The onus on appeal from a trade mark opposition

If there were any doubt about it, the Full Federal Court has confirmed that the person opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. (As a side note, I think this is the new Chief Justice’s first IP decision, at least since joining this Court.)

The Food Channel Pty Ltd (Channel) had applied to register TM 967804:

TM 967804
TM 967804

in class 16 for printed matter. During the application process, it assigned the trade mark application to The Food Channel Network Pty Ltd (Network). Both companies were related entities as a Mr Lawrence was the sole director and shareholder of both.

The registration of TM 967804 was opposed by Television Food Network GP (Television), a US entity. Television is the owner of TM 881666 for TELEVISION FOOD NETWORK and TM 881667, both registered in classes 9, 38, 41 and 42 and  TM938228 for services in class 41. TM 881667 and 938228 were for devices:

TM 881667
TM 938228

The Registrar rejected Television’s opposition. The trial judge, however, upheld the appeal finding that Network bore the onus of establishing it was the owner of the trade mark, had used it in good faith and that it was confusingly similar to Television’s trade marks.

The onus point

The Full Court (Keane CJ, Stone and Jagot JJ) dealt with this point quite quickly as inconsistent with the the presumption of registrability established by s 33, long standing principle and the legislative scheme.

The Full Court rejected Television’s argument that the difficulties facing an opponent attempting to establish lack of ownership (s 58) or lack of intention to use (s 59) meant that an evidential onus should shift to the applicant. While the Court appeared to accept that an evidential onus might arise under s 59 where the opponent raises a prima facie case of lack of intention, it considered the difficulties that could arise in the context of s 59 did not attend s 58 which was usually directed to showing that someone else, often the opponent, had used the trade mark first.

The not the owner point

The difficulty which Television seized on here was the assignment from Channel to Network and some evidence in chief from Mr Lawrence:

1. I am the Founder and Managing Director of Food Channel Network Pty Ltd (The Food Channel) and am authorized to make this affidavit. [Network] is based in Queensland Australia.
5. 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 [sic] 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. ….

Television’s argument was that Mr Lawrence defined “The Food Channel” as Network in his affidavit and deposed that it was The Food Channel (i.e., Network) which created and used the trade mark.

The trial judge had found that, the onus being on Network and it not being clear from Mr Lawrence’s evidence who created the trade mark, the ground of opposition was successfully made out.

The Full Court noted that Mr Lawrence had drawn his affidavit himself and commented:

61 The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other. This is particularly so where, as here, the conclusion that the words The Food Channel in Mr Lawrence’s affidavit meant Network and only Network depends on a single opening definition in an affidavit drafted by a layperson, in a case where Network was the sole respondent attempting to answer a notified ground of opposition that Network was not the owner of the mark, and where any distinctions Mr Lawrence drew between his companies were few, random and confused. In this case, this evidence does not establish that Network was the prior owner through use. It may establish that Network used the mark at a time before registration, but it doesn’t negate the possibility that Channel was, in fact, also a user (and indeed the first user) of the mark before registration. Further, there is no evidence as to how the mark was used by Network. Use needs to be in relation to the goods or services claimed; on the only evidence before the Court, there was “no set formula” with regard to use. This tends against a conclusion that any mark was used by Mr Lawrence, Network or Channel to distinguish one company’s goods from another. Finally, the requirement of prior user as a trademark is that it is used to distinguish one’s goods from another’s: if Network did use the mark, there does not seem to be evidence of an attempt to use it in such a manner as to distinguish its goods from those of Channel. And of course, it is inherently unlikely that Mr Lawrence, as the directing mind and will of both companies, would have had any such an intention.

62 To treat Mr Lawrence’s statement that Network ‘created’ and ‘used’ the mark as exclusive of permitted use by Channel is counter-intuitive, given her Honour’s observation at [77] that the “evidence …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…”.

This with respect pragmatic approach may be constrasted with the very strict approach taken by a rather different Full Court in Crazy Ron at [109] – [127].

As the Full Court noted, further, to the extent there was any confusion about ownership, it fell to Television to clarify the position since the onus lay on it as the opponent.

(It would appear from the Register that TM 733265 was in fact registered by Channel and subsequently assigned to Network.)

The no intention to use point

The trial judge’s finding that Network had no intention to use the trade mark when it was filed was tied up with the confusion in Mr Lawrence’s evidence about who created the trade mark.

Mr Lawrence did give evidence that “The Food Channel” had provided recipes bearing the trade mark to butchers for distribution by the butchers to their customers. It was not clear whether or not the recipes were sold to the butchers or there was some other quid pro quo. However, the Full Court accepted that this uncontested evidence demonstrated that there had in fact been use of the trade mark in the course of trade.

Trade mark comparison

Finally, the Full Court found that Network’s trade mark was not deceptively similar to Television’s trade marks when viewed as a whole – they neither looked nor sounded similar – and having regard to the differences in the goods and services specified.

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (Keane CJ, Stone and Jagot JJ)

Trade mark use by non-profits

The European Court of Justice has ruled that a non-profit association – in this case a body devoted to the preservation of military traditions which performs charitable works and collects gifts – does in fact use its “trade” marks in (what we would call) the course of trade:

Case C?442/07, Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’

IPkat’s summary here.