Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) [2009] FCA 271

FEDERAL COURT OF AUSTRALIA

Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) [2009] FCA 271

INTELLECTUAL PROPERTY – TRADE MARKS – Trade Marks Act 1995 (Cth) – review of decision of delegate of registrar to allow registration of trade mark – evidentiary onus – trade mark application assigned to respondent before registration – original trade mark applicant and the respondent related companies – whether original trade mark applicant owner at filing date – whether ownership established through use or otherwise – whether use of trade mark "as a trade mark" – relationship between s 58 and s 27(1)(b)(ii) – whether explicit or implied authorisation to use trade mark – whether defect in trade mark application fatal – whether intention to use within meaning of s 59 – whether deceptive similarity pursuant to s 44(1) – "closely related services" – reputation in context of s 60 – whether applicant's trade marks had a reputation in Australia prior to priority date of relevant trade mark– likelihood to deceive or cause confusion – s 42 – interaction with s 52 Trade Practices Act 1974 and passing off EVIDENCE – admission of exhibits – credibility of evidence as to use of trade mark – whether refusal to allow exhibits and affidavit should be revisited Held: registration of trade mark refused – respondent to pay applicant's costs of delegate's decision and appeal – applicant made prima facie case under s 58 and s 59 – evidentiary onus shifted to respondent under s 58 and s 59 – trade mark applicant at filing date must be owner of trade mark – evidence of ownership of trade mark at time of application too confused to make finding as to ownership – same sole director of trade mark applicant and respondent relevant but not conclusive on facts – failure to establish trade mark applicant was owner of trade mark at filing date fatal to trade mark application – assignment of trade mark application to respondent does not cure defect in trade mark application – respondent's evidence of use of trade mark lacked credibility – intention of trade mark applicant to use trade mark not established under s 59 – amendment of trade mark did not substantially affect the identity of the trade mark for purposes of s 59 – use of "Food Network" and "Food Channel" deceptively similar on facts – s 52 Trade Practices Act 1974 (Cth) and passing off not substantially claimed – use of trade mark not contrary to law – no prior reputation of applicant's trade marks established within meaning of s 60 – earlier decisions of Court concerning evidence not revisited Trade Marks Act 1995 (Cth) ss 6, 7, 10, 12, 20, 21, 22, 27, 42, 43, 44, 55, 58, 58A, 59, 60, 62A, 72(1), 88, 106, 197 Trade Practices Act 1974 (Cth) s 52