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

DECISION OF THE DELEGATE 15 On 29 November 2006 the delegate dismissed the opposition to registration of trade mark 967804. In summary the delegate's reasons were as follows: · the delegate was not satisfied that it was appropriate to draw an inference that the respondent did not intend to use its trade mark. Accordingly, the delegate could not be satisfied that the applicant had substantiated its ground of opposition under s 59 of the Act; · there was insufficient evidence that the words "channel" and "network" were interchangeable in the minds of the viewing public. Accordingly, the delegate could not be satisfied that the applicant had substantiated its ground of opposition under s 43 of the Act; · although some of the applicant's services were closely related to those of the respondent, the delegate found the marks were not deceptively similar. Outside the realm of television broadcasting and television entertainment any perceived connection between "network" and "channel" is much reduced. Accordingly the delegate could not be satisfied that the applicant had substantiated its ground of opposition under s 44 of the Act.

PROCEEDINGS IN THIS COURT 16 It is well-established that applications of this kind, which involve an exercise of the original jurisdiction of the Court and are subject to the powers of the Court under s 197 of the Act, are conducted as re-hearings and are not strictly "appeals": Blount v Registrar of Trade Marks (1998) 83 FCR 50; Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525. 17 The grounds of the application before me are as follows: 1. The Trade Mark Application should not proceed to registration and should be rejected on the grounds that: a. pursuant to Section 58 the Respondent is not the owner of the mark the subject of the Trade Mark Application ("the opposed mark"); b. pursuant to Section 59, the Respondent does not intend to use or authorise the use of the opposed mark within Australia or to assign the opposed mark to a Body Corporate within Australia; c. pursuant to Section 43, the opposed mark is deceptively similar to the Applicant's trade marks which are the subject of the Application Nos. 881666, 881667 and 938228 ("the Applicant's trade marks") registered in respect of similar goods and services; d. pursuant to Section 44 the opposed mark is substantially identical with or deceptively similar to the Applicant's trade marks all of which have a priority date which is earlier than the priority date of the Trade Mark Application; e. pursuant to Section 42 the use of the opposed mark would be contrary to law in that it will amount to a contravention of the Trade Practices Act 1974 and also amount to passing off; and f. pursuant to Section 60 and because of the reputation acquired by the Applicant's trade marks in Australia before the Priority Date of the Opposed Mark the use of Opposed Mark would be likely to deceive or cause confusion. 2. The Delegate erred in finding that the Respondent intended to use the opposed mark in relation to the goods nominated in the Trade Mark Application. 3. The Delegate erred in finding that the use of the opposed mark would not be likely to deceive or cause confusion. 4. The Delegate erred in finding that the use of the opposed mark was not substantially identical with or deceptively similar to the Applicant's Trade Marks. 5. The Delegate erred in not finding that the Respondent was not the owner of the mark the subject of the Trade Mark Application. 6. The Delegate should have found that, because of the reputation of the Applicant's marks, the use of the opposed mark would be likely to deceive or cause confusion. 7. The Delegate should have found that: a. use of the opposed mark would be contrary to law; and/or b. the opposed mark is not capable of distinguishing the Respondent's goods. 18 Although s 43 was pleaded in the Notice of Appeal the applicant did not press its claim pursuant to that section, nor argue that trade mark 967804 was substantially identical to its own trade marks for the purposes of s 44(1). The applicant confined its case to reliance on ss 58, 59, 44(1) (deceptive similarity), 60 and 42 of the Act. During the course of the proceedings however the applicant's case before me in relation to s 58 and s 59 extended to the role of The Food Channel Pty Ltd in the application for registration. Indeed, the role of The Food Channel Pty Ltd became a key pillar of the applicant's case in this matter. No issue was taken by the respondent concerning this approach and related submissions of the applicant. 19 Both the applicant and the respondent were represented by Counsel in this case. However it was clear on 13 March 2008, four days before the commencement of the trial, that Mr Lawrence had not at that point retained legal representatives to appear at the trial on behalf of the respondent as required by Federal Court Rules O 9 r 1(3) (TS 13 March 2008 4 ll 15-29). Although the respondent later engaged both solicitors and Counsel, in my view the late retention of legal representatives is reflected in the quality of the respondent's submissions in what is clearly complex litigation. 20 During the course of the proceedings it became clear that there was considerable confusion as to the respective roles of Mr Lawrence, the respondent, and The Food Channel Pty Ltd in relation to application for registration and use of trade mark 967804. This confusion is to some extent reflected in the submissions of the parties, in particular those of the respondent. In my view in order to resolve the application before me the following key issues require determination: 1. Whether The Food Channel Pty Ltd (which was the original trade mark applicant) was the owner of trade mark 967804 at the filing date (s 58 of the Act), and if it was not, whether that defect was fatal to the application. 2. Whether the requisite intention in either The Food Channel Pty Ltd or the respondent existed for the purposes of s 59 of the Act. 3. Whether trade mark 967804 is deceptively similar to the applicant's trade marks and therefore in breach of s 44(1) of the Act. 4. Whether, in light of the reputation of the applicant's trade marks in Australia, the use of trade mark 967804 would be likely to deceive or cause confusion (s 60 of the Act). 5. Whether the use of trade mark 967804 would be contrary to law (s 42 of the Act). 21 I now turn to each of these issues.

1. SECTION 58 22 In these proceedings the applicant has contended, in summary, that either: · the respondent was the owner of trade mark 967804 as at the filing date, and that the company which had applied for the trade mark was not the owner; or · the position with respect to ownership of trade mark 967804 at the filing date was so confused that it is not possible to make any positive findings as to ownership. 23 Accordingly, the applicant submits that not only is it entitled to oppose registration of trade mark 967804 pursuant to s 58 but that the defect in the trade mark application was fatal. The applicant contends further that the subsequent assignment of the trade mark application to the respondent (even if the respondent was at all times the owner of the trade mark, which is not conceded) does not "cure" the original fatal defect in the application for registration of the trade mark. 24 The respondent has contended in summary that no proper evidence was lead to prove that there was any previous owner of trade mark 967804 other than the respondent. 25 Section 58 of the Act provides: 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. Note: For applicant see section 6. 26 "Applicant" is defined by s 6 of the Act to mean, in relation to an application, the person in whose name the application is for the time being proceeding. 27 For the purposes of these proceedings s 58 should be read with ss 27(1)(a) and 72(1) of the Act. Section 27(1)(a) provides: (1) A person may apply for the registration of a trade mark in respect of goods and/or services if: (a) the person claims to be the owner of the trade mark… (b) … … 28 Section 72 provides: (1) Subject to subsection (2), the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration. Note: For filing date see section 6. … 29 So far as relevant in this case "filing date" is defined by s 6 to mean: (a) in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition--the day on which the application is filed… 30 It is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12), because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266. 31 As has been observed elsewhere, s 58 is conventionally used as a ground of opposition where disputing parties have had a business or contractual relationship, and are in dispute as to which of those parties is the true owner of the mark (Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) p 380, cf Elkington B, Hall M, Kell D, Trade Mark Law in Australia (Butterworths, 2000) p 77). However s 58 does not confine opposition to registration of a trade mark to a party itself claiming ownership of that trade mark. Examples of cases in which claims - albeit unsuccessful - were made by a third party against the registered owner of a trade mark pursuant to s 58 are Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 and Mobileworld Communications Pty Ltd v Q & Q Global Enterprise (2003) 61 IPR 98. Indeed in this case the respondent has not disputed the standing of the applicant to oppose registration of trade mark 967804 on the ground of s 58. I shall return to these cases later in this judgment.

Onus 32 The applicant has submitted that, in circumstances where, pursuant to s 58 of the Act, the opposer of registration of a trade mark makes a prima facie case that the applicant for registration was not the owner, the evidentiary onus shifts to the respondent to establish ownership of the trade mark at the relevant time. 33 As a general proposition, it may be inferred that, by the act of filing an application for registration of a trade mark, the applicant claims "ownership" of the trade mark for the purposes of s 58. As Dixon J observed in The Shell Company of Australia Ltd (1949) 78 CLR 601 at 627-628: But, however that may be, it is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. 34 The principle that the evidentiary onus in relation to ownership shifts in the circumstances submitted by the applicant has previously been promulgated in the context of opposition to a trade mark on the basis of s 59 (Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 at [163]) but not, so far as I am aware, s 58. 35 In reply, the respondent has submitted that the principle should not be applied in respect of s 58 on the basis that: · the party opposing the registration bears the onus of proof: Pfizer Products Inc v Karam [2006] 237 ALR 787; and · where there is conflict between the Pfizer [2006] 237 ALR 787 and Health World (2008) 75 IPR 478, Pfizer [2006] 237 ALR 787 is to be preferred. 36 The applicant has submitted that there is nothing contradictory or incompatible between the two decisions. I agree. So far as relevant in the context of this case, Gyles J observed in Pfizer [2006] 237 ALR 787 that: · authorities including Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 support the principle that the Court as well as the Registrar should approach the question of registration with the presumption of registrability in mind, unlike under predecessor legislation whereby the onus was on the applicant to establish registrability (cf Pfizer [2006] 237 ALR 787 at [7], [17]); · it is well entrenched from the authorities that the presumption of registrability is also to be applied in the setting of opposition to registration (at [8]); · in opposition proceedings there is no special onus of proof higher than the standard of proof in normal civil proceedings (at [9], and in considering the operation of s 55 of the Act there is no basis for reading into s 55 the obligation of the opposer to "clearly establish" grounds on which the application is opposed as distinct from the usual civil standard (at [21], [22], [26]). 37 The principles articulated in Pfizer [2006] 237 ALR 787 are not in issue in these proceedings. Contrary to the submission of the respondent, I find that there is no inconsistency between these principles and the concept of shift of the evidentiary onus of proof referred to by Jacobson J in Health World (2008) 75 IPR 478. I note in passing that an appeal against the decision of Jacobson J in Health World (2008) 75 IPR 478 was recently dismissed by the Full Court (Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14), although the Full Court did not consider the evidentiary issue raised by the respondent in this case. I accept the submission of the applicant that, once the opposer to registration makes a prima facie case, the evidentiary onus as to ownership shifts to the applicant for registration. 38 Thus, the applicant is required to make a prima facie case with respect to s 58, and if the applicant makes such a case the evidentiary onus with respect to ownership shifts to the respondent.

