FEDERAL COURT OF AUSTRALIA Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507 Appeal from: Bauer Consumer Media Ltd and Bauer Media Pty Ltd v Evergreen Television Pty Ltd [2014] ATMO 78 File numbers: NSD 935 of 2014 NSD 682 of 2015 Judge: PERRY J Date of judgment: 12 May 2017 Catchwords: TRADE MARKS – appeal under s 56, Trade Marks Act 1995 (Cth), from decision of delegate of the Registrar of Trademarks refusing opposition to registration of trade mark and allowing registration – registration opposed on ground that applicant for registration was not owner of the mark – failure by opponent to establish first use of the mark – first use by applicant for registration by entry into licencing agreement - whether intention to use the mark in good faith– whether registration application made in bad faith – whether use of mark likely to deceive or confuse – whether use of mark contrary to law – whether leave required to consider new ground raised in closing address on appeal – appeal dismissed TRADE MARKS – application under s 101(2) of Trade Marks Act for removal of trade mark – removal under s 92(4)(a) or (b) on grounds of alleged non-use – where conduct of applicant for removal presented insurmountable obstacle to use for the purposes of s 100(3)(c) – application dismissed EVIDENCE – impact of passage of time on quality of evidence – application of Jones v Dunkel where failure by a party to call potential witnesses – whether necessary for potential witness to be a person over whom the party had control – drawing of adverse inferences where no satisfactory explanation for failure to produce documents Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Trade Marks Act 1955 (Cth) Trade Marks Act 1995 (Cth) Trade Practices Act 1974 (Cth) Cases cited: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 Arnautovic v Cvitznovic [2011] FCA 809; (2011) 199 FCR 1 Aston v Harlee Manufacturing Company (1960) 103 CLR 391 Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39; (2011) 202 FCR 462 Australian Securities and Investments Commission (ASIC) v Hellicar [2012] HCA 17; (2012) 247 CLR 345 Blatch v Archer (1774) 1 Cowp 63 Briginshaw v Briginshaw (1938) 60 CLR 336 Brisbane South Regional Health Authority v Taylor (1996) 186 CLR 541 Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 Conquip Holdings Pty Ltd v S & A Restaurant Corporation [2000] AIPC 91 Re Carl Zeiss Pty Ltd's Application (1969) 122 CLR 1 Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd (1967) 116 CLR 254 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012 ] FCA 81; (2012) 201 FCR 565 Ho v Powell [2001] NSWCA 168; (2001) 51 NSWLR 572 at 576 Jafferjee v Scarlett (1937) 57 CLR 115 Jones v Dunkel (1959) 101 CLR 298 Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119 Moorgate Tobacco Co Ltd v Phillip Morris Limited (No. 2) (1984) 156 CLR 414 O'Donnell v Reichard [1975] VR 916 Payne v Parker [1976] 1 NSWLR 191 Pioneer Kabushiki Kaisha v Registrar of Trade Mark (1977) 137 CLR 670 Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 RHG Mortgage Limited v Rosario Ianni [2015] NSWCA 56 Sapient Australia Pty Ltd v SAP AG (2002) 55 IPR 638 Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121 Southcorp Brands Pty Ltd v CAN Industries Pty Ltd [2014] ATMO 27 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Suyen Corporation v Americana International Limited [2008] ATMO 4 SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152 Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388 UCP Gen Pharma AG v Mesoblast Inc [2012] FCA 210 Unilever Australia Ltd v Karounos and Another [2001] FCA 1132; (2001) 113 FCR 322 Unity Insurance Brokers Pty Ltd v Rocco Pezzano Pty Ltd (1998) 154 ALR 361 Watson v Foxman and Others (1995) 49 NSWLR 315 Woolly Bull Enterprises [2001] FCA 261; (2001) 107 FCR 166 Date of hearing: 11-15 April 2016, 3 May 2016, 8 June 2016, 25 July 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 394 Counsel for the Appellants/Applicants: Ms Baird SC and Mr Fox Solicitor for the Appellants/Applicants: Dibbs Barker Counsel for the Respondent: Mr Stuckey Solicitor for the Respondent: Wisewould Mahony ORDERS NSD 935 of 2014 BETWEEN: BAUER CONSUMER MEDIA LIMITED First Appellant BAUER MEDIA PTY LTD Second Appellant AND: EVERGREEN TELEVISION PTY LTD Respondent JUDGE: PERRY J DATE OF ORDER: 12 May 2017 THE COURT ORDERS THAT: 1. The appeal from the decision of the Registrar of Trade Marks given by her delegate on 25 August 2014 is dismissed. 2. The first and second appellants are to pay the respondent's costs as agreed or assessed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. ORDERS NSD 682 of 2015 BETWEEN: BAUER CONSUMER MEDIA LIMITED First Applicant BAUER MEDIA PTY LTD Second Applicant AND: EVERGREEN TELEVISION PTY LTD Respondent JUDGE: PERRY J DATE OF ORDER: 12 May 2017 THE COURT ORDERS THAT: 1. The application for an order pursuant to section 101(2) of the Trade Marks Act 1995 (Cth) that the Registrar of Trade Marks remove the Trade Mark Application Number 1324177 from the Registrar of Trade Marks is dismissed. 2. The first and second applicants are to pay the respondent's costs of the application as agreed or assessed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT 1 INTRODUCTION [1] 2 LEGISLATIVE OVERVIEW [7] 2.1 Date of the Act [7] 2.2 Concept of a trade mark [8] 2.3 Application for a trade mark [11] 2.4 Opposition to registration [15] 2.5 Appeal from a decision of the Registrar on an opposed application to the Federal Court [23] 2.6 Application for removal for non-use [25] 3 WITNESSES [26] 3.1 General [26] 3.2 Evidence for Bauer [28] 3.2.1 Mr Keith Falconer (CEO, Bauer, Trader Media (Formerly Trader/ACP)) [28] 3.2.2 Mr Macek Rubetzki (Media Legal IP) [32] 3.3 Evidence for the respondent, Evergreen [34] 3.3.1 Mr Colin Parrôt (Evergreen, Power Pact and Parable Productions) [34] 3.3.2 Mr Warren Parrôt (former employee, Trader) [38] 3.3.3 Mr Peter Wright (formerly Executive Officer, Caravan Trade & Industries Association of Victoria) [40] 4 FINDINGS AS TO CREDIT [43] 4.1 The impact generally of the passage of time as to the quality of evidence [43] 4.2 Mr Falconer [47] 4.3 Mr Colin Parrôt [52] 4.4 Mr Warren Parrôt [54] 4.5 Conclusion on credit/reliability of witnesses [55] 5 DEFICIENCIES IN THE EVIDENCE AND THE DRAWING OF INFERENCES [56] 5.1 The rule in Jones v Dunkel [56] 5.2 Does Jones v Dunkel apply with respect to Bauer's failure to call Miffy Coady, Mike Sinclair and Grant and James Manson? [64] 5.3 Failure by Bauer to adduce documentary evidence in support of key aspects of its case [73] 6 FINDINGS OF FACT [77] 6.1 The importance of the contextual narrative to the parties' arguments [77] 6.2 Development of the idea by Colin Parrôt and initial support from the industry [79] 6.3 Initial approaches to ACP [88] 6.3.1 Trader's business strategy relating to sponsored television programs [88] 6.3.2 Presentation of the opening draft for a pilot program (July 2004) [92] 6.4 The presentation to ACP on 24 August 2004 [96] 6.5 Follow up after the presentation [112] 6.6 Next steps as at 20 September 2004 [117] 6.7 The alleged meeting in September 2004 between Mr Falconer and Mr Colin Parrôt [121] 6.8 Network Nine are not interested (mid to late January 2005) [122] 6.9 The meeting with the Ten Network on Monday 24 January 2005 [124] 6.10 The pub meeting following the meeting with the Ten Network [131] 6.11 Filming of the pilot promo for the television program on 25 January 2005 [136] 6.12 Email correspondence on 27 and 28 January 2005 [139] 6.13 Registration of the domain name on 4 February 2005 [151] 6.14 Commissioning of the logo (7-8 February 2005) [154] 6.15 Email from Miffy Coady on 8 February 2005 [158] 6.16 The promotional video produced in February 2005 [159] 6.17 Conclusion of the licence agreement with Network TEN on 25 February 2005 [164] 6.18 Letter advising ACP of the licencing agreement between Evergreen and Channel Ten (28 February 2005) [168] 6.19 Preparation for the first series [172] 6.19.1 Evolution of the concept and rush to produce the first series [172] 6.19.2 Funding for the first series [175] 6.19.3 Arrangements between Bauer and Trader [183] 6.20 The first series [187] 6.21 Preparation for the second series (second half of 2005) [192] 6.22 The failure to conclude a contract between Evergreen and Bauer comes to Mr Falconer's attention and authority to enter into agreements with Evergreen and Channel Ten (July 2005) [196] 6.23 Series 2 to 5 and the transfer to Network Nine [201] 6.24 The program ceases to be broadcast nationally in early 2009 [204] 6.25 Initial approaches to Network Seven by Colin Parrôt in early 2009 [206] 6.26 Early stages in developing "What's Up Down Under" [208] 6.27 Warren Parrôt's power point presentation (17 April 2009) [213] 6.28 Continuing issues with broadcasting the program with Nine and decision to dispense with Evergreen as the producer (March to May 2009) [218] 6.29 Registration of the domain name and trade mark for What's Up Down Under on 12 June 2009 [221] 6.30 Warren Parrôt's redundancy and announcement about the "uncertain future" of Discover Downunder (22-26 June 2009) [222] 6.31 Evergreen's continuing negotiations with Channel Seven to broadcast a program with the name Discover Downunder [223] 6.32 Announcement that Discover Downunder would return (5 October 2009) [225] 6.33 Application to register the Mark on 9 October 2009 [226] 6.34 Correspondence between the parties following the breakdown in their relationship in relation to the continued production of Discover Downunder with Trader [227] 6.35 Correspondence between the parties with respect to the broadcast by Channel Seven of "What's Up Down Under" [235] 6.36 Findings with respect to contested matters of fact relied upon in support of the parties' respective claims for ownership of the Mark [236] 6.36.1 Was there a meeting with Mr Falconer in September 2004 at which Warren Parrôt suggested the name Discover DownUnder? [236] 6.36.2 Who paid the airfares for the meeting with Channel Ten on 24 January 2005? [247] 6.36.3 When did Colin Parrôt become aware that the domain name www.discoverdownunder.com had been registered on 4 February 2005? [252] 7 CONSIDERATION: THE APPEAL PROCEEDING [263] 7.1 Issues [263] 7.2 Summary of key factual findings [266] 7.3 Issue 1: Ownership of the Mark (s 58) [267] 7.3.1 Relevant principles [267] 7.3.2 Alleged first use by Bauer by the provision of the promotional video in the course of trade [275] 7.3.2.1 The changes in Bauer's case in the course of the litigation [275] 7.3.2.2 Evidence bearing on whether and when the promotional video clip was sent to CDM [280] 7.3.2.3 Findings: has Bauer established that the promotional video clip was sent to CDM before conclusion of the licencing agreement with Channel Ten? [293] 7.3.3 Failure by Bauer to prove first use [298] 7.4 Issue 2: Did Evergreen intend to use the Mark in good faith when it applied for registration of the Mark (s 59(a)) [302] 7.4.1 Bauer's submissions [302] 7.4.2 Is leave required to raise the registration application construction issue? [304] 7.4.3 Relevant principles [318] 7.4.4 The factual use issue: did Evergreen intend in good faith to use the Mark? [321] 7.4.4.1 Evidence bearing on the factual use issue [324] 7.4.4.2 Findings on the factual use issue [332] 7.5 Issue 3: Was the application for registration of the Mark made in bad faith? (s 62A) [340] 7.6 Issue 4: Alleged confusion by reason of another trade mark having acquired a reputation (s 60) [343] 7.7 Issue 5: Whether use of the Mark by Evergreen would be contrary to law (s 42(b)) [354] 8 CONSIDERATION: THE NON-USE PROCEEDING [357] 8.1 Relevant provisions: removal from the Register for non-use [357] 8.2 Issues [365] 8.3 A preliminary issue [370] 8.4 The first non-use period [372] 8.5 The second non-use period [377] 8.5.1 Circumstances in which non-use is rebutted by an obstacle for the purposes of s 100(3)(c) [377] 8.5.2 Was there an obstacle to use of the Mark by Evergreen under s 100(3)(c) so as to rebut non-use? [384] 8.5.3 Exercise of discretion [387] 9 CONCLUSION [394] PERRY J: 1. INTRODUCTION 1 Before the Court are two proceedings commenced by the applicants, Bauer Consumer Media Ltd (BCM) and Bauer Media Pty Ltd (BM) (together Bauer), against Evergreen Television Pty Ltd (Evergreen). The proceedings concern the ownership, registrability and continuance on the Register of Trademarks of trademark application no. 1324177 (the application) for the phrase "Discover Downunder" (in a stylised title case form) (the Mark) in relation to Class 41 of the Register, being "the production of television programs" (the services). 2 The first proceeding, NSD 935 of 2014, (the appeal proceeding) is an appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Act) from the decision of a delegate of the Registrar of Trademarks (the Delegate) given on 25 August 2014 to refuse Bauer's opposition to registration of the application and to allow the application for the trade mark made on 9 October 2009 to proceed to registration. In the appeal proceeding, Bauer opposes registration on the following grounds: that Evergreen was not the owner of the Mark (s 58), did not intend to use the Mark in good faith (s 59), or applied for the Mark in bad faith (s 62A); that the use of the Mark would be likely to deceive or cause confusion as at the filing date because of the reputation of Discover Downunder as a prior trade (s 60); and that Evergreen's use of the Mark would be contrary to the Trade Practices Act 1974 (Cth) (TPA) and therefore contrary to law (s 42). While Bauer initially contended also that the Mark is not capable of distinguishing Evergreen services from similar services of other persons (s 41), in closing submissions Bauer stated that this ground was no longer pressed. It is not in dispute that it would suffice if Bauer were to succeed on any of the grounds which were pressed. Save for s 59 as explained below, Bauer accepts that it bears the onus of establishing on the balance of probabilities that these grounds of opposition are made out: see Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (Food Channel); and Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 at [132]-[134]. 3 The second proceeding, NSD 682 of 2015, (the non-use proceeding) is an application pursuant to s 101(2) of the Act seeking removal of the Mark from the Register of Trade Marks on the grounds of non-use under s 92(4)(a) or, in the alternative, s 92(4)(b) of the Act. The non-use proceeding was commenced in this Court rather than initially before the Trade Marks Office by reason of s 92(3) of the Act as the appeal proceeding was already pending in this Court. In these proceedings, Bauer contends that Evergreen must establish genuine use of the Application within two separate non-use periods, namely: (1) for the purposes of s 92(4)(a) from the Filing Date of 9 October 2009 to 11 May 2015 (the first non-use Period); and (2) for the purposes of s 92(4)(b), from 11 May 2012 to 10 May 2015 (the Second Non-Use Period). 4 Bauer accepts that it bears a threshold onus to demonstrate that the Mark has not been used in either of the non-use periods but contends that the onus then shifts to Evergreen to establish use in the relevant periods or in the alternative to establish that the Court ought not to order removal of the trade mark in the exercise of discretion. 5 By orders made by consent on 10 November 2015, both proceedings are to be heard and determined together. 6 For the reasons set out below, I consider that Evergreen is the owner of the Mark and that none of the grounds of opposition are made out. As such the appeal is dismissed. I also consider that the non-use proceedings must be dismissed. 2. LEGISLATIVE OVERVIEW 2.1 Date of the Act 7 It was not in dispute that the Act applies as at the date on which the trade mark application was filed, namely, 9 October 2009. As a result, this appeal is governed by the Act before it was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) which largely took effect from 15 April 2013. 2.2 Concept of a trade mark 8 A "trade mark" is defined in s 17 of the Act as: … a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. 9 A "sign" in turn is defined in s 6 to include "the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent." It is not in dispute that "Discover Downunder" is capable of being registered under the Act as a trade mark. 10 Registration of a trade mark confers upon the registered owner the exclusive rights to use the trade mark and to authorise other persons to use it in relation to the goods and/or services in respect of which the trade mark is registered, together with the right to obtain relief under the Act for infringement (ss 21 and 22 of the Act). 2.3 Application for a trade mark 11 Section 27 of the Act provides that "[a] person may apply for registration of a trademark in respect of goods and/or services if: (a) the person claims to be the owner of the trademark; and (b) one of the following applies: (i) the person is using or intends to use the trademark in relation to the goods and/or services; (ii) the person has authorised or intends to use another person to use the trade mark in relation to the goods and/or services; (iii) 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. 12 As such, the Act allows an applicant to obtain title to a trade mark prior to use, so long as the requirements in s 27 are met: Food Channel at [49] (the Court). 