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

Federal Court of Australia|1986-06-16|Before: Reeves J

BACKGROUND FACTS AND procedural history 19 Before I consider whether the requisite level of doubt exists about the primary judge's decision in this matter, I need to set out some of the background facts and the procedural history in order to provide some context. 20 Food Channel Pty Ltd ("Food Channel"), a related entity to Channel, filed the application for the Trade Mark on 28 August 2003. The application described Food Channel as the owner of the Trade Mark. It also described the goods and class to which the Trade Mark related in the following terms: "Goods specification: Class 16: printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs". 21 On 20 January 2004, Food Channel assigned its application to register the Trade Mark, to Channel. 22 Following the application being advertised for opposition, Television lodged a notice of opposition. Before the delegate of the Registrar, Television pursued three grounds of opposition: Channel did not intend to use the Trade Mark (s 59); the Trade Mark was likely to deceive or cause confusion (s 43); and the Trade Mark was deceptively similar to Television's trade marks (s 44). 23 On 29 November 2006, the delegate rejected all of Television's grounds of opposition and decided to proceed to register the Trade Mark. As is already noted above, Television then appealed to the Federal Court on the same three grounds, and it added three additional grounds. The additional grounds were: Channel was not the owner of the Trade Mark (s 58); the Trade Mark was scandalous or its use was contrary to law (s 42); and the Trade Mark was similar to Television's trade mark that had acquired a reputation in Australia (s 60). 24 Television subsequently abandoned its reliance upon s 43. 25 In the lead-up to the trial of the matter, the primary judge conducted a number of directions hearings at which orders were made about the filing of affidavit evidence, the discovery of documents and the filing and service of written submissions. 26 Among other things, both parties therefore subsequently filed and served a number of affidavits upon which they intended to rely. 27 Throughout these pre-trial processes, Mr Paul Lloyd Lawrence (the sole director of Channel and Food Channel) acted for Channel. He did so by leave of the primary judge. However, the primary judge made it clear to Mr Lawrence from the outset that his leave to appear for Channel did not extend to the pre-trial mediation, or to the trial itself. For those stages of the proceedings, he was required to acquire legal representation for Channel. 28 Shortly before the trial, Mr Lawrence retained counsel and solicitors to act for Channel. 29 At the commencement of the trial on 17 March 2008, Channel's counsel sought to file and rely upon a fourth affidavit of Mr Lawrence sworn on 16 March 2008. The primary judge allowed Channel to file this affidavit and then heard submissions as to whether it should be permitted to rely on it. 30 It should, perhaps, be noted that Channel also sought to file and rely upon a fifth affidavit, however that affidavit is not relevant in this application. 31 The primary judge refused to give Channel leave to rely upon the fourth (or the fifth) affidavit and published reasons for that ruling (see [2008] FCA 378). 32 The trial was then completed with Channel having to rely upon the three affidavits that had been prepared and filed by Mr Lawrence.

THE PRIMARY JUDGE'S DECISION 33 As I have already noted above, the primary judge found for Television. In summary, her Honour held that: ● Food Channel was not the owner of the Trade Mark at the date the application was filed (s 58): [2009] FCA 271 at [92]; ● it was not possible on the evidence to conclude that Channel was the owner of the Trade Mark at that date: [2009] FCA 271 at [92]; ● even if it could be concluded that Channel was the owner of the Trade Mark at that date, the finding that Food Channel was not the owner of the Trade Mark at that date was a fatal defect in the application: [2009] FCA 271 at [92]; ● there was no evidence that either Food Channel, or Channel, used, or intended to use, the Trade Mark at any time (s 59): [2009] FCA 271 at [121]; and ● the Trade Mark was deceptively similar to Television's trade mark (s 44(1)): [2009] FCA 271 at [148]. However, Television was unsuccessful in relation to its grounds under ss 42 and 60 of the Act: see [2009] FCA 271 at [178] and [167] respectively.

THE PROPOSED GROUNDS OF APPEAL 34 In its proposed notice of appeal, Channel sets out some twenty-five grounds of appeal. In summary, Channel alleges that the primary judge was in error in ruling that: · The fourth affidavit of Mr Lawrence could not be relied upon; · Neither Food Channel nor Channel was the owner of the Trade Mark; · Neither Food Channel nor Channel used, or intended to use, the Trade Mark; · The Trade Mark was deceptively similar to Television's trade marks.

