The British Broadcasting Corporation v the Food Channel Pty Limited

[2001] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by the British Broadcasting Corporation to registration of trade mark application 738886 – Ready Steady Let’s Cook Logo in Classes 38 and 41 - filed in the name of The Food Channel Pty Limited.

Background

This issue arises out of the filing of application 738886 on 10 July 1997 (‘the priority date’) in Classes 38 and 41 by The Food Channel Pty Ltd (‘The Food Channel’).  The trade mark and the services in respect of which the application is filed appear below:

Class: 38 

Television broadcasting of programs relating to food or cooking, including free-to-air and cable television broadcasting

Class: 41 

Production and development of television programs and television entertainment relating to food or cooking

 

Following examination, the application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 13 November 1997. On 12 February 1998, The British Broadcasting Corporation (‘the BBC’) served and filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The grounds cited in the Notice are broadranging; however, at the hearing of the matter, the BBC relied on two grounds – those under section 58 and those under section 60.

The evidence served and filed in relation to these proceedings comprises:

Declarant	Known as	Date Made	Exhibits
Evidence in Support
Shaun Nicholas Sherlock	Sherlock	9 February 1999	1 – 10
Peter Van den Bussche	Van den Bussche	1 May 1999	1 – 10
Evidence in Answer
Paul Lloyd Lawrence	Lawrence	2 September 1999

Mr Sherlock is Trade Marks Manager in the Intellectual Property Department of the BBC.  He says that the BBC has, since 1994, been broadcasting a television show called READY STEADY COOK in the United Kingdom.  This program has proved to be very popular and has an extensive reputation.

The program format involves two professional chefs who are invited into the studio.  Two contestants, who are either members of the public or celebrities, also appear on the program – these people each have a bag containing about $15 worth of groceries – ingredients – which are not known to the chefs.  Each contestant is allocated a chef who uses these ingredients as the basis of one or more dishes which they have to prepare within twenty minutes, using only these ingredients and some basics provided within the studio kitchens.  The studio audience is then allowed to vote on whom they believe has prepared the best meal and the contestant associated with the winning chef receives a prize.

Mr Sherlock attaches to his declaration copies of a BBC Good Food magazine – a publication which has been available in Australia since at least 1990. Representative distribution figures are provided for this magazine – the BBC has claimed exception in respect of these figures under the Freedom of Information Act – so, rather than particularising the sales, I would characterise these figures as being modest. The magazine articles show that the program is broadcast on BBC 2 in an afternoon time‑slot; the articles give recipes from the program.

Although the program READY STEADY COOK is produced by an independent production house, the BBC owns the trade mark.

Mr Sherlock details a number of negotiations with Australian production houses and broadcasters concerning the possibility of the sale of rights in the program.  Again, since confidentiality is claimed, I will only discuss these negotiations in general.  Correspondence which shows the course of these negotiations is appended to both Mr Sherlock’s and Peter Van den Bussche’s declarations.  However, the evidence shows that these negotiations were, by the priority date, fruitless.

The Sherlock and Van den Bussche declarations both attest to a course of negotiations with Artist Services, an Australian television production house – although both declarants state that an agreement with Artist Services was reached, they do not advise of the date of this agreement or exhibit the executed agreement to their declarations.  I therefore believe that it is most likely that agreement with Artist Services was reached after the priority date of this application.

The BBC promoted the program READY STEADY COOK at international trade shows or conferences in 1996 and 1997.

Peter Van den Bussche, is Head of Sales and Acquisitions for the parent company of the production house which makes READY STEADY COOK for the BBC in London.  Mr Van den Bussche attests to the same promotion of the program and the same contacts and negotiations with the Australian production house concerning the sale of rights in the READY STEADY COOK program as does Mr Sherlock. 

In his evidence in answer, Mr Lawrence says that he is a professional cook who came to the career through a strong interest in the field by his family.  After gaining some experience as a caterer, he started his own business, Smoking Jester Catering Pty Ltd, and worked as a film caterer on location and on advertising and movie production sets.  Among the movies that he catered were Joey, The Doors, Point Break and The Phantom.  During this time, says Mr Lawrence, he built up a knowledge of how programs are structured and marketed.

