drawn in cross-examination to the reference in the presentation to the “your ACP, Nine MSM [sic] Multi Media push”, that his knowledge about this came from Warren Parrôt.  He said that he knew nothing about ninemsn except for that which he was told by his son.  In accepting his son’s involvement to this extent only when it was specifically put to him, I gained the impression that Colin Parrôt had simply overlooked that aspect when initially denying that his son had “some input into what he should put into the proposal” rather than that he had been intentionally underplaying his son’s involvement.  Colin Parrôt also asked Warren Parrôt to whom he should speak in relation to the presentation and was advised by Warren Parrôt to speak to Mike Sinclair who “has the edge of all of those things.”  I accept Colin Parrôt’s evidence that Warren Parrôt had no other substantive input into the document.

25. In this regard, I note that Warren Parrôt’s evidence in cross examination on his involvement in preparation of the presentation and after the meeting was that:

    When Mr – your father was preparing his presentation to present to ACP to Mike Sinclair, you assisted him in identifying who he should present to?‑‑‑Well, I think he – he would have me a whole bunch of questions and I would have answered them, because any good salesman obviously tries to get the briefs so they can answer it properly, yes.

    And indeed, so, in fact, it would be appropriate for presenting to Trader rather than to any other business?‑‑‑  It’s like – when I go and try and sell something to somebody I will go and ask them questions first and get some answers, so that I know exactly how I’m going to present it.

    And you gave those answers and ‑ ‑ ‑?‑‑‑  I – I gave you some answers, yes.

    …

    And you identified Channel Nine as the broadcaster because it was associated with Trader?‑‑‑  Yes, absolutely.  It was basically a sister business, so you can imagine that would be where you would go first.

26. Aside from identifying Channel 9 as the broadcaster, Warren Parrôt did not give evidence that he was involved in preparing the presentation for the lunch meeting.  His evidence was only as to what he thought he would have done.  As such, his evidence does not contradict his father’s evidence and in part confirms his father’s evidence.  By contrast Warren Parrôt was clear that he had involvement after the meeting in August 2004 in preparing a presentation that he gave internally.

27. The proposal for the meeting on 25 August 2004 was dated 10 August 2004.  It stated that it was submitted by “C. J. Parrot” and appeared with the logo of Colin Parrôt’s advertising company, Power Pact.  The proposal stated that it was to Warren Parrôt, National Corporate Sales Manager, ACP Trader Classifieds, copied to Mike Sinclair and to Grant and James Manson from CDM. 

28. The proposal was then for the production of “4 x Half Hour Caravan Shows on Channel 9 Network @ 4.30pm on 5^th, 12^th, 19^th and 26^th March 2005 prior to the Car Shows re emergence in April.”  By way of background, the proposal explained that Colin had “vast experience in both the Caravan Industry and Television Production.”  On the topic of industry support, the presentation stated that:

    We have canvassed support through our many contacts in the Caravan Industry, Kevin Clark the CTIA (Vic) President is also my client at World of Caravans and he in turn referred me to Peter Wright the CEO of CTIA (Vic).  A self explanatory letter is enclosed.

    Separately I have had similar conversations with Ron Chapman the CEO of the CTIA (Qld) and Mr. Gerry Ryan, past president of the CIA National Body and Managing Director of Javco [sic] Caravans …. Australia’s largest manufacturer.

    Everyone is very excited and keen to support the TV Show.

    I have suggested they watch your current Car Show as typical format for “Caravan Australia” in that the emphasis will be on the Caravan product not the tourist parks, or site seeing destinations, but the styles, finishes, designs and facts around Caravans and Caravanning.

    Peter even gridded up some topics he thought worth covering.  Both Vic & Qld have offered their full support … and I’m sure other states will join them once we get the go ahead.

29. The concept was explained in the following terms:

    The Concept for “Caravan Australia” to be truly valuable to your ACP, Nine MSM Multi Media push should reflect your magazine “Caravan World” and other relevant titles.

    We imagine just such a show with segments on –

    ·Caravan types, differences and individual benefits

    ·Internal design, layouts and finishes

    ·Towball/Weights Towing technicalities and regulations

    ·Backing, parking, stowing tips

    ·Annexes and awnings limitations and tips on canvas care

    ·Water filtration, toilets protocol on emptying sullage

    ·Cooking, recipes, food storage/procurement/handy tools

    ·Caravan Insurance – types of cover available

    ·Packing/Storage

    ·Bikes, Boats and Park Protocol

    PLUS anything else we can think of.

    We realise to make this a “must watch” T.V. Show we must have a BIG NAME anchor and have initiated discussions with Australia’s favourite father figure, the voice of authority and integrity Paul Cronin a snapshot of him follows, together with a suggested script for a pilot/promo video to sell to sponsors.