THE ISSUES THAT ARISE 35 The first three alleged errors identified in the summary above are all related. This is so because, as I understand its position, Channel claims it was denied a fair trial on the issues of the ownership of the Trade Mark (s 58) and the use, or intention to use, the Trade Mark (s 59), by reason of the primary judge's refusal to allow it to rely upon the fourth affidavit. Channel, therefore, appears to be raising the principle expressed in cases like Balenzuela v De Gail (1959) 101 CLR 226 ("Balenzuela") and Stead v State Government Insurance Commission (1986) 161 CLR 141 ("Stead"). 36 In Balenzuela, the High Court held that, where material evidence had been erroneously rejected at the instance of a party who succeeded in the case, the unsuccessful party was entitled to a new trial unless it was shown that the evidence would not have affected the outcome: see at 232, per Dixon CJ; 239, per Menzies J; and 242 - 243, per Windeyer J. Furthermore, the evidence rejected need only be material; it does not need to be conclusive: see 241, per Windeyer J. I interpolate that, for this reason, the submissions made by Mr Franklin SC that the fourth affidavit contradicts the third affidavit, or parts of it were vague, are not apposite because those matters go to the weight of the evidence, rather than its relevance or materiality. 37 In Stead, the High Court held that, where material evidence was erroneously rejected (or in Stead, where counsel was not heard on a critical issue) an appellant need only show that he or she was deprived of the possibility of a successful outcome and that, in order to negate that possibility, a Court would have to find that a properly conducted trial could not possibly have produced a different result: see Stead at 147. 38 It follows that the following questions arise in relation to the rejection of the fourth affidavit and the effect that had on Channel's case at trial under ss 58 and 59 of the Act: · Did the fourth affidavit contain evidence that was material to Channel's case? · Was it erroneously rejected? · Was Channel thereby deprived of the possibility of a successful outcome? 39 The fourth alleged error identified in the summary above, raises a separate and discrete issue and question. It is: Did the primary judge make a proper assessment of the deceptive similarity of the trade marks under s 44 of the Act? 40 Before turning to consider these issues and questions, I should reiterate what I have said above about the nature of my task. It is limited to a consideration of whether the answers to these questions raises sufficient doubt in my mind about the primary judge's decision to justify granting Channel leave to appeal it. In making that determination, I should be careful to avoid converting this into a preliminary hearing of the appeal. I should therefore avoid making any detailed analysis of the issues raised by Channel's notice of appeal, or expressing any concluded views thereon. It follows that nothing I say in these reasons should be taken as expressing any concluded views on those issues. 41 Furthermore, in relation to the first issue (above at [38]), I should also bear in mind that, since the primary judge's decision involved the exercise of a discretion, the sufficient doubt must relate to the judge having: acted upon a wrong principle; or allowed extraneous or irrelevant matters to affect her; or mistaken the facts; or not taken into account some material consideration: see House v The King (1936) 55 CLR 499 at 505.

Two other applications filed 42 Finally, before turning to consider the first issue, I need to briefly deal with two other applications that Channel has filed in addition to this application for leave to appeal under s 195 of the Act. In those applications, Channel has sought: ● an extension of time to file and serve a notice of appeal against the primary judge's interlocutory order of 18 March 2008 refusing Channel leave to rely upon the fourth affidavit; and ● leave to appeal the primary judge's interlocutory order of 18 March 2008. 43 I consider those two applications are misconceived. The interlocutory order of 18 March 2008, by itself, is of little importance. What is of importance is the effect (if any) that order had on the subsequent trial. Channel has already raised this issue in its proposed notice of appeal. If Channel is able to obtain leave under s 195 of the Act and if it is ultimately able to persuade a Full Court that it was denied a fair trial because of the rejection of the fourth affidavit, the final decision will most probably be set aside. Channel will then obtain appropriate relief. It follows that Channel does not need to separately attack the interlocutory order of 18 March 2008 to achieve its ultimate goal.

is there sufficient doubt about the fairness of the trial on the ss 58 and 59 issues given the rejection of the fourth affidavit?