"Ownership" of a trade mark under the Act 39 It is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user (Colorado Group Limited v Strandbags Group Pty Ltd (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: 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: In Re Hudson's Trade Marks (1886) 32 ChD 311, 319; Seven-Up Co v O T Ltd [1947] HCA 56; (1947) 75 CLR 203; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27; (1949) 78 CLR 601, 626. 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: Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; (1951) 82 CLR 199 at 202. 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: Shell Co of Australia, at 625, 627. At common law that is the person who first used the mark. 40 It is also clear from the cases that ownership of a trade mark can vest in another without formal assignment, for example in a corporate alter ego of the creator of the trade mark. Examples of the application of this principle are Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 and Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318. I shall consider these cases later in this judgment. 41 Finally in relation to this point, ownership and application for registration of a trade mark are clearly linked by the Act in s 27 and s 58.

Has the applicant made a prima facie case that the applicant for registration of trade mark 967804 was not the owner for the purposes of section 58? 42 The applicant has strongly contended in these proceedings that: (a) there is evidence indicating that the respondent - and not the trade mark applicant The Food Channel Pty Ltd - was the owner of the trade mark as at the filing date; (b) however having regard to the affidavit evidence and the documents put up in support the position is so confused that it is impossible to make a finding on the question of ownership. 43 As to the applicant's claim that the respondent was possibly the owner of trade mark 967804 at the filing date, and that The Food Channel Pty Ltd which actually applied for registration of the trade mark was not, the applicant referred to: 1. The affidavit of Mr Lawrence sworn 31 October 2007 wherein Mr Lawrence deposed that the respondent created the trade mark and that it was using and intended to continue using the mark. In particular the applicant referred to: i paragraph 1 which provides: "I am the Founder and Managing Director of Food Channel Network Pty Ltd (The Food Channel) and am authorized to make this affidavit. The respondent company is based in Queensland Australia." ii paragraph 5 which provides: "In 1996, and with the advent of pay television being developed in Australia, The Food Channel trademark was created and a logo device attached to its name. In 1997 after filing the required documentation with our then solicitors MALLESON STEPHEN JACQUES which was then AIPO - (Australian Industrial Property Organisation) and after their search of the database that was conducted, it was concluded that there was no applications that had been filed or applications that were pending for the trademark - The Food Channel. The Food Channel trademark proceeded to registration without any opposition. The Food Channel is a REGISTERED AUSTRALIAN TRADEMARK - NUMBER 733265 - The Food Channel trademark has been registered in Australia since 1997 and is registered until 2017 when it again comes up for renewal. Annexed hereto and marked annexure H." iii paragraph 6 which provides: "In 1998, The Food Channel created additional "The Food Channel" and "Food Channel" trademarks with logos and or a variety of fonts with "Food Channel" and "The Food Channel" as the feature and began using them. There is no set formula in The Food Channel using the array of its trademarks. The Food Channel randomly uses the array of its trademarks throughout the course of its business and the services it provides. Annexed hereto and marked annexure C." (I note that Annexure C to Mr Lawrence's affidavit is trade mark 967804) iv paragraph 9 which provides: "The Food Channel is a company for the creation, development marketing, promotions implemented and distributed through multi media forms including but not limited to print, video production and distribution of programs using television, internet and websites of food and its associated industries in the entire food supply chain. The Food Channel creates recipes, writes articles, identifies news information, the creation of gardens of food from seedling to harvesting while reporting the progress in written form while also showing the progress and culmination of the harvest through visual moving images, produces cooking and food demonstrations, produces food videos, distributes beef, lamb, veal and other food products domestically and in international markets. The Food Channel was founded in 1997 and has been using its array of trademarks, is currently using all its trademarks and will continue to use all its trademark for the foreseeable future. Annexed hereto and marked annexures A, B, D, E, F, G, H, J, K, L, M, N, O, P, Q, R, S, T, U, V, W, X, Y." 2. The fact that there is no evidence of an assignment of the trade mark from the Respondent to The Food Channel Pty Ltd as the applicant for the trade mark. 3. The fact that The Food Channel Pty Ltd subsequently assigned the trade mark to the respondent - this is consistent with the respondent having been the owner of the trade mark all along. 44 The essence of the applicant's submissions in relation to this affidavit of Mr Lawrence is that in the affidavit, Mr Lawrence claims authority to make the affidavit as and on behalf of the respondent, and in the body of the affidavit defines "The Food Channel" as the respondent. Accordingly, Mr Lawrence's evidence (particularly in para 6 of his affidavit) is that the respondent created trade marks using the words "the food channel" including trade mark 967804 which is annexed to the affidavit. Indeed, the only trade mark in Annexure C to Mr Lawrence's affidavit (and which is identified in para 6 of Mr Lawrence's affidavit) is trade mark 967804. 45 However, the applicant also contends that there is considerable confusion in relation to ownership of trade mark 967804 at the filing date, so that it may be impossible to make a positive finding in favour of either The Food Channel Pty Ltd or the respondent as to ownership. The applicant submitted that the following evidence supported this submission: 1. Evidence that trade mark 967804 was apparently used by both the respondent and The Food Channel Pty Ltd in relation to menus (which are within the specification of trade mark 967804). 2. Evidence that the menus exhibited by the respondent which purportedly bear trade mark 967804 have a copyright notice in the name of "The Food Channel", and that at least two menus actually refer to The Food Channel Pty Ltd (Annexures X and Y to the affidavit of Paul Lawrence sworn 31 October 2007). 3. Evidence that a television licence agreement upon which the respondent relied as evidence of its use of trade mark 967804 was a licence agreement entered into by The Food Channel Pty Ltd (Annexure D to the affidavit of Paul Lawrence sworn 31 October 2007). 4. Evidence that recipes purporting to bear trade mark 967804 are in the name of "The Food Channel" and display The Food Channel Pty Ltd and its ABN 16 077 987 118 (Annexure F to the affidavit of Paul Lawrence sworn 31 October 2007). 5. Evidence that recipes purporting to bear trade mark 967804 have a copyright notice in the name of "The Food Channel" (Annexure J to the affidavit of Paul Lawrence sworn 31 October 2007). 6. Evidence that the respondent relied on various letterheads as evidence of use of trade mark 967804, but that all of the letterheads were of The Food Channel Pty Ltd (ACN 077 987 118 and ABN 16 077 987 118) (Annexure L to the affidavit of Paul Lawrence sworn 31 October 2007). 46 In light of these submissions, I consider that the applicant has made a prima facie case that the applicant for registration was not the owner of trade mark 967804 as at the filing date. Indeed, I consider that it is also open on the facts for me to find that it is not possible to identify which of The Food Channel Pty Ltd or the respondent were the owner of trade mark 967804 at the relevant time. Accordingly, the evidentiary onus as to ownership shifts to the respondent.

The respondent's case - evidence 47 The respondent contended that there was no proper evidence before the court that there was any owner prior to the respondent of the opposed trade mark. Further, the respondent submits that the only evidence before the Court that the trade mark applicant was The Food Channel Pty Ltd was exhibit 5A and exhibit 6A, which should not have been allowed into evidence, and the fourth affidavit of Mr Lawrence sworn 16 March 2008 which was excluded as evidence by my judgment of 18 March 2008 (Television Food Network, GP v Food Channel Network Pty Ltd [2008] FCA 378). 48 In my view any suggestion by the respondent that The Food Channel Pty Ltd was not the applicant for trade mark 967804 is entirely without merit. 49 First, in his opening statement Counsel for the respondent submitted: The simple proposition is that Mr Lawrence, the only human being in the process, created it. It can be inferred he assigned it to Channel who assigned it to Network which licensed it to Channel and, in those circumstances, both Channel and Network are entitled to, and do, use the trademark. (TS 113 ll 12-15) 50 This is a clear concession by the respondent that The Food Channel Pty Ltd assigned the application for registration of trade mark 967804 to the respondent. 51 Second, counsel for the respondent during the course of the hearing accepted that this fact was common ground. I note the following submission: Now, paragraph 10 of the fourth affidavit says that a particular trademark which was pending was assigned from the Food Channel Pty Ltd to Food Channel Network Pty Ltd. That is obtainable again on a free search of the IP network and it is a matter which is not in contest so far as these proceedings are concerned. It is something that is freely discoverable by search with IP Australia and is not something which my friend could genuinely say he's taken by surprise about or that he is, in some way, prejudiced by not knowing about the fact of the assignment. (emphasis added) (TS 90 ll 33-39) 52 Third, in written submissions filed 4 April 2008 the respondent contends as follows: On the 28th August 2003 The Food Channel Pty Ltd lodged an application for the Trade Mark 967804 being: For the words FOOD CHANNEL For the Image: Lodgement Date: 28th August 2003 Date of Acceptance: 12th January 2004 Status: Opposed CLASS 16: GOODS Printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs (at pp 13-14) Under Section 27(1)(a) at the time of the application on the 28th August 2003 the owner was The Food Channel Pty Ltd. There is no evidence to show that the owner of the mark was anyone else but that company. The applicant can apply for a trade mark even if he does not intent (sic) to use it provided he has authorised or intends to authorise another person to use it, or if he intends to assign it to another On (sic) the 15th January 2004 the trade mark application pursuant to Section 106 was formally assigned to Food Channel Network Pty Ltd the Respondent in these proceedings. (at p 17) 53 In my view this is a clear concession by the respondent that The Food Channel Pty Ltd was the applicant for trade mark 967804, which was subsequently assigned to the respondent. 54 Indeed, that The Food Channel Pty Ltd was the applicant for the trade mark was not in contention during the proceedings. 55 In relation to exhibit 5A and exhibit 6A, the respondent submits that to the extent that these exhibits support the applicant's claim that the original owner of the trade mark was The Food Channel Pty Ltd, and that the trade mark was subsequently assigned to the respondent, the evidence should be disallowed because, in summary: · exhibit 6A purports to be a summary of exhibit 5A, which is not the case; · exhibit 5A purports to be a copy of Annexure H to the affidavit of Mr Lawrence sworn 31 October 2007. However exhibit 5A contains 12 pages of IP Australia searches whereas in fact Annexure H to Mr Lawrence's affidavit shows only two pages of IP searches, and contained brief information about seven trade marks not the 11 trade marks shown in exhibit 5A; · exhibit 5A does not identify the original applicant of the trade mark. 56 The respondent has also submitted that only the fourth affidavit of Mr Lawrence sworn 16 March 2008, which was ruled inadmissible, contained evidence as to the original applicant for trade mark 967804. 57 In my view these submissions are of little assistance in relation to either the identity of the applicant for trade mark 967804 or ownership of trade mark 967804 at the relevant date. I form this view because: · as I have already observed, the respondent has consistently conceded that the applicant for the trade mark was The Food Channel Pty Ltd; and · to the extent that the respondent has made submissions inviting the Court to reopen the question whether Mr Lawrence's fourth affidavit sworn 16 March 2008 should have been admitted to evidence on 18 March 2008, no satisfactory grounds have been advanced to justify reconsideration in the context of this issue. I agree with the applicant that the ruling was made and that was the end of the matter. 58 I note the written submission by the respondent that exhibit 5A does not correspond exactly with Annexure H to Mr Lawrence's affidavit sworn 31 October 2007, contrary to the submission of counsel for the applicant during the hearing (cf TS 119 ll 36-45, 120 ll 1-2, 124 ll 42-44), and that therefore exhibit 5A, and exhibit 6A which purports to be a summary of exhibit 5A, should be excluded. However difficulties faced by the respondent in relation to this submission are: · exhibit 5A and exhibit 6A were tendered through the witness Mr Geddes and the respondent made no objection at the hearing to the tender of these exhibits. The only objection made by the respondent during the proceedings was to exhibit 6A on the grounds of relevance because, inter alia, the exhibit put irrelevant material to the witness which did not bear on his opinion or on issues in the proceedings (TS 123 ll 35-46). Of course this does not prevent the Court considering the weight to be attributed to this evidence; · the applicant does not rely on either exhibit 5A or exhibit 6A in support of its s 58 claim; · in comparing Annexure H to Mr Lawrence's affidavit with exhibit 5A both documents appear on their face to be printouts of IP Australia records referring to trade marks. Annexure H to Mr Lawrence's affidavit is described in the affidavit as "Being a copy of Registered and Pending Trademarks in Australia for The Food Channel and Food Channel". Annexure H itself is headed "Search Results" with further information "Your search request retrieved seven matches. Criteria Used: Words: food (Part word) AND channel (Part word); Status: Pending and Registered". The information in exhibit 5A appears to be more detailed IP Australia as to eleven trade marks, ten apparently owned by the respondent - including the trade mark the subject of these proceedings - and one by another company. I note that there was extensive cross-examination of Mr Lawrence by the applicant's Counsel in relation to the material in exhibit 5A and no issue as to relevance was raised by the respondent at the time. Indeed, during the course of cross-examination the witness identified all trade marks in exhibit 5A (TS 147 ll 35-47, 148, 149 ll 1-47, 150 ll 1-9). Even putting aside for the moment issues of differences between exhibit 5A and Annexure H, the information in exhibit 5A referable to the trade mark in these proceedings is not material to the question whether the applicant is entitled to oppose registration of trade mark 967804 pursuant to s 58. There is simply nothing in exhibit 5A which impacts upon this issue; · there is reference in exhibit 6A to The Food Channel Pty Ltd being the applicant for registration of the trade mark. However I also note that during cross-examination Mr Lawrence agreed that exhibit 6A accurately recorded or depicted the trade marks listed in exhibit 5A (TS 149 ll 45-47), which included the trade mark the subject of these proceedings. The use of charts as summaries of evidence is well-known in Australian courts (Smith v R (1970) 44 ALJR 467 at 469). In any event, however, the applicant does not rely on exhibit 6A in relation to the issue of ownership of the trade mark as at the priority date. 59 I do not accept the respondent's submissions in relation to exhibit 5A, exhibit 6A or the affidavit of Mr Lawrence sworn 16 March 2008.

