Evergreen Television Pty Ltd v Are Media Pty Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Evergreen Television Pty Ltd to registration of trade mark application numbers 1326288 (class 9) - DISCOVER DOWNUNDER and 1326289 (class 9) - DISCOVER DOWNUNDER and device - in the name of Are Media Pty Limited.

Delegate: Louise Tuohy

Representation: Opponent: Evergreen Television Pty Ltd
Applicant: Are Media Pty Limited

Decision: 2020 ATMO 162
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 44, 58A, 58, 62A – none established – trade marks to proceed to registration.
Background

This is an opposition filed by Evergreen Television Pty Ltd (‘the Opponent’) under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) and relates to two trade mark applications (collectively ‘the Trade Marks’) in the name of Are Media Pty Limited (‘the Applicant’) both filed on 16 October 2009. The relevant details follow:
Application Number:             1326288
Trade Mark:  DISCOVER DOWNUNDER
Filing Date:  16 October 2009
Specification:   Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers; apparatus for receiving, amplifying, converting, equalising, controlling, broadcasting or processing of sounds, signals and/or images; DVDs; digital versatile discs; digital video discs; blank media of all kinds; bags adapted for carrying photographic or video apparatus; audio receivers, players, recorders and equipment; amusement machines; binoculars; blank recording discs and tapes; memory storage devices; cases and containers for recorded media including tapes, cassettes and discs; computer software for playing, recording and editing sound, image and data signals and files; computer games; computer memory; computer mouse pads; digital storage media; decorative magnets including decorative refrigerator magnets; directional compasses; life saving apparatus, equipment and instruments including life belts, life buoys, life jackets, life nets and life rafts; masks for swimming; mobile telephone accessories; mobile telephones; mouse pads; optical apparatus and instruments; phone kits including prepaid phone kits and pay-as-you-go phone kits; sunglasses and optical goods in this class; telescopes; video game cartridges; video game software; video recordings; spare parts, replacement parts, fittings and accessories for the foregoing
Endorsements:  Provisions of subsection 41(5) applied; Provisions of subsection 44(4) and /or Reg 4.15A(5) applied.
And
Application Number:             1326289
Trade Mark:
Filing Date:  16 October 2009
Specification:  Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; data processing equipment and computers; apparatus for receiving, amplifying, converting, equalising, controlling, broadcasting or processing of sounds, signals and/or images; DVDs; digital versatile discs; digital video discs; blank, recorded and pre-recorded media of all kinds; bags adapted for carrying photographic or video apparatus; audio receivers, players, recorders and equipment; audio recordings; amusement machines; animated cartoons; audio disks; audiovisual teaching apparatus; binoculars; blank recording discs and tapes; memory storage devices; cases and containers for recorded media including tapes, cassettes and discs; compact discs; computer software including for playing, recording and editing sound, image and data signals and files; computer games; computer memory; computer mouse pads; CD-ROMs; digital storage media; databases; decorative magnets including decorative refrigerator magnets; directional compasses; discs and magnetic tapes all for the recordal of sound and/or video; downloadable electronic publications; kits comprising recorded materials and printed manuals and matter, sold together as a unit; life saving apparatus, equipment and instruments including life belts, life buoys, life jackets, life nets and life rafts; magnetic optical discs; magnetic cards, card readers and recorders; magnetic discs, data carriers and media; masks for swimming; media on which computer games, computer software and data are pre-recorded; memory apparatus; mobile telephone accessories; mobile telephones; mouse pads; optical apparatus and instruments; optical discs, including such discs on which audio material, visual material, audio-visual material, data, television programs, motion pictures, images or sounds are or can be recorded; phone kits including prepaid phone kits and pay-as-you-go phone kits; recorded entertainment; recorded multimedia publications; software; sunglasses and optical goods in this class; telescopes; video game cartridges; video game software; video recordings; spare parts, replacement parts, fittings and accessories for the foregoing
Endorsement:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