Did the fourth affidavit contain material evidence? 44 The first question that arises for consideration on this issue is whether the fourth affidavit contained evidence that was material to Channel's case. It is appropriate to begin my consideration of this question by examining why it was that Channel's legal advisers thought the fourth affidavit was necessary. 45 As I have noted above, during the pre-trial period, Mr Lawrence was acting for Channel. In accordance with the pre-trial directions made by the primary judge, Mr Lawrence prepared and deposed to three affidavits which he then proceeded to file on behalf of Channel. Not surprisingly, those affidavits demonstrate Mr Lawrence's lack of legal qualifications. For example, he failed to distinguish his personal position from that of the various corporate entities with which he was involved as a director, including Channel. Furthermore, he failed to show any appreciation of the critical issues involved in the case, including the importance of identifying who created the Trade Mark and who owned, and used it, at various times. As a result, those three affidavits presented, what could only be described as, an unclear and confused position on these issues. 46 As I have also noted above, in the days immediately before the trial, Mr Lawrence retained counsel and solicitors to act for Channel at the trial. Indeed, it emerges from the final decision, that this did not occur until less than four days before the trial was due to commence on Monday, 17 March 2008: see [2009] FCA 271 at [19]. 47 Soon after the trial commenced, Channel's counsel sought to file and rely on the fourth affidavit. 48 In his oral submissions in support of the reception of the fourth affidavit, Mr Stephens frankly conceded to the primary judge that when he read Mr Lawrence's three earlier affidavits and Television's outline of submissions on the eve of the trial, he realised that the three affidavits were expressed in layperson's terms and did not properly address the issues in the case. They also did not contain the relevant history of the Trade Mark. Consequently, he told the primary judge the fourth affidavit was prepared in an attempt to explain in legal terms, rather than in Mr Lawrence's layperson's terms, the history of the creation and assignment of the Trade Mark, how Channel came to be the current owner of it, and how Food Channel and Channel had used it. 49 The ownership and the use of the Trade Mark were obviously critical issues in the primary judge's final decision. This can be seen from the summary of the final decision set out above (at [33]) and also from the summary of the principles extracted from the relevant authorities set out in the final decision: see [2009] FCA 271 at [39]. For example, on the issue of the ownership of the Trade Mark, her Honour referred to the observations of Finkelstein J in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25], as follows (excluding references): … In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: … Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: … A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: … At common law that is the person who first used the mark.

50 As well, on the issue of use, or intention to use, her Honour set out ([2009] FCA 271 at [95]) a summary of the relevant principles, including the following (excluding references): · the intention must relate to the applicant or an authorised user or potential assignee of the applicant; · making an application for registration is prima facie evidence of an intention to use; · provided the intention to use is sufficiently definite, it does not matter that the mark will not be used immediately; and · the intention, or lack thereof, to which s 59 is directed is a real and definite intention of the applicant for registration, to use the mark publicly as a trade mark, although not necessarily immediately or within a limited time. 51 The parts of the fourth affidavit that dealt with these issues, included the following: 6. I created the name THE FOOD CHANNEL IN 1997 which I had registered as a business name ,and later created the trade mark which is shown in application 733265. [NB: This is not the Trade Mark, but a related one.] 7. After the registration of the company and prior to the application for the trade mark 733265 ( about early April 1997) I assigned all my trading assets and goodwill including intellectual property to the newly formed company The Food Channel Pty Ltd. Mallesons Stephen Jacques solicitors arranged for the assignment agreement which was duly signed and stamped. I no longer have the originals of these documents as they were lost or destroyed in moving office and residence on a number of occasions over the last 11 years. 8. Trade Mark 733265 was assigned from The Food Channel Pty Ltd to Food Channel Network Pty Ltd on the 15th January 2004 and filed with the Trade Mark Office on the 4th February 2004.Annexed hereto and marked annexure "C" is a true copy of the assignment together with an extract from IP Australia of the registration of the assignment. 9. The Food Channel Pty Ltd made the application for the trade mark as depicted in 967804 on the 28th August 2003. It was always the intention that The Food Channel Pty Ltd would use the trade mark. At a later time it was decided to transfer the ownership of the trade mark to Food Channel Network Pty Ltd but licence back the right to use the trade mark to The Food Channel Pty Ltd. In this way both companies had the right to use the mark but the ownership would be with the company which was intended to exploit a world wide network of operations. 10. Trade Mark 967804 pending was assigned from The Food Channel Pty Ltd to Food Channel Network Pty Ltd on the 15th January 2004 and filed with the Trade Mark Office on the 20th January 2004.Attached hereto and marked annexure "D" is a true copy of that assignment together with an extract from IP Australia of the registration of the assignment. 11. From the time of the assignment of the trade marks to Food Channel Network Pty Ltd, it authorised the use of the trade marks by The Food Channel Pty Ltd. A formal Licence Agreement was drawn up between the parties on or about that time however the original documents have been lost or destroyed although a copy of the document is on my computer. Attached hereto and marked annexure "E" is a true copy of that licence agreement. 52 While it could have been expressed more clearly and directly in relation to the Trade Mark, I consider these parts of the fourth affidavit contain, at the very least, prima facie evidence bearing upon all, or some, of the critical issues arising under ss 58 and 59 of the Act (set out above) as follows: · Mr Lawrence created the Trade Mark and later assigned it to Food Channel; · Food Channel applied to register the Trade Mark; · Food Channel always intended to use the Trade Mark; · Food Channel assigned the Trade Mark to Channel; · Channel then entered into an agreement with Food Channel to authorise Food Channel to use the Trade Mark. 53 Taking into account these matters, I therefore consider the fourth affidavit contained evidence that was material to Channel's case under ss 58 and 59 of the Act.