13 Under s 31, the Registrar must examine and report on whether the application has been made in accordance with the Act and whether there are grounds under the Act for rejecting it. After the examination, the Registrar must accept the application unless she or he is satisfied that it is not made in accordance with the Act or there are grounds under the Act for rejecting it (s 33). 14 It is apparent from the criteria in s 27(b), the grounds of opposition, and the capacity to apply to remove a trade mark for non-use that, while it is an object of the 1995 Act to create, by registration of trade marks, a species of tradeable property in the form of monopoly, that right is to be conferred only where such marks are connected with actual or contemplated trade in goods or services. In this regard, as High Court considered with respect to the 1955 Act in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 ("Nike"), in observing that the Act struck a balance between various disparate interests: 42. …[T]he Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public's interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creating of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment … 2.4 Opposition to registration 15 If the Registrar has accepted an application for the registration of a trade mark, a person may oppose registration by filing a notice of opposition under s 52 of the Act. Section 52(4) provides that "[t]he registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds." Section 57 of Division 2 of Part 5 of the Act in turn provides that: The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically. 16 The grounds of opposition are specified in the Act. Relevantly, in the first place, registration may be opposed under s 58 on the ground that the applicant "is not the owner of the trade mark" which is to be assessed as at the date of the application for registration. 17 Secondly, registration may be opposed under s 59 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. 18 Thirdly, registration may be opposed under s 62A on the ground that "the application was made in bad faith". 19 Fourthly registration may be opposed under s 60 on the ground that the use of the trade mark would be likely to deceive or confuse because another trade mark had previously acquired a reputation in Australia in respect of the same goods or services. 20 Finally, s 42 provides that: 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. 21 In this case it is said that at the time of the application for registration, Evergreen's use of the Mark would be misleading or deceptive contrary to the Trade Practices Act 1974 (Cth) (being the law then in force at the filing date) and therefore contrary to law under s 42 of the Act. 22 Where, as here, the application is opposed, the Registrar must give the opponent and applicant an opportunity to be heard in accordance with s 54 and must thereafter under s 55: …decide (a) to refuse to register the trade mark; or (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established. 2.5 Appeal from a decision of the Registrar on an opposed application to the Federal Court 23 A right of appeal from a decision of the Registrar to the Federal Court under s 55 is provided for by s 56 of the Act. It is important to bear in mind that, notwithstanding its description as an "appeal", an appeal under s 56 of Act is a proceeding in the original jurisdiction of the Court in which the Court in the exercise of judicial power determines the same statutory questions as those determined by the Registrar in the exercise of executive power: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [32]; Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119 (Malibu) at [6] (Finkelstein J). The Court therefore determines for itself the merits of the application and grounds of opposition, and is not limited to determining whether the Registrar's decision was correct in law: Jafferjee v Scarlett (1937) 57 CLR 115 at 126; Malibu at [6]. In this regard, Yates J in Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 explained the manner in which the Court should approach the weight to be given to the decision of the Registrar: 23 What is required in that regard is a hearing de novo in which the Court approaches the matter "afresh and without undue concern as to the ratio decidendi of the Registrar": Rowntree PLC v Rollbits Pty Ltd (1988) 90 FLR 398 at 403. That said, weight should be given to the Registrar's opinion as "a skilled and experienced person": Jafferjee at 126. On some occasions, it has been said that "due weight" should be given to the Registrar's opinion: Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 at 308. On other occasions, it has been said that "great weight" (Eclipse at 321; Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 41) or "very considerable importance" (Joseph Bancroft & Sons Co v Registrar of Trade Marks (1957) 99 CLR 453 at 457) should be given to the Registrar's opinion. 24 I do not think that, by using these varying expressions, the cases intend to convey different notions of deference. Nevertheless, the degree to which weight should be given to the Registrar's opinion will, no doubt, depend on the circumstances of each case and the particular question involved. For example, in the present case, both parties accepted that the weight to be given to the Registrar's opinion may be affected by the fact that evidence has been adduced in the appeal which was not before the delegate. 25 In Woolworths, French J observed (at 377): … Weight can be given to the Registrar's opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as "deceptive similarity" there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean that the Court is bound to accept the Registrar's factual judgment. Rather it can be treated as a factor relevant to the Court's own evaluation. 26 Although these observations were made in the context of considering whether a ground of rejection existed under s 44 of the Act in respect of a particular application, they are apposite to a case concerning the application of s 41 of the Act. 24 In other words, while the weight to be given to the evaluation of the Registrar should take account of the Registrar's expertise and experience, nonetheless it will be affected by the particular circumstances and the particular issue in question. 2.6 Application for removal for non-use 25 Section 92(3) of the Act provides that a person may apply to the Court for orders requiring the Registrar to remove a trade mark from the Register for non-use. Under s 92(4), such an application may be made either on the ground that: (a) when the application for registration was filed, the applicant had no intention in good faith to use or authorise the use of the trade mark in Australia and has not used it in relation to those goods or services at any time up to one month before the non-use application was filed; or (b) where the trade mark has been registered for three years ending one month before the non-use application, at no time during that period has the registered owner used the trade mark in good faith in Australia in relation to the goods or services to which it relates. These provisions are considered in more detail later in these reasons. 3. WITNESSES 3.1 General 26 On the final day of the hearing, orders were made such that the evidence in one proceeding would be received in evidence in the other proceeding, subject to relevance and the rulings made on objections. That notwithstanding, as I note below, evidence was initially filed separately in the appeal and non-use proceedings and it is apparent (as the parties accept) that not all of the evidence filed in each proceeding is relevant to determination of the issues in the other proceeding. 27 I also note that while initially certain annexures/exhibits to affidavits on which Bauer sought to rely were identified as confidential, on the first day of the trial Bauer abandoned any application for orders to protect the confidentiality of any of those documents. 3.2 Evidence for Bauer 3.2.1 Mr Keith Falconer (CEO, Bauer, Trader Media (Formerly Trader/ACP)) 28 Bauer relied primarily upon the evidence of Keith Falconer who is the Chief Executive Officer (CEO) of Bauer Trader Media and has held that position since March 2004. In that role he had responsibility for approximately 200 staff, 20 to 30 magazines, 5 to 10 websites, and 2 television programmes, the Car Show and the Boat Show. Bauer Trader Media was formerly Trader Classifieds (Trader). Trader was the name of the business division of Bauer Media Pty Ltd, and was formerly known by different names being, chronologically, ACP Publishing Pty Ltd, ACP Magazines Ltd and finally Bauer Media Limited. 29 Prior to his appointment as CEO of Trader, Mr Falconer held the position of Chief Operations Officer for Trader commencing in April 2002. Mr Falconer has worked in the media industry for approximately 29 years and in particular since 1993 for businesses operating in New Zealand and Australia through various corporate ownership structures forming part of the broader Bauer Media group, including when Bauer Media was owned by Publishing and Broadcasting Ltd (PBL) and then by Nine Entertainment Code Pty Ltd. 30 Mr Falconer gave evidence by affidavit sworn on 17 June 2015 and 7 September 2015 filed in the appeal proceeding and in cross-examination. Mr Falconer's declarations dated 21 December 2011 and 7 December 2012 in the opposition proceeding before the Registrar were also received in evidence as part of Exhibit A19. 31 Mr Falconer also gave evidence by affidavits sworn on 6 October 2015 and 10 November 2015 which were filed in support of the application in the non-use proceedings. 3.2.2 Mr Macek Rubetzki (Media Legal IP) 32 Bauer also relied upon the affidavit of Macek Rubetzki, the Principal Solicitor of Media Legal IP law firm, sworn on 2 October 2015. Mr Rubetzki was not cross-examined. He assisted the applicants' solicitors in relation to the conduct of the non-use and opposition proceedings before the Registrar including in the undertaking of various searches. He has a solicitor/client relationship with the second applicant, Bauer Media. 33 Those parts of Mr Rubetzki's declaration dated 15 November 2011 in the opposition proceeding before the Registrar which are contained in Exhibit A19 were also tendered and received in evidence. 3.3 Evidence for the respondent, Evergreen 3.3.1 Mr Colin Parrôt (Evergreen, Power Pact and Parable Productions) 34 Colin (or "Col") Parrôt, a producer, was the primary witness for Evergreen and gave evidence by affidavit sworn on 10 August 2015 (filed in the appeal proceeding) and 21 October 2015 (filed in the non-use proceeding). In addition, the declarations of Colin Parrôt dated 9 December 2011, 13 or 14 April 2012, and 7 August 2012 were received in evidence as part of Exhibit A19. He was also cross-examined at length. 35 Colin Parrôt established the respondent, Evergreen, in 2001 with cameraman Simon Hearn. They were joint directors and shareholders until 22 November 2007 when Mr Hearn ceased being a director and shareholder and Colin Parrôt became the sole director and shareholder. Evergreen was established to produce television programs for broadcast. 36 Prior to establishing Evergreen, Colin Parrôt worked in the advertising industry producing advertisements. He had an advertising business called Impact Advertising which was established in 1979. From 1998 Colin Parrôt ran an advertising business from an entity called Power Pact Advertising and owned the company Power Pact Advertising Pty Ltd (Power Pact). Power Pact was incorporated in 1998 and engaged in advertising. 37 In addition, on 23 September 2009 Colin Parrôt incorporated Parable Productions Pty Limited (Parable Productions) and was its sole director. Parable Productions was incorporated to produce the program "What's up down under" and entered into an agreement with Channel Seven for that purpose on 24 September 2009, as I later explain. 3.3.2 Mr Warren Parrôt (former employee, Trader) 38 Warren Parrôt is Colin Parrôt's son. He was employed between 2000 and 2009 by ACP initially in sales as a Senior Accounts Manager and then in April 2004 as National Corporate Advertising Manager in Trader. In the latter position, Warren Parrôt was responsible for managing an external sales force of contract salesmen engaged to sell advertising space across a portfolio of some 16 magazine titles published by ACP. He also assisted in selling ACP's online services which were effectively classified advertising websites. In addition, Warren Parrôt was responsible for managing sales in relation to an arrangement between ACP and Q Media, the latter being a company belonging to Mr Glenn Ridge. ACP owned The Boat Show to promote a website and its magazines "Trailer Boat" and "Trade-a-Boat", while Q Media owned The Car Show which ACP used to promote sales through its website and a magazine called "Unique Cars". 39 Evergreen relied upon the affidavit of Warren Parrôt sworn on 10 August 2015 filed in the appeal. Warren Parrôt's declaration dated 10 April 2012 in the opposition proceeding before the Registrar was also received in evidence as part of Exhibit A19. Warren Parrôt was also cross-examined. 3.3.3 Mr Peter Wright (formerly Executive Officer, Caravan Trade & Industries Association of Victoria) 40 Evergreen also relied upon the affidavit evidence of Peter Matthew Wright, retired, sworn on 17 July 2015. Mr Wright was also cross-examined. 41 Mr Wright was the Executive Officer of the Caravan Trade & Industries Association of Victoria (CTIAV) from about July 2001 until 2011 when he retired from that position. The CTIAV is a representative body for trade and retail businesses in the caravan industry in Victoria. Its members are typically manufacturers, retailers and service providers of caravan and camping products. Its objectives included promoting the services of its members to customers. As I later explain, the CTIAV was a principal sponsor of the program, Discover Downunder in the first and second series and agreed to continue funding when the show moved to Channel Nine. As the Executive Officer of the CTIAV, Mr Wright managed its day-to-day operations and was responsible among other things for managing advertising and for sourcing ideas for sponsorship and promotional activities. 42 The CTIAV was one of a number of caravan industry associations at state and territory level, albeit that some such associations had broader membership base (including, for example, caravan parks) than other state associations where caravan parks had a separate association as was the case in Victoria. These associations came under the umbrella of a national association, Caravan Industry Australia (CIA). 4. FINDINGS AS TO CREDIT 4.1 The impact generally of the passage of time as to the quality of evidence 43 In assessing the evidence, it is important to bear in mind the impact generally of the passage of time upon the quality of evidence available in the case. In particular, the principal events relevant to the appeal proceeding on the basis of which the parties respectively claim ownership of the mark occurred between early 2004 and early 2005. In this regard, as McHugh J in Brisbane South Regional Health Authority v Taylor (1996) 186 CLR 541 at 551 (Brisbane South) explained in identifying the policy underlying the enactment of limitations periods, the impact of the passage of time on the quality of both documentary evidence and the evidence of witness is insidious and cannot necessarily be measured: The enactment of time limitations has been driven by the general perception that "[w]here there is delay the whole quality of justice deteriorates". Sometimes the deterioration in quality is palpable, as in the case where a crucial witness is dead or an important document has been destroyed. But sometimes, perhaps more often than we realise, the deterioration in quality is not recognisable even by the parties. Prejudice may exist without the parties or anybody else realising that it exists. As the United States Supreme Court pointed out in Barker v Wingo, "what has been forgotten can rarely be shown". So, it must often happen that important, perhaps decisive, evidence has disappeared without anybody now "knowing" that it ever existed. Similarly, it must often happen that time will diminish the significance of a known fact or circumstance because its relationship to the cause of action is no longer as apparent as it was when the cause of action arose. A verdict may appear well based on the evidence given in the proceedings but, if the tribunal of fact had all the evidence concerning the matter, an opposite result may have ensued. The longer the delay in commencing proceedings, the more likely it is that the case will be decided on less evidence than was available to the parties at the time that the cause of action arose. 