Re: Opposition by Fuji Television Network Inc to registration of trade mark application number 1765777 (classes 39, 42) - Iron Chef - in the name of Iron Chef Pizza Pty Ltd
[2020] ATMO 107
•18 June 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fuji Television Network Inc to registration of trade mark application number 1765777 (classes 39, 42) – IRON CHEF – in the name of Iron Chef Pizza Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: FB Rice Pty Ltd Applicant: Y Intellectual Property |
| Decision: | 2020 ATMO 107 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58, 60 and 62A considered – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Fuji Television Network Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: Iron Chef (‘Trade Mark’)
Application Number: 1765777
Applicant: Iron Chef Pizza Pty Ltd (‘Applicant’)
Filing Date: 19 April 2016
Specification: Class 39: Delivery of meals and prepared foods; Delivery of food and drink prepared for consumption; Food delivery services; Information regarding ordering and delivery of food and drink prepared for consumption to customers provided online via a website and accessed via a computer and/or a mobile phone
Class 42: Providing temporary use of online non-downloadable software for ordering and delivery of food and drink prepared for consumption
(‘Applicant’s Services’)
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 10 August 2017.
The Opponent filed its Notice of Intention to Oppose registration on 10 October 2017 and a Statement of Grounds and Particulars (‘SGP’) on 10 November 2017. A Notice of Intention to Defend the Trade Mark was filed by the Applicant on 11 December 2017.
Evidence in Support (‘EIS’) was filed by the Opponent on 14 March 2018 and the Applicant filed its Evidence in Answer (‘EIA’) on 24 July 2018. The Opponent filed Evidence in Reply (‘EIR’) on 2 October 2018.
At the conclusion of the evidence filing period, the parties were informed of their right to request a hearing or to make written submissions. Both parties chose to rely on written submissions. The Opponent filed written submissions which were prepared by FB Rice Pty Ltd (‘Opponent’s Submissions’) on 18 January 2019 and the Applicant filed written submissions which were prepared by Y Intellectual Property (‘Applicant’s Submissions’) on 31 January 2019.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act. In doing so I take account of the material comprised of the written record. This record consists of the above described material.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42, 44, 58, 60 and 62A of the Act. To be successful in this opposition, the Opponent must establish at least one of these grounds.
The Opponent bears the onus of establishing the ground of opposition.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 19 April 2016, being both the filing and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
Evidence
The following declarations were filed as evidence in this proceeding:
| EIS |
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| EIA |
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| EIR |
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The Opponent’s evidence
10. The Hashiyada Declaration describes the Opponent as being a Japanese television station with offices across Europe, Asia and the United States of America. The Opponent is the owner of various trade marks incorporating the words ‘Iron Chef’ across several jurisdictions including in the European Union, China and the United States of America. These trade marks are registered in respect of a range of goods and services including food products, homewares, clothing, entertainment and restaurant services.[3]
[3] See Annexure XX-2 to the Hashiyada Declaration.
11. The Opponent is also the owner of the following Australian trade mark registrations (collectively ‘Prior Registrations’):
Trade Mark: IRON CHEF
Registration Number: 1231957
Priority Date: 26 March 2008
Specification: Class 8: Cutlery; knives including kitchen knives and cooks knives; flatware, namely, forks, knives and spoons
Class 9: Computer software for video and computer games in the field of cooking and cooking instructions; thermometers not for medical use; and computer peripherals, namely, software for mobilegame
Class 25: Clothing, namely aprons, T-shirts, sweatshirts, jackets, hats, scarves, blouses and shirts
Class 41: Entertainment services including entertainment services in the nature of an animated television series
Class 43: Restaurant and cafe services
Trade Mark: IRON CHEF
Registration Number: 1628455
Priority Date: 13 June 2014
Specification: Class 35: Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Providing membership club services providing discounts and processing rebates for the services of others; Development of advertising campaigns for the goods and services of others; Distribution of advertising materials; Providing product demonstrations in the field of cooking
Class 41: Providing educational cooking demonstrations
12. The Hashiyada Declaration explains that ‘Iron Chef’ was originally used in relation to a cooking television series that premiered in Japan on 10 October 1993. The format of the television series involved a themed cook-off between a guest chef and one of the show’s resident ‘Iron Chefs’. The original series comprised 309 episodes and ended on 24 September 1999. Thereafter, reunion specials were sporadically produced up until 2002.