The respondent's case - was The Food Channel Pty Ltd the owner of trade mark 967804 through use? 60 The applicant has made extensive submissions in relation to whether The Food Channel Pty Ltd in fact made "use" of the relevant trade mark in the sense contemplated by the Act, so as to establish ownership of the trade mark at the filing date. 61 In particular, the applicant refers to the following documents annexed to Mr Lawrence's affidavit sworn 31 October 2007: · undated recipes purporting to bear the trade mark in the name of The Food Channel Pty Ltd (Annexures F, J, X and Y); · recipes bearing the words "© - The Food Channel - Sept 2006" purporting to bear the trade mark (Annexure O); · a document with trade mark 967804 and the words "© - The Food Channel 2005" bearing various descriptions of meat dishes, which appears on its face to be a document handed out by butchers and meat retailers to promote the sale of meat (Annexure K); · a television licence agreement in the name of The Food Channel Pty Ltd (Annexure D); · letterheads purporting to bear the trade mark, all of which are letterheads of The Food Channel Pty Ltd (Annexure L); · menus bearing the trade mark and the words "Copyright 1999 - The Food Channel", but no reference to either the trade mark applicant or the respondent (Annexure B). 62 Further, during cross-examination by Mr Franklin SC, Mr Lawrence gave evidence to the effect that the opposed trade mark had been used on recipes, menus, and other promotional documents to be provided to supermarkets and butchers (TS 174 ll 35-41, 189 ll 11-17, 190 ll 26-27, 190 ll 31-33, 192 ll 31-37, 196 ll 10-16). 63 It is not in contention that s 27 of the Act requires that there be, inter alia, use of the trade mark "in relation to the goods and/or services." As Mansfield J observed in Philmac Pty Ltd (2002) 126 FCR 525 at 539-540 it is necessary that the trade mark applicant was using or intended to use the trade mark as a trade mark. Whether a trade mark is used as a trade mark is judged objectively (Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 at 248-249). Thus, for example, there is authority that preliminary discussions and negotiations about whether the mark should be used (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414), forwarding of samples or brochures in order ascertain whether there is a market for the relevant goods or services (cf Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 417-418), and distribution of a product free of charge (cf re Ferodo Ltd's Application (1945) 62 RPC 111) do not constitute "use" of a trade mark as contemplated by the legislation. 64 The respondent submitted that giving away recipes could constitute use of a trade mark in trade or commerce and relied on findings of Drummond J in Oakley, Inc v Franchise China Pty Ltd ACN 080 032 604 (2003) 58 IPR 452, in particular at [30] where his Honour said: That marked goods are supplied free of charge does not necessarily mean that the mark is not being used in the course of trade. That is shown by the free sample cases, such as Settef. The Irish Supreme Court, in Golden Pages Trade Mark [1985] FSR 27, held that marked classified telephone directories distributed by the Post Office free of charge to telephone subscribers involved use of the mark by the directory publisher "in the course of trade": the publisher engaged in this activity to earn income from the sale to traders of advertising in the directory… Golden Pages was referred to with approval by Whitford J in "Visa" Trade Mark (1985) 102 RPC 323. I consider it correctly states the law. 65 While it is not in contention that use of a trade mark on free trade samples may be trade mark use in relation to those goods, the applicant submits that the evidence does not disclose use of the trade mark in relation to goods and services within class 16 and that the respondent's reliance upon Oakley (2003) 58 IPR 452 in this context is misplaced. I agree. "Use" of trade mark 967804 by the original trade mark applicant, The Food Channel Pty Ltd, in the sense that the trade mark has been applied to written documents such as menus or recipes used in relation to catering services (which would be registrable in class 43) or free gifts in the promotion of, for example, meat (which are goods registrable in class 29), is not use in the sense of trade or dealing in relation to these documents. None of these uses appear to be with respect to "printed publications" within class 16 in relation to which application for registration of the trade mark was made. I do not consider that the respondent has demonstrated use by The Food Channel Pty Ltd, which was the trade mark applicant of trade mark 967804, as a trade mark so as to establish ownership through use.

The respondent's case - relationship of Mr Lawrence, the respondent and The Food Channel Pty Ltd 66 In addition to the contention that, on the face of the application, the respondent is the owner of the trade mark and there is no evidence that anyone other than the respondent was ever the owner of the trade mark, the respondent also submits, in summary: 66 1. At the time of the application on 28 August 2003 the owner of the trade mark was The Food Channel Pty Ltd. The applicant can apply for a trade mark even if it does not intend to use it provided it has authorised or intends to authorise another person to use it, or if it intends to assign it to another. On 15 January 2004 the application for the trade mark was formally assigned by The Food Channel Pty Ltd to the respondent (cf respondent's written submissions p 17). 2. Mr Lawrence as the sole shareholder and managing director of The Food Channel Pty Ltd and the respondent and author of the trade mark properly authorised his companies - first The Food Channel Pty Ltd and then upon assignment the respondent - to use the trade mark with a licence back to The Food Channel Pty Ltd from the respondent after the assignment with the intention to use the mark on the goods being printed matter in this case printed recipes (cf respondent's written submissions p 19). 3. "It may be fair to say Mr Lawrence sees the business as his own and sometimes confuses the distinction between himself and his companies, as might be seen from the nature of his affidavits where he defines the Respondent as the 'Food Channel' and (sic) then talks generally about the business of Food Channel meaning his business generally being himself and both of his companies. This is understandable as he is not a lawyer and it appears on the face of the affidavit that he did not have legal representation or advice at the time of drawing and filing of his main affidavit. As the sole shareholder and director of both companies he looks upon them both as his business. He did however obtain legal advice at the time of the assignment and formally transferred the trade mark application from The Food Channel Pty Ltd to Food Network Pty Ltd and formally lodged the assignment with the Trade Marks Office where the assignment was formally recorded, with Food Channel network as the new owner" (respondent's written submissions pp 19-20). 4. In order to establish its opposition under s 58 an opponent must show that: a. the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 31 IPR 375); and b. the respective goods or services of the parties be the "same kind of thing" (Re Hicks' Trade Mark (1897) 22 VLR 636; and c. a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant (Settef SpA (1987) 10 IPR 402 at 413 and Re Hicks' Trade Mark (1897) 22 VLR 636); d. the respondent contends that the applicant cannot show any of these elements and therefore must fail under s 58. 67 I agree with the applicant that the principles cited by the respondent in the fourth submission of the applicant are irrelevant in the context of the applicant's claim. The applicant is not itself claiming ownership of trade mark 967804. The applicant is claiming that the applicant for trade mark 967804 was not the owner of the trade mark at the relevant time, being the filing date. 68 Returning to the first three submissions on this point, I note that they are inconsistent with the respondent's contention that there is no evidence that anyone other than the respondent was the owner of the trade mark at the filing date, and in my view adds to the confusion as to ownership of the trade mark at that date. They do, however, highlight two issues which in my view warrant attention. They are: 1. Assuming that The Food Channel Pty Ltd was the owner of trade mark 967804 at the filing date - whether, at that date, there was evidence of authorisation or intention to authorise the respondent to use trade mark 967804 by The Food Channel Pty Ltd within the meaning of s 27(1)(b)(ii) of the Act; and 2. Because on the evidence and in light of the history of the proceedings it is clear that Mr Lawrence controlled both the respondent and The Food Channel Pty Ltd, assuming that the respondent was the owner of the trade mark at the relevant time (and not The Food Channel Pty Ltd) - whether that was a defect in the application to register which was fatal to the application.

