Seven Network (Operations) Limited v Bravo Media LLC

[2018] ATMO 190

TRADEMARKSACT1995

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

Re:Opposition by Seven Network (Operations) Limited to registration of trade  mark application 1769877 (class 41) - JUST DESSERTS - in the name of Bravo Media LLC.

DELEGATE:  Nicole Worth

REPRESENTATION:                 Opponent: Celia Davies, Herbert Smith Freehills law firm.

Applicant: Khajaque Kortian, Spruson & Ferguson Patent & Trade Mark Attorneys.

DECISION:  2018 ATMO 190

Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – section 41 – trade mark apt to describe subject matter of Applicant’s reality television series despite double meaning – insufficient evidence to show the trade mark is capable of distinguishing – registration refused.

Background

1. In this matter Seven Network (Operations) Limited (‘the Opponent’) has opposed registration under s 52 of the Trade Marks Act 1995 (‘the Act’) of the trade mark detailed below, in the name of Bravo Media LLC (‘the Applicant’).

   Trade mark:          JUST DESSERTS (‘the Trade Mark’)

   Filing date:            11 May 2016

   Services:Class 41: Entertainment services, namely a reality television series.

1. The application to register the Trade Mark was examined as required by s 31 of the Act and the Trade Mark was accepted for possible registration. Its acceptance was advertised in the Australian Official Journal of Trade Marks on 6 October 2016.

1. On 6 December 2016 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, and on 22 December 2016 it filed a Statement of Grounds and Particulars (‘SGP’) particularising grounds of opposition under ss 41, 58 and 59 of the Act.

1. Thereafter the parties filed evidence to support their positions, described in more detail later in this decision, after which they requested to be heard.

1. I heard the matter in Canberra on 5 September 2018. Khajaque Kortian of  Spruson  & Ferguson Patent & Trade Marks Attorneys represented the Applicant and provided written submissions on its behalf, and Celia Davies of Herbert Smith Freehills law firm represented the Opponent and provided written submissions on its behalf.

Onus and relevant date

1. The Opponent bears the onus of establishing at least one of its grounds of opposition. Should it establish a ground, it is not necessary that I consider any of the remaining grounds (although they, and any other ground available under the Act, may be relied upon in the event of an appeal). The standard of proof is the ordinary civil standard of the balance of

   probabilities.1

1. The relevant date at which the rights of the parties are determined is the filing date of the application,2 being 11 May 2016.

Evidence

1. The evidence filed in this matter comprises the following declarations:

Evidence in support

A declaration by Renee Elizabeth Burgess, solicitor with Herbert Smith Freehills, with Exhibits REB-1 to REB-5, dated 2 June 2017.

A declaration by Bradley Scott Lyons, Director of the Opponent, with Exhibits BSL- 1 to BSL-2, dated 2 June 2017.

Evidence in answer

A  declaration  by  Khajaque  Kortian,  Principal  of  Spruson  &  Ferguson,  with Annexures KK-1 to KK-7, dated 8 September 2017.

Evidence in reply

A declaration by Renee Elizabeth Burgess with Exhibits REB-1 and REB-2, dated 14 November 2017.

1. On behalf of the Opponent, Mr Lyons makes the following statements:

[The Opponent] is part of the Seven Group of companies, under the control of the parent Seven West Media Limited. Seven West Media Limited is one of Australia’s largest multiple platform media companies, which owns the media and broadcasting business for the Seven Network and newspapers including The West Australian.

1 Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

Seven Group has used the trade mark JUST DESSERTS in connection with Seven’s ZUMBO’S JUST DESSERTS baking competition reality television program since at least 20 February 2016.

1. To support these statements Mr Lyons exhibits two articles in Australian publications. One is entitled ‘Zumbo to host Seven’s new reality dessert series’, dated 20 February 2016, and appeared in the online edition of The West Australian. The header at the top of the page states ‘Adriano Zumbo to host Seven’s reality dessert series Just Desserts’ and the article states ‘Just Desserts hasn’t started filming yet but potential contestants might be interested to learn about Zumbo’s favourite sweets’. The other is entitled ‘Rachel Khoo joins Zumbo on Just Desserts’, dated 22 April 2016, and appeared on the YAHOO! 7 TV website. The body of the article refers to the television program as ‘Zumbo’s Just Desserts’.