1. Bauer contended that each of these questions should be answered “no”.  Evergreen submitted that questions (1) to (3) should be answered in the affirmative, taking issue with the definition of the first non-use period on the ground that the question is whether there was use at any time before the period of one month prior to the filing of the non-use application.  Evergreen accepted with respect to question (4) that there had been no use of the Mark in the second period but said that question (5) should be answered “yes” on the ground that Bauer’s conduct presented an insurmountable obstacle to use by Evergreen.  

   8.3               A preliminary issue

2. A preliminary issue was raised by Evergreen as to whether the removal of the Mark could be ordered, as sought by Bauer, in circumstances where the trade mark has not in fact been registered. In this regard, Bauer relied upon s 72(1) of the Act which provides that registration of a trade mark is taken to have had effect from and including the date on which the application is filed on the ground that that deeming effect could arise only after registration had in fact occurred. Bauer contended that this was a misconstruction of the statutory scheme, submitting that:

   Section 92(1) makes clear that a trade mark may be removed before it is registered.  Section 93 and s 95 similarly provide that an application for removal need not await registration.  The references to “applicant for registration” and “registered owner” in paragraph 92(4)(a) make clear that the relevant use can only be used after the day on which the application for the registration of the trade mark was filed

3. There is considerable force in Bauer’s submissions on this issue.  In particular, as Bauer submits, under section 92(1) an application may be made to the Registrar to have a trade mark “that is or may be registered removed from the Register” (emphasis added). Furthermore the present non-use proceedings are, of course, instituted directly in this Court under s 92(3) which provides that an application may not be made to the Registrar but may be made to the Court for an order directing the Registrar to remove the trade mark from the register “if an action concerning the trade mark is pending in a prescribed court”. It was not in issue that that precondition is met where, as here, the trade mark has not yet been registered. That being so, s 92(3) lends support also to Bauer’s submission. However it is unnecessary to decide the point of construction in this case for the reason that in any event no order for removal would be made for the reasons which follow.

   8.4               The first non-use period

4. The applicable criteria for removal under s 92(4)(a) with respect to the first non-use period are that:

   (a)when the application for registration of the trade mark was filed, the applicant had no intention in good faith to use or to authorise the use of the trade mark in Australia in relation to the goods and/or services to which the non-use application relates; “and that”

   (b)the registered owner has not used the trade mark in Australia or has not used the trade mark in good faith 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” (emphasis added).

5. The use of the word “and” in s 92(4)(a) makes it clear that both criteria must be met before the power to remove is engaged.

6. Applying first the criterion in s 92(4)(a), I have already found that Evergreen did intend in good faith to use or to authorise the use of the Mark in Australia when it applied for registration of the mark. Accordingly this criterion is not satisfied.

7. Secondly and in any event, for reasons earlier given Evergreen was the owner of the Mark having first used the Mark on 25 February 2005, and did in fact use, and authorise the use of, the Mark for the Services from 2005 to 2009. It follows that Evergreen used and authorised use of the Mark at a time before the period of one month ending on the day on which the non-use application was filed, namely, 11 May 2015. In this regard, to the extent that the argument by Bauer under s 92(4)(b) is premised upon its submission that Evergreen’s description in its application of the services for which registration is sought does not extend to the use of the Mark to name television programs (the registration application construction issue), I have already held that that issue could not be raised without leave, which was not sought.

8. It follows that Evergreen has rebutted the allegation of non-use in the first non-use period on the balance of probabilities for the purposes of s 100(1)(a) and (b) of the Act.

   8.5               The second non-use period

   8.5.1Circumstances in which non-use is rebutted by an obstacle for the purposes of s 100(3)(c)

9. Under s 92(4)(b) and s 100(1)(c) of the Act, it is necessary for Evergreen to rebut Bauer’s allegation that there had been no use, or no use in good faith, by Evergreen of the Mark within the second non-use period being 11 May 2012 to 10 May 2015

10. It is not in issue that Evergreen did not use the Mark during this period. However Evergreen relies upon s 100(3)(c) which provides that:

    (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:

    …

    (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. Section 100(3)(c) was intended to give the subsection a wider operation than its predecessor provision, being s 23(4) of the 1955 Act. As Drummond J explained in Woolly Bull:

    46. ... It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate. Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark.

12. Nonetheless by reason of the fact that the circumstances must be “an obstacle to the use of the trade mark by the registered owner”, Drummond J considered that “[t]his suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner” (at [47]).  However his Honour considered that not all circumstances brought about by the voluntary act of the owner fell within the provision.  Rather, Drummond J held that:

    55. In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner’s mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark’s non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner “because of” circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark. Cf In re James Crean & Son Ld’s Trade Mark at 162.