As a caterer, Mr Lawrence says that his exposure to television was limited – due to the hours that caterers work.  His only experience with cookery programs on television had been those of Bernard King and Graham Kerr.  However, he formed the idea for a dedicated food channel, formulated with Australia’s multicultural population in mind. 

Developments in digital broadcast media led Mr Lawrence to believe, he avers, that a cookery channel would be of likely interest to major digital broadcast operators who would be seeking content for their broadcasts.

Mr Lawrence says that he has a considerable bank of recipes, anecdotes, travel experiences and hands-on experience of catering in strange locations.  Mr Lawrence exhibits some proposed copy to his declaration.

In arriving at the trade mark for his proposed venture, Mr Lawrence says that he wanted to have a ‘film’ flavour and that the phrase, “ready, roll cameras, action!” that film directors use was in his mind.  Mr Lawrence also says that a favourite phrase of his when catering on location was “Lets Cook!”

Mr Lawrence says that he had not heard of the BBC trade mark before this opposition and had no idea of the program format before receiving the evidence in support of the opposition.  Before filing the application, Mr Lawrence had searched for the trade mark on IP Australia’s ATMOSS searching facility and found no conflicting application or registration.

Mr Lawrence also says that the opportunity to promote the good quality of Australian food has given him the prospect of obtaining government funding.  Mr Lawrence avers that his company’s programming schedule already contains READY STEADY LETS COOK as a title of a program of Tibetan highland cooking and not a race or competition between cooks.

Section 58

Section 58 of the Act allows:

58  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.

The word ‘owner’ within section 58 is equivalent to the word ‘proprietor’ in the Trade Marks Act 1955 and its predecessors.  In Re Hicks's Trade Mark (1897) 22 VLR 636, at 639, Holroyd J observed during the course of argument:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it.  A man cannot be said to have adopted a name if someone else has done so before him.  Section 19 merely says that the act of applying is to be deemed equivalent to public user.  No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before.  The section does not affect the fact that another person used the name first.  The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

Holroyd J in his judgment said, at p 640:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks's name from the register of trade marks as the proprietor of the word 'Empress' as a trade mark applied to stoves ought to be granted.  In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word 'proprietor' must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration of the word 'Empress' in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

It is not shown by the evidence that The Food Channel had, by the priority date, used the trade mark in respect of the services for which it seeks registration.  The Food Channel’s claims to ownership of the trade mark therefore resides in its filing of this application for registration on 10 July 1997.  It thus follows that, if the BBC had, previous to 10 July 1997, used the same trade mark ‘on the same kind of thing’ as the services for which The Food Channel seeks registration, it may displace The Food Channel’s claims to ownership of the trade mark.

What I must consider is, therefore:

• Is the BBC trade mark the same trade mark as that of The Food Channel?
• Had the BBC used the trade mark in Australia earlier than 10 July 1997?  If so,
• What are the goods or services on which the BBC had used the trade mark? and,
• Are the goods or services in respect of which the BBC had used the trade mark ‘the same kind of thing’ as the services for which The Food Channel seeks registration?

The Same Trade Mark?

It is apparent that, in order that trade marks at issue be considered to be the ‘same trade mark’, in terms of section 58, nothing less than a substantial identity between the trade marks will suffice: it is necessary to consider whether the marks are identical or are so similar as to share an identity: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300; and Tavefar Pty Ltd v Life Savers (Australasia) (1988) 12 IPR 159.

In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, Gummow J, referring to The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

In Shell, His Honour described the test in the following way:

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.

The trade marks, side by side, are:

Ready Steady Cook

Although the The Food Channel’s trade mark is hand-drawn and obviously will have some alteration in order to render it suitable for use in trade, I do not think that it is appropriate here for me to speculate what those changes might be or to discount the graphic elements of the trade mark on the basis that they are obviously to be changed.  It is the trade mark as filed which is to be registered and any amendments to the trade mark, and the allowability of such, are future possibilities and considerations.  I must, I believe, accept that any changes will be ‘cleaning up’ in keeping with the above representation and will involve all of the elements currently present.  Obviously, any changes to the trade mark in use by The Food Channel would accrue considerations in terms of, for example, subsection 7(1).[1]  However, the implications of such changes and the impacts of such implications are matters for the applicant to wrestle with as is true of all owners of trade marks which feature one or more graphic elements which may be updated or changed from time to time. 