1. Ms Burgess’ evidence, also on behalf of the Opponent, provides definitions from the Macquarie Dictionary of the words ‘just’, ‘desserts’, and ‘desert’, the last of which makes reference to the expression ‘just deserts’ (commonly misconstrued to be ‘just desserts’). Her evidence also shows there is no definition in the Macquarie Dictionary for the words ‘just desserts’.

1. Ms Burgess provides an extract from the Trade Mark Examiner’s Manual of Practice and Procedure which states:

   Examiners should raise a ground for rejection under section 41 where a trade mark directly describes the potential subject matter of goods in class 9 and 16, or services in class 41. This is because other traders may have a legitimate need to use the word/s as a description of the subject matter of their own goods or services.

She notes that the subject application received a clear examination (indicating that a ground for rejection under s 41 was not raised by the examiner). On 2 June 2017 Ms Burgess conducted a search of IP Australia’s ATMOSS database for trade mark applications and registrations containing the word ‘just’ in classes 9, 16 and 41. It appears that there were 584 such trade marks (although not all of them are included in the exhibit), among them being 12 trade marks comprised of ‘JUST [descriptive word]’ which never achieved registration. Examples of those 12 trade marks include JUST ADVERTISING, JUST KIDS, JUST GOLF, JUST OUTDOORS, JUST AUTO, JUST HORSES, plus several others.

1. On behalf of the Applicant, Mr Kortian states:

The Applicant’s JUST DESSERTS trade mark is used in relation to a reality competition television show, being a spin-off from the TOP CHEF reality television show. It premiered on cable television network BRAVO on 15 September 2010 in the USA.

JUST DESSERTS features pastry chefs competing in a series of culinary challenges, focusing on pastries and desserts.

1. Printouts from the website ‘ are in evidence, including historical images of the website obtained from the Internet Archive: Wayback Machine, which show use of the trade marks below.

   and

2. In respect of Australia, Mr Kortian continues:

I am informed by the Applicant and believe that the Australian cable television station FOXTEL acquired the licence for the TOP CHEF: JUST DESSERTS reality program in December 2010 and that season 1 of that JUST DESSERTS program first aired on 28 March 2011 in Australia on FOXTEL television. Now shown to me and marked Exhibit KK-2 are the FOXTEL Arena channel broadcasting schedules for seasons 1 and 2 of the TOP CHEF: JUST DESSERTS program, from 28 March 2011 to 29 September 2013 in Australia.

1. Exhibit KK-2 confirms that the program TOP CHEF: JUST  DESSERTS  was  broadcast during 2011, 2012 and 2013 (although I note that the broadcast schedule for season 2 spelled the name of the program as TOP CHEF: JUST DESERTS, possibly a typo). A further exhibit at KK-3 is an article upon the website ‘tvtonight.com.au’, dated 28 April 2011,  which discusses the airing of the wrong episode of TOP CHEF: JUST DESSERTS. Similarly, an article upon the website ‘throng.com.au’ describes the premise of the program ‘Top Chef Just Desserts’. None of these exhibits refer to the program as JUST DESSERTS solus.

1. Mr Kortian also exhibits an article from the archives of the ‘From the Editor’ section of the online Macquarie Dictionary entitled ‘Just deserts or just desserts?’ which states:

   I suppose because of the confusion between one’s deserts (that which you deserve to receive) and one’s desserts (the yummy stuff you eat after the main meal) that the noun desert has dropped out of use. It survives in the phrase just deserts but that phrase has to be carefully learned and controlled or else it will be a source of mirth. The noun desert is very old (it goes back to the 1300s) while the phrase just deserts appears in the late 1500s (‘a just desert for such impiety’)…

   There are those who argue that, because we are so familiar with dessert and so unaware of desert, the alteration of the phrase to just desserts is inevitable and we should relax and accept it. I am not quite there, yet. I don’t think that desert is entirely obsolete yet and I think we should be able to retain the distinction. You just have to remember that just deserts is what you deserve, and that dessert has a double s in it for lots of sugar.3

3 Exhibit KK-5.

1. In respect of the expression Mr Kortian declares that ‘JUST DESSERT[S] is clearly a play on the well-known saying “just deserts”, (i.e. – that which one  deserves  to  receive),  in  the context of a reality TV competition pitting pastry chefs against each other.’

1. Lastly Mr Kortain exhibits extracts from searches he made of the Australian Trade Marks Office database for trade marks containing the word DESSERTS and trade marks containing the word JUST (the latter limited to those which proceeded to registration without  any evidence of use, which Mr Kortian submits includes a number of registrations containing a ‘word play’ incorporating the word ‘just’).