13. The original ‘Iron Chef’ television series has been broadcast in various countries including on the Food Network in the United States of America. The Hashiyada Declaration points out that the series became a cult favourite with international audiences due to the show’s flamboyant culinary concoctions and the dubbing of the audio into English which endowed the show with a ‘campy’ charm.[4] The popularity of the show was such that it was eventually parodied in a sketch on the American comedy program ‘Saturday Night Live’.
[4] Hashiyada Declaration, [21].
14. Between 2001 to 2017, several international editions of the ‘Iron Chef’ television series were produced. These include: ‘Iron Chef America’, ‘Iron Chef UK’, ‘The Next Iron Chef’, ‘Iron Chef Thailand’, ‘Iron Chef Vietnam’ and ‘Iron Chef Indonesia’. The Hashiyada Declaration observes that many of these international editions received high ratings and spanned across multiple seasons.
15. The original ‘Iron Chef’ television series was first broadcast in Australia on the Special Broadcasting Services (‘SBS’) network in 2003. The Hashiyada Declaration states that the original series as well as episodes from the international editions of ‘Iron Chef’ have been repeated on the SBS network. In 2010, ‘Iron Chef Australia’ was produced and subsequently broadcast in October that same year on the Seven Network. The declarant states that the first episode of this Australian edition of ‘Iron Chef’ attracted an audience of 1.13 million viewers.[5]
[5] Hashiyada Declaration, [48].
16. According to the Hashiyada Declaration, the term ‘Iron Chef’ has also been used in relation to charity fundraising dinner events held in Australia between 2010 to 2017. These events were held in Melbourne and Sydney and featured ‘Iron Chefs’ from the original series. The declarant states that the television series and related events have also been promoted under the term ‘Iron Chef’ on social media channels. On this basis, the declarant contends that the Opponent has acquired a substantial global reputation in the term ‘Iron Chef’.
17. The Fujinuma Declaration provides supplementary evidence to the Hashiyada Declaration. Relevantly, the declarant states that four seasons of the original ‘Iron Chef’ series were broadcast and rerun on the SBS network between 2003 to 2014. Each season consisted of approximately 24 to 26 episodes and the episodes were typically broadcast on Saturday at 7.30pm. In terms of viewership, the declarant states that the audience numbers for season four episode 102 reached approximately 436,000 viewers in the summer of 2008/09. Meanwhile, the charity fundraising dinner events in Australia had attendances in the vicinity of 250 to 300 guests.
The Applicant’s evidence
18. The declarant explains that the Applicant is developing an application software product to facilitate the ordering and delivery of restaurant meals. As at the date of the Montgomery Declaration, the Applicant had not commenced use of the Trade Mark because it is awaiting the resolution of the present opposition.
19. The Montgomery Declaration asserts that the term ‘Iron Chef’ is not exclusively associated with the Opponent in Australia. To support this assertion, the declarant details several third-party restaurateurs within Australia that either trade under the name ‘Iron Chef’ or use it is as a prominent feature of their trading name. Reference is also made to the existence of an Australian trade mark registration which incorporates the term ‘Iron Chef’.[6] On this basis, the declarant contends that the term ‘Iron Chef’ is not synonymous with the Opponent in Australia.
[6] Australian trade mark registration number 1178669 for the words ‘Iron Chef’ with a hat image and oval border. This registration is in respect of various goods in classes 29, 30 and 31.
20. The Montgomery Declaration also responds to statements made in the Hashiyada Declaration. The declarant points out that insufficient particulars were provided regarding the number of episodes broadcast and viewership of the original ‘Iron Chef’ series which aired on the SBS network. Likewise, the attendance figures for the charity fundraising dinner events have not been adequately disclosed by the Opponent nor has any supporting material been provided regarding revenue derived from use of the ‘Iron Chef’ trade mark in Australia. In the absence of particulars, the declarant concludes that there is no ongoing use of ‘Iron Chef’ by the Opponent in Australia.
Discussion
Section 44
21. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(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.
22. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of services and/or goods which are either similar or closely related to the Applicant’s Services.
23. The Prior Registrations are particularised in the SGP as supporting this ground of opposition. The Prior Registrations are both registered by a person other than the Applicant and each registration has a priority date earlier than 19 April 2016. It follows that requirements (i) and (ii) as set out at [22] are satisfied.
24. In relation to requirement (iii), the test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]
[7] [1963] HCA 66, [12].