[1]7     Use of trade mark

On this basis the trade marks at issue are not substantially identical.  There is a strong graphical element in The Food Channel’s trade mark which is absent from the BBC’s trade mark and sets its identity apart.  It is not appropriate, I consider, to use the expressions READY STEADY COOK, and READY STEADY LETS COOK as the basis for comparison as regards the substantial identity of these trade marks while such a strong graphical element within the opposed trade mark is present.  However, as this is an essential feature of the applicant’s trade mark, I note that the arrangement of the words in the applicant’s trade mark does, I consider focus attention on the exhortation LETS COOK and delineates the trade marks.

Although it is not necessary for me to address the other considerations in terms of section 58, I will, lest I be wrong in my above assessment of the identity of the trade marks.

Use of BBC’s trade mark

It is apparent from the evidence that there are two ways in which the BBC might have used the words READY STEADY COOK as a trade mark in Australia before the priority date of this opposed application.  It may have used the words READY STEADY COOK as a trade mark while in negotiations with various production houses while seeking to sell the rights to the program in Australia; in the alternative, it might have used the words as a trade mark in Australia within its BBC Good Food magazine.

In relation to the BBC negotiations with various Australian production houses, I note that in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, at 432, Deane J held that the prior use which will suffice for this purpose, “is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods [or services] for the purpose of indicating or so as to indicate a connection in the course of trade.” [Parethesis added]. At page 433, he said, with the rest of the Court concurring:

The Court was referred to a large number of cases and to some administrative decisions in which consideration has been given as to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark or that the mark has been used in an advertisement of the goods in the course of trade.  In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.  In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade.  There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.  The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under license from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark "KENT GOLDEN LIGHTS" for the purpose of indicating or so as to indicate a connexion in the course of trade between the new cigarettes and Loew's.

I consider the evidence shows that, as regards the negotiations for sale of the television program, the BBC was in a situation directly analogous to Loew's that is described in the quotation from Moorgate, above.  While the BBC had sent tapes and treatments of the television program to various production houses, these were not for broadcast.  The tapes and treatments were for assessment of suitability to see if a local production house could be interested in producing the program in Australia.  An agreement, or agreements, was prepared but there is no indication that any of the production houses with which the BBC negotiated actually reached agreement before the priority date.  Neither can I see any certainty that, if the programs were to be produced in Australia, they would be under the name READY STEADY COOK.  Correspondence from one potential producer of the program in Australia for who a draft agreement was prepared suggested a title change to “Serve it Up”.

As I noted in my discussion of the evidence, it is apparent that there was an agreement reached with an Australian production house.  However, it is not clear from the evidence whether this agreement was before the priority date or for an option to the rights to produce the program or for the production of the program itself.  It is not clear when, if ever, the production house actually started production of the program.  Neither is it clear whether this agreement was for the Australian rights, or for the New Zealand rights, or for both.

I conclude, therefore, that (as regards the negotiations) the evidence does not demonstrate that the BBC did have use of the words READY STEADY COOK as a trade mark in respect of its entertainment or broadcast services before the priority date of this application.

Further, I am not satisfied that the use by the BBC of the words READY STEADY COOK within the magazine BBC Good Living are a use of the words as a trade mark.  Section 17 of the Act provides:

17  What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

In Shell, above, at page 424-425, Kitto J expanded the query thus:

… the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant.  Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade.

I would add that the context of the above quotation is obviously that of actual or proposed use of the trade mark in Australia.  To paraphrase the issue, it is whether within the magazines in which the words READY STEADY COOK appear, they would have appeared to the reader of the magazine to have the character of brands or trade marks that the BBC was using or proposing to use in relation to either its television program in Australia or the magazine for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the magazines or television programs and the BBC?  Did the words appear in the magazine as being marks for distinguishing BBC magazines or programs in Australia from other magazines or programs in the course of trade in Australia? 