Section 41

1. Section 41 of the Act relevantly provides:

   41 Trade mark not distinguishing applicant’s goods or services

   (1)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   …

   (2)    A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)    This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)    This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)         the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)        the use, or intended use, of the trade mark by the applicant;

   (iii)       any other circumstances.

1. A presumption of registrability is embodied in s 33 of the Act which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it. This provision shifted the onus which had existed under the previous 1955 Act, wherein an applicant bore the onus to establish registrability. Nonetheless, prior to the introduction of the Intellectual Property Laws Amendment Act (Raising the Bar) Act 2012 a

tension remained between the presumption of registrability in s 33 and the decision making process reflected in s 41 of the 1995 Act.4 To that end s 41 was amended by the Intellectual Property Laws Amendment Act (Raising the Bar) Act 2012 to clarify that the presumption of registrability does apply to the s 41 consideration, as reflected in the Explanatory Memorandum:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41…The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.5

1. The Explanatory Memorandum also made clear that there was no change to the relevant standard to be applied to s 41. It went on to state:

   [I]t is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.6

1. Accordingly the ground will not be established unless I am satisfied on the balance of probabilities that the Trade Mark is not inherently adapted to distinguish and that the use of it has not rendered it, or will not render it, distinctive (whether the consideration is made in the context of s 41(3), wherein distinctiveness would be entirely reliant upon use, or in the context of s 41(4), wherein a degree of inherent capacity to distinguish would also be taken into account). If I am equally unsure whether or not this is the case, then the doubt is resolved in the Applicant’s favour.

1. The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the Applicant’s services from the similar services or closely related goods of other traders. This is to be tested:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.7

4  See for example Blount Inc v Registrar of Trade Marks [1998] FCA 440 and Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891.

5 Item 113 of the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, p 146.

6 Supra, p 146.

7  Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48.

1. The literal meaning of JUST DESSERTS is as described by the Opponent, namely that the respective meanings of the words (according to the Macquarie Dictionary) are:

   ‘just’  adverb  10.  exactly  or  precisely.  12.  only  or  merely.  13.  actually;  truly; positively.

   ‘dessert’ noun 1. the final course of a meal including sweet pies, puddings, etc. 2.

   a serving of fruits, or some sweet confection, at the end of the meal.

Accordingly the combination JUST DESSERTS describes only,  or  exactly,  sweets  which make up the final course of a meal. Applied to the services, being ‘Entertainment services, namely a reality television series’, JUST DESSERTS is apt to describe the subject matter of a reality television series that is dedicated to desserts. It matters not that the services are not limited to those relating to desserts: such a potential subject matter is encompassed by the unqualified description ‘a reality television series’. Within the bounds of fair notional use the Trade Mark may well be applied to a reality television series that is solely about desserts.

1. At the same time, it must be recognised that JUST DESSERTS is phonetically identical to the expression ‘just deserts’, a common phrase in the English language. Furthermore, it may not be known to many Australians that the two differ in spelling, as reflected in the ‘From the Editor’ article from the Macquarie Dictionary (exhibit KK-5 of the Applicant’s evidence). Accordingly, the ordinary signification of JUST DESSERTS is likely to be taken as a play on words, where a double meaning is attributed to the Trade Mark.

1. I note also both parties’ references to trade marks on the Register. It is true that most trade marks in the format ‘JUST [descriptive element]’ have attracted grounds for rejection under s 41, wherein the descriptive element may describe the subject matter of the relevant goods and services (be they books, magazines, publications, software, publishing services, educational or entertainment services). The trade marks incorporating ‘just’ in the Applicant’s evidence generally do not include descriptive elements, and are therefore not analogous. I do take account of the Applicant’s submission that other reality television series with names such as SURVIVOR, THE RENOVATORS, THE BACHELOR and TOP CHEF (that were applied for as trade marks) did not require evidence of use. At the same time, I note that several reality series with names such as BORDER PATROL, BAND GRAND SLAM, MY MENTOR and BRIDAL BOOTCAMP did not achieve acceptance or registration of their respective trade marks. In any event, evidence relating to the state of the Register does not outweigh the application of the established tests for determining distinctiveness.

1. Therefore, whilst I consider that JUST DESSERTS is apt to describe the subject matter of a reality television series dedicated to desserts, I also consider that the double meaning afforded to the Trade Mark by virtue of the expression ‘just deserts’ lends a degree of inherent capacity to distinguish. To that end, the Trade Mark is to some extent inherently adapted to distinguish the Applicant’s services from those of other traders, but it is not registrable on that basis alone. It is accordingly appropriate to consider the Trade Mark under the provisions of s 41(4).