Authorisation to use 69 The respondent submitted that if exhibit 6A and/or the fourth affidavit of Mr Lawrence were allowed into evidence then s 27(1) of the Act became relevant. Section 27(1) provides: (1) A person may apply for the registration of a trade mark in respect of goods and/or services if: a. The person claims to be the owner of the trade mark; and b. One of the following applies: i. The person is using or intends to use the trade mark in relation to the goods and/or services; ii. The person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services; The person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services. 70 As I have already observed in this judgment, no grounds have been advanced to warrant a reconsideration by me of the exclusion of Mr Lawrence's fourth affidavit. Further in my view it does not automatically follow that because exhibit 6A is in evidence, s 27(1) becomes relevant. In the interests of completeness however I will nonetheless consider the issues relevant to s 27(1) raised by the respondent. 71 The basis upon which the respondent seeks to discharge the evidentiary onus as to ownership pursuant to s 58 in reliance on s 27(1)(b)(ii) is, with respect, unclear from its submissions. To the extent that I can understand the case being put by the respondent from the written submissions I set out earlier in my judgment, it is that although the respondent was not the applicant of the trade mark at the time of the application to register, nonetheless s 27(1)(b)(ii) of the Act applies in these circumstances because: · the trade mark applicant, The Food Channel Pty Ltd, applied for the registration of the trade mark even though it did not intend to use it; · in fact The Food Channel Pty Ltd intended to authorise the respondent to use it. 72 It is a necessary element of this scenario that the relevant intentions were formed in the mind of Mr Lawrence as sole director and shareholder of both companies. 73 To the extent that the respondent's submissions refer to any intention existing of The Food Channel Pty Ltd at the filing date to later assign the trade mark to the respondent, this does not invoke s 27(1)(b)(iii) because the respondent was already an incorporated company at the filing date.

Explicit authorisation to use 74 Considering the respondent's best case in relation to s 27(1)(b)(ii), there is no evidence before me that The Food Channel Pty Ltd applied for registration of the trade mark explicitly authorising or intending to authorise the respondent to use the trade mark as contemplated by s 8 and s 27(1) of the Act. 75 However, the respondent relies in its written submissions on Revlon Inc v Cripps & Lee Ltd [1980] FSR 85, Polo Textile Industries v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, Crazy Ron's (2004) 209 ALR 1 and Torpedoes (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii).

Was there implied authorisation to use? 76 Assuming that The Food Channel Pty Ltd was the owner of trade mark 967804 at the filing date, is there evidence to support a contention that The Food Channel Pty Ltd applied for registration of the trade mark either: · having impliedly authorised the respondent to use it; or · impliedly intending to authorise the respondent to use it? 77 The evidence before me is that Mr Lawrence tended to confuse his own business interests with those of his companies, and appeared to randomly use companies and trade marks depending on the circumstances. In this respect I consider that it is open on the facts to find that all companies controlled by Mr Lawrence were authorised to use trade mark 967804.

Does this assist the respondent? 78 However, even on the basis that this finding is open, it does not assist the respondent in discharging it evidentiary onus in relation to the key question under s 58, namely ownership of trade mark 967804 at the filing date (particularly in the face of evidence from Mr Lawrence that the respondent was actually the owner at the filing date). The application of s 27(1)(b)(ii) is only relevant if s 27(1)(a) is satisfied, namely that the trade mark applicant is also the owner. 79 The cases cited by the respondent support the proposition that a person may be impliedly vested with ownership by the original owner of a trade mark such as, for example, as a parent company causing a subsidiary to apply for ownership. So, for example, in Torpedoes Sportswear (2003) 59 IPR 318 while the relevant trade mark was originally owned by Mr Thorpe, it was not in contention that it was registered, with his authority, in the name of a company under his control, and that that company was the "owner" of the trade mark within the meaning of the Act. However ownership impliedly vested and resulting in an application for registration by the person so vested (which would satisfy s 58) should not be confused with an implied intention of a registered owner to authorise use of the trade mark by related parties (which is relevant under s 27(1)(b)(ii)). They are distinct concepts. 80 Further, the cases cited by the respondent support the proposition that a trade mark may be a "house mark" of a corporate group, and that members of a corporate group other than the registered proprietor may have implied authority to use it (see in particular Revlon [1980] FSR 85 at 106 per Buckley LJ and Templeman LJ at 114-115 and Polo Textiles (1993) 42 FCR 227 at 239). In this respect these cases do not consider issues of ownership, only authorised use of a trade mark. 81 It may very well be the case that Mr Lawrence initially considered that The Food Channel Pty Ltd should apply for registration of trade mark 967804, but later considered a more appropriate trade mark applicant would be the respondent with the result that the trade mark application were assigned to the respondent. Commercially, this is perfectly acceptable. However from the perspective of the Act, this approach would only be acceptable if The Food Channel Pty Ltd were also the owner at the filing date (s 58). If The Food Channel Pty Ltd was not the owner at the filing date, as indeed the evidence suggests, but Mr Lawrence subsequently considered that the appropriate trade mark applicant should be the respondent, then Crazy Ron's (2004) 209 ALR 1 supports the proposition that the trade mark application should have been withdrawn and a fresh trade mark application lodged (Crazy Ron's (2004) 209 ALR 1 at [130]-[131]). 82 I have already considered evidence from Mr Lawrence that the respondent was the owner at the filing date, and substantial conflicting evidence as to who the owner has been throughout the application process. The respondent's submissions as to s 27(1) do not clarify this matter. 83 I do not consider that reliance on s 27(1) assists the respondent in discharging its evidentiary onus under s 58. 84 In summary, I do not consider that the respondent has discharged its evidentiary onus and established that The Food Channel Pty Ltd was the owner of trade mark 967804 at the filing date. In my view, while there is evidence to suggest that the respondent was the owner of trade mark 967804 both at the filing date and thereafter, the evidence also supports a conclusion that a finding as to ownership is not possible (other than, possibly, that the owner was Mr Lawrence himself). I consider that this is a defect in the application to register trade mark 967804.

Was the defect in the application to register fatal to the application? 85 Whether the act of making an application to register a trade mark in the name of a party other than the owner is a fatal defect in that application was given some consideration in Mobileworld Communications (2003) 61 IPR 98 and Global Brand Marketing (2008) 76 IPR 161. The decision in Global Brand Marketing (2008) 76 IPR 161 was delivered after my judgment in this case was reserved. The Court in Global Brand Marketing 2008) 76 IPR 161 also considered the decision in Mobileworld Communications (2003) 61 IPR 98. 86 So far as is relevant in Global Brand Marketing (2008) 76 IPR 161 the cross-claimant in that case claimed that the validity of registration of a trade mark was to be determined at the filing date. 87 The trial judge in Global Brand Marketing (2008) 76 IPR 161 referred to Mobileworld Communications (2003) 61 IPR 98 where the trial judge had noted the innocent error in registering the wrong applicant. Further, in Global Brand Marketing (2008) 76 IPR 161 the trial judge was satisfied that the company to which the application for registration was eventually assigned was the owner of the trade mark in question (at [135]-[136]). 88 The applicant in the proceedings before me submits that the defect in the trade mark application - namely, that The Food Channel Pty Ltd as trade mark applicant was not the owner - was fatal to the trade mark application because only the owner of a trade mark can apply for its registration. Trade mark 967804 could thus not have been assigned to the respondent at a later date. 89 Both Mobileworld Communications (2003) 61 IPR 98 and Global Brand Marketing (2008) 76 IPR 161 are distinguishable from this case because in both cases the ownership position was clear. In contrast, I do not accept that the Act sanctions a position in which an application can be made where ownership of a trade mark is not capable of identification during the application process, and a finding cannot be made that the applicant was the owner, as is the case in these proceedings. 90 I note the submissions of the respondent that Mr Lawrence tended to confuse his own business interests with those of his companies. However in my view the policy of the Act is clear. Section 58 requires that, at filing date, the owner of the trade mark must be identifiable, and must be the applicant. As I have already observed, this does not mean that, within a corporate group, there cannot be transfer of ownership and assignment of the application within the group as is commercially necessary. However in my judgment there must at least be evidence of this, as well as compliance with the Act. 91 "Ownership" is a key concept within the Act, requiring certainty. The policy of the Act is clearly to vest an owner of a trade mark with important rights and powers (cf for example sections 20, 21, 22, 27, 58, 58A). I do not accept that the Act sanctions a position such that a person who is not the owner of a trade mark can nonetheless apply for registration of a trade mark (and may thus be opposed under s 58), but the application itself is somehow subsequently validated by later identification of the owner and that owner being assigned the application by the trade mark applicant. In circumstances where the position of ownership is so confused that the owner of the trade mark cannot be identified at the filing date (or indeed throughout the application process as appears to be the case here as a result of the conflicting evidence as to ownership), the application may be opposed pursuant to s 58 of the Act.

Conclusion 92 In my view the respondent has not discharged its evidentiary onus. I am not satisfied in this case that The Food Channel Pty Ltd was the owner of trade mark 967804 at the filing date. While there is evidence that the respondent was the owner at the filing date, in my view the confusion in the evidence tendered by the respondent is too great for me to make a positive finding to this effect. However, even if the respondent were the owner at all times prior to and/or during the application process the defect in the original application is not cured by the assignment of the trade mark application to the respondent. This defect is fatal to the trade mark application. The applicant to these proceedings has substantiated its claim pursuant to s 58 of the Act. 93 This finding is sufficient ground for me to make the order sought by the applicant that the trade mark 967804 application should not proceed to registration and should be rejected. However in the interests of completeness, and in case I am wrong in relation to this finding, I will consider the other issues the applicant has raised in these proceedings.