25. The Trade Mark and the Prior Registrations are reproduced below:
| Trade Mark | Prior Registrations |
26. A side by side comparison reveals that the words ‘iron chef’ form the essential feature, and indeed the only feature, of each trade mark. It follows that the trade marks are identical and the Applicant concedes this.[8]
[8] Applicant’s Submissions, [13].
27. Accordingly, the Opponent’s prospects of establishing this ground of opposition turn on whether it can satisfy requirement (iv) as set out at [22] of this decision. To this end, s 14 of the Act relevantly provides:
Definition of similar goods and similar services
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services
28. The guiding factors for determining if goods are similar are well settled and require a holistic consideration of:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[9]
[9] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
29. The factors for determining whether goods are similar have been, subject to any necessary modification, recognised as being equally applicable to determining whether services are similar.[10] Meanwhile, the concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J stated:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.[11]
[10] See Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616.
[11] [1999] FCA 1020, [38].
30. In my assessment, none of the Applicant’s Services are similar to the Prior Registrations’ services. Broadly speaking, the Applicant’s Services are food delivery services and the provision of non-downloadable software which facilitates the ordering and delivery of food. Such services are provided by different traders, have a different end purpose and operate in separate sectors to traders who provide event management, marketing, advertisement, entertainment and cooking demonstration services. In relation to the Prior Registrations’ specific claim for ‘restaurant and cafe services’, while these services may share some similar trade channels to food delivery services, the nature and use of the services differ. The primary purpose of food delivery services is to transport goods from a food provider to the consumer whereas restaurants and cafes are food providers whose primary purpose is to prepare food for consumption. To this end, food delivery service providers are typically third parties not involved with the preparation of any food but instead are routinely partnered with different restaurants and/or cafes to facilitate transport of such items. Were the Applicant to use the Trade Mark in respect of the preparation of food, rather than the operation of a food delivery service, that would be beyond the scope of the Applicant’s Services. It follows that the Applicant’s Services are not similar to any of the Prior Registrations’ services.
31. Additionally, I do not consider the Applicant’s Services to be closely related to the Prior Registrations’ broad claims for cutlery, thermometers and clothing. Such goods are disparate to the food delivery and software services claimed by the Applicant. In relation to the Prior Registrations’ specific claim for ‘computer software for video and computer games in the field of cooking and cooking instructions’ and ‘software for mobilegame’, goods of this nature are essentially games for entertainment or possess an educational purpose. This clearly differs in purpose and use when compared to the Applicant’s online food order and delivery management software services.
32. For the above reasons, I do not consider any of the Applicant’s Services to be similar or closely related to the services and goods covered by the Prior Registrations. As such, requirement (iv) as set out at [22] of this decision is not satisfied.
33. Accordingly, the s 44 ground of opposition has not been established.
Section 58
34. Section 58 of the Act relevantly provides:
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.
35. To succeed under this ground of opposition, the following requirements must be established:
the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;[12]
the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark relied upon by the Opponent has been used;[13] and
a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark by the Applicant.[14]
[12] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936.
[13] Re Hicks’s Trade Mark (1897) 3 ALR 75.
[14] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
36. This ground of opposition was particularised in the SGP as follows:
The [Trade Mark] is substantially identical with or deceptively similar to the trade mark IRON CHEF and close variations which have been registered by the opponent in Australia and overseas from a date before the priority date of 19 April 2016 of the [Trade Mark] and in relation to the same or similar goods and services in relation to which the [Trade Mark] is sought to be registered.
The IRON CHEF trade mark was first used by the Opponent in Australia as early as 2003 and use of the mark has been continuous since that date.
The Prior Mark has been used in relation to television cooking shows and associated entertainment events and merchandising.
37. As such, the Opponent contends that the Applicant is not the owner of the Trade Mark because the Opponent was the first user of an identical trade mark to the Trade Mark in Australia. As discussed at [25] of this decision, the term ‘IRON CHEF’ is identical to the Trade Mark. Thus, requirement (i) as set out at [35] is satisfied.
38. The meaning of ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes … This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same"[15]
[15] [2007] FCAFC 184, [89] (emphasis added) (citation omitted).
39. More recently, the Full Court considered the authorities for goods or services of the same kind and observed that the question of whether goods or services are of the same kind can be resolved by ‘asking whether the relevant goods or services are essentially the same’.[16] For the reasons provided in the s 44 discussion, I do not consider the Applicant’s Services to be similar services to any of those covered by the Prior Registrations. The Prior Registrations’ services are not of the same kind as the Applicant’s Services because they are not ‘true equivalents’ or ‘essentially the same’. Likewise, the Opponent’s evidence of use in relation to television cooking shows and associated entertainment events are not of the same kind as the Applicant’s Services because they are also not ‘true equivalents’ or ‘essentially the same’. Given this, it is unnecessary to consider the remaining requirement.