44 Further, McLelland CJ in Equity speaking of the fallibility of human memory in Watson v Foxman and Others (1995) 49 NSWLR 315 (Watson) at 319 pointedly explained the kinds of influences that may impact upon the processes of memory with the passing of time: …human memory of what was said in a conversation is fallible for a variety of reasons, and ordinarily the degree of fallibility increases with the passage of time, particularly where disputes or litigation intervene, and the processes of memory are overlaid, often subconsciously, by perceptions or self-interest as well as conscious consideration of what should have been said or could have been said. All too often what is actually remembered is little more than an impression from which plausible details are then, again often subconsciously, constructed. All this is a matter of ordinary human experience. 45 To similar effect, Katzmann J stated in Arnautovic v Cvitznovic [2011] FCA 809 at [73] that: In the absence of notes it is, generally speaking, impossible to accurately recall the terms of any conversation six months after it took place. Human memory is notoriously unreliable. As Spigelman CJ recently observed ("Truth and the Law", The 2011 Sir Maurice Byers Lecture, 26 May 2011): Witnesses can, without any dissimulation or propensity to lie, confidently assert the truth of conversations, observations and events which did not happen. The plasticity of memory impedes the truth finding process. This is not an uncommon phenomenon… 46 These observations apply with particular force in this case where, as I observe, there were significant differences in the accounts of the primary witnesses for each party including as to whether or not particular meetings took place, what was said and so forth, the credibility of the principal witnesses was very much in issue, and the primary witnesses for both parties had a considerable stake in the outcome of the proceedings. This means that in the case in particular of Mr Falconer's evidence and that of Colin and Warren Parrôt, I have given greater weight to evidence which is corroborated by the contemporaneous documents. On the other hand, both parties accepted that Mr Wright had no personal stake in the proceedings and his evidence, subject to the inevitable impact of time, was the more reliable. 4.2 Mr Falconer 47 In controversial matters, I do not consider that Mr Falconer's evidence can be relied upon absent corroboration. First, there were significant inconsistencies in his evidence before the Registrar and on the appeal. An example concerns the critical issue of when and by whom the name "Discover Downunder" was devised. 48 Secondly, he engaged to some extent in reconstructing events. An example is his evidence attempting to explain how he recalled only in these proceedings that he had had a meeting with Warren and Colin Parrôt in September 2004 at which he says that Warren Parrôt suggested the name "Discover Down Under": see below at [236]-[239] below. 49 Thirdly, as Evergreen submits, Mr Falconer gave a vague and unsatisfactory account of the efforts undertaken by others to locate documents within Bauer which might have supported his account on matters such as the alleged internal use of Discover Downunder for the program from September 2004: see further at [73]-[76] below. 50 Fourthly, I do not accept Bauer's submission that Mr Falconer's evidence, in contrast to that of Colin and Warren Parrôt, was unaffected by advocacy. I formed the impression that vindicating Bauer's position in the litigation meant a lot to him personally and that is scarcely surprising given his lengthy role within the Bauer group of companies and his level of seniority. 51 In finding Mr Falconer's evidence on controversial matters is not reliable unless corroborated by documentary evidence or Mr Wright's evidence, I emphasise that I find only that the likelihood is that this is the result of the passage of time and of the kinds of subconscious influences which may lead to the unconscious reconstruction of events of which McLelland CJ in Equity spoke in Watson (as quoted at [44] above). It is also no doubt affected by the fact that Mr Falconer had many other responsibilities and on his own evidence had limited personal involvement only in the program Discovery Downunder throughout its development and running. That limited involvement is only to be expected given the scale of his responsibilities as CEO of Trader: see above at [28]. In this regard, as I later explain I have also taken into account when relevant the failure by Bauer to call witnesses with personal knowledge of relevant events: see below at [64]-[72]. 4.3 Mr Colin Parrôt 52 Overall I formed a favourable view of Colin Parrôt's honesty. He was straightforward in his answers and his evidence was unshaken by extensive and often vigorous cross-examination. There were matters on which he felt confident in his recollection of events and he gave credible answers when pressed as to why he might recall those events. Equally he did not hesitate to state where he could not recall events. That notwithstanding, not surprisingly there was also a degree of reconstruction in his recollection of events by reference to documents, as he accepted for example in his recollection of when the Pilot Promo for the first series was filmed. He was also prepared to stand corrected when he was proved wrong. For example, when the discrepancy between his recollection of the date of an important meeting with Bruce Gordon in 2009 with the date as referenced in his diary and in an email sent the following day was pointed out to him in cross-examination, he immediately accepted the documentary record as correct and was in my view genuinely apologetic about the error saying "I stand corrected. It's my mistake on that." He did not doggedly stand by his recollection and try to explain away the documentary evidence. 53 It is, however, also fair to say that Colin Parrôt felt very strongly that he had been wronged by Bauer and that this came out repeatedly in his evidence. I have no doubt that his feeling that he had been wronged was genuinely felt. I also consider that it is likely that his recollection of events was clearer and more specific than that of Mr Falconer, not least because this was a really important matter personally to him. The concept of a program like Discover Downunder was something he had conceived initially back in the late 1980's and it meant a lot to him to see it brought to fruition. Nonetheless the fact that he gave evidence confidently does not mean that time has not also impacted upon his recollection of events; nor that his strong perception that he is "in the right" may not have subconsciously impacted on his recollection of events and conversations. However, unlike Mr Falconer, in general Colin Parrôt's recollections on contentious matters are corroborated by contemporaneous records. 4.4 Mr Warren Parrôt 54 Warren Parrôt also clearly felt that he and his father had been wronged, including in the manner in which he personally had been treated in the lead up to his redundancy from Bauer. No doubt, together with the passage of time, that emotional state impacted to some degree upon his evidence. However, I accept him as honest and straightforward. His evidence is largely consistent with his father's evidence and, more importantly, with the documentary record. I do not accept that his credibility was damaged by cross-examination which was at times extensive and vigorous, including on a series of documents put to him in cross-examination for the purpose of damaging his credibility. For example, one of the major attacks upon his credibility related to a PowerPoint presentation which he prepared in the months leading up to his dismissal. In closing submissions, Bauer submitted that Warren Parrôt's evidence regarding the circumstances in which he had developed the business plan represented in the PowerPoint presentation for a re-branded television show "was clearly an unreliable reconstruction which he devised in the course of giving his oral evidence." For reasons I later explain, I do not accept that submission and find credible as against vigorous cross-examination his unshaken and persuasive testimony that he prepared the plan as a backup plan at a time when he was under great stress at Bauer in the period leading up to his dismissal: see below at [213]-[215]. 4.5 Conclusion on credit/reliability of witnesses 55 In short, each of the key witnesses, Mr Falconer for Bauer, and Colin and Warren Parrôt for Evergreen, can fairly be described as advocates for a favourable outcome in their respective interests and I accept that each genuinely believed the claim to ownership of the Mark by their respective party. However, as Evergreen submits, a major point of distinction between them is that the evidence of Colin and Warren Parrôt on the critical facts in issue is substantially supported by contemporaneous documentation and the independent evidence of Mr Wright. On the other hand, Mr Falconer's evidence on controversial matters is substantially inconsistent with the evidence in the documents or uncorroborated by documentary evidence including as to the alleged meeting with Colin and Warren Parrôt on 24 September 2004 at which he said that Warren came up with the name Discover Downunder and the alleged internal use of the name "Discover Downunder" thereafter (see below at [236]-[245]). 5. DEFICIENCIES IN THE EVIDENCE AND THE DRAWING OF INFERENCES 5.1 The rule in Jones v Dunkel 56 One significant issue between the parties concerned whether adverse inferences should be drawn on the basis of the rule in Jones v Dunkel (1959) 101 CLR 298 (Jones v Dunkel) against Bauer by reason of its failure to call Ms Coady, Messrs Grant and James Manson, and to a lesser extent, Mr Sinclair. 57 The rule in Jones v Dunkel is based on common sense, namely, that an unexplained failure by a party to call a witness may, in appropriate circumstances, base an inference that the evidence of that witness would not have assisted that party's case: Jones v Dunkel at 308 (Kitto J), 312 (Menzies J) and 320-321 (Windeyer J). While the rule may make certain evidence or the inferences which may be drawn from the evidence more probable, it cannot fill gaps in the evidence, or convert conjecture and suspicion into inference: Jones v Dunkel; Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121 at [53] (Gleeson CJ and McHugh J). As for example, Newton and Norris JJ held in O'Donnell v Reichard [1975] VR 916 at 929 in explaining the proper manner in which the rule may be applied; …where a party without explanation fails to call as a witness a person whom he might reasonably be expected to call, if that person's evidence would be favourable to him, then, although the jury may not treat as evidence what they may as a matter of speculation think that that person would have said if he had been called as a witness, nevertheless it is open to the jury to infer that that person's evidence would not have helped that party's case; if the jury draw that inference, then they may properly take it into account against the party in question for two purposes, namely: (a) in deciding whether to accept any particular evidence, which has in fact been given, either for or against that party, and which relates to a matter with respect to which the person not called as a witness could have spoken; and (b) in deciding whether to draw inferences of fact, which are open to them upon evidence which has been given, again in relation to matters with respect to which the person not called as a witness could have spoken. (emphasis in the original) 58 Underpinning Jones v Dunkel is the general principle tracing back to the remarks of Lord Mansfield in Blatch v Archer (1774) 1 Cowp 63 at 65 that "all evidence is to be weighed according to the proof which it was in the power of one side to have produced, and in the power of the other to have contradicted". As Hodgson JA (with whose reasons Beazley JA agreed) explained in Ho v Powell [2001] NSWCA 168; (2001) 51 NSWLR 572: 14. … in deciding facts according to the civil standard of proof, the court is dealing with two questions: not just what are the probabilities on the limited material which the court has, but also whether that limited material is an appropriate basis on which to reach a reasonable decision… 15. In considering the second question, it is important to have regard to the ability of parties, particularly parties bearing the onus of proof, to lead evidence on a particular matter, and the extent to which they have in fact done so… (citations omitted) 59 This principle is not limited to the failure to call a particular witness: other instances where it may be relied upon include a failure to adduce any evidence at all, a failure to produce a particular document, or a failure to prove a particular fact (Payne v Parker [1976] 1 NSWLR 191 (Payne) at 201(3) (Glass JA)). 60 Importantly, Glass JA in Payne at 201 identified three conditions for the existence of the principle in Jones v Dunkel, namely: "(a) the missing witness would be expected to be called by one party rather than the other, (b) his evidence would elucidate a particular matter, (c) his absence is unexplained." As to the first condition, Glass JA explained at 201 that: The first condition is also described as existing where it would be natural for one party to produce the witness: … or the witness would be expected to be available to one party rather than the other… or where the circumstances excuse one party from calling the witness, but require the other party to call him… or where he might be regarded as in the camp of one party, so as to make it unrealistic for the other party to call him… or where the witness' knowledge may be regarded as the knowledge of one party rather than the other… or where his absence should be regarded as adverse to the case of one party rather than the other…It has been observed that the higher the missing witness stands in the confidence of one party, the more reason there will be for thinking that his knowledge is available to that party rather than his adversary… If the witness is equally available to both parties, for example, a police officer, the condition, generally speaking, stands unsatisfied. There is, however, some judicial opinion that this is not necessarily so…. Evidence capable of satisfying this condition has been held to exist in relation to a party's foreman… his safety officer… his accountant… his treating doctor… (citations omitted) 61 While Glass JA was in dissent in the result in Payne, these passages were accepted as correctly stating the relevant principles in RHG Mortgage Limited v Rosario Ianni [2015] NSWCA 56 (RHG Mortgage) at [78] per McColl JA (Sackville AJA agreeing). 62 As to Glass JA's second condition, McColl AJA in RHG Mortgage at [76] explained that "The circumstances for drawing a Jones v Dunkel inference are found where the uncalled witness is 'a person presumably able to put the true complexion on the facts relied on [by a party] as the ground' for any inference favourable to the plaintiff". 63 As to the third condition, her Honour explained in RHG Mortgage that: 75. Any "explanation" such as unavailability or absence of recollection for the failure to call the witness must be established by evidence: West v Government Insurance Office (NSW) [1981] HCA 38; (1981) 148 CLR 62 (at 70) per Murphy J; Rowell v Larter (1986) 6 NSWLR 21 (at 24 – 25) per Young J (as his Honour then was). 5.2 Does Jones v Dunkel apply with respect to Bauer's failure to call Miffy Coady, Mike Sinclair and Grant and James Manson? 64 Evergreen contends that on each of the points on which Mr Falconer's sole testimony is the only evidence, there are other witnesses "in the Bauer camp" who ought to have been capable of corroborating his evidence. Specifically, Evergreen relied upon the failure by Bauer to call the following witnesses whose relevant knowledge may be summarised as follows: (1) Miffy Coady who had immediate supervision of Warren Parrôt at Trader. In particular, as I later explain, Ms Coady was the author of an email on 27 January 2005 describing the show as "Discover Down Under" and it was her diary entries on 27 and 28 January 2005 which variously described the show as "Discovery Downunder" and "Discover Downunder", each of which were annexed to Mr Falconer's affidavit evidence. Bauer relied upon these documents in support of its claim to ownership of the Mark on the basis that they demonstrated that the name Discover Downunder was being used internally within Bauer before Colin Parrôt alleges that the name was settled upon (see further at [140] and [246]); (2) Mike Sinclair, who was Bauer's editor-in-chief and had direct dealings with Colin and Warren Parrôt and the program, including being implicated in certain key controversial events (e.g. the question of who paid the airfares for the meeting with Channel Ten on 24 January 2005 (see at [247] below)); (3) Grant and James Manson from Cameron Damon Media (CDM) to whom among other things a promotional video had allegedly been sent by Bauer before execution of the contract between Evergreen and Channel Ten, being the act allegedly constituting Bauer's first use of the Mark. I also note that, despite changing its case as to first use in the course of the trial from the alleged distribution of the promotional video by CDM to potential clients, to Bauer sending the promotional video to CDM (see below at [275]-[279]), Grant and/or James Manson would have had relevant knowledge on either case. 65 With respect to these persons, Mr Falconer gave evidence that: (1) Miffy Coady lived only a few streets away from him in Melbourne; (2) Mike Sinclair subsequently went to Carsales.com.au (a business which Bauer sold in 2005) and was still there; (3) CDM were ACP's media sales representatives at all relevant times, there is still a commercial relationship between Bauer and CDM for media sales, and James and Grant Manson are still at CDM in Melbourne; and, (4) all of these people would have been available to Mr Falconer if he wished to speak to them. 66 Bauer, however, submitted that it was not suggested in evidence (nor is it the case) that any of those persons is a present employee of Bauer or a person over whom Bauer had any control. As such in its submission there is no basis for drawing any adverse inference against Bauer by reason of it not eliciting testimony from them and to do so would misapply Jones v Dunkel. Rather, Bauer submits that either party could potentially have called any of Ms Coady, Mr Sinclair, or Messrs Manson. In its submission, the fact that neither party called any of these witnesses ought not to have the consequence that a failure to do so should result in an adverse inference being drawn against it. 67 I do not accept Bauer's submissions. 