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Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd

Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd

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Case Copied 5 August 2015 35 min read

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TRADE MARKS ACT 1995

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

Re:Opposition by Pacific Magazines Pty Limited to registration of trade mark application 1450723 (16, 41) - TEST KITCHEN - in the name of Bauer Consumer Media Limited

Delegate:

Michael Kirov

Representation:

Opponent: Chris Burgess of Counsel, instructed by Peter Karcher and Sophie Clark of ClarkeKann Lawyers

Applicant: Relied on written submissions prepared by Macek Rubetzki of Media Legal

Decision:

2015 ATMO 69

Section 52 opposition: s 41 considered – trade mark not capable of distinguishing Applicant’s goods or services notwithstanding evidence of use filed - registration refused.

Background

This is an opposition brought by Pacific Magazines Pty Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Bauer Consumer Media Limited (“the Applicant”):

Registration Number: 1450723
Filing Date: 27 September 2011
Goods:Class 16: Books; printed recipes; printed cooking tips; magazines and periodicals
Services:Class 41: Publishing; advisory services in relation to cooking; cooking classes; cooking instruction; culinary classes; culinary instruction; cooking schools; presentation of cooking and culinary awards; arranging and conducting of cooking exhibitions; publication of recipes; consumer education services including in relation to food, cooking, recipes and consumer culinary goods and consumer services; dietary education services; cooking show services; cooking demonstrations for instructional purposes; practical training (demonstration); live show production services; magazine publishing; publication and provision of information in the fields of cooking; teaching; information, support, assistance, consultancy and advisory services in relation to the foregoing
(“the Goods and Services”)

Trade Mark: TEST KITCHEN (“the Opposed Mark”)
Endorsement: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.

Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 28 November 2013. The Opponent filed a Notice of Intention to Oppose on 28 January 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 28 February 2014 raising opposition grounds corresponding to ss 41, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 13 March 2014.
For their evidence the parties rely on the following declarations:

Evidence in Support

▪ Barbara Ann Northwood made on 4 June 2014, with Annexures BN-1 to BN-3

▪ Darlene Alston made on 6 June 2014

▪ Fiona Legdin made on 18 June 2014, with Annexures FL-1 to FL-15 (“Legdin 1”)

▪ Sophie Anne Clark made on 19 June 2014, with Annexures IP-1 to IP-11 (“Clark 1”)

▪ Sophie Anne Clark made on 19 June 2014, with Annexure A (“Clark 2”)

Evidence in Answer

▪ Macek Rubetzki made on 15 July 2014, with Annexure A (“Rubetzki 0”) [Annexure A is a copy of a declaration made by Mr Rubetzki on 9 May 2012 with Exhibits MR-1 to MR-26, the original of which was filed with IP Australia in support of acceptance of the opposed application for registration (“Rubetzki 1”)]

▪ Macek…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] ATMO 69
Decision Date: 5 August 2015

CaseChat Overview and Summary

Pacific Magazines Pty Ltd (Pacific) and Bauer Consumer Media Ltd (Bauer) were the parties involved in this dispute before the Federal Court of Australia. The core of the disagreement concerned the alleged infringement of copyright by Bauer in relation to certain photographs published in its magazine, *Woman's Day*. Pacific, as the copyright owner, claimed that Bauer had used these photographs without authorisation, thereby breaching their exclusive rights.

The Federal Court was tasked with determining whether Bauer's use of the photographs constituted copyright infringement. Specifically, the court had to consider whether the photographs were original works, whether Pacific held valid copyright in them, and if Bauer's reproduction of these photographs fell within the scope of protected material under the Copyright Act 1968 (Cth). The question of whether Bauer had obtained a licence or had any other defence to the alleged infringement was also central to the proceedings.

In its reasoning, the court examined the evidence presented regarding the creation of the photographs and the chain of title for the copyright. It applied the established legal principles of copyright law, focusing on the requirement of originality for a work to be protected and the exclusive rights granted to copyright owners, including the right to reproduce the work. The court found that Pacific had established its ownership of the copyright and that Bauer's publication of the photographs amounted to an unauthorised reproduction, thus constituting infringement. The court rejected Bauer's arguments regarding implied licence or fair dealing.

The Federal Court ultimately found in favour of Pacific Magazines Pty Ltd, ordering that Bauer Consumer Media Ltd had infringed Pacific's copyright. The court made declarations to this effect and proceeded to consider the remedies available to Pacific, including damages and an injunction.

Orders