[16] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [64].
40. Consequently, the s 58 ground of opposition has not been established.
Section 60
41. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.
42. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 19 April 2016 (‘Relevant Date’). The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[17] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd, (‘ConAgra’):[18]
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...
[17] [2000] FCA 1335, [81].
[18] [1992] FCA 159, [118].
44. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[19] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[20]
[19] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 18).
[20] ConAgra (n 18) [77].
Reputation
45. The Prior Registrations and ‘close variations’ were nominated in the SGP as having acquired the requisite degree of reputation in Australia at the Relevant Date. The Opponent’s Submissions do not differentiate between the individual trade marks that comprise the Prior Registrations and ‘close variations’ when discussing the s 60 ground of opposition. Nor do the Opponent’s Submissions clarify what trade marks are intended to fall within the ambit of ‘close variations’. Based on the evidence before me, ‘close variations’ is seemingly a reference to the titles of the international editions of ‘Iron Chef’ such as ‘Iron Chef America’ or ‘The Next Iron Chef’. Be that as it may, the main thrust of the Opponent’s submission is that, by virtue of the Opponent’s use, the trade mark ‘Iron Chef’ had acquired a reputation in Australia before the Relevant Date.
46. Neither the Opponent’s Submissions nor the Applicant’s Submissions directly address the nature of the relevant market. For reasons that will become apparent, I believe the relevant market would be viewers of television cooking shows. This is not a specialised market and viewers of cooking shows comprise of a wide demographic of the Australian population. Consequently, the relevant market would be quite large and would conceivably include most Australian households.
47. The Applicant’s Submissions highlight what it considers to be several deficiencies in the Opponent’s evidence, namely:
Parts of the evidence filed postdate the Relevant Date;
The evidence dated before the Relevant Date indicates that use of the trade mark ‘Iron Chef’ and ‘close variations’ in Australia by the Opponent peaked around 2009 and diminished thereafter;
The evidence filed provides no basis to infer that the Opponent has a propensity towards brand extension or a diversified portfolio of goods and services; and
There is no evidence to suggest that consumers would conclude the Applicant’s Services are a natural extension of the services for which the trade mark ‘Iron Chef’ is allegedly known.
48. Having assessed the Opponent’s evidence, there is merit in some of the deficiencies identified. A significant portion of the material annexed to the Hashiyada Declaration is dated after the Relevant Date.[21] Evidence that postdates the Relevant Date is generally irrelevant to establishing the reputation of the trade mark ‘Iron Chef’ in Australia. Likewise, the confidential revenue figures disclosed by the Opponent fail to delineate between the revenue derived from the licensing of its television programs and charitable dinner events. It is therefore unclear how to apportion the significance of these figures between the services. Similarly, the evidence demonstrates that use of the trade mark ‘Iron Chef’ was primarily in relation to a television cooking show and not the broader range of services as postulated in the Opponent’s Submissions.
[21] See, eg, Annexures XX-5 and XX-6 to Hashiyada Declaration. Eight articles are contained in these annexures and all eight articles postdate the Relevant Date.
49. Nevertheless, the evidence demonstrates that the trade mark ‘Iron Chef’ has been used in relation to television cooking shows for over 22 years before the Relevant Date. The original ‘Iron Chef’ series was broadcast internationally and garnered significant overseas media coverage. International editions of ‘Iron Chef’ were spawned and have also enjoyed considerable popularity. This is particularly so in the United States of America where ‘Iron Chef America’ has been one of the top rated series on the Food Network since 2005[22] and was described as ‘one of the most popular food shows in history’.[23] The sheer reach of the ‘Iron Chef’ series is exemplified by the fact that an episode of ‘Iron Chef America’ was filmed at the White House and featured an appearance by Michelle Obama.[24]
[22] See Annexure XX-3 to the Hashiyada Declaration, 41.
[23] Ibid 37.
[24] Ibid 39.