Was the fourth affidavit erroneously rejected? 54 It is convenient to begin my consideration of this question by examining why Television opposed the reception of the fourth affidavit. In short, Mr Franklin SC opposed it being received because of what he described as: "severe … prejudice". He submitted that, while the issues in the case had been clear throughout, the fourth affidavit sought to: "contradict the earlier evidence and present a new and different case". This meant, so he submitted, that: "We can't test any of this evidence, and we should and would have been entitled to test that evidence". He submitted that the proceeding should not be adjourned to allow Television to investigate the matters raised in the affidavit because the issues under ss 58 and 59 of the Act had always been alive and this evidence should have been raised at a much earlier time. In essence, Mr Franklin SC submitted that the reception of the evidence in the fourth affidavit would take him by surprise. 55 The next step is to consider the reasons the primary judge gave for rejecting the fourth affidavit. First, in the "findings" section of her Honour's reasons for that decision, the primary judge began by stating "In my view the fourth and fifth affidavits are not admissible": see [2008] FCA 378 at [11]. 56 Secondly, the primary judge referred to s 135 of the Evidence Act 1995 (Cth) which she said: "… provides the Court with a general discretion to exclude evidence if its probative value is substantially outweighed by the danger that the evidence might be, inter alia, unfairly prejudicial to a party": see [2008] FCA 378 at [13]. Then, her Honour appears to have made an assessment of the probative value of the fourth affidavit. In the process, she observed that it contained: "vague references (for example, with respect to use of the trademarks in paras 10 and 11 …), possible inaccuracies (for example, in para 16 …), opinion evidence (for example, para 17 …) …": see at [13]. Finally, on this aspect, her Honour stated that she accepted that Television would suffer "unfair prejudice" if Channel were to be allowed to rely on the fourth affidavit: see [2008] FCA 378 at [13]. 57 Thirdly and finally, her Honour noted the obligation a court has to allow a party "the opportunity to raise an arguable case in accordance with the principles in Queensland v JL Holdings Pty Ltd (1997) 189 CLR 146" ("JL Holdings"), and, by comparison, noted that it would be unfair to Television to require it to deal, on the run, with new evidence produced at the last minute: see [2008] FCA 378 at [15]. I would interpolate that, given her Honour's ultimate conclusion, it is to be inferred she considered the unfairness caused to Television outweighed the prejudice caused to Channel. 58 I will deal with each of these conclusions in the order they appear above. First, since the question her Honour had to decide was whether Channel could rely on the fourth affidavit, not, at least at that stage, whether it was admissible, the statement that the affidavits are "not admissible" (see at [55] above) raises a doubt in my mind as to whether her Honour may have committed an error of principle by considering the wrong issue. This doubt is compounded by the reference, in the next paragraph (see at [56] above), to s 135 of the Evidence Act 1995 (Cth). That section deals with the admissibility of evidence, not whether or not a party should be permitted to rely upon evidence that has not been disclosed earlier in the pre-trial case management process. 