Acceptance of the Applications for possible registration were published in the Australian Journal of Trade Marks on 27 March 2014 for trade mark 1326288 and on 3 April 2014 for trade mark 1326289.
The Opponent filed a Notice of Intention to Oppose registration of trade mark 1326288 on 15 April 2014 followed by a Statement of Grounds and Particulars on 14 May 2014. It filed Additional Information to the Statement of Grounds and Particulars on 17 June 2014.
The Opponent filed a Notice of Intention to Oppose registration of trade mark 1326289 on 14 April 2014 followed by a Statement of Grounds and Particulars on 14 May 2014. It filed Additional Information to Statement of Grounds and Particulars on 7 July 2014.
The Statements of Grounds and Particulars above are referred to hereafter as ‘the SGPs’.
The Applicant filed Notices of Intention to Defend trade mark 1326288 on 5 August 2014 and trade mark 1326289 on 8 August 2014.
Proceeding were officially suspended in the first instance pending the outcome of Federal Court action NSD 935 of 2014 and then suspended in the second instance pending the outcome of an appeal before the Full Bench of the Federal Court from that judgement. The judgement of the Full Bench of the Federal Court was handed down on 3 May 2019.
IP Australia wrote to the parties on 27 February 2020 terminating the suspension and as neither party had requested a hearing this matter was allocated to me for a decision on the written papers on 15 September 2020.
Grounds of Opposition, Relevant Date and Onus
In each of the SGPs the Opponent nominates the grounds of opposition under ss 44, 58, 58A and 62A of the Act.
The rights of the parties are to be determined as at the date of the application[1] which is generally, but not always, the filing date[2]. For the purposes of s 44 which speaks of the priority date, the Relevant date is 16 October 2014 which, in this case, is the same as the filing date of the applications. Sections 58, 58A and 62A, however, do not refer to a filing date or a priority date. However, I will proceed on the basis that the filing date of 16 October 2014 is the Relevant date at which to assess all the grounds in the proceedings[3].
[1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].
[2] See Sections 6, 12 and 72 of the Act.
[3] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45].
The Opponent bears the onus of establishing at least one of the grounds of opposition[4]. The standard of proof is the ordinary civil standard of the balance of probabilities[5].
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].
Evidence
Neither party has filed evidence or submissions.
With no evidence submitted by either party I note that the parties have been engaged in a number of disputes and I mention the Court cases Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71 being an appeal from Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2017] FCA 507. These proceedings started as a de novo appeal from a decision of the Delegate[6] and only concerned s 59 of the Act. This decision agreed with the Delegates decision but on appeal the finding in respect of s 59 of the Act was overturned.
[6] Bauer Consumer Media Pty Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd [2014] ATMO 78.
Discussion
Section 44 of the Act relatively provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In each of the SGPs the Opponent particularises the s 44 ground of opposition as follows:
Trade Mark 1326288
They have stolen and used our words Discover Downunder based on a logo that we commissioned the design of and paid for and used illegally under Class 41 and they are now trying to register under Class 9. Based on Evergreen Television Pty Ltd trade mark number 1324177.
Trade Mark 1326289
They have stolen and used a logo reading Discover Downunder that Evergreen Television Pty Ltd commissioned the design of and paid for and used illegally under Class 41 and are now trying to register under Class 9. Based on Evergreen Television Trademark number 1324177.
To make out the ground under s 44(1) the Opponent must establish the following:
•that the trade mark upon which the Opponent relies has an earlier priority date than that of the Trade Mark/s;
•that the Trade Mark/s is substantially identical or deceptively to the Opponent’s trade mark; and
•that the Trade Mark/s are in respect of similar or closely related goods and/or services to the Opponent’s goods and services.
The trade mark on which the Opponent relies, being trade mark number 1324177, has been refused registration.
Accordingly, the ground of opposition under s 44 of the Act has not been established.
Section 58A of the Act relatively provides:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4);
In each of the SGPs the Opponent particularises the s 58A ground of opposition as follows:
Trade mark number 1324177 was first used by Evergreen Television Pty Ltd in Class 41 in 2005.
