Food Channel Network Pty Ltd v Television Food Network G.P
[2007] ATMO 68
•18 October 2007
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 registration of trade mark application numbers 881666(9,38,41), 881667(9,38,41,42) and 938228(41) all filed in the name of Television Food Network G.P.
Delegate:
Debrett Lyons
Representation:
Opponent : No appearance
Applicant : Ian Tannahill, Patent Attorney of Ahearn Fox, Patent & Trade Mark Attorneys
Decision:
2007 ATMO 68
1. section 52 oppositions. No evidence filed by Opponent. Notices of
Opposition provided no foundation for grounds of opposition. Oppositions not established .
2. Costs ordered against opponent.
Background
Food Channel Network Pty Ltd (‘the applicant’) filed three trade mark applications (‘the applications’) details of which are set out below. In this decision I will refer to the trade marks of the applications collectively
Appln. No.: 881666
Filing Date: 6 July 2001
Priority Date: 9 April 1999
Goods/Services : Class 9:
Pre-recorded video cassettes, video discs, laser discs, pre-recorded audio tape, discs, CD-ROMS, cassettes and records, digital analogue and micro-chipped based storage and/or retrieval devices
Class: 38
Telecommunications services; communication services; broadcasting services; television broadcasting services; wireless transmission and broadcasting of television programs; cable, satellite and direct to home transmission and distribution of television programs including programs relating to food or cooking; on-line transmission and distribution through computer networks and video servers of television programs; news distribution and news agency services; gathering and dissemination of news; teletext services; consultancy, information and advisory services relating to telecommunications
Class: 41
Education and entertainment services in the television and broadcasting industry including such services relating to food or cooking; television programming and production services; news program services; television news and information shows; production and syndication of television and video programs; production, recording, syndication, distribution and presentation of cine-films, video and television programs; news programs, interactive video entertainment; syndication of news; publication of printed publications; consultancy, information and advisory services relating to the foregoing services; information services in this class concerning education and entertainment, particularly in relation to food or cooking; arranging and conducting food festivals, and cooking and cooking products demonstrations in connection therewith, but not including any services in this class relating to the sport of polo
Acceptance Ad: 27 July 2006
Endorsement: Provisions of subsection 41(5) applied
Trade Mark : TELEVISION FOOD NETWORK
Appln. No.: 881667
Filing Date: 6 July 2001
Priority Date: 9 April 1999
Goods/Services : Class 9:
Pre-recorded video cassettes, video discs, laser discs, pre-recorded audio tape, discs, CD-ROMS, cassettes and records, digital analogue and micro-chipped based storage and/or retrieval devices
Class:38
Telecommunications services; communication services; broadcasting services; television broadcasting services; wireless transmission and broadcasting of television programs; cable, satellite and direct to home transmission and distribution of television programs including programs relating to food or cooking; on-line transmission and distribution through computer networks and video servers of television programs; news distribution and news agency services; gathering and dissemination of news; teletext services; consultancy, information and advisory services relating to telecommunications
Class: 41
Education and entertainment services in the television and broadcasting industry including such services relating to food or cooking; television programming and production services; news program services; television news and information shows; production and syndication of television and video programs; production, recording, syndication, distribution and presentation of cine-films, video and television programs; news programs, interactive video entertainment; syndication of news; publication of printed publications; consultancy, information and advisory services relating to the foregoing services; information services in this class concerning education and entertainment, particularly in relation to food or cooking; arranging and conducting food festivals, and cooking and cooking products demonstrations in connection therewith
Class: 42
Providing technical information and assistance about electronic commerce; information services relating to food and cooking; database services; technical services, and research and development services in relation to the television industry
Acceptance Ad: 27 July 2006
Endorsement: Provisions of subsection 41(5) applied
Trade Mark :
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Appln. No.: 938228
Filing Date: 18 December 2002
Priority Date: 17 December 2002
Services : Class: 41
Entertainment services namely production and distribution of television programming; and all other entertainment services included in this class
Acceptance Ad: 20 July 2006
Endorsement: Provisions of subsection 41(5) applied
Trade Mark :
The applicant requested to be heard and the matter came before me, Debrett Lyons, a delegate of the Registrar on 24 July 2007 in Brisbane. The applicant was represented by Mr Ian Tannahill of Ahearn Fox, Patent & Trade Mark Attorneys. The opponent was not represented but made written submissions prior to the Hearing. Those submissions have been duly considered by me and by Mr Tannahill at the hearing.
Grounds of Opposition
The Notice of Opposition is the same in each case, save for the pertinent application number. The Notices list eight grounds of opposition. They are founded[1] on sections 41, 42, 43, 44, 58, 60 and 62 of the Trade Marks Act 1995 (“the Act”). Additionally, the opponent petitions the Registrar of Trade Marks to refuse the applications in the exercise of the Registrar’s discretion.
[1] See discussion in paragraphs 8 – 10 below.
The Evidence
There was no evidence filed by either party.
Onus of Proof
Section 55(1) of the Act states that:
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.
The onus in these proceedings is borne by the opponent: see Registrar of Trade Marks v. Woolworths (1999) 45 IPR 411 (93 FCR 365); Lomas v. Winton Shire Council (2003) AIPC 91-389; Torpedoes Sportswear Pty. Ltd. v. Thorpedo Enterprises Pty. Ltd. (2003) 59 IPR 318 (132 FCR 326).