59 In any event, even if the issue were one of admissibility of the evidence under s 135 of the Evidence Act 1995 (Cth), the primary judge did not specify why the evidence in the fourth affidavit was unfairly prejudicial. The only express mention of the paragraphs in the fourth affidavit (set out above at [51]), was that paragraphs 10 and 11 were affected by vagueness. However, vagueness goes to the weight to be given to the evidence rather than its admissibility. I might add that the similar objections raised by Mr Franklin SC before her Honour about the fourth affidavit contradicting evidence given by Mr Lawrence in his earlier affidavits, is also a matter that goes to the weight of the evidence, rather than its admissibility. Finally, on this aspect, it should be noted that her Honour did not provide any reason why the evidence in paragraphs 6 to 9 inclusive of the fourth affidavit, was unfairly prejudicial. 60 I have similar doubts as to whether her Honour may have made errors of principle in assessing the competing prejudice the parties may suffer, when she gave, what appears to be, her alternative reason for rejecting the fourth affidavit. Without making too detailed an analysis, my reasons for having that doubt are as follows. 61 First, at its highest, Television was alleging that it was prejudiced because it was taken by surprise and therefore could not properly prepare its case. In my view, it is difficult to see how evidence that is, at least prima facie, material evidence, could be outweighed by prejudice in the form of surprise, when there was nothing before the primary judge to suggest that Television's surprise could not have been remedied by an adjournment with costs. 62 While Mr Franklin SC advised the primary judge that Television did not wish to have an adjournment of the trial, he did not provide any reason why an adjournment with costs would not overcome Television's prejudice in all the circumstances. For example, he did not suggest that there was any particular reason why the proceedings had to be determined urgently, or that there had been such significant delays in the proceedings to that time such that it was in the interests of justice they should be promptly brought to an end. 63 Secondly, in this context, the surprise rule is generally directed to a party raising a new claim or defence not, as was the case here, to a party seeking to rely on new evidence going to an existing claim or defence albeit in breach of case management directions. Indeed, Mr Franklin SC emphasised throughout his submissions in opposition to the reception of the fourth affidavit, that the issues in this case remained the same throughout. 64 Finally, I have doubts whether a sufficient (or any) allowance was made to accommodate the fact that, until the last minute before the trial, Channel was, in effect, a self-represented litigant. If Channel had continued as a self-represented litigant, the Court would usually have attempted to diminish the disadvantages it would have suffered as a consequence: see Rajski v Scitec Corporation Pty Ltd (Court of Appeal (NSW), unreported, 16 June 1986); Morton v Vouris (1996) 21 ACSR 497 at 513 to 514, per Sackville J; and Woodward v Loadman (No 1) (2007) 22 NTLR 1 at [76] to [81], per Olsson AJ and Wills v Australian Broadcasting Commission [2009] FCAFC 6 at [45]. While Television cannot be held responsible for Mr Lawrence's decision to wait until the last minute before appointing legal advisers for Channel, I doubt whether sufficient allowance was made for the fact that Channel's newly appointed legal advisers were placed in the predicament they were, essentially as a result of Channel's earlier self-representation via Mr Lawrence. The most obvious allowance in all the circumstances would have been an adjournment, with a costs order against Channel. 65 For these reasons, I have doubts as to whether the primary judge may have made errors of principle in dealing with the competing prejudices in contention.