The words READY STEADY COOK do not appear on the covers of the magazines in evidence.  The magazines bear the price of the publication in pounds sterling.  The programs referred to in the magazine are scheduled for broadcast in the United Kingdom.  The words READY STEADY COOK appear in the contents pages of the magazines along with other indicators of the contents such as ‘Sandwiches’, ‘Soda Breads’, ‘Cook for a Lifestyle’ and so on.  The words also appear as the titles of articles or lists of recipes: the titles of these articles follow the form ‘Ready Steady Cook is presented by Fern Britton on BBC2, Mondays to Fridays at 4.30’.  However, as BBC2 does not broadcast in Australia and there is no mention of broadcast or sale of video or audio tapes in Australia, it is difficult to understand how Australians could view the words as being used as denoting a connexion in trade between services in Australia and the BBC or any immediacy of offer of the services in Australia.  Rather, in the magazine and articles within it, if the words READY STEADY COOK are to be understood in a trade mark sense, they refer to the market within the United Kingdom where the articles state that the broadcasts take place.  Although the magazine is available for purchase in Australia, and, indeed, has Australian subscribers, the purchasers of the magazine would not, I consider, view the inclusion of the words READY STEADY COOK as indicating that the broadcast services or television program were available in Australia. 

However, if I am wrong, and the use of the words READY STEADY COOK in the magazines is use in a trade mark sense, it could only, I believe, be use in relation to magazines although I have strong reservations about this.  It would seem unusual that the title of an article within a magazine could, when the magazine is named something else, be a trade mark for the magazine.  The broadcast or entertainment services to be inferred in the magazine are clearly performed in the United Kingdom.

I will add, for the sake of completeness, that ‘magazines’ and the services in respect of which The Food Channel seeks to register the trade mark are not ‘the same kind of thing’, as per Hicks, above.

The opposition in terms of section 58 therefore fails.

Section 60

Section 60 of the Act provides:

60  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)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.

As I have already decided that the BBC and The Food Channel’s trade marks are not substantially identical, what I am to consider in terms of section 60 is:

·Whether the trade marks are deceptively similar

·The extent of the reputation of the BBC trade mark; and

·If because of the reputation of the BBC trade mark, the use of The Food Channel’s trade mark would be likely to deceive or confuse.

Deceptive similarity is to be gauged by reference to the impression gained from the trade marks and retained in the mind.  The test is not a side by side comparison.  In the words of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

The trade marks are, on the basis of this test, deceptively similar.  The words that form the only part of the BBC trade mark are very similar to the words that form a major feature of The Food Channel’s trade mark.  When trade marks are not available for a side by side comparison, it is, I consider, unlikely that a person with the BBC trade mark in mind will notice that the words in The Food Channel’s trade mark are different.  A person who is familiar with both trade marks will neither be deceived nor confused.  It is the person who only knows the one trade mark, and has perhaps an imperfect recollection of it who is likely to be deceived or confused: Aristoc Ltd. v. Rysta Ltd. (1945) AC 68, at p 86.

It is appropriate to open the discussion of the reputation of the BBC trade mark in Australia with reference to the judgment of Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 (15 September 2000) at paragraph 81:

What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation...1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute...2. favourable repute; good name...3. A favourable and publicly recognised name or standing for merit, achievement, etc....4. The estimation or name of being, having done, etc, something specified.

cf. The Oxford English Dictionary.  In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

Of course, other considerations may apply if goods or services are specialised and the public, generally, might not be expected to know of a trade mark.  However, this is not the case here – the BBC program is one which is formulated to have mass appeal.  One of the production houses with which the BBC (via its production house) negotiated, estimated the potential audience for the program in Australia as being about 300,000 people.  Obviously, if the program were actually broadcast, many more people would know of the program in general terms, even if they did not watch it.  The circulation figures of the BBC Good Food magazine in Australia are, as I have observed, above, modest.  The BBC claims confidentiality for these figures and it is thus not possible for me to expressly state their scope.  However, it is obvious that the circulation figures for the magazine are a small fraction of one percent of the estimated potential audience.

I would consequently conclude that the ‘recognition of the trade mark of the BBC by the Australian public generally’ is very low.  The BBC trade mark does not, therefore, have sufficient reputation in Australia to sustain consideration under these grounds.

Decision

The opposition thus fails on each of the grounds on which it was argued.  The application may proceed to registration subject to payment by the applicant of the appropriate fees and also subject to any appeal against these reasons filed within the requisite period of time.

Costs

Having been successful, the applicant is entitled to claim the costs incurred in this matter.

Ian Thompson
Hearing Officer

24 September 2001

(1)   If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.