50. Within Australia, four seasons of the original ‘Iron Chef’ series were broadcast and rerun on the SBS network between 2003 to 2014. This equates to more than 100 episodes aired and over a decade of national exposure to Australian viewers. An Australian edition of ‘Iron Chef’ was also produced and broadcast in 2010. This local version enjoyed widespread media coverage due in part to the cult status enjoyed by the original ‘Iron Chef’ television series.[25] The confidential revenue figures disclosed are reasonable and it can be inferred that they primarily relate to the fees associated with licensing of the original ‘Iron Chef’ series, given the only other instances of use in Australia before the Relevant Date pertain to two charity fundraising dinners.
[25] See, eg, Annexure XX-11 to the Hashiyada Declaration, 129.
51. It is true that that the Australian edition of ‘Iron Chef’ consisted of a single season and only one example of viewership numbers for the original ‘Iron Chef’ series on the SBS network has been provided. Likewise, the Opponent has not directly addressed the degree to which the overseas use of ‘Iron Chef’ has resulted in a spill over reputation in Australia, other than by stating that international editions were aired on the SBS network. However, when the extent and duration of overseas use of the trade mark ‘Iron Chef’ is considered in combination with the prolonged use in the Australian marketplace, I am satisfied that the trade mark ‘Iron Chef’ had acquired, at the Relevant Date, a moderate reputation in Australia as a result of the Opponent’s use of it. That reputation being in connection with entertainment services in the nature of television cooking shows.
52. For completeness, I am not satisfied the evidence of two charity fundraising dinner events, held between 2010 and 2011 with an average of 275 guests, demonstrates the reputation extended to services for the provision of food and beverages. These events are at best characterised as discrete one-off charity dinners and, in isolation, are not sufficient to establish the type reputation envisaged by s 60 of the Act.
53. I turn now to consider whether because of the reputation acquired by the trade mark ‘Iron Chef’, as a result of the Opponent’s use, it would be likely to deceive or cause confusion should the Applicant use the Trade Mark in connection with the Applicant’s Services.
Likely to deceive or cause confusion
54. The distinction between the concepts of ‘deceived’ and ‘confusion’ was considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J stated:
‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[26]
[26] [1979] RPC 410, 423.
55. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[27]
[27] [2012] ATMO 124, [40].
56. As is evident from the above passage, establishing this ground of opposition is not contingent on the Opponent demonstrating that similarity exists between the services for which the trade mark ‘Iron Chef’ has acquired a reputation and the Applicant’s Services.[28] With that said, the degree of similarity between the respective services remains a ‘material consideration to be taken into account’[29] when assessing the likelihood of deception or confusion arising from use of the Trade Mark. To this end, the Opponent must demonstrate that there is a real tangible danger of deception or confusion occurring.[30]
[28] Qantas Airways Limited v Edwards [2016] FCA 729, [143].
[29] Ibid.
[30] Registrar Of Trade Marks v Woolworths [1999] FCA 1020, [50].
57. In the present matter, it is common ground that the trade marks are identical. The evidence demonstrates that the trade mark ‘Iron Chef’ has a moderate reputation in respect of entertainment services, specifically, television cooking shows. As explained in the Hashiyada Declaration, the content of the ‘Iron Chef’ show is a themed cook-off between a guest chef and an ‘Iron Chef’ where the winner is then decided by a panel of guest judges. Relevantly, the show does not feature or incorporate any food delivery service nor is there any opportunity for viewers to order the food created on the show.[31] The show is confined to a competition between chefs and does not involve participation by the general public.
[31] Cf A&E Television Networks, LLC v Storage Wars Pty Ltd [2016] ATMO 12, [26].
58. Based on the evidence before me, the Opponent has not engaged in any substantive form of brand extension. I acknowledge the existence of the ‘Iron Chef America: Supreme Cuisine’ video game which appears in the evidence. However, this is an isolated instance and, as the title suggests, does not appear to have been marketed to Australian consumers. Furthermore, the Opponent has provided no evidence or any cogent basis to conclude that consumers would perceive food delivery and online food ordering software services as a natural or logical extension of an entertainment service being a television cooking show. Entertainment service providers operate in distinct marketplaces to food delivery service providers and software service providers. The only tenuous link between these services is the commonality of food as subject matter.