    56. Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use.

13. However, it is sufficient if the obstacles exist for part (but more than a de minimis part) of the three-year non-use period for the purposes of s 100(3)(c) of the Act: Woolly Bull at [58].

14. In short, an obstacle for the purposes of s 100(3)(c) of the Act must be:

    (a)of a trading nature;

    (b)arise from or comprise events external to the registered owner in the sense that they were not brought about by the voluntary act of the owner; 

    (c)be capable of disrupting trade in the area of commercial activity in which goods or services bearing the registered owner’s mark are traded; and

    (d)have caused in a practical business sense non-use of the Mark.

    See also:  Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39 (Austin Nichols (FCA)) at [103]–[108] (Cowdroy J) (subject to an appeal on different grounds ([2012] FCAFC 8 (Austin Nichols (FCAFC)); and UCP Gen Pharma AG v Mesoblast Inc  [2012] FCA 210 at [26] (Jessup J); but note the doubts expressed by Katzman J in Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 at [175]-[176].

15. Finally, I note that Cowdroy J in Austin Nichols (FCA) considered that the question whether litigation can constitute an obstacle to use in Australia for the purposes of s 100(3) of the Act is not clear. While acknowledging that authorities of the Federal Court have held that litigation relating to the use of a trade mark is not an ‘obstacle’ to trade (citing Unilever Australia Ltd v Karounos and Another [2001] FCA 1132 at [68] (Hill J) and Conquip Holdings Pty Ltd v S & A Restaurant Corporation [2000] AIPC 91-547), his Honour noted that the facts in those cases involve litigation on a far smaller scale and pointed to the fact that the effect of litigation on commercial behaviour of a company cannot be underestimated. Austin Nichols however concerned the alleged impact of worldwide litigation by the applicant for removal, as opposed to the proceeding itself for removal for non-use of the trade mark.  In the circumstances, to the extent if any that Evergreen relied upon the present litigation as an obstacle, I do not consider it necessary to determine this question given the other factors as I explain below.

    8.5.2Was there an obstacle to use of the Mark by Evergreen under s 100(3)(c) so as to rebut non-use?

16. Evergreen cites Bauer’s conduct in conjunction with Channel 9 in broadcasting a national television program under and by reference to the Mark “Discover Downunder”, as having rendered it for all practical purposes impossible for Evergreen to use the Mark in relation to the intended services.  Evergreen also relies upon Bauer’s conduct in having threatened legal action if any name it regarded as deceptively similar to Discover Downunder was used with respect to a rival product.  Specifically, Evergreen submits that:

    114. The facts make clear that Bauer’s conduct presented an insurmountable obstacle to use of the trade mark by Evergreen during the period from October 2009 to June 2015 within the meaning of Section 100(3)(c). Bauer’s decision to take the mark for itself and to use it in respect of the very same goods and services that Evergreen traded in, so as to appropriate the reputation of that program for itself, precluded any continued use by Evergreen until such time as this dispute was resolved and the mark registered, so as to confer on Evergreen the rights afforded by the Act.

    115.  So long as Bauer arranged the broadcast of a television program under the name “Discover Downunder” there was an insurmountable obstacle in the path of Evergreen using the mark.  Commercially, no other network would try to run a competing program with the same name, and it was apparent that Bauer would (as it did) threaten legal proceedings in relation to any attempt by Evergreen to exercise its rights.  The imbalance in power and resources requires the determination of this proceeding and the registration of the mark before use can be made of the name.

17. I accept Evergreen’s submissions as to the insurmountable nature of the obstacle that confronted it by reason of Bauer continuing to broadcast the television program under the name of Discover Downunder.  That obstacle was plainly of a trading nature, arose from acts external to Evergreen being undertaken independently by Bauer, and was capable of disrupting trade in the area of commercial activity the subject of the Mark.

18. Bauer however contends in effect that Evergreen has not demonstrated that this obstacle caused non-use of the mark.  Specifically, Bauer submits that it cannot be inferred that it was Bauer’s conduct that led to Evergreen ceasing to use the Mark commercially on the ground that Evergreen had no intention to use the Mark for the services of production of television programs because it only ever intended to produce the program ultimately given the name What’s Up Down Under.  However, for reasons earlier given I have rejected that submission and found that Evergreen intended to use the Mark at the time that it applied for registration of the Mark.  That being so, there is no reason to suppose, and none was put forward by Bauer for supposing, that Evergreen’s intentions in this regard changed after registration of the Mark.  To the contrary, Evergreen’s vigorous defence of the proceeding before the Delegate and in the proceedings in this Court suggests the contrary.  In those circumstances, it is plain for the reasons given by Evergreen that Bauer’s conduct in broadcasting a program under the name Discover Downunder caused non-use of the Mark in a practical business sense, namely, that no other network would broadcast the program under the same name.