68 First, the test is not whether the potential witness is a present employee or someone over whom a party had "control". The question is whether it would have been natural for Bauer or Evergreen to produce the witness. Given that Miffy Coady and Mike Sinclair had previously been employed by Bauer and the issues on which they could have given relevant evidence related to matters of which they would have had knowledge by reason of their former employment with Bauer, they were plainly in the Bauer camp, and it was unrealistic to expect Evergreen to call them. The same is the case with respect to James and Grant Manson who remain in a longstanding business relationship with Bauer. The submission by Bauer that Jones v Dunkel cannot be invoked by Evergreen because the 2005 contract between CDM and Bauer states that CDM is not the agent for Bauer is premised upon the erroneous assumption that the rule applies only where a party has control over the person not called. 69 Secondly, the evidence did not demonstrate that these persons were unavailable. To the contrary, as earlier stated Mr Falconer knew where they were and accepted that he could have spoken to any of them. Indeed, Mr Falconer relied in his evidence upon statements which he attributed to Grant Manson about the use to which CDM put the video (see below at [290]-[291]). 70 Thirdly, Bauer did not dispute that these people could have given relevant evidence. To the contrary it is apparent from the evidence that they would have had personal knowledge of highly relevant facts in issue. 71 Finally, there is no evidence explaining why these persons were not called by Bauer. 72 In those circumstances, as I later explain there are a number of issues in relation to which I consider that an adverse inference ought properly to be drawn against Bauer in line with Blatch v Archer and Jones v Dunkel by reason of Bauer's failure to call these individuals. 5.3 Failure by Bauer to adduce documentary evidence in support of key aspects of its case 73 Nor is the evidence as to the lack of documents in support of Bauer's case satisfactory. Mr Falconer gave evidence that in 2004, ACP had no system in place for keeping all of the records relating to a particular transaction together, and that it had "a very manual process around billing" and keeping files in particular matters. While he accepted that Bauer was using email extensively in 2004, that emails back to at least 2003 had been produced, and that Bauer has retained a substantial quantity of its communications, he said that he did not think that Bauer had access to all emails back then – only "[a]t a general level" - and he thought there had been some issues with archiving historic documentation. Significantly there was no direct evidence as to the scope of searches of ACP/Trader documentation that had been undertaken and any difficulties in archiving. Mr Falconer did not personally inspect the records but instructed Macek Rubetzki in the legal department to do so. While Mr Falconer said that he believed that all of the relevant documents that might be found among the records had been found, that was only "[b]ecause that's what we asked them to do". He had never asked Mr Rubetzki if he thought that that was what he had done. While Mr Falconer gave evidence that, in making inquiries of other officers at Bauer about what had taken place he "spoke to anyone who was – who I believe was relevant in preparing any affidavit", when pressed he said that Mr Rubetzki "would be the main person who coordinated it" even though Mr Rubetzki was not involved with the operations of Trader in any way in 2004. Mr Falconer's evidence ultimately as to the research undertaken remained vague, with Mr Falconer saying that "We would - we checked all facts. We look at – talked to people who would - who were still employed to work during that period. We checked all the facts that we had readily available in the timeframe that we had. So, yes, we talked to a number of people." 74 As earlier mentioned, Bauer relied upon an affidavit of Mr Rubetszki sworn on 2 October 2015. While Mr Rubetszki had a solicitor/client relationship with Bauer at the time of these proceedings, he was employed by the Nine Entertainment Co group of companies (of which the second applicant, the ACP Magazines Limited, was part) in the role of Trade Marks Counsel. However, Mr Rubetszki did not give any evidence as to the scope of searches undertaken by him within Bauer/ACP/Trader internally; nor does he identify any deficiencies within those organisations in locating historical documents. As such, his evidence takes this issue no further. Indeed, Bauer's failure to lead evidence from Mr Rubetszki on this issue suggests that any evidence which he might have given on the issue would not have supported Mr Falconer's evidence as to the completeness of the searches; nor Mr Falconer's explanation for the lack of documents supporting important aspects of Bauer's case. 75 The lack of clarity as the nature and scope of the research undertaken into the documentary records, coupled Mr Falconer's limited or lack of involvement in relevant events, constitutes a serious weakness in Bauer's case. In particular, it meant that Bauer ran an essentially inferential case despite persons with direct knowledge of contentious matters being within its camp and available to be called. 76 Conversely, the fact that no person, such as Mr Rubetszki, with actual knowledge of any difficulties with locating or archiving documents and the scope of searches undertaken to locate missing documents gave evidence, coupled with the vagueness of Mr Falconer's evidence on these subjects, mean that I do not accept that a satisfactory explanation has been given for the failure to produce documents that would have been expected to exist on Bauer's case. These include any documents evidencing the use of the name "Discover Downunder" internally within ACP/Trader before 27 January 2005. 6. FINDINGS OF FACT 6.1 The importance of the contextual narrative to the parties' arguments 77 The cases for each party as to the circumstances in which the series and the Mark were created were diametrically opposed and hotly contested. There were, as I have earlier mentioned, strongly held views particularly by Mr Falconer for Bauer, on the one hand, and Mr Colin Parrôt, on the other hand, as to these circumstances. Strictly speaking the fundamental question of ownership of the Mark turns simply upon who first used the Mark. However, both parties relied upon their perception of the background to the creation of the series and authorship of the Mark to support their respective cases as to first use. This was particularly so with respect to Bauer. As its case for first use was inferential, the "narrative" on the basis of which the Court was asked to draw inferences was pivotal. Furthermore, the question of who authored the Mark and who was the main driver in creating the program and in getting it funded and "up and running" is relevant to a consideration of Bauer's case that Evergreen did not intend to use the Mark in good faith, or applied for the Mark in bad faith. Relevant also to the latter two issues are the circumstances in which the show "What's up Downunder" came to be created after the relationship between Evergreen and Bauer had broken down and Warren Parrôt had been made redundant. 78 In these circumstances, it is necessary to set out with care my findings as to these contextual matters notwithstanding that ultimately I find that Bauer's primary case on ownership falls on the simple point that it failed to establish a proper foundation on the basis of which to infer that the first use of the Mark was by Bauer. In effect, as Evergreen submitted, "[t]his is that comparatively rare class of case where the absence of evidence is in fact evidence of absence." 6.2 Development of the idea by Colin Parrôt and initial support from the industry 79 Colin Parrôt had long held an interest in the caravan and camping industry. During his career in advertising, he produced advertisements for the caravan industry. He became involved in caravans and camping and was known to manufacturers, retailers and distributors of parts and accessories in that industry. His clients included the caravan manufacturers Viscount and Jayco, and retailers including World of Caravans. He often advertised his client's products through Caravan World Magazine which was a magazine owned by ACP. He worked with officials of the representative bodies in the caravan industry on a number of advertising projects and was acquainted with people at high levels in state caravan associations, state tourism bodies, and camping and National Park bodies. 80 In or around the late 1980's, Colin Parrôt had the idea of producing a caravan and camping lifestyle program as a platform for advertising the caravan and camping industry and its products and services. He discussed this concept with various people in the caravan industry. However it was not until the late 1990's that the concept gained any momentum. From about 2000, Colin Parrôt began to receive encouragement for this idea from Kevin Clark, President of the CTIAV, and Peter Wright, the CEO of the CTIAV, to whom Kevin introduced Colin Parrôt. 81 In early 2004, Colin Parrôt had discussions with Peter Wright to find a way in which the CTIAV could be involved in the program to the benefit of its members. In the course of those discussions a name for the program was discussed. Peter Wright indicated that he "was interested in a name which identified the industry." The name first proposed by Colin Parrôt was "Caravans and Motorhomes Downunder" which Peter Wright agreed to "as it effectively described the products and services relating to the program." 82 Peter Wright notified Colin Parrôt that the CTIAV would commit funds for the program if he could arrange to have it broadcast nationally as this would broaden the market for the CTIAV members and create an opportunity for him to obtain funding from caravan associations and other states for the program as a means of defraying the production costs. 83 The CTIAV supported Colin Parrôt's proposal to submit the program to ACP through his son Warren Parrôt who was then an Account Manager at ACP. Peter Wright explained that "[t]he sponsorship in a sense was to assist us in promoting, if you like, our caravan shows. There were situations where we would provide them with a free stand at the show and what would occur there was they would give us, in return, advertising in their magazines." 84 The CTIAV already had a sponsorship relationship with ACP/Trader, having advertised in Caravan World, a magazine owned by Trader Classifieds, and possibly other magazines in the Trader suite. Part of Peter Wright's role was to develop the relationship with ACP to assist the CTIAV with general advertising to promote his industry's products and services. 85 At that time, Peter Wright's contact at ACP was Ros Bromwich who was the editor of Caravan World. He explained that he spoke with Ros Bromwich every three to four weeks "in the sense of just trying to understand how we can, as I said, tap into the market a lot better than what we have in the past. She was very keen on doing more about promoting our shows, and that was, I guess, a great start for both of us to get the ball rolling and improve our relationships." At this time, Ros Bromwich was also approaching Peter Wright to try and increase her presence with other industry associations. 86 The CTIAV was keen to participate in an "advertorial" type television program along the lines of the boat and car shows. When Peter Wright joined CTIAV in 2001, one of his priorities was to hold discussions with other industry associations about working together on national programs, given their potential as a means for promoting the industry associations. At that time the CIA (the national body) had a relationship with, for example, the show Getaway which was, according to Peter Wright, a "pretty big hit on Network 9" screening on Sunday nights at 7.30pm which "was a very good time slot for us". The CIA was trying to get funding from the state organisations to elevate their presence on those programs. 87 By July 2004, Colin Parrôt had spoken also with Ron Chapman who was the acting CEO of the Queensland group, Stuart Livingstone in South Australia of the Caravan Industry Association, Kevin Clark who was president of the CTIAV, and Jerry Ryan from Jayco Caravans who had been a client of Colin Parrôt's advertising agency for over 30 years. Jayco Caravans was the biggest manufacturer of caravans in Australia. Colin Parrôt explained that "They were all prepared to put their hands in their pockets…. Jerry Ryan was very enthusiastic about supporting anything caravanning, because he is the market leader.… If I could get it up, they would certainly support me. That's what they had said." 6.3 Initial approaches to ACP 6.3.1 Trader's business strategy relating to sponsored television programs 88 As I have earlier mentioned, Trader was a division of the ACP. The strategy of the Trader business was and is to develop a portfolio of products across print, digital and other media to offer potential advertisers a suite of solutions to meet their advertising and marketing needs. At the relevant time, Trader published a number of magazine and periodical titles in Australia, including 'Caravan World' and 'Motorhome & Caravan Trader'. The primary sources of income generated by Trader from these titles were display (or classified) print and digital advertisements and advertorials, and feature sponsorships placed by businesses in these publications. Each magazine and periodical had its own business model. The objective of print and digital editorial content was generally to inform readers regarding purchasing options for new and used products. For example, Caravan World magazine featured editorial content intended to encourage people to buy and sell caravans. 89 In 2003 Trader commenced offering and providing television programs as an additional advertising and editorial platform to its print and digital portfolio. The two programmes then produced of this kind were "The Boat Show" and "The Car Show". Mr Falconer described these shows as "examples of sponsor-funded television programs". As a result, by 2004 Trader's suite of advertising platforms encompassed print, digital and television media platforms. Mr Falconer explained that: … the costs of production of such sponsor funded television programs were not met from receipt of a licensee from the broadcaster and had to be covered from another source of funding. In the case of the sponsor funded television programs The Car Show and The Boat Show, Trader assumed the cost of having them produced for it as well as the financial risk of failing to obtain sufficient revenue to cover these costs. 90 He further accepted in cross-examination that: And the key to a sponsored TV program is that sponsors are found to underwrite the cost of producing the program?---That's a factor, yes. That's why it's called a sponsored TV program?---Correct. And typically the type of sponsors that might be interested in providing the money to underwrite a television program, they may well be industry bodies that are – money is subscribed to them by their members in order to promote the industry as a whole?---Yes. 91 Mr Falconer explained that Trader sought to achieve a number of outcomes from the strategy of offering to its customers a suite of advertising platforms including market growth. After a lengthy cross-examination on the point, he eventually accepted that if a television program were successful that would be a contributing factor to the strategy and that, if enough sponsorship money were raised to create the program and broadcast it, "[i]t helps, yes, helps achieve what the end outcome that we're after". He further accepted in cross-examination that: There will be no contribution to the achievement of your strategies from a sponsored television program if the television program is not made; that is a fair statement, is it not?---Yes, that is. And to ensure that it is made, either you raise enough money from sponsors to put it on - - -?---Yes. - - - or Bauer pays the shortfall in the sponsorship?