Was Channel deprived of the possibility of a successful outcome? 66 Finally, in determining this issue, it is necessary to consider the question whether Channel was deprived of the possibility of a successful outcome by the rejection of the fourth affidavit. As the High Court remarked in Stead, an appeal court should approach this conclusion with caution and it would ordinarily require some evidence that a properly conducted trial could not possibly have produced a different result: see Stead at 145 and 147. Of course, both of these observations were directed to the court that hears the appeal. It would necessarily follow that, if the Full Court should be so careful about answering this question in the negative, I should be all the more so, particularly where there is no such evidence before me and I am considering the matter at the leave to appeal stage, where I consider only a small amount of doubt should be sufficient to justify my granting leave.

Conclusion - sufficient doubt about the correctness of the rejection of the fourth affidavit 67 For these reasons, bearing in mind the circumstances of this case outlined above (at [17]), I consider there is sufficient doubt as to whether the primary judge may have made the various errors of principle I have canvassed above in refusing to allow Channel to rely upon the fourth affidavit at the trial and thereby preventing it from obtaining a fair trial on the issues under ss 58 and 59 of the Act. 68 It follows that I consider there is sufficient doubt to justify granting leave to Channel to appeal this aspect of the primary judge's decision to the Full Court.

IS THERE SUFFICIENT DOUBT ABOUT THE CONCLUSION THE TRADE MARKS WERE deceptively similar under s 44? 69 My conclusions about the rejection of the fourth affidavit do not dispose of this application. This is so because, even if there is sufficient doubt about that aspect of the primary judge's decision, if there is no such doubt about the primary judge's decision to reject the appellant's case under s 44 of the Act, Television will succeed in any event on that ground alone and it would, therefore, be futile to grant leave to appeal the decision. 70 It follows that I should proceed to consider whether there is also sufficient doubt about the primary judge's decision about deceptive similarity under s 44 of the Act. In doing so, I bear in mind the matters I have set out above (at [40]) about the scope and nature of my task. Furthermore, since the primary judge's decision under s 44 was an evaluative decision, or one involving matters of impression upon which different minds could differ, I should bear in mind that the sufficient doubt must relate to an error of principle allegedly committed by the primary judge: see Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 ("Registrar of Trademarks") at [58], per French J and [69], per Branson J. 71 The principles that bear upon a judge's task when considering deceptive similarity under s 44 of the Act are well-established. They were summarised by Parker J In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777, as follows: "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods … you must refuse the registration, or rather you must refuse the registration in that case." (citations omitted)

See also Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536 ("Cooper Engineering") at 538; Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592 at 594 to 595; and Registrar of Trademarks at [49] to [50] per French J. 72 Furthermore, in Cooper Engineering, the High Court held that this process involves a two stage test. The first stage is whether the marks really look alike, or sound alike. The second stage is, if they do, whether the resemblance is likely to deceive: see Cooper Engineering at 538 to 539 and Registrar of Trademarks at [84], per Branson J. 73 In this matter, the primary judge considered the evidence before her and found that: ● the words "Channel" and "Network" were interchangeable (at [145]); ● the word "Food" was prominent in the Trade Mark (at [146]); ● the Trade Mark used a television screen, which suggested its use must be considered in a television entertainment context (at [146]); ● the words "Food Channel" were an essential feature of the Trade Mark (at [147]); and ● the words "Food Network" were an essential feature of the respondent's Trade Mark (at [147]). 74 In making these findings, the primary judge also rejected the relevance of the appellant's submissions that the words "Channel" and "Network" did not sound the same and that the Trade Mark and the respondent's trade mark were substantially different in appearance (at [147]). 75 Based on these findings and conclusions, the trial judge concluded (at [148]) that the two trade marks were deceptively similar. Whilst her Honour did not state which particular aspects of her findings (above) she relied upon, I consider it can be inferred that the primary considerations were, in summary, that: ● the words "Channel" and "Network" were interchangeable; ● the Trade Marks had to be considered in a television entertainment context; and ● the words "Food Channel" and "Food Network" were essential features of the Trade Mark and the respondent's trade mark. 76 The primary judge therefore appears to have focused on the words used in the trade marks and, to a limited extent, the circumstances of their use in a television entertainment context. 77 If that is so, the primary judge does not appear to have considered all the surrounding circumstances related to the use of the trade marks, including the circumstances in which the related goods or services would be bought and sold and the character of the probable customers for them. In other words, her Honour does not appear to have moved beyond the first step in the two step process identified in Cooper Engineering. 78 For these reasons, bearing in mind the circumstances of this case outlined above (at [17]), I consider there is sufficient doubt as to whether the primary judge has made an error of principle in her assessment of the deceptive similarity of the trade marks under s 44 to justify granting leave to Channel to appeal this aspect of the primary judge's decision to the Full Court. 79 Before I conclude, I should record that there were numerous other issues debated in the written and oral submissions before me, however, because of the conclusions I have reached above, I do not consider it is necessary to address any of them.

