Digby International (Australia) Pty Ltd v Beyond Imagination Pty Ltd & Ors [1995] FCA 161

CATCHWORDS TRADE MARK - Alleged infringement of trade mark rights - applicant proprietor of word mark "Extreme" - interlocutory relief to restrain respondents' use of word "Extremists" as name of a series of television programs - serious question to be tried - as to whether respondents were using word "Extremists" as a trade mark - as to whether respondents intend to use word "Extreme" as a mark - as to whether the word "Extreme" if used as a mark was capable of being distinctive of Applicant's product - balance of convenience favouring preservation of status quo. Trade Marks Act 1955 (Cth) - ss 24(1)(d) and (e), 26, 58(1), 62(1) and 64(1)(b) Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 Applied Colbeam Palmer Limited v Stock Affiliates Pty Limited (1968) 42 ALJR 209 Referred to Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 Applied Digby International (Australia) Pty Ltd v Beyond Imagination Pty Ltd & Ors QG 35 of 1995 Drummond J Brisbane 24 March, 1995

IN THE FEDERAL COURT OF AUSTRALIA) No. QG 35 of 1995 QUEENSLAND DISTRICT REGISTRY ) GENERAL DIVISION ) BETWEEN: DIGBY INTERNATIONAL (AUSTRALIA) PTY. LTD. Applicant AND: BEYOND IMAGINATION PTY. LTD. First Respondent AND: JEFF McLEOD Second Respondent AND: NETWORK TEN LIMITED Third Respondent MINUTES OF ORDERS JUDGE MAKING ORDER: Drummond J DATE OF ORDER: 24 March, 1995 WHERE MADE: Brisbane THE COURT ORDERS THAT: 1. The application for interlocutory relief is dismissed. 2. Costs are reserved to the trial judge. NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA) No. QG 35 of 1995 QUEENSLAND DISTRICT REGISTRY ) GENERAL DIVISION ) BETWEEN: DIGBY INTERNATIONAL (AUSTRALIA) PTY. LTD. Applicant AND: BEYOND IMAGINATION PTY. LTD. First Respondent AND: JEFF McLEOD Second Respondent AND: NETWORK TEN LIMITED Third Respondent Coram: Drummond J Date: 24 March, 1995 Place: Brisbane REASONS FOR JUDGMENT I have before me an application for an interlocutory injunction brought in an action in which the applicant alleges infringement of its mark by each of the respondents. The applicant is the proprietor of the word mark "Extreme", which is registered in Part A of the Register of Trade Marks in respect of "production of television and radio programs, film production including video tape films; rental of motion pictures, films, video tapes, television programs; publication of books and texts; services in this class provided by movie and film production studios; television, video and motion pictures entertainment being services included in Class No. 41". Registration was applied for on 14 September, 1993. After unsuccessfully attempting, in late 1993, to interest one organisation in participating with it in the production of a particular television sports program it had in mind the applicant, in September 1994, approached the third respondent with a proposal to produce for telecasting by that respondent a sports program to be entitled "Extreme", which would show (according to what the applicant's solicitor says) "various sporting personalities engaging in exciting, dangerous and `way out' or `extreme' sporting activities". The applicant and the third respondent reached an agreement for the telecasting of this program that was conditional upon the applicant obtaining, by a date nominated by the third respondent, two sponsors who would pay the fees required by the third respondent before it would telecast the program. The applicant entered into negotiations with a number of potential sponsors, including Coca-Cola South Pacific Pty. Ltd. ("Coca-Cola"), the makers of a soft drink, "PowerAde", and gave Coca-Cola its proposed script for the first episode of the program. The applicant was, however, unable to obtain the necessary sponsorship. On 26 February and 5 and 12 March, 1995, the third respondent broadcast programs showing sporting activities of the kind I have referred to, which were produced by the first respondent, of which the second respondent is an officer. Each program was telecast under the name "Extremists". The applicant contends that this conduct by the respondents amounts to infringements of its trade mark rights. The applicant made it clear before it commenced proceedings and also repeated at the hearing that it did not seek to restrain the respondents from producing or broadcasting the first respondent's series of programs; the applicant seeks only to prevent the respondents broadcasting programs under the name "Extremists" or any similar name. The oral content of the respondents' programs contains repeated references to "Extremists" as the program name; the applicant seeks no relief in respect of that. Its claims are