---We analyse whether the risk worth taking and we would take the risk, yes. Yes. And you were concerned that programs ideally would be at no net cost to Bauer?---That would be a nice outcome, yes. 6.3.2 Presentation of the opening draft for a pilot program (July 2004) 92 In about July 2004, Colin Parrôt approached Warren Parrôt and asked him to try and raise the idea of the program with one of his senior managers at ACP. Warren Parrôt had assumed the position of National Corporate Sales Manager in Trader in April 2004 as a result of which the Boat Show and the Car Show were among his portfolio of responsibilities. It was for this reason that Colin Parrôt "presented his television show concept to his son, knowing that it could be of interest to him and his endeavours and to the company that he worked for." As earlier mentioned, by this stage Colin Parrôt had had extensive discussions with Mr Clark from the Victorian Caravan Industry, Mr Chapman the acting CEO of the Queensland Caravan Group, Jerry Ryan of Jayco Caravans, and Peter Wright, the CEO of the CTIAV, and each of them had expressed a willingness to contribute sponsorships. In Colin Parrôt's words, "They were very keen." 93 On 15 July 2004 Colin Parrôt prepared an "opening draft for a pilot of the television program" to be broadcast the following year. He showed this to Warren Parrôt to explain the concept. The opening draft recorded a possible title of "Inside, Outback, downunder with…" and identified Paul Cronin as a possible host. The concept was described as: CONCEPT – To present a series of 4 x half hour programs promoting caravans and camping in Australia involving various styles of caravans, campers and pop ups and towing vehicles. Holiday parks and "Must See" Tourist destinations. Together with towing tips and great ideas to get the most out of a Caravan/Camping Holiday. Segments ) 4 x 2 minutes Per Show ) 3 x 1 minute breakers going into or out of. 94 The second page suggested a jingle reciting "Caravan Australia for the things you need to know". 95 At some time in August 2004, Colin Parrôt engaged Rusty Nayles Music Pty Ltd (Rusty Nayles) to compose a jingle incorporating the words "Caravans & Motor Homes Downunder." 6.4 The presentation to ACP on 24 August 2004 96 Sometime after Colin Parrôt's initial approach to his son in July 2004, Warren Parrôt told Colin Parrôt that he had discussed the idea with ACP's Editor-in-Chief, Mike Sinclair, who had expressed interest in it. A meeting was set up so that the concept could be presented to Mr Sinclair. 97 In preparation for the meeting, Colin Parrôt put together a written proposal. Colin Parrôt gave a copy of the presentation or a document very similar to it to Warren Parrôt before the meeting. However, he denied that Warren Parrôt had any input into the proposal save for accepting, when his attention was drawn in cross-examination to the reference in the presentation to the "your ACP, Nine MSM [sic] Multi Media push", that his knowledge about this came from Warren Parrôt. He said that he knew nothing about ninemsn except for that which he was told by his son. In accepting his son's involvement to this extent only when it was specifically put to him, I gained the impression that Colin Parrôt had simply overlooked that aspect when initially denying that his son had "some input into what he should put into the proposal" rather than that he had been intentionally underplaying his son's involvement. Colin Parrôt also asked Warren Parrôt to whom he should speak in relation to the presentation and was advised by Warren Parrôt to speak to Mike Sinclair who "has the edge of all of those things." I accept Colin Parrôt's evidence that Warren Parrôt had no other substantive input into the document. 98 In this regard, I note that Warren Parrôt's evidence in cross examination on his involvement in preparation of the presentation and after the meeting was that: When Mr – your father was preparing his presentation to present to ACP to Mike Sinclair, you assisted him in identifying who he should present to?---Well, I think he – he would have me a whole bunch of questions and I would have answered them, because any good salesman obviously tries to get the briefs so they can answer it properly, yes. And indeed, so, in fact, it would be appropriate for presenting to Trader rather than to any other business?--- It's like – when I go and try and sell something to somebody I will go and ask them questions first and get some answers, so that I know exactly how I'm going to present it. And you gave those answers and - - -?--- I – I gave you some answers, yes. … And you identified Channel Nine as the broadcaster because it was associated with Trader?--- Yes, absolutely. It was basically a sister business, so you can imagine that would be where you would go first. 99 Aside from identifying Channel 9 as the broadcaster, Warren Parrôt did not give evidence that he was involved in preparing the presentation for the lunch meeting. His evidence was only as to what he thought he would have done. As such, his evidence does not contradict his father's evidence and in part confirms his father's evidence. By contrast Warren Parrôt was clear that he had involvement after the meeting in August 2004 in preparing a presentation that he gave internally. 100 The proposal for the meeting on 25 August 2004 was dated 10 August 2004. It stated that it was submitted by "C. J. Parrot" and appeared with the logo of Colin Parrôt's advertising company, Power Pact. The proposal stated that it was to Warren Parrôt, National Corporate Sales Manager, ACP Trader Classifieds, copied to Mike Sinclair and to Grant and James Manson from CDM. 101 The proposal was then for the production of "4 x Half Hour Caravan Shows on Channel 9 Network @ 4.30pm on 5th, 12th, 19th and 26th March 2005 prior to the Car Shows re emergence in April." By way of background, the proposal explained that Colin had "vast experience in both the Caravan Industry and Television Production." On the topic of industry support, the presentation stated that: We have canvassed support through our many contacts in the Caravan Industry, Kevin Clark the CTIA (Vic) President is also my client at World of Caravans and he in turn referred me to Peter Wright the CEO of CTIA (Vic). A self explanatory letter is enclosed. Separately I have had similar conversations with Ron Chapman the CEO of the CTIA (Qld) and Mr. Gerry Ryan, past president of the CIA National Body and Managing Director of Javco [sic] Caravans …. Australia's largest manufacturer. Everyone is very excited and keen to support the TV Show. I have suggested they watch your current Car Show as typical format for "Caravan Australia" in that the emphasis will be on the Caravan product not the tourist parks, or site seeing destinations, but the styles, finishes, designs and facts around Caravans and Caravanning. Peter even gridded up some topics he thought worth covering. Both Vic & Qld have offered their full support … and I'm sure other states will join them once we get the go ahead. 102 The concept was explained in the following terms: The Concept for "Caravan Australia" to be truly valuable to your ACP, Nine MSM Multi Media push should reflect your magazine "Caravan World" and other relevant titles. We imagine just such a show with segments on – • Caravan types, differences and individual benefits • Internal design, layouts and finishes • Towball/Weights Towing technicalities and regulations • Backing, parking, stowing tips • Annexes and awnings limitations and tips on canvas care • Water filtration, toilets protocol on emptying sullage • Cooking, recipes, food storage/procurement/handy tools • Caravan Insurance – types of cover available • Packing/Storage • Bikes, Boats and Park Protocol PLUS anything else we can think of. We realise to make this a "must watch" T.V. Show we must have a BIG NAME anchor and have initiated discussions with Australia's favourite father figure, the voice of authority and integrity Paul Cronin a snapshot of him follows, together with a suggested script for a pilot/promo video to sell to sponsors. 103 Under the heading "Promotion", the presentation stated that: An important ingredient in the unification of our Multi Media energies is to get both the Caravan Industry Members, and the general public behind the show and watching it each week, and to go out and buy your magazines…and search your website. This starts with the sell into the industry with invitations to participate and showcase their products in the TV show and obviously encouraging them to take a package that incorporates the show and your Caravan magazines and Car Point/Nine MSN. To that end we suggest producing a Pilot promo featuring Paul Cronin outlining the concept of the show and explaining how to participate. These could be sent to manufacturers, advertisers etc. as VHS or CD Rom. 104 Costs were given as follows: Subject to the finalisation of all SHOWCASES and location requirements we have calculated the cost to research, script, and film (Beta SP) 4 x 24min T.V. shows including post edit and talent fees to cover Paul Cronin and a 35+ female co host would be $25,000 per show (including filming in Queensland and South Australia). It's a given that we can be a great influence and will help you greatly in the securement of additional sponsors and industry support. This will prove most profitable for you and inspire us even more. 105 The presentation concluded in summary: To achieve all we hope and to maximise "sell in" time we propose producing a pilot promo along the lines of the script enclosed and start to develop script ideas for each show, these will be modified as we acquire products to showcase. In order to get underway we would look for a deposit payment of $15,000. A further payment of $22,500 would be required on finalization of scripts and development of shooting schedule, with a further $22,500 on completion of the first show. The balance would be paid each week prior to broadcast, on delivery of the tape. 106 Colin Parrôt described his presentation in his evidence as a "concept" for a caravan tv show, but nonetheless as "pretty developed". 107 Peter Wright did not recall having seen the presentation that Colin put forward at the meeting on 24 August 2004. However, he agreed that the statement in the presentation that "[b]oth Vic and Queensland have offered their full support, and I'm sure other states will join them once we get the go ahead" represented his understanding at the time. He explained that: Colin had been – approached us or approached my president, Kevin Clark – I would say early 2004, I would have thought – to try and get a TV program up for the association, and certainly there were a lot of discussions between Colin and myself and my president throughout the course of – of 2004 in relationship to how best this could be done. We certainly thought that approaching ACP and their, obviously, relationship with Network Nine and their affiliate WIN TV would be certainly beneficial for the association 108 Colin Parrôt presented the presentation on 25 August 2004 at a lunch meeting held at a Greek restaurant, as Mike Sinclair wanted. The date is confirmed by Colin Parrôt's diary entry. 109 Present at that meeting were Mike Sinclair, Bauer's Editor in Chief, Warren Parrôt, and Ros Bromwich. While Paul Cronin, the actor who Colin intended to host the show, was also in attendance, as were James and Grant Manson of CDM, Colin Parrôt gave evidence that "Ros Bromwich and Mike Sinclair were the two kingpins I needed to turn round and present to in a way that they had – would have some influence on us going to going ahead. CD Media, Grant Manson and James Manson… were sales and production people that we used and they were along to turn round and probably make up the party." In this regard, Colin regarded this as a meeting on important matters to seek to persuade ACP to support the television program in the push that Colin wanted to make to Channel 9. 110 Keith Falconer did not attend the meeting but was aware that it was taking place. He also gave evidence that this was one of two pitches that came to his desk in 2004. 111 Notwithstanding the proposed title of the television program on the presentation, Colin gave evidence that the name he used at the meeting, following a discussion with Peter Wright, was "Caravan and Motorhomes Downunder". That was the name which was ultimately presented to Tim Clucas at Channel 10 on 24 January 2005. 6.5 Follow up after the presentation 112 Following the meeting, Colin Parrôt did not make a record of what was said, but he put a tick next to the entry in his diary "to say I had a good hearing." 113 Consistently with this, Mike Sinclair instructed Warren Parrôt to work with Colin Parrôt to develop the concept further and to put together a proposal to present to Keith Falconer focusing on how the show could be produced at no cost to ACP and how sufficient revenue would be created to generate a profit for ACP. 114 Warren Parrôt then worked on a PowerPoint presentation with his father which he presented internally to Keith Falconer in about September 2004. Warren Parrôt did not retain a copy of that presentation. He explained that during the latter part of 2004: Well, we already had a concrete concept, an idea, which is a matter of crystallising it. I had to – basically, the presentation I put together was how it could benefit Trader. So I took – would take that to Keith and I sat down with him and said, "Well, this is what's" – "This is what we can do." 115 More specifically, Warren Parrôt's evidence about the meeting with Keith Falconer was that: When I spoke with Keith about the presentation, he said to me words to the effect that the program would be useful for promoting the ACP stable of caravanning magazines and would give him an excuse to launch an on line stable-mate for those magazines called RVpoint.com.au. He said to me that if we could find the money and get it on TV at no cost to ACP then we could go ahead. He agreed to take the program to network Nine to see whether they were prepared to broadcast the program. He did not discuss the name of the program with me at all. 116 Colin Parrôt followed up the matter with Mike Sinclair a month or so after the meeting who said that ACP was still waiting to hear back from Channel Nine. 6.6 Next steps as at 20 September 2004 117 By email dated 20 September 2004, Colin Parrôt sent an email to Warren Parrôt identifying the next steps that needed to be taken to bring the concept forward at that stage. He said that by the email he was "pressing Warren though – to go and annoy Keith to turn around and get an answer from Channel Nine." The email read: Just arrived back from my sabbatical fishing trip and thought I'd jot down some thoughts on Paul Cronin's Caravans & Motorhomes Downunder TV Show. Once Keith has settled on time and dates for shows with Nine Network and amounts required to achieve the returns he wants we can hold a meeting with the CTIA of Vic and get undertaking for subsidy. We would then get undertakings from other states CTIA's. Deposit payment would be required at this point. I would then propose we make a short video/DVD for circulation using Paul Cronin explaining the shows and inviting participation. On receipt and compilation of participating companies/brands we would set out to create the 6X 24 minute TV Shows having regard for: 1. Situation (location of shoot) 2. Brand of Van/emphasised 3. Other Products covered 4. Paul and other peoples participation we would then set up a shooting schedule and embark on the process to have the bulk of work completed by mid November – before the heat and the holiday period thus giving us maximum time to edit and sweeten the shows for the New Year. Time is tight – decisions await. 118 Colin Parrôt was cross-examined on the email. He explained that the reference to the amounts to achieve the returns he wanted was a reference to working out Trader's budget and revenue, and that those amounts needed to be worked out before he could go to the CTIAV and get a commitment from them. At this stage he said that the primary industry association he was focused on was the CTIAV. The reference to the "deposit" in the email was to the deposit payment from Trader set out in his presentation in August 2004. He agreed that, while he could not remember precisely when the promotional video/DVD using Paul Cronin was made pending arrival of his diaries from Melbourne (which had been the subject of a notice to produce), the email suggested that he would not be making the video/DVD until the previous steps were completed. It was Colin Parrôt's evidence that he and Trader would participate in attracting company brands to participate in the program. At this stage he said that the concept had evolved to six television programs from the four programs initially proposed in the presentation in August 2004 because "we knew we had that sort of backing. That's why we tried to make it more." That backing was said to be from the industry associations with whom he had conversations as to how he was progressing and demands from them to have a show. He said that there was a lot of enthusiasm and that, while at that time he did not have an undertaking for a subsidy from the CTIA of Victoria or the other states, they had promised to do so. 119 The email was retrieved from Colin Parrôt's records. A handwritten notation on the email made by Colin Parrôt reads: 6 shows @ $25,000ea = $150,000 need 30 companies @ $5000* = $150,000 (*2mins national = $5000 or CTIA indemnity 120 Colin Parrôt explained that the handwritten note was what he had told Warren Parrôt. The note set out ways in which Colin Parrôt was looking to generate $150,000 which was a cost that he was meeting and not Trader. He said that he "was very, very confident that the associations were going to snap up the underwriting of the costs" (as they still do with respect to his current industry TV show, What's Up Downunder). The figure of $150,000 represented the cost he would charge Trader for the six shows and that any monies received above that would be profit for Trader. In this regard, it was his evidence that: "That "they" in that instance is Trader? --- Yes. What you would charge Trader to produce the show? --- Yes. And the 30 companies at 5000 was your note as to how Trader could ---? --- Glean the money. --- Get the money?