For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4).
In these cases the Trade Marks were both accepted under the provisions of s 44(4) by the Examiner in relation to trade mark 1324177. However, on 3 May 2019 trade mark number 1324177 was refused registration and as a consequence the Trade Marks acceptance under the provisions of s 44(4) in relation to the Opponent’s trade mark is void ab intio.
The ground of opposition under s 58A of the Act has not been established.
Section 58 of the Act provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In each of the SGPs the Opponent particularises the s 58 ground of opposition as follows:
Trade Mark 1326288
They have stolen and used our words Discover Downunder based on a logo that we commissioned the design of and paid for and used illegally under Class 41 and they are now trying to register under Class 9. Based on Evergreen Television Pty Ltd trade mark number 1324177.
Trade Mark 1326289
They have stolen and used a logo reading Discover Downunder that Evergreen Television Pty Ltd commissioned the design of and paid for and used illegally under Class 414 and are now trying to register under Class 9. Based on Evergreen Television Trademark number 1324177.
This ground is unsupported by any evidence and there is ample precedent indicating that the Opponent has not discharged its onus of at least making out a prima facie case. As such, the Applicant has no case to answer.
In Medley Distilling Co v Croakers Gully Australia Hearing Officer Ian Forno, in similar circumstances, said the following:
[T]he mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application. In relation to this question, s 55 of the Act reads:
55 Decision
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I believe that the words “having regard to the extent (if any) to which any ground on which the application was opposed has been established” make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it. Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition. Therefore, I can only proceed to decide the matter on the facts before me and the relevant case law in relation to the grounds pursued.[7]
[7] Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, [433].
In Wal-Mart Stores Inc v Ozark-London Ltd Hearing Officer Iain Thompson said:
If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established (notwithstanding the fact that a notice has been served and filed).[8]
[8] Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165, [181].
Accordingly, the ground of opposition under s 58 of the Act has not been established.
Section 62A of the Act provides:
Section 62A - Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In each of the SGPs the Opponent has particularised the s 62A ground of opposition as follows:
We believe it’s inextricably linked to another application Evergreen TV has been fighting over Bauer Media and their predecessors ACP, PBL and Nine Entertainment over Evergreen ownership of the television program name ‘Discover Downunder’ Application No 1324177 in Class 41 for which the hearing was held by AIPO’s Mr Debrett Lyons in Melbourne on 27/05/14. In that hearing it was revealed that ACP secretly registered a domain name Discover Downunder and have subsequently use it, driven by our TV show to their benefit.
This ground is unsupported by any evidence and Trade Mark 1324177 was refused registration. On balance, the ground particularised in the SGPs is not enough to establish the unscrupulous behaviour described in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2).[9]
[9] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147, 165-166].
Therefore, I find that the Opponent has not discharged its onus of at least making out a prima facie case and thus the Applicant has no case to answer.
The ground of opposition under s 62A of the Act has not been established.
Decision
Section 55 of the Act provides:
55 Decision
(1)Unless subsection (3) applied to the proceeding, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I find that the Opponent has failed to establish any of the grounds of opposition nominated in the SGPs. Accordingly, trade marks 1326288 and 1326289 may proceed to registration not less than one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal within one month from the date this decision, I direct that the disposition of the applications be in accordance with the Court’s direction or order.
Louise Tuohy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
6 October 2020

Delegate:	Louise Tuohy
Representation:	Opponent: Evergreen Television Pty Ltd Applicant: Are Media Pty Limited
Decision:	2020 ATMO 162 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 44, 58A, 58, 62A – none established – trade marks to proceed to registration.

[2020] ATMO 162

6 October 2020