    8.5.3Exercise of discretion

19. In the alternative, even if Bauer’s conduct in broadcasting the television program under the name Discovery Downunder for the years 2010-2015 did not constitute an obstacle for the purposes of s 100(3)(c) of the Act, Evergreen submits essentially for the same reason that the Court ought exercise its discretion under s 101(3) so as not to make an order for removal of the trade mark. That subsection provides that:

    (3)      If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

20. The policy of the Act was identified conveniently in Davison and Horak, Shanahan’s Australian Law of Trademarks and Passing off (6^th Ed, Thomson Reuters) at [70.2505]:

    The policy of the 1995 Act is to facilitate the removal of an unused trade mark.  Section 101(3) requires that the Registrar or the Court be “satisfied that it is reasonable” not to remove a trade mark where grounds for removal have been established.  Further, the public interest in the integrity of the Register will generally demand the removal of an unused trade mark.

21. In this regard the Full Court held in Austin Nichols first that “[t]he question to be asked is whether it was reasonable not to remove the trade mark from the Register, although the trademark had not been used during the statutory period.” (at [28]).  The question is not whether there is any or sufficient justification for the exercise of discretion: Austin Nichols at [28]. 

22. Secondly, the Full Court held that “[f]or the discretion to operate in favour of the registered owner, the Court must be positively satisfied that it is reasonable that the trademark should not be removed.… This is a legal, and not merely an evidential, onus”  (at [44]).

23. Thirdly, their Honours, in holding that it was not irrelevant for the primary judge to have regard to the interests of the owner of the trade mark, held that:

    35.  As the primary judge pointed out, the discretion under s 101(3) is a broad one.  Whilst it might also be true to describe it as  “unlimited”, as his Honour also did (citing Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300 (Pioneer) at [167], [172], [173]), in the sense that there are no express limits on it, more correctly it is a discretion limited only by the subject matter scope and purpose of the legislation and, in particular, by the subject matter, scope and purpose of part 9 of the Act.… Only if the subject matter, scope and purpose of the legislation impliedly exclude the interests of the owner of the trademark could it be said that those interests are irrelevant to the exercise of discretion. In our view it does not.

24. In this regard, the Full Court considered that those principles identified in Nike at [42] as underpinning the 1955 Act equally underpin the 1995 Act, namely: the interest of consumers in recognising trade mark of the badge or origin of goods or services and in avoiding deception or confusion as to that origin, on the one hand; and the interest of traders in protecting the goodwill through the creation of the Mark against infringement and profiting from the Mark by licensing or assignment, on the other hand. The Full Court concluded with respect to the exercise of discretion by the primary judge that:

    38. The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion. There is no doubt that his Honour took Lodestar’s interests into account but he was not wrong to do so. They were not irrelevant.

25. In this case, first, there is no independent evidence to suggest that not removing the Mark on the Register despite non-use would cause confusion or deceive the public by reason of the reputation which Discover Downunder may have acquired in the period 2010 to 2015, notwithstanding Evergreen’s association with the Mark prior to that time at the end of the closing credits.  Nor is there a proper foundation on which to infer such an adverse impact on the public interest.  Secondly, I have already found that Evergreen intended and continues to intend to use the Mark.  I also accept that the active defence of the opposition proceeding before the Delegate and in the appeal and non-use proceedings in this Court bears out that Evergreen has not lost interest in using the Mark in the future, as Evergreen submitted.  Furthermore I accept that there was a real and practical impediment to Evergreen using the mark in relation to the services by reason of Bauer continuing to broadcast the television program under the name of Discover Downunder in 2010 to 2015.  Finally, that conduct was undertaken by Bauer without Evergreen’s permission despite being on notice of Evergreen’s claim to ownership of the Mark.  In those circumstances, if it were necessary to decide the issue I am satisfied that Evergreen has established that it is reasonable to exercise the discretion so as not to make an order for removal of the Mark and that no such order ought to be made.

    9.                 CONCLUSION

26. For the reasons set out above, Bauer’s appeal against the decision of the Delegate to register the Mark “Discover Downunder” on the Register of trade marks is dismissed with costs.  The application by Bauer for an order removing the Mark from the Register is also dismissed with costs.

I certify that the preceding three hundred and ninety-four (394) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perry.

Associate:

Dated:       12 May 2017