--- If they – they would make more because I had underwritten the basic shows. And you had – you told Warren that – that note is something you spoke to Warren about?--- The potential to make a lot of money for Trader, and it did. And in terms of that potential, that was part of what Warren saw as would benefit him within the company?---Correct. 6.7 The alleged meeting in September 2004 between Mr Falconer and Mr Colin Parrôt 121 Mr Falconer gave evidence of a meeting said to have occurred between him and Colin Parrôt in September 2004 at which he alleged that Warren Parrôt suggested the name "Discover Downunder". This evidence was very much in dispute. Specifically, Evergreen denied that any such meeting occurred, with Colin Parrôt giving evidence that he never had a meeting with Mr Falconer, and that the name "Discover Downunder" was first suggested at the pub meeting on 24 January 2005. For reasons I later explain, I accept Colin Parrôt's evidence on these issues. 6.8 Network Nine are not interested (mid to late January 2005) 122 Keith Falconer learnt that Network Nine declined the opportunity to broadcast the program in mid to late January 2005. 123 When Colin Parrôt heard that Channel Nine were not interested in the program, he was still determined to proceed with the concept and informed Warren Parrôt that he would approach other networks. Warren Parrôt came back to Colin Parrôt and told him that ACP would still consider supporting the program through its magazines if it was broadcast on another station, so long as the program could be produced at no cost to ACP. Colin Parrôt then decided to take the proposal to Channel Ten: I was very frustrated with the lack of knowledge about how Keith was going in Channel Nine, because we got the knowledge just before Christmas that Channel Nine weren't interested, and that's when I said, not Keith, there's two other commercial stations that are now committed to the industry; I will go and see Channel Ten. And I went to Channel Ten at my expense with Peter Wright and with Warren, and the reason I know I paid back the – it was because Keith didn't want to have any cost to this thing, and I made the point of writing a cheque out for those airfares and giving it to him or giving it back to Sinclair, actually, after the trip. 6.9 The meeting with the Ten Network on Monday 24 January 2005 124 Colin Parrôt approached the Ten Network and arranged a meeting for 24 January 2005 with Tim Clucas, the Network Head of Production and Development at Network TEN Australia, in Sydney. Also attending the meeting were Warren Parrôt on behalf of ACP/Trader and Peter Wright on behalf of the CTIAV. The question of whether ACP covered the costs of the airfares or whether Colin Parrôt reimbursed ACP was disputed. For reasons I later explain, I accept Colin Parrôt's evidence that he reimbursed ACP. 125 At the meeting with the Ten Network the program was still being referred to by the name "Caravan & Motor Homes Downunder", as had been the case since the meeting on 24 August 2004. However, Colin Parrôt gave evidence that at the meeting Tim Clucas said: I'm sorry, your evidence about this meeting that Mr Clucas said that the - - -?---He didn't like the name. And he said it wasn't sexy enough?---No, actually the - - - Would you recall that?---Channel Nine said it wasn't sexy enough. He didn't have any dispute about that. What he said was, "Why don't you come back with a name that has got more go about it". He recited his experience with Channel Seven when he was at Channel Seven and a fellow came to him and offered a TV show called Four-wheel Drive Australia and he said we renamed it The Great Outdoors. So that indicated what we needed to turn round and do and in going over to the pub afterwards and having a few beers, that's exactly what I came up with. Right. And you already had the Downunder part?---Yes. 126 Colin Parrôt denied in cross-examination that Warren Parrôt was using the name "Discover Downunder" at the meeting with Tim Clucas and said that the name had not been decided then. 127 Peter Wright gave evidence which corroborates Colin Parrôt's evidence on this point saying that he did not have any recollection of Warren Parrôt putting forward any name at that meeting. He recalled that the "stumbling block" in the meeting was the name, that the issue arose before the end of the meeting, and that in his view insufficient time was devoted to that issue at the meeting. I give Peter Wright's evidence on this point particular weight given the importance attributed by his association to the need for the name of the show to be descriptive of the product. Peter Wright also gave evidence that, even if the name had been decided at that meeting, he would still have to run the name past Kevin Clark because he was concerned that the association may not put up the funds if their brands were not part of the title. 128 Warren Parrôt's evidence was that he attended the meeting with Tim Clucas as Trader's representative, although it was Colin who had invited him to go up for the meeting. His evidence was that one of the roles he had at the meeting with Channel Ten "was to show a unified front between what Col was doing with Evergreen and Peter Wright and the associations, as well as – as well as Trader, absolutely". His recollection was that Mr Clucas "wasn't a fan" of the name. While it was put to Warren Parrôt in cross-examination that "Discover Downunder" was a working title which had been adopted by Trader internally before the meeting with Channel 10, which he denied, it was not specifically put to him that he mentioned the name first in that meeting. 129 Warren Parrôt further gave evidence that: Yes. Now Channel Ten offered a test series?---Yes. Of eight shows?---Yes. And you had previously been thinking – or Mr Colin Parrôt had been thinking of four shows when you did the presentation in August?---I can't remember how many episodes covers through to - - - Well, let's just take you to – you do know that the episodes had increased?---Sorry? You knew that the number of episodes increased by the time you've got - - -?--- Well, part – part of the discussion in that meeting I think was – I think Tim Clucas said, "If you're going to give it a go you've got to have a certain amount of episodes." So, you know, I think he was the one who suggested eight episodes, to be honest, so. And your planning had been on four episodes?---Well, my planning – I hadn't been on anything. I was just grateful to be there and that we became a success and we all – all got a chance to do it, so. 130 All three witnesses who were in attendance at the meeting therefore deny that the name had been settled at the time of the meeting. I attribute particular weight to Peter Wright's evidence in this regard, given that all parties accept that he has no interest in the proceeding. 6.10 The pub meeting following the meeting with the Ten Network 131 Immediately following the meeting with Tim Clucas, Colin Parrôt's evidence is that he, Peter Wright and Warren Parrôt went to lunch at a pub near the offices of the Ten Network in Sydney. 132 Colin Parrôt's evidence of that lunch meeting was that they discussed the name of the show and exchanged various ideas. His evidence is that he came up with the name "Discover Downunder Now" at the pub: I was still interested in using the word "Downunder" and came up with the name "Discover Downunder Now" which I thought caught the program's intended promotion of the great outdoors. 133 Peter Wright described the mood after the meeting with Channel Ten as "jubilation". His evidence was that he, Colin and Warren were "quite confident" that Channel Ten would take up the program, describing it as a "handshake deal". His evidence as to the discussion of the name of the program at the pub lunch meeting corroborates Colin Parrôt's evidence that Colin came up with the name: We exchanged several ideas for a name but I distinctively remember Colin using the words 'Discover' and 'Downunder' and in different variations, including, "Discover Downunder Now". 134 Peter Wright indicated to Colin Parrôt that he would have to run that name by Kevin Clark, and he recalls Colin Parrôt indicating he would go back to Tim Clucas with his idea for the name. In this regard, Mr Wright's evidence was that he could not give approval without first running the name past Kevin Clark because it would depart from including a reference to an industry product in the title and the concern that the CTIAV may not wish to fund the program as a result. He does not recall Warren Parrôt indicating that he would need to talk to his superiors, specifically Keith Falconer, about what he might think about the name as well. While Colin and Warren Parrôt each gave evidence that Peter Wright agreed to the name, I accept Peter Wright's evidence that he regarded Kevin Clark's approval as necessary. As Peter Wright reported to Kevin Clark, his evidence on this topic is the more reliable. 135 Warren Parrôt agreed that the mood after the meeting was "fantastic". His evidence was that the name "Discover Downunder Now" was decided upon at the pub lunch meeting, and that it was Colin Parrôt who came up with the name. Warren Parrôt's evidence was that he would have called Matt Jamieson at Trader later that afternoon, as well as "a whole bunch of people". 6.11 Filming of the pilot promo for the television program on 25 January 2005 136 While Colin Parrôt was initially confused about the date on which he filmed the Pilot Promo for the program, his diary record for 25 January 2005 recorded the following appointment at 10am: Film Eastwood Park – Paul Cronin PILOT PROMO Caravan Downunder 137 Colin Parrôt gave evidence that he could have recorded the filming in his diary in anticipation of a positive response from Channel Ten. I accept that that is the most likely reason for the use of the name "Caravan Downunder" rather than "Discover Downunder Now" in the diary entry, that is, that the diary entry was entered before the pub meeting on 24 January 2005. 138 Colin Parrôt confirmed that the pilot promo was filed at Eastfield Park and that it had to be dubbed over. The pilot promo was not in evidence as it does not appear to have been able to be located. 6.12 Email correspondence on 27 and 28 January 2005 139 Two sets of email exchanges occurred on Thursday 27 and Friday 28 January 2005 following the public holiday on 26 January. (1) The first exchange commenced with an email from Colin Parrôt using the title Discover Downunder Now", and Mr Clucas' response on 28 January 2005 suggesting that the word "Now" be dropped. (2) The second exchange occurred in the interim and consisted of internal emails within Trader which described the proposed program variously as "Discover Downunder" and "Discovery Downunder". 140 These exchanges are important because, as I later explain, Bauer argue that the reference to "Discover Downunder" as opposed to "Discover Down Under Now" in the internal emails is evidence that the phrase Discover Downunder was being used internally within Bauer consistently with Mr Falconer's evidence that Bauer invented the name before this time. Bauer relies in this regard upon the fact that the email from Tim Clucas suggesting that the word "Now" be dropped from the name was not been received until 28 January 2005. For this reason the email exchanges should be set out in detail. 141 Colin Parrôt accepted that he could not finally decide the name at the pub when they had the meeting on 24 January 2005 because "I had to get approval from Tim. It was Australia Day the next day. I sent an email of appreciation for his time and made the suggestion. He came back and said drop the word now." That evidence (save for the error as to the date, Australia Day being Wednesday 26 January 2005) is corroborated by the email exchange between Colin via his Power Pact email address and Tim Clucas on 27 and 28 January. At 11.09am on 27 January 2005 with the subject heading "Discover Downunder Now", Colin Parrôt wrote: Tim, On behalf of Warren, Peter and myself many thanks for your time and suggestions last Monday re our proposed TV Show for Caravans & Motorhomes renamed "Discover Downunder Now". Peter will go out to all his members and advise the possibility of cross promotion of their Annual Caravan and Camping Shows which fall on: 2nd-10th April for Sydney (Rosehill) 27th April-3rd May for Melbourne (Caulfield Racecourse) 8th-14th June for Brisbane (Showgrounds). We will provide a running sheet and timed script for the suggested first show and supply a CV on the achievements of our production staff and credits as you requested early next year. 142 Keith Falconer exhibited to his affidavit an email from Matt Jamieson to Warren Parrôt and Miffy Coady dated 27 January 2005 at 4:09pm, the subject line of which was entitled "Discover Down Under". The email read: Attached are some of the issues for Discover Down Under. I am not sure if I missed anything from our discussion on Tues Warren, let me know if I have. Likewise Miffy, if there are any additional issues that need to be covered off let me know and I will add them. I am sure there will be, but this is a starting point at least. 143 In cross-examination, Mr Falconer did not accept that "our discussion on Tues Warren" in the email from Matt Jamieson on 27 January 2005 was a reference to the day after the meeting with Colin Parrôt, Warren Parrôt, Peter Wright and Tim Clucas. However, in my view it is self-evident that the reference to "our discussion on Tues Warren" was a reference to the Tuesday after the Monday meeting with Tim Clucas. This accords with Warren Parrôt's evidence that he likely would have called Matt Jamieson after the meeting with Mr Clucas along with everyone else. 144 Mr Falconer accepted, however, that he could not point to any documentation before 27 January 2005 that contained the words 'Discover Downunder'. He accepted that if there had been earlier entries they presumably would have been found. He also had no explanation for why the name did not appear in any of Bauer's records before 27 January 2015, notwithstanding his evidence that the name was being used by people internally within Bauer before that date. 145 Mr Falconer also exhibited to his affidavit in reply an entry in Miffy Coady's Microsoft Outlook diary (Ms Coady's diary) dated 27 January 2005 at 1.58pm entitled 'Matt & Nigel re.RVpoint and Discovery Downunder', apparently recording a meeting between her, Matt Jamieson and Nigel Dearing. Mr Dearing is an executive web producer for Trader. It will be recalled that Miffy Coady was Warren Parrôt's supervisor at Trader. Keith Falconer's evidence was that the word 'Discovery' in Miffy Coady's diary entry was a mistyping of the word 'Discover' although he did not suggest that he had actual knowledge of this. Reliance is again sought to be placed on the omission from the diary entry of the word "Now" in support of Bauer's case. 146 Also exhibited to Mr Falconer's evidence was another diary entry of Miffy Coady dated 28 January 2005 at 12.05pm entitled 'The Caravan Show: Discover Downunder planning'. The diary entry was also addressed to Miffy Coady, Warren Parrôt, Matt Jamieson and Mike Sinclair. Mr Falconer's evidence was that the latter diary entry "records the correct name of the proposed program as I recall it being used within Trader at that time". Warren Parrôt does not remember the meeting, but does not dispute that he would have attended. 147 On 28 January 2015 at 12.18pm, Miffy Coady replied to Matt Jamieson's email of 27 January 2015 (also addressing the email to Warren Parrôt), saying that: Lets discuss further on Monday – the main requirement is a business plan for Trader Classifieds (overview, ownership details, Channel 10's involvement detailed out, revenue, sales commission, production costs, time & resource, mkg. budgets etc)…similar document to The Car Show. 148 While no party sought to make any submission with respect to the issue, I note that the email referred to "ownership details" being one of the subjects for discussion. It would appear, unfortunately for all concerned as events have worked out, that that issue was not resolved at the meeting. 