limited to the visual use of the word "Extremists" in these programs. Mr. Ian Wren, a director of the applicant, says that following the collapse of the applicant's arrangement with the third respondent, the applicant entered into negotiations with Australis Galaxy, the holder of one of the pay television licences in Australia, for the broadcasting of its proposed program; these negotiations have not yet progressed, however, to the stage where an offer to broadcast the program has been received from Australis Galaxy. Mr. Wren also says that the applicant has secured commitments in principle from a number of organisations willing to provide sponsorship of the program, i.e., to pay Australis Galaxy a sum of money in return for its broadcasting the program in a form which will advertise the sponsors' products. As yet, however, no binding sponsorship agreement has been entered into by the applicant with anyone. Mr. Wren says that the respondents' conduct complained of has severely jeopardised the applicant's ability to secure a broadcaster for, and sponsors of, the program and that, if the respondents continue their conduct, he believes that the applicant will not be able to secure any broadcasting or sponsorship agreements. The first respondent's business is the production of television programs in Australia and elsewhere. It is a member of the "Beyond" group of companies which has apparently produced and distributed a number of programs which have been broadcast both in Australia and overseas. Mr. Dawkes, one of its officers, says that, in October 1994, the first respondent had discussions with representatives of Coca-Cola concerning the possibility of making a series of television programs based upon "the concept of extreme sports". He says that by the expression "extreme sports" he means unusual, dangerous and exhilarating sporting activities such as sky diving, rock climbing, base jumping, skiing, parachuting and wave jumping. The respondents' solicitor, in his letter of 10 March, 1995, also asserts that the term "extreme sports" is in common use as a description of extraordinary and unusual sporting activities. The element common to the various examples the solicitor gives is that of obvious danger to the participants. A production company based in Los Angeles, Trans Atlantic Distributors L.P. ("Trans Atlantic"), has been producing a television series called "The Extremists" since 1992. This series is devoted to sporting activities of the kind to which Mr. Dawkes refers. Trans Atlantic's programs have been broadcast extensively in the United States. In late October 1994, the first respondent began discussions with Trans Atlantic with a view to being licensed to use footage from Trans Atlantic's "The Extremists" programs and, by February 1995, had entered into a licensing agreement with it. By 31 January, 1995, the first respondent had also reached an agreement with Coca-Cola to produce, with that organisation's sponsorship, a series of programs referred to in the correspondence between the first respondent and Coca-Cola as "PowerAde Extremists". Mr. Dawkes says that production of the first episode of "PowerAde Extremists" commenced in early February 1995 and that three episodes were telecast on the dates I have mentioned. A fourth was telecast on 19 March. By the time of the hearing before me on 17 March, the first respondent had delivered a fifth episode to Channel Ten. It is committed to delivering 13 episodes in all of the program to the third respondent for telecasting. Mr. Dawkes also says: "Beyond Imagination is contractually committed to the Coca-Cola and Transatlantic to use the title "PowerAde Extremists". Transatlantic would be at liberty to terminate Beyond Imagination's licensing agreement with it in the event that Beyond Imagination continued to use footage provided by Transatlantic if it were used by Beyond Imagination in a program which did not include the word "Extremists" in its title. Similarly, Coca-Cola would be at liberty to terminate its sponsorship of the program in the event that Beyond Imagination was required to change the title of its program. I believe that the risk that Coca-Cola would seek to terminate its sponsorship arrangement in the event that the name of the program had to be changed is a considerable one. The consequences of Coca-Cola doing so would be extremely serious for Beyond Imagination. I do not believe that it would be practical for Beyond Imagination to obtain a new sponsor for the program having regard to the title which has been used to date. Without a sponsor the program will have no future. Beyond Imagination has expended in excess of $150,000 to date in developing and producing the program entitled "PowerAde Extremists".