SECTION 59 94 Section 59 of the Act provides as follows: Applicant not intending to use trade mark The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) 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 specified in the application. Note: For applicant see section 6. 95 Legal principles relevant to the application of s 59 which I consider relevant to the proceedings before me include the following: · the intention described in s 59 must exist at the filing date: Nikken Wellness Pty Ltd v Van Voorst [2003] FCA 816; · 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 (Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401 per Fullagar J, Kimberly-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 at [10]); · once a prima facie case of lack of intention is established the evidentiary onus shifts to the trade mark applicant to establish intention (Health World (2008) 75 IPR 478 at [163] affirmed Health World Limited [2009] FCAFC 14); · provided the intention to use is sufficiently definite, it does not matter that the mark will not be used immediately (cf Re Peddie's Application (1944) 61 RPC 31 and cases cited in Shanahan at 5.1420); · 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 (Health World Ltd [2008] FCA 100 at [163], Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158); · the intention to use must be bona fide (cf s 62A of the Act). 96 In these proceedings I infer that the filing of the application for registration of trade mark 967804 by The Food Channel Pty Ltd evinced an intention to use, or authorise the use of, trade mark 967804 in Australia by that company. Similarly, I infer that once the application for registration was assigned to the respondent, it was on the basis that the respondent intended to use it or authorise the use of it in Australia. In order for the applicant to displace these findings it needs to make a prima facie case of lack of intention.

Findings of the delegate 97 It appears from the decision of the delegate that the applicant had made submissions in respect of s 59 based on the premise that the respondent clearly no longer had any intention to use trade mark 967804. These instances were, according to the delegate: · failure of the respondent to properly serve its evidence in answer; · failure of the respondent to request a hearing following refusal of an application for an extension of time to serve this evidence; · filing by the respondent of a similar but not identical application for a new trade mark for similar goods in October 2005; · failure of the respondent to appoint a particular group of attorneys to act on its behalf in this action, despite the firm being engaged to do other work on its behalf in respect of its trade marks. 98 In relation to these findings the delegate found as follows: [11] This information does not necessarily lead me to infer a lack of intention to use the trade mark, but it does explain to me the reasoning behind the submissions the applicant provided for the hearing. Just prior to the hearing Mr Lawrence sent several pages of submissions, which he reiterated at the hearing. His submissions related to the fact that the trade mark filed in respect of this application was a cut and paste montage, made up from parts of other material already in use, that it had been 'tidied up' and was now used in a more professional-looking style. The original and amended versions of the trade mark Mr Lawrence referred to are shown here: Mr Lawrence seemed concerned that an attack was being made on his right to amend the trade mark, despite not ever having requested of the Trade Marks Office that this be done. He concentrated on this aspect, rather than dealing with the more appropriate issues of use of the trade mark in relation to the claimed goods. [12] The opponent's arguments here seem to me to be exaggerating the significance of the applicant's actions. There are likely to be many reasons for an applicant neglecting to file evidence in answer. The failure may point to a lack of intention to use the trade mark but could as easily point to a misunderstanding of the requirements for filing evidence, or disorganization within the applicant company. There is no requirement for an applicant to ask to be heard when an extension of time request is denied, and the applicant's non-action in this regard is a matter of choice. Similarly, appointing an agent to manage an opposition is a matter of choice, and I do not see anything suggestive of abandonment in the applicant not choosing to do so in this case. Filing additional applications is another choice, and need not point to a decision to cease using an earlier trade mark. Mr Lawrence, in failing to make his comments about his firm's intentions in declaratory form, cannot expect me to give them any great weight, but the information provided would be consistent with a credible and properly motivated (if utterly unsubstantiated intention) to use a trade mark which, under the provisions of Section 7 of the Act, could be considered use of the trade mark as applied for. [13] The opponent has provided nothing sufficient to satisfy me that it is appropriate to draw an inference that the applicant does not intend to use its trade mark. The fact that Mr Lawrence was prepared to attend a hearing to attempt to support his company's application would tend, to some degree, to counter such an inference. This ground of opposition is not established.

Submissions of the applicant 99 Before me the applicant has submitted that: 1. There was no intention, whether real or definite, on the part of The Food Channel Pty Ltd to use trade mark 967804; and 2. Regardless of which company intended to use trade mark 967804, there was and is no intention to use the mark as applied for. 100 In support of the first point, the applicant has submitted, in summary, that: · the evidence suggests that the respondent may have created trade mark 967804, apparently intended to use it, and that it was the entity which has used and uses the trade mark; · there is no mention in the respondent's filed affidavits of The Food Channel Pty Ltd creating or using the trade mark. It is possible that it was a mistake that the application was made in the name of The Food Channel Pty Ltd, but in that case the application should have been withdrawn and filed afresh; · the fact that The Food Channel Pty Ltd, had no real and definite intention to use the trade mark was fatal to the application. 101 In support of the second point, the applicant has submitted, in summary, that: · in relation to the possible use by the respondent of trade mark 967804, it is clear from evidence of Mr Lawrence that the respondent intended to use an alternative, but similar, trade mark. In particular the applicant referred to the affidavit of Ian Robert Tannahill sworn 6 August 2007, wherein Mr Tannahill, a patent attorney who appeared for the applicant at the opposition hearing, deposed that at the opposition hearing Mr Lawrence had said the respondent would use an alternative, although somewhat similar mark. The amended trade mark, considered by the delegate in her decision (Television Food Network G.P. [2006] ATMO 88 at [11]-[13]) is as follows: ("the amended version") · while s 7 of the Act permits the Registrar or the Court in the circumstances of a particular case to 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, in this case the differences between trade mark 967804 and the amended version are obvious and apparent to the eye; · Evidence of Mr Lawrence during the hearing that trade mark 967804 has been used on documents since at least 2004 (TS 161 ll 5-10) or perhaps since 1997 (Lawrence affidavit sworn 31 October 2007 para 5 and para 9) is not credible. In particular, the version of Annexure J annexed to Mr Lawrence's affidavit varies in significant respects from the original form of that document (exhibit 7A) which was supplied electronically by the respondent to the applicant pursuant to a Notice to Produce dated 19 November 2007. The applicant submits that the only credible explanation for the variation is a dishonest attempt to mislead the court into believing that the opposed trade mark, as it appears in Annexure J to Mr Lawrence's affidavit, has been in use since 2004. 102 In my view the applicant has made a prima facie case that The Food Channel Pty Ltd did not as at the filing date intend to use trade mark 967804. Further, I consider that the applicant has made a prima facie case that the respondent did not intend to use trade mark 967804. Accordingly the evidentiary onus as to intention shifts to the respondent.

Submissions of the respondent 103 The respondent in written submissions referred to comments of the delegate in Americana International Limited v Suyen Corporation [2008] ATMO 4 at [28]-[29]. The respondent contended that the decision in Health World Ltd (2008) 75 IPR 478 is distinguishable from the facts in these proceedings, in that in Health World (2008) 75 IPR 478 while the relevant companies had the same directors they had different shareholders, whereas in these proceedings there was not only a formal assignment and licence but Mr Lawrence was the sole shareholder and managing director of both the respondent and The Food Channel Pty Ltd. The respondent also referred to Oakley, Inc (2003) 58 IPR 452 at [30], as already set out in this judgment. 104 Further, the respondent submitted in summary: · evidence of Mr Lawrence, particularly that deposed in his affidavit of 31 October 2007, demonstrated that the respondent had both an intention to use trade mark 967804 and had used it; · Mr Lawrence's evidence was credible. To the extent that the applicant sought to discredit that evidence by suggesting that Mr Lawrence had modified documents to insert trade mark 967804, the Court should prefer the evidence of Mr Lawrence. No expert evidence was lead by the respondent to support its allegations of concocted evidence. The respondent was "ambushed" at the trial in relation to such allegations; · Mr Lawrence has used a "slightly altered trade mark" which does not detract from use of trade mark 967804. Trade mark 967804 was a "cut and paste job" and Mr Lawrence needed to modify it to make it compatible with the digital representation on his computer. Any suggestion by Mr Tannahill that he heard Mr Lawrence say he was not going to use that mark referred to "the cut and paste job", and not the "cut and paste job" represented in the computer-rendered version.