149 Finally, in response to Mr Colin Parrôt's email of 27 January 2005 (see [141] above), Tim Clucas wrote on 28 January 2005 at 12.58pm: I like the new name but, although I understand the reason for it, I don't think the "Now" in title adds anything. "Discover Downunder" rolls off the tongue and sums up the freedom and adventurous spirit that must motivate those people who caravan, motorhome, camp out, buy 4-Wheel-Drives, go trekking, etc. It's a name that embraces so much more than simple caravans. 150 Thereafter Colin Parrôt used the name Discover Downunder for the television program. 6.13 Registration of the domain name on 4 February 2005 151 On 4 February 2005, the domain name www.discoverdownunder.com.au was registered. There was no direct evidence as to who registered the domain name although, as at 18 April 2011, the registrant was identified as ACP Magazines Limited. Keith Falconer's evidence was that he did not recall who arranged for the domain name to be registered. However his expectation was that Warren Parrôt did so as part of his role as the project manager for the program. Warren Parrôt's evidence was that it would not have surprised him if, once the show had been identified as "a goer", Nigel Dearing had registered the domain name since "Col wasn't really a web producer" and Trader "would have seen that as no different to what they did with the car show or the boat show". While Bauer alleged that the domain name was registered by ACP, Evergreen submitted that the evidence did not show who registered the domain name on 4 February 2005. Nonetheless the likelihood is that Bauer registered the domain name consistently among other things with Warren Parrôt's evidence. 152 There was, however, a dispute as to when Colin Parrôt became aware that the domain name had been registered. For the reasons set out later below, I do not accept that Colin Parrôt found out about registration of the domain name until after July 2005, contrary to Bauer's contentions: see at [252]-[262] below. 153 Mr Falconer accepted in cross-examination that if he was going to put out a television program to be called "Discover Downunder", he would want to register the domain name as soon as possible because delay would risk someone else registering the domain name first. However, he said it would "not necessarily" be the case that Bauer would take steps to arrange registration of the domain name as soon as a name was settled. Mr Falconer acknowledged that the domain name registration occurred within a week of the first reference to the name Discover Downunder in the records of Bauer and within a short period of time after the meeting on 24 January 2005. 6.14 Commissioning of the logo (7-8 February 2005) 154 Bauer did not contend that it produced the logo for the program. Colin Parrôt gave evidence that he engaged Neil Tulloch of Tulloch Advertising to produce the artwork, including "at my request a representational logo of the 'Discover Downunder' name which was used on the program itself and in relation to its promotion and redistribution." That was said to be supported by the reference to work on "graphics" in an invoice issued to Power Pact Advertising dated 11 February 2005 which charges for items on two days as follows: (7/2/05) WORK ON VARIOUS PROJECTS FOR THE FORTHCOMING 'CARAVAN' TV SHOW 'DISCOVER DOWNUNDER' INCLUDING SCRIPTS, SCHEDULES GRAPHICS , AND PRINTOUT OF PROPOSAL – 5 HOURS (8/2/05) MORE WORK ON COL'S CARAVAN TV SHOW PROPOSAL 155 Given the timing of the work undertaken by Tulloch Advertising and the express reference in the invoice item for 7 February 2005 both to "graphics" and to Discover Downunder, I consider that the document corroborates Colin Parrôt's version of events. 156 The fact that the invoice was made out to Power Pact was touched upon in cross-examination of Colin Parrôtt, who explained in response that Neil Tulloch is "an artist he's not an accountant. He just writes his jobs out and sends them on a paper…". The implication, which I consider to be credible, is that Mr Tulloch would not necessarily have been particularly concerned about which of Colin Parrôt's entities was invoiced. However, it was not put to Colin Parrôt in cross-examination that he had requested the work to be done on behalf of Power Pact rather than Evergreen. Nor was any issue raised in final submissions based upon the fact that Power Pact were invoiced. I also note that Colin Parrôt was quite relaxed about when he used, for example, a Power Pact email address as opposed to an Evergreen email address and, while that is not good business practice, it is not surprising that Colin Parrôt apparently made no issue about the fact that the invoice (and other invoices in evidence) were made out to Power Pact at the time. 157 The logo prepared by Tulloch Advertising and used on the show in due course consisted of a map of Australia with the word "Discover" across it. The letter "o" in "discover" formed a magnetic compass, and the word "discover" formed the arc of a circle with its centre on the "o" as follows: 6.15 Email from Miffy Coady on 8 February 2005 158 On 8 February 2005, Miffy Coady by email informed Warren Parrôt and Keith Falconer that she had spoken with Gregg Haythorpe about a meeting between him and John Alexander. Mr Haythorpe was then a senior executive within the PBL group (then the owners of Bauer and the Nine Network), while John Alexander was then CEO of Bauer Media. In the email, Ms Coady stated: 1. GH updated JA on The Caravan Show he said to go for it with Channel 10 – lock in the contract/ownership etc. 6.16 The promotional video produced in February 2005 159 Initially, there was an issue in the evidence about when the promotional video was prepared. However, Colin Parrôt's recollection, when prompted by his diary entries, was that filming for a promotional video took place on 25 January 2005 with a reshoot on 14 February 2005 at Eastfield Park. His diary entry on 25 January 2005 states: Paul Cronin Meet Simon Hearn Eastfield Park film promo for KC + Col Tobin Caravan Show 160 On 15 February 2005, Colin Parrôt's diary records at 10am that "Placed ACP Email Job with SIMON Told him Waz need it by Thursday." The reference to Simon was to Simon Holt who was the film editor at Evergreen. The reference to "Waz" was a reference to Warren Parrôt. Simon Holt was given the reshoot of the promo video to edit. I note that the diary mistakenly recorded 'Eastwood' at the location whereas the correct location was Eastfield. 161 A promotional video exhibited to Mr Falconer's affidavit (exhibit KF-7) had the title "Discover Downunder" but did not have the logo. In the course of the video, Paul Cronin steps out of a green Nissan, saying "G'day. This email contains all the details about our exciting new TV show Discover Downunder. Now we go to air lunchtime each Sunday on the Ten Network right around Australia. It's created for the Caravan and Camping Industry by ACP Trader Magazine Group, there's limited sponsorship packages available and first in will be best dressed. Oh and help Aussie discover Downunder." The video depicts the Channel Ten logo together with a still of magazine covers at the base of part of the video. The video concludes with the words "Call Warren Parrôt" and provides his telephone number. There is no reference to Evergreen in this video. 162 Bauer contend that by 17 February 2005, this promotional video (i.e. exhibit KF-7) was provided to Trader by email. No email sending the video was in evidence. However, Bauer place considerable weight upon Warren Parrôt's evidence in chief that, after asking Evergreen in early 2005 to produce a short video to promote the show through CDM, the internal sales teams and contracted sales teams, "Col [Parrôt] provided me with a video and I passed it on to Cameron Damon Media" (emphasis added). 163 The question of whether the promotional video being exhibit KF-7, was provided to CDM and if so, when, was in dispute and is considered below at [281]-[297]. Bauer ultimately relied upon the provision of the video clip to CDM to establish that the first public use of the Mark as a trade mark occurred by it on or about Monday 21 February 2005. 6.17 Conclusion of the licence agreement with Network TEN on 25 February 2005 164 Shortly after the name was changed to Discover Downunder on Evergreen's case, Evergreen entered into a television program licence agreement (the licence agreement) with Channel Ten Pty Ltd. The entry by Evergreen into the licence agreement is relied upon by Evergreen as the first use of the Mark and is therefore relied upon it to establish that it is the owner of the Mark. 165 The licence agreement is dated 25 February 2005 and states that it is between Evergreen as the "Licensor" and Network Ten Pty Limited as the "Licensee". It provides that in consideration for a nominal payment by the licensee, "the Licensor grants to the Licensee for itself and its assigns a licence to broadcast by television the motion pictures hereinafter described and referred to as 'Programs'" for the two year term of the licence, namely, 8 x 30 minute episodes of Discover Downunder on all stations within Network Ten's network, its affiliates and associates. Further, by special clause 1, Evergreen granted Network Ten "the non-exclusive right to use, store, reproduce, diffuse and/or transmit in any format all or part of each episode together with or independently of other subject matter by means of the Licensee's nominated internet web site for the purposes of promoting Licensee and the broadcast of the Programs by the Licensee." Under the agreement each episode was to be delivered at least 10 days prior to broadcast and to be broadcast in Australia on all stations within the Licencee's network, its affiliates and associates. The terms of the licence permitted Evergreen to withdraw the licence to any program because of any dispute, claim, liability or inability to supply it, but should it do so, Evergreen became liable to replace the program with one of comparable appeal. 166 The licence agreement is signed by Colin Parrôt on behalf of Evergreen and by Sarah Henderson, the Network Business Manager-Programming, for Channel 10. 167 Colin Parrôt gave evidence the arrangements with Channel Ten "were totally between myself and Ten … nothing to do with Trader" and that while "we" did give Channel Ten a commitment that the advertising spots (being a number of 30 second television commercial spaces during each broadcast) would be filled, "we would do that… there was no commitment from Trader at all to Channel Ten. It was all Col Parrôt, Evergreen, PowerPact; whatever you want to call it…. They put the demand on me to turn and do those sorts of things because they knew I had clients like Jayco, and I had the advertising support from the individual associations which are comprised – people like Supreme Caravans, Royal Flair Caravans and those sorts of people. There was no commitment to Trader at all." While this evidence was challenged in cross-examination by reference to a letter attached to an email dated 9 September 2005 from Trader Classified to Peter Wright and copied to Colin Parrôt, that letter related to funding for the second series: see further below. 6.18 Letter advising ACP of the licencing agreement between Evergreen and Channel Ten (28 February 2005) 168 Colin (under the letterhead of Power Pact) sent a copy of the licence agreement as an attachment to a letter dated 28 February 2005 addressed to "Mr Warren Parrôt, National Corporate Sales Manager, ACP Trader Classifieds". That letter provided: Following our initial proposal of 10/8/04 for 4 x half hour TV shows on the Nine Network and the incredible sequence of events that has transpired since, I felt it prudent to reconstruct our basis for the production of 8 x half hour TV Shows on the Network Ten titled "Discover Downunder". As most caravan reviews will be conducted out of Melbourne and obviously the vehicle sponsor supplied would probably need to provide us with a permanent tow vehicle here for 4-5 weeks and arrange other vehicles for 5-10 days in QLD and 5 days in SA. Whilst the number of shows has doubled and other factors have come into play including the addition of Dean Allen Craig as extra male presenter, we have been able to maintain our rate of $25,000 per show, provided we get your editorial input to glean enough ideas for 8 shows… and rather than invoice you in our original proposal we suggest as follows $50,000 deposit and $50,000 on 1/4/05, $50,000 on 1/5/05 and $50,000 on 1/6/05. We hope you agree and as Paul Cronin has already acted in good faith (so to speak) with his filming of the video email, present our deposit invoice with this letter. Also included is our contract with Network Ten duly signed and returned last week for your reference. Warren, it's a great tribute to you that this has come to fruition, I truly hope it is the start of a fantastic annual series that will be both profitable to your company, the Caravan Industry in general and the Australian public. (emphasis added) 169 There is no evidence of any letter from Warren Parrôt or anyone else from Bauer objecting to, or raising any queries about, the fact that the enclosed contract for the broadcast of the first series was between Evergreen as licensor and Network Ten. 170 The letter enclosed an invoice for a deposit to be paid by Trader. Colin Parrôt gave evidence that Trader was already committed to paying the deposit and "we talked about it extensively with Mike Sinclair and the justification was so long as I can make it cost negative to Trader, they were very happy to go along, not only initially with Channel Nine but later on with Channel Ten." He said that the television program was not going to happen until the deposit was paid. He described it as "seed money" and "a deposit for my – for them to buy my show." 171 Colin Parrôt also gave evidence that he gave permission by this letter to Warren Parrôt as the National Corporate Sales Manager at Trader to use the program, the name of the program and the logo in his job at Trader to in furtherance of his sales for Trader magazines and that that would have been implicit in his many conversations with his son. The tenor of his evidence (bearing in mind that it is given in circumstances where the program continued after Warren Parrôt's employment was terminated) was that he gave permission to Trader to use the trade mark as the name of the program with his son's involvement. He denied that Warren Parrôt for Trader gave him permission to use the name for the television program saying "Who could say that? Who would be silly enough to say that… why would you think that Warren needed to give me permission to turn around and do something that I achieved?" 6.19 Preparation for the first series 6.19.1 Evolution of the concept and rush to produce the first series 172 By the time that the first episode was being filmed, the concept had evolved considerably from the original concept in August 2004. As Colin Parrôt somewhat colourfully put it, it was like "a tap dance on a moving carpet". Among other changes, it moved from the original four episodes presented as a concept by Colin Parrôt in August 2004, to eight episodes with Channel Ten. 173 Once the show had been approved for eight episodes, there was a lot of work to do. Warren Parrôt's evidence was "Col already had the association [the CTIAV] so effectively the project was paid for. We had to go fill the spots in regards to manufacturers". According to Warren Parrôt, all episodes were underwritten. In this regard, Colin Parrôt remained firm in his evidence that, while bringing the eight episodes to the first series was a highly collaborative process between Warren Parrôt and him, "I was still leading the ship with my television show." 174 Given that the licencing agreement was signed with Channel Ten only on 25 February 2005 and the first episode aired on 14 April 2005, not surprisingly the evidence of Mr Wright, Colin Parrôt and Warren Parrôt was that preparation for the first series was done in a rush. 6.19.2 Funding for the first series 175 The first series was sponsored by the caravan industry associations of Victoria, South Australia and Queensland. Jayco Caravans, Avan and Supreme Caravans had product placement in the first series, and Colin Parrôt thought also Trakmaster or Track Trailer. With respect to the underwriters, Colin Parrôt explained that: Do you make a distinction between sponsor and other – between sponsors and what companies or companies' products appear in the series?---Well, we call the associations and tourist bodies underwriters. They're going to dictate where we go and what we do – what we cover. So, they're trying to show off the shine of the caravanning lifestyle. So they want to turn around and take us to a particular park or a particular attraction, to incite people to go and caravan and enjoy the caravanning lifestyle. So they are the underwriters of the show and they are the ones that direct us to where we go. 176 Colin Parrôt further explained that: … as far as you're concerned, when I refer to sponsors or advertisers, you're considering them as the same, in relation to the television program Discover Downunder?---Well, they're not the same because a sponsor is a person that has a segment embedded in the product, in our show, and a advertiser is a person that places a 30 second or 15 second ad in the ad break in our show. So the advertisers were - - -?