Food Channel Network Pty Ltd v Television Food Network, G.P

[2008] ATMO 85

TRADE MARKS ACT 1995

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

Re:  Opposition by Food Channel Network Pty Ltd to an application under section 92 of the Act by Television Food Network, G.P. to remove trade mark number 733265 (38,41) – FOOD CHANNEL & Device - in the name  Food Channel Network Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Applicant: Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys Opponent: No appearance
Decision:	2008 ATMO 85 Section 92 opposition - sec 92(4)(b) alleged. Notice of Opposition filed to removal application. No evidence in support of opposition. Opposition fails and removal action succeeds for all registered services. Costs – opponent to pay applicant’s costs.

Background

1. Food Channel Network Pty Ltd (‘the opponent’) is the registered owner of trade mark registration 733265 in classes 38 and 41. The trade mark was registered on 28 April 1997.

2. On 14 August 2006 Television Food Network, G.P. (‘the applicant’) filed an application under section 92 of the Trade Marks Act 1995 (the Act) for removal of registration 733265 from the register for non-use of the trade mark.

3. The application was accompanied by the statutory declaration of Ms Angeline Behan in accordance with Regulation 9.1 of the Trade Mark Regulations 1995.

4. On 16 November 2006 the opponent filed a Notice of Opposition to the removal application.  The ground of opposition referred to in the notice is set out below:
   
   

   
   “Trade mark 733265 was lodged on 28 April 1997 and has been continuously used in a commercial capacity since its registration on 21 January 1998.”
   
   

5. The original due date for serving evidence in support was 16 February 2007 however many extensions of time in which to serve that evidence were made, as was an application for security for costs.  Those matters have been dealt with elsewhere.

6. The final deadline for evidence in support set by the office was 20 September 2007 but it was only on 24 September 2007 that a Statutory Declaration by Paul Lawrence was filed.  This was followed by a retroactive extension of time request from 20 September 2007 to 20 October 2007 in which to complete the service of evidence in support.

7. The applicant opposed the grant of that extension of time and after submissions from both parties, together with a hearing, the office refused to grant the extension of time.  The opponent did not appeal against that decision with the consequence that there is no evidence in support of the opposition to the removal application, or at least none on which the opponent is entitled to rely.

8. On 15 May 2008, the applicant requested a hearing and the matter came before me, Debrett Lyons, as a delegate of the Registrar of Trade Marks, in Brisbane on 2 September 2008.  The applicant was represented by Ian Tannahill of Ahearn Fox, Patent and Trade Mark Services. The opponent was not represented and relied on written submissions.

   The Removal Application

9. The removal application was brought on the basis of section 92(4)(b) of the Act and the applicant sought removal of all of the registered services.

10. Section 92 of the Act has been amended by the Trade Marks Amendment Act 2006.  The amendments are effective only in relation to those removal applications filed on or after Royal Assent of the Amendment Act, 23 October 2006.  Accordingly they do affect this matter.  At the date on which this removal application was filed, section 92 of the Act relevantly provided:

    (1) A person aggrieved by the fact that a trade mark is or may be
    registered may, subject to subsection (3), apply to the Registrar for
    the trade mark to be removed from the Register.
    …
    (4) An application under subsection (1) or (3) (non-use application)
    may be made on either or both of the following grounds, and on no
    other grounds:
    …
    (b) that the trade mark has remained registered for a continuous
    period of 3 years ending one month before the day on which
    the non-use application is filed, and , at no time during that
    period, the person who was then the registered owner:
    (i) used the trade mark in Australia; or
    (ii) used the trade mark in good faith in Australia;
    in relation to the goods and/or services to which the
    application relates.

1. Under section 93(2), a removal application based on section 92(4)(b) may not be made until five years after the date on which the trade mark was filed. The subject trade mark was filed on 28 April 1997. The removal application was filed more than nine years later and so meets the requirement of section 93(2).

2. Section 100 of the Act places the burden of establishing use of the registered trade mark during the relevant period on the opponent.  In this case the relevant period is 14 July 2003 to 14 July 2006.  The opponent must show that the registered trade mark has been used in the course of trade in Australia during the relevant period in respect of the relevant services: Structureco Inc v Starite Distributors Pty Ltd [2000] ATMO 31.

3. In its Notice of Opposition, the opponent fails to identify who has allegedly used the trade mark during the relevant period and it does not identify the services in respect of which the trade mark was allegedly used.  There is no evidence in support of the opposition admitted to the record and therefore nothing to satisfy me that the burden carried by the opponent under section 100 has been met.  Finally, nothing in the opponent’s written submissions excuses those fundamental failings in the opponent’s case and so nothing said there requires examination here. 

   Decision

4. The opposition has not been established and so the removal application succeeds.  Accordingly, I direct that trade mark registration 733265 be removed from the register in respect of all the services for which it is registered one month from the date of this decision.   In the event of an appeal, the trade mark will not be removed from the register  until the appeal is discontinued or a court otherwise orders removal.

   Costs

5. The opponent is to pay the applicant’s costs at the official scale.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   30 October 2008