Consideration 105 In my view the respondent has not discharged the evidentiary onus as to intention to use or authorise the use of, the trade mark in Australia. I consider this fatal to the trade mark application. 106 First, the respondent does not dispute that the appropriate date for determination of this issue is the filing date, namely 28 August 2003. Accordingly it is necessary that, as at that date, the original applicant for registration - The Food Channel Pty Ltd - had the intention to use the trade mark (or other intention to which s 59 refers). 107 Second, I accept the applicant's submission that the fact that the respondent and The Food Channel Pty Ltd had the same shareholder and the same director at all relevant times was, without more, of no moment in this context. The respondent and The Food Channel Pty Ltd are separate corporate entities. It is necessary that the respondent make a case as to intention. It has not. 108 Third, I consider that the evidence before me is unsatisfactory not only as to the entity which may have used the trade mark, but when and whether the trade mark was actually used. In particular I take the view that it is unclear from the evidence tendered by the respondent and annexed to the affidavit of Mr Lawrence sworn 31 October 2007 whether the use of trade mark 967804 as evinced by annexures F, J, K, O, P, Q, X and Y was by the respondent or The Food Channel Pty Ltd. A visual comparison of these trade marks indicates the lack of clarity in that: · documents in Annexure F all purportedly bear trade mark 967804, "The Food Channel - ABN 16 077 118", and are undated; · documents in Annexure J all purportedly bear trade mark 967804 and "ă The Food Channel 2004"; · documents in Annexure K all purportedly bear trade mark 967804, and "The Food Channel - ACN 079 015 339" and "ă The Food Channel 2005"; · documents in Annexures O all purportedly bear trade mark 967804 and "Copyright - The Food Channel - Sept 2006"; · Annexure P purportedly bears trade mark 967804, and "ă All rights reserved - The Food Channel" but is undated; · Annexure Q purportedly bears trade mark 967804 and "Copyright - 2006 - The Food Channel"; · Annexure X purportedly bears trade mark 967804 and "The Food Channel - ABN 16 077 987 118 / ACN 077 987 118" but is undated; · one of the documents in Annexure Y purportedly bears trade mark 967804, "The Food Channel", but is undated; · other documents in Annexures Y all purportedly bears trade mark 967804 and "The Food Channel - ABN 16 077 987 118 / ACN 077 987 118" but are undated. 109 Indeed the affidavit of Mr Lawrence states that the use is by the respondent, but a number of the documents bear the ACN and ABN of The Food Channel Pty Ltd, and a number of documents simply refer to "The Food Channel" which could mean either the respondent or The Food Channel Pty Ltd. 110 Fourth, I consider that any suggestion by the respondent that it was "ambushed" in relation to the applicant's cross-examination of Mr Lawrence and subsequent submissions concerning modifications to documents in evidence is without merit. All evidence of the applicant relevant to the issue of inappropriate modification of documentation was in the affidavit of Kirsten Melinda Clayton sworn 14 December 2007. 111 Fifth, and following on from this point, I consider that the applicant has made a case discrediting the evidence of Mr Lawrence as to use trade mark 967804 since 1997 or 2004 on the documents annexed to his affidavit of 31 October 2007 by either The Food Channel Pty Ltd or the respondent. There is evidence before the Court that there are differences between Annexure J to Mr Lawrence's affidavit sworn 31 October 2007 and the original version of that annexure supplied electronically to the applicant, namely: · different font; · insertion into Annexure J of the year 2004 (whereas in the electronic version supplied to the applicant there was no year); · a different trade mark used in each document (the relevant trade mark being used on Annexure J). 112 Explanations given by the respondent for these differences were: · a hard drive failure (TS 188 ll 10-15); · simply opening a Microsoft Word document and subsequently closing it without making any changes would cause the properties to show that the document had been "modified" (TS 188 ll 17-22); · simply opening a Microsoft Word document, hitting a space bar and saving it would constitute a modification (TS 196 ll 33-43). 113 I do not accept these explanations for modifications to the document (exhibit 7(A)) which produced Annexure J. These explanations are not supported by evidence of any kind. The Court can make decisions based only on evidence, not speculation and hypothesis. The applicant has submitted that the only credible explanation for the creation of Annexure J is that it was created on 30 October 2007, the day before Mr Lawrence signed his affidavit, by modifying an earlier document, created in 2004 with a different trade mark on it, to insert the opposed trade mark and the copyright date 2004, and to mislead the Court into believing, contrary to the facts, that Annexure J had been in circulation with the opposed trade mark on it since 2004. In my view such evidence as is before me supports the conclusion which the applicant invites. Accordingly I give no weight to Annexure J to the extent that it purports to evidence intention to use trade mark 967804, or indeed use of the trade mark in 2004. 114 The applicant submits further that other documents annexed to Mr Lawrence's affidavit and put in evidence to show use of the trade mark 967804 from an early date were also modified shortly before execution of his affidavit, however in this case there were no earlier versions of these documents supplied on disk to the applicant. The applicant draws my attention specifically to Annexures K, B, X, and Y. The applicant submits that, given the clear modification of the original of Annexure J as demonstrated in exhibit 7(A) immediately before the affidavit was executed, the court should be suspicious of modifications to those documents. I agree with the applicant, and consider that little weight should be given to these annexures to the extent that they purport to evidence intention to use the trade mark, or indeed use of the trade mark. 115 Sixth, I do not agree with the view of the delegate that the fact that Mr Lawrence was prepared to attend a hearing to attempt to support his company's application would tend, to some degree, to counter an inference that there was no intention that trade mark 967804 be used (cf Television Food Network G.P. [2006] ATMO 88 at [13]). 116 Finally, I note that the delegate in her decision considered that the "amended" version of the trade mark which the respondent has used, and to which reference is made in Mr Tannahill's affidavit discussed earlier in this judgment, could be considered use of the trade mark 967804. Section 7 of the Act provides: (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. 117 In these proceedings, as I noted earlier in this judgment, the applicant submitted that a new trade mark application should be filed if the second mark incorporates additions or alterations which are material. In this case the key differences between trade mark 967804 and the amended version are: · trade mark 967804 has a cut-out segment of a television screen with the word "Food" above the word "Channel", and both words outside the screen. In contrast, the amended version has a complete televisions screen with the word "Food" wholly within the screen, and of the word "Channel" only the letters "Ch" being in the screen; · the angle of the television screens is different in each version. 118 The key issue in considering s 7(1) in this context is whether, notwithstanding the similarities between the two marks, the additions or alterations are such as to "substantially affect the identity" of trade mark 967804. This is clearly a question of fact in each case. Although there are decisions in which the court or relevant administrative body has considered whether, in the particular circumstances, alterations or embellishments have affected the identity of a trade mark (for example Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D), 131 (CA); Levi Strauss & Co v Shah [1985] RPC 371; QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553) I do not find these decisions of assistance in the present proceedings. 119 In this case, notwithstanding the differences between trade mark 967804 and the amended version, there are also obvious essential similarities between the two marks: · both contain the words "Food" and "Channel", with "Food" being above "Channel"; · both contain a television screen or part thereof, with the screen in each case appearing black with a lighter-coloured rim; · both contain representations of a chilli and a banana as television antennae, with four tendrils of steam rising from the screen. 120 I am not persuaded that the additions or alterations made by Mr Lawrence to trade mark 967804 were such as to substantially affect the identity of the trade mark. However in any event this finding does not appear to assist the respondent in its case. The respondent submits that Mr Lawrence has used the amended version. Indeed Mr Lawrence in his affidavit sworn 1 November 2007 deposes: (1) I also wish to draw attention to the affidavit dated August 6th 2007 of Mr Ian Tannahill in particular to paragraph 6. It is stated that "Mr Lawrence did not intend to use the opposed mark, though somewhat similar mark". (2) I did not recall saying or stating that to IP Australia. However, what is written in the letter dated 11th July 2005 from The Food Channel to IP Australia was; "the trademark in question 967804 is a cut and paste/hand drawn and will be tidied up to render it suitable for use in trade". All owners of trademarks have the right to update one or more graphic elements from time to time. (3) The handmade cut out that was filed with IP Australia is a scan of the original cut out creation. It then needed to be computer generated that is suitable for use in the workings of business in trade. (4) We as humans do not know what the future holds or what our future thoughts maybe. (5) In the claims made by Mr Tannahill in his affidavit dated Aug 6th 2007 it does appear that he has the ability whereby he can predict another person's thoughts. 121 The issue for decision in relation to s 59 is whether the applicant, defined in s 6 as the person in whose name the application is for the time being proceeding, intended to use the trade mark. Mr Lawrence has never been an applicant for the trade mark. There is no evidence before me that either The Food Channel Pty Ltd (as the original applicant) or the respondent (after the assignment of the application for registration) ever actually used the amended version of the trade mark at any time, so as to show use of (or intention to use) the trade mark by either of those entities at any time. In my view Mr Lawrence's evidence, rather than clarifying any intention to use in any of the companies which he controls and which have been trade mark applicants, confuses the issue further. There is no evidence before me that any use Mr Lawrence made of the amended version of the trade mark was in any way related to either The Food Channel Pty Ltd or the respondent. I do not find discussion of this issue by the delegate helpful - comments of the delegate in relation to use of the amended version are again confined to use of that amended version by Mr Lawrence (Television Food Network G.P. [2006] ATMO 88 at [12]). 122 In my view the applicant succeeds in establishing lack of the requisite intention for the purposes of s 59 of the Act. I consider that the delegate erred in finding that the respondent intended to use trade mark 967804 in relation to the goods nominated in the trade mark application. Had I not already found in favour of the applicant in relation to s 58 of the Act, I would be prepared to make the orders sought by the applicant on the basis of s 59.

SECTION 44(1) 123 Section 44(1) of the Act provides as follows: 44 Identical etc. trade marks (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if: (a) the applicant's trade mark is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person in respect of similar goods or closely related services; or (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. 124 In relying on s 44(1), the applicant confined this aspect of its application to trade marks 881666 and 881667. 125 The trade marks are as follows: Trade mark 881666 Trade mark 881667 126 Both trade marks are registered in respect of class 41, in relation to the "publication of printed publications". The applicant therefore submits that these trade marks qualify for consideration under s 44(1) because they are in respect of "similar goods or closely related services" to those in respect of which application is made for the trade mark, namely (in 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".

Findings of the delegate 127 Section 44(1) was considered in considerable detail by the delegate in her decision. In summary, the delegate found as follows: · the applicant's trade marks have earlier priority dates than that of the respondent (at [18]); · principles applicable to the operation of s 44 can be found in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595 (at [20]); · the applicant had submitted that the word "network" is understood by the relevant public as being the plural of "channel" and that therefore "Food Channel" and "Food Network" will not be distinguished in the marketplace. The delegate observed that she was aware that there were various entities in the television industry within Australia which used a naming convention for both the overall television network and individual channels within that network. However the delegate was satisfied from her own knowledge of the Australian television market that the public understanding of the relationship between the names is as a result of exposure over time to the naming convention, rather than the result of an inherent equivalence in terminology. Although the delegate understood that most television networks in the Australian market involved several related channels, she was not satisfied that at this stage, and failing an educative process of the public whereby the public came to recognise that a television network as comprising individual television channels, that the terms were the same. Accordingly the delegate did not consider the trade marks, when viewed as wholes, as being deceptively similar (at [21]-[23]); · the delegate was satisfied that the market for "printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs", being goods within class 16, is separate from that of the television broadcasting and television entertainment markets (at [24]); · the delegate noted that within the applicant's service claims in class 41 in respect of registrations 881666 and 881667 was the item "publication of printed publications." The delegate referred to Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 48 ALR 511 where Lockhart J had considered service marks and the problems of confusion with goods marks. The delegate considered that publication services are closely related to the results of those services, namely printed publications, be they books, leaflets, newspapers or newsletters, and that the presence of those goods within the specification was sufficient to trigger the particular provision of s 44 which deals with goods and services. Accordingly, the delegate was satisfied that some of the applicant's claimed services, namely the "publication of printed publications", were closely related to some of the respondent's goods, namely "printed publications, periodical publications, books and newspapers" (at [25]-[26]).

Issues in contention 128 The respondent in these proceedings conceded that the priority dates of the applicant's trade marks preceded that of trade mark 967804. The issues in contention are therefore: · whether the applicant's trade marks are in respect of "closely related services" to the goods in respect of which application has been made for trade mark 967804 (in relation to which the delegate made a finding favourable to the applicant); and · if so, whether trade mark 967804 is deceptively similar to either or both of the applicant's trade marks (in relation to which the delegate made a finding adverse to the applicant). 129 I shall look at these issues in turn.

