Television Food Network, GP v Food Channel Network Pty Ltd (No 2)

Television Food Network, G.P. ("TFNG") appealed against the decision of the delegate of the Registrar of Trade Marks to dismiss TFNG's opposition to the registration of trade mark 967804 ("TM967804") by Food Channel Network Pty Ltd ("FCN"). The main issue for the Court was whether FCN was the owner of TM967804. The Court found that the evidence did not establish that The Food Channel Pty Ltd, which originally applied for the registration of TM967804, assigned it to FCN before the relevant date. Furthermore, the Court held that the evidence did not allow it to find that either The Food Channel Pty Ltd or FCN was the owner of TM967804 at the relevant date. Therefore, the onus shifted to FCN to prove ownership.

The Court found that FCN had failed to establish that it was the owner of TM967804. The Court was not satisfied with the evidence provided by FCN, which included the affidavit of its managing director, Mr Paul Lawrence. The Court found that Mr Lawrence's evidence was confusing and did not establish that FCN was the owner of TM967804. The Court also noted that there was no evidence of an assignment of TM967804 from The Food Channel Pty Ltd to FCN. Moreover, the fact that The Food Channel Pty Ltd later assigned TM967804 to FCN did not prove that FCN was the owner at the relevant date.

The Court concluded that the delegate had erred in finding that FCN intended to use TM967804 and that its use would not be likely to deceive or cause confusion. The Court found that the use of TM967804 would be contrary to law and that it was substantially identical with or deceptively similar to TFNG's registered trade marks. The Court also found that the use of TM967804 would be likely to deceive or cause confusion because of the reputation acquired by TFNG's trade marks in Australia before the priority date of TM967804.

The Court allowed the appeal and ordered that the registration of TM967804 be refused. The Court also ordered that FCN pay TFNG's costs of and incidental to the opposition before the delegate and of this appeal.