CONCLUSION 80 For these reasons, I consider there is sufficient doubt about each of the issues and questions I have discussed above such that leave to appeal the primary judge's decision to the Full Court is justified, in circumstances where I consider it would cause substantial injustice to Channel if that leave were to be refused. I will therefore order that: · Channel be granted leave to appeal the judgment delivered 27 March 2009. · The application and the notice of motion filed on 11 August 2009 be dismissed. I certify that the preceding eighty (80) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Reeves .

Associate: Dated: 4 December 2009 Counsel for the Applicant: L Stephens

Introduction 1 On 27 March 2009, the primary judge delivered judgment in relation to an appeal by Television Food Network, G.P ("Television") against a decision of a delegate of the Registrar of Trade Marks dismissing Television's opposition to the application by Food Channel Network Pty Ltd ("Channel") to register Trade Mark No 967804 ("the Trade Mark"): [2009] FCA 271. 2 The primary judge found in Television's favour and ordered that the registration of the Trade Mark be refused. Channel was also ordered to pay Television's costs.

WHAT IS THE APPROPRIATE APPROACH IN DETERMINING WHETHER LEAVE SHOULD BE GRANTED under s 195(2) of the act? 5 In their outline of submissions, both counsel, Mr Stephens for Channel and Mr Franklin SC for Television, submitted that on an application for leave of this kind, the applicant must show a "clear prima facie error" on the part of the primary judge. In support of this submission, both counsel referred to the Full Court decision of Woolworths Ltd v BP Plc (2006) 150 FCR 134; [2006] FCAFC 52 ("Woolworths") at [53] - [56]. 6 Then, both counsel appeared to submit differing alternative approaches. Mr Stephens submitted, in the alternative, that leave should be granted if there is an important question of law involved, relying upon the Full Court decision in Kenman Kandy Australia Pty Ltd v Registrar of Trade Mark [2002] FCAFC 273. For his part, Mr Franklin SC submitted that "at the very least" an applicant for leave needed to show that the appeal was reasonably arguable, or that there was sufficient doubt to warrant consideration of the matter by a Full Court. 7 Having considered these submissions and the relevant authorities on the issue, I have concluded that, in the circumstances of this matter, I should not adopt the "prima facie error of law" approach, but instead I should take the approach outlined in the Full Court decision of Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 ("Decor Corp") particularly at 398 - 399. That approach is similar, in part, to the alternative approach outlined by Mr Franklin SC immediately above. My reasons for reaching this conclusion are as follows. 8 I begin by noting that about eight months after Woolworths was delivered, a differently constituted Full Court in Pfizer Corporation v Commissioner of Patents (2006) 155 FCR 578; [2006] FCAFC 190 ("Pfizer") rejected a submission from counsel that the majority in Woolworths had held that the general rule or principle governing leave was that the applicant had to show "clear prima facie error in the reasons of the primary judge": see Pfizer at [7]. Instead, after reviewing various decisions on the point, the Court held that the discretion to grant leave to appeal must not be constrained by rigid rules, or rules of general application, but each application was to be considered on its own special circumstances: see Pfizer at [10]. However, the Court did, then, appear to approve the "clear prima facie error" approach where the applicant for leave had been unsuccessful after two hearings and questions of fact, impression and judgment were involved: see Pfizer at [12]. 9 Then, in The Scotch Whiskey Association v De Witt [2008] FCA 73 ("Scotch Whiskey"), Jessup J observed that the Full Court decisions in Woolworths and Pfizer appeared to have been argued prior to the insertion of r 2AA in O 52 of the Federal Court Rules at [17]. As noted above, r 2AA (which came into operation on 9 August 2005) provides that, with some exceptions that are not relevant for present purposes, an application for leave to appeal under s 25(2)(a) of the Federal Court of Australia Act 1976 (Cth) must be heard and determined by a single judge. Thus both those decisions appeared to involve a situation where the applications for leave to appeal were dealt with by a Full Court, rather than a single judge: see Scotch Whiskey at [17]. 10 Flowing from this observation, Jessup J gave a compelling reason why the appropriate approach on an application for leave to appeal may be otherwise after r 2AA was introduced. He observed that while it may be easy, in an appropriate case, for a Full Court to conclude that a judgment of a single judge of the Court was attended by "clear prima facie error", it would be inappropriate for one single judge of the Court to express the same conclusion about the judgment of another single judge of the Court: see Scotch Whiskey at [16]. 