"Closely related services" 130 As I have noted earlier in this judgment, the delegate considered that the service of publication of printed publications (which is found in class 41) was closely related to the results of those services, namely the printed publications themselves, be they books, leaflets, newspapers or newsletters. 131 In summary, the respondent submits that: · its application is in respect of goods under Class 16, not services, whereas the applicant's claim is principally for services under Class 41; · under Class 41 reference to "publication of printed publications" is to a service unrelated to the sale of goods, being the publication for others of printed publications; · there is no evidence that the applicant provides this service or that it intends to; · accordingly the services of the applicant are not "closely related" to goods of the respondent. 132 I consider the respondent's case in relation to this point misconceived. 133 First, I reject the respondent's contention that, because the applicant's trade mark is registered for services and trade mark 967804 relates to goods, s 44(1) is not relevant. Section 44(1) clearly contemplates rejection of the application for the registration of a trade mark in respect of goods, where a trade mark applicant's trade mark is substantially identical with or deceptively similar to, inter alia, a trade mark registered by another person (or sought to be registered) in respect of similar goods or closely related services. As the delegate observed, this issue was considered in some depth by Lockhart J in Caterpillar Loader Hire (Holdings) (1983) 48 ALR 511, particularly at 522-523. I similarly note the recognition to the possibility of deceptive similarity between a service mark and a mark in respect of closely related goods discussed in Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 at 380. 134 Second, the emphasis in s 44(1) is on the registration of a trade mark. It is not the actual use of the competing trade marks which is relevant. It is not relevant whether the applicant provides or intends to provide the service referred to in class 41. 135 Third, I do not accept the respondent's submission (for which it provides no substantiation nor authority) that reference to "publication of printed publications" means publication for others of printed publications. 136 In my view the delegate was correct in finding that the service of publication of printed publications (class 44) is closely related to goods in the nature of printed matter, periodical publications, books and newspapers, paper and cardboard articles, posters, calendars, writing instruments, pencils, pens, stationery, writing pads, greeting cards, photographs (class 16).

"Deceptive similarity" 137 For the purposes of the Act, a trade mark is taken to be "deceptively similar" to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion (s 10). 138 The concept of deceptive similarity within s 44(1) (and equivalent legislation) has been extensively considered by the courts. Relevant guiding principles include the following: · the marks are not to be looked at side by side - the issue is one of deceptive similarity, not abstract similarity (Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415); · the comparison 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 trade mark (Shell Co of Australia Ltd (1963) 109 CLR 407 at 415). It is the imperfect recollection which forms the basis of any deception prompted by the infringing mark (Australian Woollen Mills Ltd (1937) 58 CLR 641 at 658-659); · there will be deceptive similarity where there is a "real tangible danger" that a number of persons will be caused to wonder whether the respective goods and services under the two marks come from the same source (Southern Cross Refrigerating Co (1964) 91 CLR 529 at 595, Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 at 382); · one trade mark may be deceptively similar to another even without using the whole of it. If use is made of one or more of the essential features of a mark there can be deceptive similarity (Crazy Ron's (2004) 209 ALR 1 at 19); · deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark (Windeyer J in Shell (1963) 109 CLR 407 at 416); · oral presentations of the trade mark are also relevant (Australian Woollen Mills Ltd (1937) 58 CLR 641 at 658); · in summary, in the context of opposition proceedings it is not the actual use of the competing trade marks which is relevant - the comparison is between the trade mark applied for used normally and fairly for any goods and services in respect of which registration is sought and the earlier trade mark used normally and fairly in respect of any goods or services for which it is registered. 139 Would a person of ordinary intelligence and memory, with an imperfect recollection of the applicant's trade marks, upon seeing trade mark 967804 or hearing the words "The Food Channel", be caused to wonder whether it comes from the same source or whether there is a connection between them? No evidence was produced as to actual confusion in relation to these particular trade marks, however evidence relevant to this question was given by Ms Jordan and expert witnesses Mr Richard Allen (called by the applicant) and Mr Robert Geddes (called by the respondent). 140 Although Ms Jordan was not called to give expert evidence, nonetheless I give her evidence as to her experience in the television industry some weight in light of her current role, and also in view of the absence of objections from the respondent as to her evidence. In particular, I note Ms Jordan's evidence where she deposes: [19] In my experience the words "channel" and "network" are used synonymously by the public and this has been the case for many years. I use them interchangeably, other broadcasters use them interchangeably and customers use them interchangeably. It has been the case in my experience that this happens internationally. [20] On many occasions I have been approached at trade conventions by international broadcasters who refer to us as "the Food Channel people". This happens frequently, even though the FOOD NETWORK trade marks are clearly displayed in front of the enquirers. This has led me to conclude that the public sees the words "channel" and "network" as one and the same (affidavit of Kristen Jordan sworn 3 October 2007). 141 Ms Jordan's evidence was consistent with evidence of Mr Allen and, to a significant extent, Mr Geddes. 142 In relation to the evidence of Mr Allen and Mr Geddes I note that there is no dispute as to their expert qualifications. 143 Mr Allen deposed that the words "Channel" and "Network" are commonly used interchangeably by the Australian television industry and media in general, and that there is a real and tangible possibility that the general public would perceive that goods and services bearing the brand "Food Channel" originate from the same source as the "Food Network" enterprise (affidavit of Richard William Allen sworn 6 September 2007 paras 19-20). Mr Allen also said during cross-examination that over time in the minds of Australians there had been a blurring of the distinction between the concept of "channel" and the concept of "network" (TS 108 ll 30-35). 144 Mr Geddes deposed that, in his view, the trade marks are sufficiently distinct as to present no tangible danger of confusion (affidavit of Robert Warring Geddes sworn 30 October 2007 para 28). However Mr Geddes also gave evidence that: · he agreed with Mr Allen that the words "Channel" and "Network" are used interchangeably by the television and advertising industry, and that the general public would perceive this to be the case (affidavit of Robert Warring Geddes sworn 30 October 2007 paras 15-16); · used in isolation, it is possible that confusion could result from the terms "The Food Channel" and "Food Network" (affidavit of Robert Warring Geddes sworn 30 October 2007 para 23); · members of the public who had seen a brand or a trade mark might have an imperfect recollection of it when they came to the market and looked at other trade marks (TS 130 ll 21-24); · a member of the public will remember the essential elements of a trade mark (TS 130 ll 26-27); · a member of the public will remember the words of the trade mark rather than the device (TS 130 ll 29-30); · the trade marks of the applicant were "more of a text only device" (TS 133 ll 1-3). 145 In summary, it appears that both expert witnesses agreed that: · the words "Channel" and "Network" are used interchangeably in Australia; and · there is a very real possibility that the audience for the trade marks (being the general population) would be confused by "Food Network" and "Food Channel". 146 Although the delegate in her reasons for decision was not persuaded that the trade marks are deceptively similar, in my view the evidence is compelling that there is a real and tangible danger that members of the public, with an imperfect recollection of the essential features of the applicant's trade marks, will be caused to wonder whether goods under the trade mark "Food Channel" are from the same source. The delegate took the view that, once outside the realm of television broadcasting and television entertainment, the terms "channel" and "network" lose much of their common significance, and any perceived connection is much reduced. However in addition to the evidence of Ms Jordan and the expert witnesses, I note that: · both the applicant's mark and trade mark 967804 contain the word "Food" prominently; · trade mark 967804 clearly features a stylised representation of a television screen. In this respect it is difficult to view the trade mark itself outside the television entertainment context. The evidence before me, which I accept, is that "channel" is equated with "network" in the television entertainment context. 147 Further, and addressing specific submissions of the respondent, I find that: · the fact that the word "network" does not sound like "channel", an issue raised by the respondent in written submissions, is in my view irrelevant. As the applicant submits, there are many cases in which relief has been granted in relation to marks which do not sound similar but the allegedly infringing trade mark has been found to be deceptively similar to the claimant's mark (I note, for example, such cases as Re Application by PPI Industries Pty Ltd (1989) 17 IPR 667 (Poly drain and Poly Pipe), Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243 ("Whackos" and "Dogs go wacko for Schmackos") and Newell v Mattel Inc (2001) 55 IPR 648 (Bar-B-Cute v Barbie) as well as the extensive list of such trade marks and decisions in the Appendix to Shanahan pp 955-982); · the contention of the respondent that trade mark 967804 and the applicant's trade marks are substantially different in appearance, and have no resemblance, is not an answer to a claim of deceptive similarity. That factor is of much greater relevance where the claimant alleges substantial identity between the trade marks under s 44(1); · I do not accept the submission of the respondent that the words "Food Channel" do not constitute an essential feature of trade mark 967804. In my view, while there are various aspects to the trade mark, those words do constitute an essential feature; · I consider this is also the case in relation to the applicant's trade mark 881667 which features a circle which the words "food" and "network" overlap, with the word "food" above the word "network"; · I do not accept the submission of the respondent that, in comparing the marks, it is necessary to have regard to each mark as a whole. The question for the court is whether the marks are deceptively similar. 148 In my view trade mark 967804 is deceptively similar to those of applicant within the meaning of s 44(1) of the Act. Accordingly I find that the delegate erred in finding that trade mark 967804 was not deceptively similar to the applicant's trade marks. Had I not already found for the applicant in relation to its claims pursuant to s 58 and s 59 I would be prepared to make the orders sought by the applicant in light of my findings in relation to s 44(1).

SECTION 60 149 The applicant's claim in relation to s 60 was first raised in this Court. The applicant did not canvas the issue before the delegate. 150 Section 60 of the Act provides as follows: 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) another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, 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. 151 In summary, the applicant has submitted that it has put on evidence to establish that it has, in Australia, goodwill and a reputation in trade marks incorporating the words "FOOD NETWORK". In particular, the applicant refers to the affidavit of Ms Kristen Jordan to which I have already referred in this judgment. Ms Jordan's evidence includes the following: · the applicant trades as and under the trade mark "FOOD NETWORK"; · the applicant was launched in 1993, and is a television programming network, web site and publisher specialising in the subject of food; · by 2000 FOOD NETWORK programs were broadcast internationally to Australia and other countries. The programs are distributed internationally in approximately 170 countries, and in the United States to more than 92 million television households; · Ms Jordan has been approached on many occasions at trade conventions by international broadcasters who refer to her company group as "the Food Channel people"; · FOOD NETWORK's original Australian licensee was Odyssey Australia, which distributed FOOD NETWORK programs to Australian television between 27 June 1999 and 30 September 2005 on cable television. In 2002, 20 FOOD NETWORK programs were broadcast by Odyssey in Australia; · since 2004 FOOD NETWORK has had two licensees in Australia, namely XYZ Networks Pty Ltd ("XYZ") and SBS Australia ("SBS"). XYZ has broadcast FOOD NETWORK programs on its Lifestyle Food Channel since 2004 and SBS has broadcast FOOD NETWORK programs since 2006; · it is always a term of the Australian licence agreement that at least one of the FOOD NETWORK trade marks should be shown for at least five seconds at the beginning and end of programs broadcast in Australia; · the web site www.foodnetwork.com receives more than 7 million users monthly. 152 The applicant submits that because: · an essential feature of trade mark 967804 is the words "food channel"; · an essential feature of each of the applicant's trade marks is the words "food network"; and · the evidence before the Court is that the general population perceives "channel" and "network" to be synonymous; and · the applicant has established a reputation in Australia for its "FOOD NETWORK" trade marks; then trade mark 967804 would likely cause deception or confusion and an ordinary member of the public will be caused to wonder whether there is a trade connection between the applicant's trade marks and trade mark 967804. Accordingly, the applicant submits that its case pursuant to s 60 is substantiated. 153 The respondent submitted in summary that, because there was no evidence from the Australian licensees of the applicant, there is no evidence of any reputation of the applicant or its trade marks in Australia; further, no other evidence was given as to the applicant's reputation in Australia prior to the priority date of trade mark 967804. The respondent also referred to McCormick & Company Inc v McCormick (2000) 15 IPR 102, and, in what appears to be a confused submission, another of the respondent's trade marks. 154 In order to successfully oppose registration of a trade mark pursuant to s 60 the applicant must satisfy the Court that: 1. its trade marks had acquired a reputation in Australia in relation to goods or services before the priority date of trade mark 967804; and 2. because of the reputation of the applicant's trade marks, the use of trade mark 967804 would be likely to deceive or cause confusion. 155 The current form of s 60 of the Act follows amendments to the Act by the Trade Marks Amendment Act 2006 (Cth). The most significant amendment to s 60 effected in 2006 was the removal of the reference to the opposed trade mark being "substantially identical with, or deceptively similar to" a relevant trade mark. 156 There are a considerable number of cases dealing with s 60 in its previous form. It is not in contention that the amended version of s 60 is relevant in these proceedings.