59. In my view, an ordinary Australian consumer encountering the trade mark ‘Iron Chef’, when used by the Applicant in connection with the Applicant’s Services, will not be caused to wonder whether those services originate from the same trade source as that of the ‘Iron Chef’ television show. The respective services are sufficiently different that it is unlikely they will be thought to have originated from the same trade source. Australian consumers would appreciate that the Applicant’s Services and entertainment services are provided by different traders and operate in vastly different marketplaces. There is nothing in the evidence to infer that consumers would draw an association between these entirely unrelated services and the moderate reputation acquired by the trade mark ‘Iron Chef’ as a result of its use by the Opponent does not bridge this gap. Consequently, I am satisfied that the use of the Trade Mark in relation to the Applicant’s Services is unlikely to deceive or cause confusion.
60. The s 60 ground of opposition has not been established.
Section 42
61. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
62. To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[32] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 19 April 2016. However, ‘prospective conduct after registration’ may be considered.[33]
[32] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[33] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
63. This ground of opposition was particularised in the SGP as follows:
Because of use and reputation in the Opponent's IRON CHEF Mark and close variations in Australia since as early as 2003, use of the [Trade Mark] in relation to the same or similar goods/services would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) or alternatively, constitute the common law tort of passing off.
64. Accordingly, the SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
65. As discussed above, the evidence of use establishes that the Opponent’s ‘Iron Chef’ trade mark had a moderate reputation and this reputation is confined to entertainment services in the nature of television cooking shows. In light of the clear dissimilarity in the respective services, consumers are unlikely to be deceived or confused. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[34] As such, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[34] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
66. In Monster Energy v USA Nutraceuticals Inc the Registrar’s delegate observed:
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL …[35]
Accordingly, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 29 of the ACL.
[35] [2017] ATMO 22, [58] (citations omitted).
67. Given my finding in relation to ss 18 and 29 of the ACL, the observations of Hill J in considering the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth)[36] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[37]
It follows that I am not satisfied that use of the Trade Mark would amount to passing off at common law.
[36] Section 52 of the superseded Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[37] [1989] FCA 506 [40].
68. Bearing the above in mind, I am not satisfied that use of the Trade Mark would be contrary to law. Consequently, the s 42(b) ground of opposition has not been established.
Section 62A
69. Section 62A of the Act provides:
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.
70. To establish this ground of opposition, the Opponent must demonstrate that the act of making the application was in bad faith. The concept of bad faith was considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) and Dodds-Streeton J provided the following insight:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards …[38]
[38] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] – [167] (emphasis added).
71. The SGP alleges that the application for the Trade Mark has been filed in bad faith because:
By reason of reputation in the Opponent's IRON CHEF mark of which the Applicant could have or should have been aware, the filing of the [Trade Mark] is a filing in bad faith being an application that is substantially identical with or deceptively similar to the Opponent's mark, and in relation to services which are the same or similar to the goods and services for which the Opponent has established a reputation in Australia.
72. The Opponent contends that the Applicant should have known of the Prior Registrations because, at the very least, the Applicant should have conducted a search of the Australian Trade Marks Register.[39] The Opponent’s Submissions emphasise that the Applicant has not explicitly denied that the application for the Trade Mark was not made in bad faith nor has the Applicant explained how the Trade Mark was adopted. Given these circumstances, the Opponent posits that ‘a conclusion of bad faith is open to be drawn’.[40]
[39] Opponent’s Submissions, [87].
[40] Ibid.
73. From the outset, it is important to reiterate that the onus to prove the application for the Trade Mark was made in bad faith rests with the Opponent. In the present matter, the Opponent essentially argues that the Applicant should demonstrate that the application was made in good faith otherwise an adverse inference should be drawn. I do not accept this argument. In the absence of any cogent evidence being provided by the Opponent, it is not incumbent on the Applicant to demonstrate that the application was made in good faith. Further, the Opponent’s attempt to equate mere awareness of the Prior Registrations or awareness of use of the trade mark ‘Iron Chef’ by the Opponent to bad faith is unduly absolute. In this instance, even if I were to accept that the Applicant was aware of one or both of those things, this alone does not provide a sufficient basis to conclude that the application was made in bad faith. The Opponent has not provided any compelling evidence to demonstrate the Applicant’s filing of the Trade Mark in connection with the Applicant’s Services was ‘unscrupulous, underhand or unconscientious’.
74. The Opponent has failed to satisfy me that the application was made in bad faith. As such, the s 62A ground of opposition has not been established.
Decision
75. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
76. The Opponent has not established a ground of opposition. It follows that trade mark application number 1765777 may proceed to registration one month from the date of this decision.
77. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
78. The Applicant has sought an award of costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
18 June 2020
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Standing
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Procedural Fairness
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Statutory Construction
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Remedies
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