Reasoning for Decision
The grounds of opposition as stated in the Notices require my immediate attention. Some of the grounds do not correctly link with the legislative framework. There are two grounds said to rest on section 41 of the Act, one correctly reciting the language of that section, but the other claiming that use of the trade marks would be contrary to law. That second claim is properly linked to section 42(b) of the Act. A further ground states that the applicant is not the owner of the trade marks within the meaning of section 27(1)(a) of the Act. Section 27(1)(a) of the Act is not a recognised ground of opposition[2]. Instead a claim that the applicant is not the owner must be brought under section 58.
[2] Section 52(4) of the Act states that “The registration of a trade mark may be opposed on any of the grounds specified in Division 2 [ of Part 5 ] and on no other grounds”. Section 27 is not in Part5, Division 2 of the Act.
Nevertheless, the correct approach for me to take to these matters is to examine whether sense can be made of the claims and in these instances I am prepared to treat the aforementioned claims is though they were grounded on sections 42(b) and 58, respectively, and so admit them[3].
[3] See, for example, Opposition by Wilhelm Sihn jr KG to registration of trade mark application 838376(9) – WISI Device - filed in the name of WI-FI Alliance 2007 ATMO 39.
For the sake of completeness, I note here that there is no ground in Part 5, Division 2 of the Act stating that the Registrar has a discretion to refuse an application on a ground other than those set out in that Division, or a discretion to refuse an application if the opponent has not made its case under one of those grounds.
The larger issue before me is the extent, if any, to which the grounds of opposition have been established.
The opponent’s written submissions are not directed towards any of the grounds of opposition in the Notices, with the possible exception of sections 58 and 60, to which I will turn shortly. For the most part, I am left to consider simply the grounds as they are stated in the Notices.
Ground 3 states that: “Use of the Trade Mark would be contrary to law within the meaning of s. 41(sic.)”. This is no indication of what law would be broken and accordingly (in the lack of evidence) my only option is to decide that this ground is not established.
The same holds true, a fortiori, for Ground 4 which states: “Use of the Trade Mark offends the provision of s. 43”. It is not established[4].
[4] It was also open to the examiner to consider if there was an issue under this section of the Act.
Ground 5 states: “The registration of Trade Mark is prevented by operation of s. 44” however there is no indication of a competing trade mark application or registration as required by that section of the Act. It is not established[5].
[5] Id.
Ground 7 states: “The registration of the Trade Mark is prevented under the provisions of s. 62(b) because the application was accepted for registration by the Registrar on the basis of evidence or representations that were false in material particulars”. Again, there is no support for that claim and I must rule that the ground is not established.
Ground 2 states: “The Trade Mark is not capable of distinguishing within the meaning of s. 41”. There is a question before me as to whether that bald assertion is sufficient to re-open an enquiry into the registrability of the trade marks, something already investigated by the examiner prior to possible acceptance of the trade marks for registration. I note that all three applications carry the endorsement: “Provisions of subsection 41(5) applied”– a shorthand indication that the examiner considered use of the trade mark, or some other circumstance, justified acceptance.
In his submissions, Mr Tannahill gave details of the examination path of the applications. In each case, the examiner had questioned the registrability of the trade marks in terms of section 41 of the Act. In each case, the applicant had responded by providing sworn evidence. That evidence was considered by the examiner and the objections overcome. In the face of that and on the basis merely of an assertion that the trade marks are not capable of distinguishing, I can find no justification to revisit the examiner’s assessment of the registrability of the trade marks in terms of section 41. The ground of opposition is not established.
I now turn to Grounds 1 and 6 of the Notices which relate to sections 58 and 60 of the Act, respectively. They require special comment only to the extent that the opponent’s written submissions carry incidental statements which might be linked to those grounds.
The submissions carry a bald statement that “there is a real and tangible danger that the Registrations of trademarks by the applicant company would mislead and deceive the general public of Australia”. That claim might be linked to section 60 of the Act which in its unamended form relevant to this opposition, stated:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
It is for the opponent to point to a trade mark, whether registered or in common law use, which is:
- either substantially identical with, or deceptively similar to, the trade mark in the application; and
- which, before the priority date, has acquired a reputation in Australia; such that
- use of the applicant’s trade mark would lead to deception or confusion.
There is no evidence or submissions touching on matters within the scope of those first two dot-points upon which the opponent’s claim can rest. The ground is not established.
The opponent’s submissions also refer to two websites, and, said to be maintained by third parties in Australia. The suggestion is that the applicant is therefore not the owner of the trade marks.
That information on its own is not enough to support the ground of opposition under section 58. The content of the websites is not in evidence. There is no information to support a finding that those parties have used a substantially identical trade mark to any of the trade marks from a date earlier than the priority dates of the applications as would be required under section 58 and so I decide that this final ground of opposition is not established.
Decision
Under section 55 of the Act, I decide that none of the grounds of opposition has been established and so I direct that the applications be registered one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application(s) be subject to its orders.
Costs
The applicant requested its costs in the matter in the event that it was successful. The oppositions having not been established, I direct that the opponent pay the applicant’s costs according to the official scale and having regard to the fact that all three matters were heard together.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
18 October 2007
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