Have the applicant's trade marks acquired a reputation in Australia? 157 It is clear from s 60 that it is necessary that the reputation of the applicant's trade marks existed before the priority date of trade mark 967804 - in this case 28 August 2003. 158 A number of cases provide some guiding principles in considering the meaning of "reputation" in this context. 159 First, in McCormick (2000) 51 IPR 102 at [81] Kenny J said: 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. 160 Second, in Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657 at [74] the Full Court, approving the observation of the primary judge in those proceedings, said that the reputation which the applicant is required to demonstrate pursuant to the equivalent of s 60 is: one of which a significant or substantial number of persons were aware… What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient. 161 Third, in Pioneer Hi-Bred Corn co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 424 Richardson J in the New Zealand Court of Appeal said, in considering a provision similar to s 60, that: for myself I prefer to use a more neutral term such as "awareness" or "cognisance" or "knowledge" and on that basis to ask: having regard to the awareness of the opponent's mark in the New Zealand market for goods covered by the registration proposed, would the use of the applicant's mark be likely to deceive or cause confusion to persons in that market. 162 Fourth, the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) is helpful in interpreting the s 60. Paragraph 4.10 of the Explanatory Memorandum provides as follows: 4.10 TRADE MARK SIMILAR TO TRADE MARK THAT HAS ACQUIRED A REPUTATION IN AUSTRALIA Section 60(a) 1. The intention of section 60 of the Act is to implement Australia's obligations to protect well known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The provisions have not been written so as to establish a new class of trade marks ("well-known" marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks. The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion. Section 60 is a ground for opposition to a trade mark application for registration, which can also be used under section 88 as a basis for cancellation of a registration by the courts. 2. Under the current arrangements the provisions of section 60 require that the applied-for mark be substantially identical with, or deceptively similar to, the trade mark forming the basis of opposition before consideration of any deception or confusion, resulting from the reputation of the opponent's trade mark, can take place. Substantial identity and deceptive similarity are tests undertaken in examination of an application before the opposition process, and have very well established scope. 3. There have been a number of instances where a trade mark has an established reputation in Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion, even though the subsequent trade mark is not substantially identical with, or deceptively similar to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it is not possible to currently use this provision to prevent registration of a mark which fails the tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion or deception in relation to a well-known mark. The tests for deception and confusion are all well established in judicial authority, and hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks. By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark. 4. Under the amended provisions the consideration of oppositions would take into account the extent of the reputation of the opposing mark at the time the opposed mark was applied for, and the likelihood of deception and confusion occurring in the marketplace because of this. 4.10.1 Items 31-32 1. New paragraph 60(a) of the Act provides that a trade mark may be opposed where another trade mark has a reputation, and the registration of the opposed mark will cause confusion or deception in the market place, whether or not the reputation is built on a mark that is identical or deceptively similar to the opposed mark. 163 In light of this material I consider that the following is clear. 164 First, clearly a finding of deceptive similarity pursuant to s 44(1) does not equate with a finding of likelihood to deceive or cause confusion under s 60. Section 60 does not require similarity - only the likelihood to create the state of affairs contemplated by s 60. However there is evidence before the Court as to the possibility of confusion in the minds of the general population by use of "Food Network" and "Food Channel". Accordingly I consider a finding that use of trade mark 967804 would be likely to deceive or cause confusion is open on the facts. 165 Second, as clarified in the Explanatory Memorandum, s 60 is of particular application to trade marks with established reputations in Australia. 166 However in my view, notwithstanding Ms Jordan's evidence as to the widespread dissemination of the applicant's programmes, I am not satisfied that those programmes, or the applicant's trade marks, have an established reputation in Australia. In my view it is not enough for the applicant to give evidence that its programmes are broadcast on television in this country, with a five second exposure of its trade marks at the beginning and end of its programmes. This does not, in my view, automatically establish that the applicant's trade marks have an established reputation in this country. Further, it is clear that s 60 requires that the respondent's trade mark to be likely to deceive or cause confusion because of the reputation of the applicant's trade mark in Australia. Accordingly, the evidence that the applicant's programmes are broadcast in the United States to more than 92 million television households is in my view irrelevant as is, without more specific detail relevant to reputation in Australia, the evidence concerning monthly hits on the applicant's website. 167 In my view the applicant has not substantiated its claim pursuant to s 60.

SECTION 42 168 Section 42 of the Act provides as follows: Trade mark scandalous or its use contrary to law An application for the registration of a trade mark must be rejected if: (a) the trade mark contains or consists of scandalous matter; or (b) its use would be contrary to law. 169 I note that the applicant did not oppose registration of trade mark 967804 on the basis of s 42 before the delegate. 170 The applicant contends that use by the respondent of trade mark 967804 will be contrary to law because, by use of the trade mark, the applicant will in trade and commerce be engaging in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 52 Trade Practices Act 1974 (Cth), and also be engaging in conduct tantamount to passing off. In particular, the applicant refers to evidence it has put on to establish that it has, in Australia, good will and a reputation in trade marks incorporating the words "FOOD NETWORK". 171 On the basis of these submissions I am not satisfied that trade mark 967804 infringes s 42 of the Act. 172 No substantive case is made by the applicant in this case in the context of its s 42 claim that the respondent's conduct with respect to its trade mark breaches s 52 Trade Practices Act, or constitutes passing off. The applicant has asked the Court to, in essence, infer that conduct of the respondent breaches s 52 or is passing off, by analogy with the applicant's claims pursuant to s 44(1). However while I have found that trade mark 967804 infringes s 44(1) of the Act, in my view it does not automatically follow that the conduct of the respondent breaches s 52 Trade Practices Act or constitutes passing off, and that in turn use of trade mark 967804 would be contrary to law. 173 In relation to s 52 Trade Practices Act and passing off I make the following specific observations.

Section 52 Trade Practices Act 1974 (Cth) 174 Section 52 Trade Practices Act, provides that a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. It is ordinarily necessary for a party claiming breach of s 52 to prove to the reasonable satisfaction of the Court the nature of the alleged conduct and the circumstances which rendered the conduct misleading: Watson v Foxman (1995) 49 NSWLR 315 at 318. Principles relevant to consideration of claimed breach of s 52 include the following: · initial confusion is sufficient and it is not necessary for confusion to induce or be likely to induce a transaction. (SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 at 14); · each case depends on its own facts and conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error (cf Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [56], SAP Australia at 14); · characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a notional cause and effect relationship between the conduct and putative consumer's state of mind (SAP Australia at 14); · a key question is whether the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34]; · it is necessary to isolate by some criterion a representative member of the class of prospective purchasers who is "ordinary" or "reasonable": Campomar Sociedad, Limitada v Nike International Ltd [2000] 202 CLR 45 at 84-85. This excludes erroneous or fanciful assumptions: Campomar at 86; · where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53]. 175 In these proceedings the evidence clearly shows that the applicant is a television programming network, web site and publisher specialising in the subject of food, and that it distributes internationally television programmes focussing on the subject of food. The evidence before the Court as to the activities of the respondent reveals that it is a company with one shareholder and one director (Mr Lawrence), and that its activities have included distribution of free recipes, menus and leaflets to promote, inter alia, the sale of meat. I consider it very likely that, while there could be a transitory association between the products of the applicant and the respondent in the mind of a member of the public, the brief association would be quickly dispelled on closer association with the products. In any event, as I have observed, no submissions have been put to the Court to substantiate a case pursuant to s 52 Trade Practices Act in the terms which I have outlined (or otherwise), and no evidence put to the Court to support such a case.

Passing off 176 In order to substantiate a claim in passing off the applicant must show: 1) a misrepresentation 2) made by a trader in the course of trade 3) to its prospective customers or ultimate consumers of goods or services supplied 4) which is calculated to injure the business or goodwill of the applicant (in the sense that this is a reasonably foreseeable consequence) and 5) which causes actual damage to a business or goodwill of the applicant or will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742, cf re Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302.) 177 No submissions by either party addressed the elements of passing off. In my opinion the evidence before the Court does not satisfy the elements of the tort. There is, for example, no evidence of intention of the respondent or damage to the applicant as required to establish passing off. I am not satisfied that the respondent's conduct constitutes passing off so as to be contrary to law as required by s 42. 178 I am not satisfied that the applicant has substantiated its case pursuant to s 42.

CONCLUSION 179 For the reasons given in this judgment the application is successful. Accordingly it is appropriate that the following orders be made: 1. Registration of Trade Mark Application No 967804 be refused; and 2. The respondent pay the applicant's costs of, and incidental to, the opposition before Hearing Officer Alison Windsor as Delegate of the Registrar of Trade Marks, and of this appeal. I certify that the preceding one hundred and seventy-eight (178) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier.

Associate: Dated: 27 March 2009 Counsel for the Applicant: Mr A Franklin SC