11 Ultimately, in the exercise of his discretion, Jessup J decided not to take the "clear prima facie error" approach, but instead his Honour applied the approach laid down by the Full Court in Decor Corp: see Scotch Whiskey at [19]. That approach involves two steps as follows: (a) whether there is sufficient doubt to warrant reconsideration of the matter by a Full Court; and (b) whether the denial of an opportunity to appeal would involve a substantial injustice supposing the decision of the primary judge to have been wrong. 12 It is clear from these decisions that I have a broad discretion as to which approach I decide to take in this matter. I should say at once that I am uncomfortable, as a single judge of this Court, adopting the "clear prima facie error" approach in deciding whether leave should be given to appeal the decision of another single judge of this Court. Moreover, identifying a clear prima facie error seems to me to invite a more searching consideration of the merits of the appeal than should occur at this stage of the proceedings: compare with the "rough and ready" approach suggested by Brennan CJ and McHugh J in Jackamarra v Krakouer (1998) 195 CLR 516 at [9], albeit directed to an extension of time to appeal. 13 Instead, the Decor Corp approach adopted by Jessup J has the advantage that it does not require me to identify clear error on the part of the primary judge, but rather to assess whether there is the necessary combination of sufficient doubt about the decision and the existence of substantial injustice (if leave were not granted), to justify the matter being considered by a Full Court. 14 Furthermore, the Decor Corp approach requires that the sufficiency of the doubt and the extent of the potential injustice involved be balanced against each other and not be "isolated in separate compartments" so that "the degree of doubt which is sufficient in one case may be different from that required in another": see Decor Corp at 399. Thus a more stringent approach is taken to a decision involving a point of practice, than one determining a substantive right, such that in the latter case, leave is more readily granted: see Decor Corp at 400. 15 Jessup J made some similar observations in relation to applications for leave to appeal under s 195 of the Act in the Scotch Whiskey case. There, his Honour noted a submission of counsel that contrasted the situation where the applicant for leave had had two previous unsuccessful hearings in relation to the trade mark, with that where an applicant had had one prior success and one prior failure. While his Honour did not specifically adopt counsel's submission, Jessup J provided two reasons why clear prima facie error (ie significant doubt) may be appropriate in the former situation , observing that: "The basis for this approach, it seems, is twofold: first, the opponent has had two full hearings on the merits, and has achieved the same result each time; and secondly, a disappointed opponent may in any event apply for cancellation of the registration of the mark under s 88 of the Act": see Scotch Whiskey at [13]. 16 By contrast, in relation to the latter situation, Jessup J appeared to agree with counsel's submission that leave should only be refused if: "… the court is satisfied that it is clear beyond doubt that there is no error on the part of the trial Judge", observing that: "No doubt the basis for that proposition is that, once having been rejected in the Court, the owner's application for registration would be permanently at an end": see Scotch Whiskey at [13]. 17 I respectfully agree with those observations and I consider they are directly referable to this case, which involves the latter situation. If leave is not granted to Channel, that will mean its application for registration of the Trade Mark will be at an end, or, in other words, its substantive rights will have been finally determined. On this point, I reject the submission made by Mr Franklin SC that Channel could simply file a new application. While this may be correct in theory, because of the findings made by the primary judge, I consider that a new application in substantially the same form would face very significant, if not insurmountable, difficulties. 18 It follows from all this that I consider a small amount of doubt about the trial judge's decision should suffice in this case given the substantial injustice that Channel will suffer if leave were refused and its substantive rights were thereby finally determined on the basis of the primary judge's decision.

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