TV Food Network Pty Ltd v Television Food Network, G.P

[2005] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by TV Food Network Pty Limited to applications under section 92 of the Act by Television Food Network, G.P. to remove trade mark number 738571(38, 41) - TV FOOD NETWORK - in the name of TV Food Network Pty Limited

Delegate:

Don Nancarrow

Representation:

Opponent: Not represented at hearing and neither appeared nor filed written submissions

Applicant: Ian Tannahill, Angeline Behan of Ahearn Fox, Patent and Trade Mark Attorneys, Brisbane

Decision:

Trade mark to be removed for non-use in three year period; special circumstances to leave mark on Register not demonstrated.

Background

1. This is an action under section 92 of the Trade Marks Act 1995 (the Act) to remove trade mark 738571 from the Register for non-use of the mark. The trade mark has been registered from 8 July 1997 in respect of: “Television broadcasting of programs relating to food or cooking, including free-to-air and cable television broadcasting” in class 38 and “Production and development of television programs and television entertainment relating to food or cooking” in class 41.

2. The non-use applicant, TV Food Network, G. P., (hereafter the applicant), filed its application on 3 January 2003 alleging that the mark had not been used in respect of all of the services for which the mark is registered for a period of three years ending one month before the application date, under s.92(4)(b). Thus, the relevant dates between which TV Food Network Pty Limited, (hereafter the opponent), would need to show use of the mark run from 3 December 1999 to 3 December 2002 in order to defeat the removal application.

3. The evidence stages ran their course with the filing and serving of evidence in support by means of a declaration from Paul Lawrence (Lawrence declaration with exhibits “1” and “2”) and the filing and serving of evidence in answer by means of a declaration from Angeline Peta Behan (Behan declaration with exhibits “APB-1” to “APB-15”). The applicant requested to be heard in the matter and it came before me, as a delegate of the Registrar in Canberra on 15 November 2005.

4. The opponent’s registered trade mark 738571 is shown below.

Evidence

1. The evidence goes to show that the trade mark owner has been involved in producing television programmes that have been transmitted via satellite broadcasting on ABC Asia Pacific. These programs were produced, compiled and broadcast from the studios of NBN television in Newcastle. The opponent has submitted some videotapes of five minute cooking demonstrations showing preparation of particular meals. Some dispute exists as to whether these programs, on satellite television, can be accessed by an Australian audience.

2. The applicant here, an American entity, has made applications for registration of four trade marks in Australia which are currently all under examination. These marks are for “TELEVISION FOOD NETWORK”, two versions of “FOOD NETWORK” and “foodtv.com”. It has promoted and advertised its trade marks via its web site and various overseas publications and claims to have built up a sizeable worldwide reputation. The evidence in answer from the applicant contains a report submitted as a result of contact with ABC Asia Pacific. The evidence also includes information from the ABC Asia Pacific web site. From this material it appears that the satellite television coverage barely reaches the Australian coastline, although it may just cross at some places on the east coast of Far North Queensland. In addition, the web site lists the countries to which the ABC Asia Pacific provides television coverage and Australia is not among them. The applicant also alleges that the opponent does not have a broadcasting licence to either broadcast programs or as a program provider. Although the opponent did provide a “footprint” of the satellite coverage for ABC Asia Pacific it was without the overlay of a map of Australia in order to investigate the likelihood of actually receiving the program in this country.

Grounds of Opposition

1. As mentioned earlier, the applicant undertook removal action in terms of s. 92(4)(b) of the Act. The opponent stated that the mark had been used between October 1999 and July 2003 in the notice of opposition filed in July 2003.

Submissions, the Law and Comments

1. The legislation on which this action is based reads:

Application for removal of trade mark from Register etc.

92.(1)  A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(2) The application:

(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

Note:  For prescribed court see section 190.

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

Note:  For file see section 6.

(5) If the right or interest on which a person relied to make an application (under subsection (1) or (3)) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the court (as the case requires), be substituted for the first-mentioned person as the applicant.

1. A threshold question here concerns the applicant’s standing as “a person aggrieved”, as described at s.92(1). This standing has not been challenged by the opponent. The applicant does have applications to register marks in Australia that have been blocked by the present registration. In itself, this may not be sufficient to establish the applicant’s credentials, but given the applicant’s evidence of the use made in overseas jurisdictions and the future plans stated for the Australian market, I find that the applicant does have sufficient standing.

2. The onus now focuses on the opponent to meet its obligation in relation to s. 92(4)(b)(i) or (ii) on actual use of the mark in Australia.

3. The opponent’s evidence claims use by means of satellite transmission of programs from ABC Asia Pacific. Some video taped programs have been submitted to prove such use. These programs all have a copyright date at the end of each program of 2003. The relevant dates between which use must be shown, however, are 3 December 1999 and 3 December 2002. Thus, these programs do not show use during the relevant time period.

4. In addition, the applicant claimed that these programs when shown over the ABC Asia Pacific network did not actually have the opponent’s mark transmitted as part of the broadcast. This is alleged in the Behan declaration and supported with exhibits “APB-8” to “APB-13” which document programs shown on ABC Asia Pacific, being both transcripts and videotapes. The opponent has not answered this material. A further difficulty for the opponent concerns the transmissions of the programs themselves. It must be asked, “Is it even possible to gain access to the programs in Australia”? The applicant claims that this is not possible and provides evidence from the ABC Asia Pacific web site. This shows the area over which the television broadcasts can be picked up by use of a satellite dish. From this material it appears that the satellite television coverage barely reaches the Australian coastline, although it may just cross at some places on the east coast of Far North Queensland. The opponent has not provided evidence of the viewing of such programs in Australia beyond allegations that the programs can be seen. Even the satellite “footprint” that was provided during the course of examination by the opponent (and was filed as part of the applicant’s evidence in answer) does not show a map of Australia super imposed on the area that is serviced by ABC Asia Pacific satellite coverage. I find that the opponent has not discharged its onus, as set out in s. 92(4)(b)(i) or (ii), to show use of the mark in Australia in the relevant time period of 3 December 1999 to 3 December 2002.

5. The opponent requested that if I found that the mark had not been used that I should consider the special circumstances of the case. This provision is found at s. 100(3)(c) which links s. 100(1)(c) in the following manner:

Burden on opponent to establish use of trade mark etc.

100.(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(a) ….
(b) ….
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

Note 1:  If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:  For file and registered owner see section 6.

(2) ….

(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

(a) ….
(b) ….
(c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

Note 1:  If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

Note 2:  For registered owner see section 6.

1. If it is shown that special circumstances do exist then the Registrar may use his or her discretion to leave the trade mark on the Register. Such circumstances may include serious accident, illness or injury that may have prevented the opponent from working for an extended period of time or such other circumstance as may take a person out of the workforce. The details of such circumstances would need to be clear and some evidence available that the mark had not been abandoned.

2. In the present matter, the opponent has not put any information before me to find that special circumstances do exist or have existed. Although it may be presumed that the opponent has not lost interest in this trade mark, in that it has contested this opposition action, it is not clear that it has ever been used in the Australian market.

3. The opponent bears the onus to convincingly demonstrate special circumstances. I find that no such special circumstances have been shown by either evidence or submission in the present matter.

Decision

1. The opponent has not made out its opposition to removal of this trade mark from the Register and I direct that registration 738571 be so removed.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

13 December 2005