1. As indicated by the legislation, it is necessary to consider whether the Trade Mark does or will distinguish the Applicant’s services having regard to:

   ·the extent of its inherent adaptation to distinguish;

   ·the use that has been made of it and/or its intended future use; and

   ·any other circumstances.

1. The extent of the Trade Mark’s inherent adaptation to distinguish has already been considered and the Applicant has not submitted any other circumstances which support acceptance of the application. Therefore, the query turns to the evidence of use filed by the Applicant and whether it shows that the Trade Mark does or will distinguish the Applicant’s services from those of other traders.

1. There is no evidence of use of the Trade Mark, solus, in Australia. Three exhibits relate to Australia, being the broadcast schedule of the program on Foxtel’s Arena channel; the article upon ‘tvtonight.com.au’; and the article upon ‘ All of them refer to the program as TOP CHEF: JUST DESSERTS (with or without the colon). Even leaving aside the relevant arguments as to whether such use comprises use of the Trade Mark applied for, there is little information which would allow me to properly assess the potential extent of the Trade Mark’s exposure. There is no indication of the number of viewers of the program, or the number of subscribers to Foxtel’s Arena channel. There is no indication of how many people may have read the articles upon ‘tvtonight.com.au’ or ‘ or how many may have accessed those websites.

1. The remaining exhibit relating to use is comprised of contemporaneous and archived pages from the website ‘ wherein the trade marks shown at paragraph 14 are used. There is no other information before me regarding the website: it would appear to be directed at the USA market given it relates to the cable television network BRAVO, and there

is no information showing that any Australians accessed that website or any submissions to that effect.

1. As to whether use of TOP CHEF: JUST DESSERTS (with or without the colon) or use of the trade marks shown in paragraph 14 comprise use of the Trade Mark, I consider that firstly such a finding is not necessary. Even if I was satisfied that the various uses shown in the evidence were use of the Trade Mark, there is so little information upon which to estimate the extent of recognition that I would not be satisfied the provisions of s 41(4) were met in any event. Secondly, insofar as the Opponent cites Wellness Pty Limited v Pro Bio Living Waters

   Pty  Limited8    and  Sustainable  Agriculture   &  Food  Enterprises  Pty  Ltd  v  Samaritan

   Pharmaceuticals Inc9 in support of the premise that JUST DESSERTS is used as a trade mark separate to TOP CHEF, I am not entirely satisfied that either case applies.

1. In the former case the determination that LIVING WATERS was used as a separate trade mark to PRO BIO was based upon embellishment of PRO BIO which was not applied to LIVING WATERS; and uses of PRO BIO either without LIVING WATERS or with other phrases, indicating a ‘separate purpose’ for the words PRO BIO. In  the  latter  case  the delegate found that the ‘house mark’ NUTRACELL was used in relation to many of the trader’s  products:  ‘Enough,  I  find,  to  say  that  two  trade  marks,  NUTRACELL  and

   SAMARITAN, are used in relation to the product’.10 The evidence before me which goes to a

   separate purpose or use as a ‘house mark’ of TOP CHEF is extremely limited. The article from ‘tvtonight.com.au’ is titled Ooops. Arena plays wrong Top Chef episode and within it is stated ‘you can still enjoy all the sugary highs and lows of Top Chef’s sweetest offering yet’. The article from ‘ introduces a judge appearing on the program as ‘critically acclaimed chef as well as guest judge on Top Chef and finalist on Top Chef Masters’ (emphasis added). That is the extent of evidence, in Australia, showing use of TOP CHEF separate to JUST DESSERTS. Accordingly, although I think there may be a possibility that TOP CHEF is used as a separate trade mark to JUST DESSERTS, I am not satisfied on the balance of probabilities that this is so.

1. As such, the ground of opposition under s 41 is established.

8 [2004] FCA 438.

9 [2008] ATMO 97.

10 Ibid, [11].

Decision and costs

1. Section 55 of the Act relevantly provides:

   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.

   Note: For limitations see section 6.

1. The Opponent has established a ground of opposition. I therefore refuse to register trade mark application 1769877.

1. Both parties sought an award of costs. Costs generally follow the event and given there is no apparent reason to depart from this principle I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth Hearing Officer

Oppositions & Hearings 22 November 2018