---They can be both sponsors and advertisers, but the ad – under the Australian Broadcasting and Control Act, you only have to have 13 minutes of advertising per hour. And so what actually happens is that they have four breaks in there, and the station itself sells advertising and has ads for other people. 177 Colin Parrôt gave evidence that CDM supervised by, and reporting to, Warren Parrôt would have brought sponsors and advertisers to the show but not to the same level as he did. 178 Hyundai was also a sponsor and contributed a car for use in the first series, and a car to be given away as a prize in the second series. That was a package which Colin said was sold by CDM in conjunction with Colin Parrôt. 179 Colin Parrôt accepted that the concept of sponsor funded television was not a new one, saying that "It's been going on since Humphrey Bogart went down the African Queen – the bottle of Gin." 180 The extent of funding by the CTIAV was confirmed by contemporaneous documentary evidence and by Mr Wright. Specifically, in an email dated 17 March 2005, Mr Wright wrote to Colin Parrôt (copied to Power Pact) to confirm approval by the CTIAV for underwriting three programs. The email read: Hi Warren & Col, The CTIAV Council last night approved in principle 3 x programs. This approval was granted on the basis that the parties set a mutual time in the next week to extrapolate the costs associated with the production and sponsorships of each program. Whilst this as provided to us, it was very confusing to define. We are of the opinion that the programs will provide a significant boost to the awareness of our industry and we thoroughly look forward to working with you both. In addition, Stuart from SA indicated to me that they are very keen to accept the second program. Cheers, Peter Wright. 181 When it was put to Warren Parrôt that this email showed that "only now" was there in-principle approval for three programs, he responded that "[i]t was already a fait accompli. Peter Wright was just putting it in writing so he already knew it was going to happen". That accords with Peter Wright's evidence as to the CTIAV's support and commitment to sponsorship generally from the outset. 182 Mr Wright estimated that the amount of the funding approved for the three programs was in the vicinity of $15,000-$20,000 per episode. The subject-matter title to the email reads: "Re Trader Network 10 proposal". Mr Wright was cross-examined on the title to the email. He explained that the CTIAV was invoiced by Trader for the programs and paid ACP Trader at that time. Mr Wright also explained that he had an appearance at the filming of nearly every episode in the first series to make sure that they were acceptable to the industry and to assist in the shoot. 6.19.3 Arrangements between Bauer and Trader 183 There was no written agreement governing the arrangements between Bauer, Trader and Evergreen. However Colin Parrôt gave evidence in cross-examination that the arrangements were as follows: And those dollars you've – how do those add up? How did you propose them adding up as at August 2004? We've got fifty ? Deposit payment of 15,000. Yes? Further payment of 22,500 which makes it 37,500 would be required for development assuming the schedule and further 22,500 on completion of the first show and the balance will be paid each week prior to the broadcast on delivery of the tape. And all of that references back to the costs on the previous page of $25,000? Yes, 25,000. Correct. Per show. And so this was the way that payment was going to be arranged? That was the intention, yes. But it wasn't to take away from the fact that you were proposing that the show be made at a fee to Trader of $25,000 per show? A cost to Trader for $25,000 a show. That would be what they pay you? That would be it – what exactly they would bill so confident in the knowledge that they received that amount of money, $25,000 per show for every show that we sold. And for every show you sold? Yes. I'm sorry, you're saying Evergreen sold or are you now saying PowerPact sold? Evergreen sold. Evergreen – no, Evergreen sold – or PowerPact are one – one and the same. We just – we – it was a – I'm director of both companies. So it wasn't really a great crisscross to me to have it be one or the other. It was probably PowerPact sold and Evergreen invoiced and did the work. So PowerPact sold the show to whom? To Trader based on that submission. 184 In cross-examination it was put to Colin Parrôt that Trader took the risk if it could not get sponsorship or advertising revenue to $25,000. However, he said that there was no risk as Trader was "getting $25,000 through me and my negotiations with the individual states, associations. I had my underwriters pay – underwriters being Victoria or whatever would pay Trader and Trader would pay me so I had cashflow". He further said that: The arrangement was that when I made my negotiations with the states that it would cost them that flat amount of money and when I told – I mean, you had Mr Falconer here in the chair the other day saying that he wasn't going to take any risks and he wasn't going to be paying anymore. It had to be – and that's exactly what happened. They never lost a cent on any one show because it was me that organised most of those things. I say most because there was part played Warren but it was mostly my involvement. …Warren was enjoying the fruits of what was going to be sold to those people, whether it be a travel or tourism body, whether it be a caravan manufacturer. He was going to be able to sell them – one with the lot that would be put the advertising in the magazines, would turn around get them onto the website – whatever they needed to do. Trader enjoyed that bask in the sunshine of the negotiations that I instigated and started. So you instigated and started – you're saying those are the same words, meaning the same thing?---Well, instigated on the basis that the system I instigated and I started it by my negotiation. 185 Colin Parrôt's evidence is largely consistent with Warren Parrôt's evidence as to the extent of the underwriting which Colin Parrôt had arranged. Warren Parrôt said that: Well, the underwriting of the episodes were effectively – we knew the associations were going to support. Col had brought them to the table. He already also had Jayco. So a number of the spots were – the actual segments within the show that you would sell to a manufacturer were already taken. But we still had a good half a dozen-odd to fill up, …. So there were no spots that weren't paid for at the end of the series?---All eight episodes were underwritten. All episodes were underwritten. Col already had Jayco and all we had to do is go and fill other segments to sell to people like Supreme Caravans. I can't remember the other guy. Royal Flair Caravans, who turned around and bought segments within the show amongst other parts of their package. And effectively that was the cream on top for Trader and it was fantastic. …the end result was that Peter bought three, Queensland bought three and South Australia bought two, so there was your eight episodes. Yes. That's at the end, Mr Parrôt. You had to work really hard to get those eight, didn't you?---Well, no, Col had to work pretty hard to get those eight and I had to work pretty hard to get a whole bunch of manufacturers to support it. 186 Warren Parrôt further explained that: Col and I worked in concert all the time. For the five-odd years that we worked on Discover Downunder, I would have spoken to my father probably two or three times every single day and I was involved in a whole bunch of things over that time and especially as a project crew I had to become more and more involved because you don't create 30 episodes real easily, especially when you've got to travel right around the country to do it. The reality was is that we were going to be doing the invoicing because Col had a bookkeeper as a receptionist and Trader had an account seam [sic] of about 10 or 12 people who could turn around and do those things for them and, as things grew with the manufacturers and that kind of stuff, they bought packages, as did – there were banner ads and magazine pages for associations and manufacturers – so all the money couldn't go to Col because a lot of it had to go to Trader. We were very lucky because the car show and the boat show never had underwriters or associations or any of those type of people involved in the show so they performed poorly. Because Col brought the associations to the table it made profit for Trader, exceptionally good and exceptionally easy over time because he could worry about that. I helped out. Of course I assisted. Why wouldn't I because it was to the benefit of Trader Classifieds. … I could see a massive growth for Trader because of the opportunity for them to make a great profit off the back of everything because Col had had the associations there so most of the underwriting was paid for so everything else that we brought in was a cherry on top. Everything else we put into the magazines to help increase that helped increase the prestige of the magazines because they hadn't had that before. It helped bring in advertisers to the magazines in tenfold because the TV show made Caravan World so much more brighter and sparklier so One of the things you did was bring DVDs, then, to the front of those magazines? Absolutely – helped to turn around and make – sell more magazines. You're going to sell anywhere between 20 and 40 per cent of the time more magazines by having a DVD in it. That was a Trader initiative that you did?---Yes, absolutely, but it wasn't, like, it was rocket science. Caravan and Motorhome had been doing it for about five years prior. Every single one of their magazines was going out with a DVD and, guess what, they have a higher circulation than Caravan World so I saw it as a great opportunity to turn around and help Trader Classifieds. 6.20 The first series 187 The first episode of Discover Downunder was aired on Network Ten and its affiliate Southern Cross Television on 14 April 2005. It was a test series to ensure that Channel Ten was happy to take it forward. 188 Warren Parrôt confirmed that Trader invoiced the sponsors and paid Evergreen an agreed fee for each show to be produced and delivered to Channel Ten in the first series. He also said that the contracts with the sponsors were with Trader. His evidence was that Bauer were probably averaging in the vicinity of $15,000-$20,000 profit per episode and so, "I was very proactive about making sure that (a) the show stayed on TV and (b) the more episodes that could be it then it would be fantastic for the business that I work for." 189 The closing credits for each episode in the first series included: Series Creator Warren Parrôt ACP Trader Magazine Group assisted by Matt Jamieson Executive Producer Col Parrôt 190 Following the closing credits, the Discover Downunder Logo appeared followed by the letters making up the word "Evergreen" flying together and forming the Evergreen logo including the clapper board that snaps shut at the end. 191 Mr Falconer accepted in cross-examination that: (1) he had watched Discover Downunder all the way through to the credits; (2) he was aware that at the end of the credits there was a large panel that comes up and fills the screen with Evergreen Television on it; (3) the only mention of Australian Consolidated Press in the credits is in the description of Warren Parrôt and his position with ACP; (4) there was never any request or requirement from Bauer during the five series of the program produced by Evergreen that the labelling or inclusion of Evergreen Television should be changed in any way; (5) there was no request from ACP that it be attributed in some different way in the credits; (6) while Warren Parrôt was described as the creator of the series in the first, second, third and fifth series: (a) Colin Parrôt was the creator of the concept for the show; (b) Colin Parrôt had presented the proposal in August 2004 at the lunchtime meeting; (c) the program produced was similar to that described by Colin Parrôt in that proposal; and (d) Colin Parrôt had facilitated the process of organising financial support for the show and designed its credits; and (7) Warren Parrôt was responsible for dealing with advertisers and conveying their desires for program content to Evergreen so that it could incorporate them. In addition, Mr Falconer said that Warren Parrôt would have had creative input into the show even though it was Colin Parrôt's concept. 6.21 Preparation for the second series (second half of 2005) 192 There was correspondence between early May 2005 and June 2005 between Warren Parrôt and Channel Ten regarding the making of a second series including as to the number, format, length, content and sponsorship of the second series. This culminated in correspondence in mid to late August 2005 in which Channel Ten wrote to Warren Parrôt confirming the schedule for Discover Downunder in 2006 and providing Channel Ten's delivery specifications. On 12 September 2005, Warren Parrôt also wrote to Channel Ten advising of the level of support received thus far from the State, Territory and national industry bodies. Warren Parrôt also wrote to Ros Bromich (editor of Caravan World within the ACP suite of magazine) regarding the next series and encouraging Caravan World to promote itself through the program. 193 Furthermore, on 29 August 2005 Warren Parrôt wrote to Peter Wright from the CTIAV and his counterparts from the Queensland and South Australian industry bodies thanking them for their support and attaching a document described in the email as "a detailed proposal for Series 2 for each of you to consider and discuss in our conference call tomorrow morning." The document was a proposal in the form of a presentation entitled "Series 1 Success! Series II – 2006". On the front page of the presentation and in the banner at the top of every page, the ACP Trader Classified's logo appeared in large script. There is no reference in the proposal to Evergreen. Colin Parrôt explained that he and Warren were very excited about the success of the first series, that Warren authored the proposal, and that both Colin and Warren Parrôt participated in the conference call the next day. Peter Wright accepted that the proposal was a pitch from ACP Trader to the industry associations to continue their support of the program. 194 Mr Wright could not recall with whom he first had discussions about making a second series. However, with respect to the concerns expressed in his letter to Warren Parrôt dated 8 September 2005, he explained that the CTIAV had particular concerns about transparency in the costs to see whether they could be reduced across the whole spectrum. However, Mr Wright did not get involved in production per se of the second series, although he would have had some involvement in the design in terms of product placement: "Hopefully less advertorial, more lifestyle. Trying to put, I guess, the message across from the association how they wanted the program to look for the second series." In this regard, he said that he worked closely with Colin Parrôt to discuss program content so that they would understand that the CTIAV wanted the second series to be "more professional". Warren Parrôt replied on 8 September 2005 with a response to the questions "to get [Peter Wright] started", saying that he would provide a detailed document later. Subsequently on 9 September 2005, Warren Parrôt wrote to Peter Wright, copied to Colin Parrôt, Evergreen Productions, attaching a detailed average cost per episode of Discover Downunder Series 1 and responding in detail to the questions which Peter Wright had asked. 195 All of this evidence post-dated first use of the Mark on either party's case. However, Bauer appeared to rely upon this evidence primarily in support of its case that Bauer was the main driver with respect to the program and that that is illustrated by its involvement throughout the second series. Notwithstanding that evidence, however, it was the case that Channel Ten and Evergreen entered into the agreement to broadcast the second series, as had been the case with respect to the first series, and not Bauer. 6.22 The failure to conclude a contract between Evergreen and Bauer comes to Mr Falconer's attention and authority to enter into agreements with Evergreen and Channel Ten (July 2005) 196 Mr Falconer gave evidence that on 6 July 2005, his Personal Assistant sent an email to Miffy Coady to obtain a copy of the agreement between Trader and Evergreen in relation to Evergreen's production of the program. The request was sent in connection with a due diligence exercise relating to a proposed transaction with Carsales.com.au Limited. In response to the email request for a copy of the contract for Discover Downunder, Warren Parrôt responded that: I have called Col as he received the 'purchase order' from Channel 10 for the eight episodes. He is making a copy and sending it over. In regards to our agreement with Col & Evergreen to produce the eight episodes we didn't have a written agreement as such (an oversight by me due to the fact he is my father), the agreement however was – • $25,000 + gst per episode • Total – $200,000 + gst 197 On receiving the email, Mr Falconer's PA replied to Mr Falconer: No contract written out as such, just a verbal agreement btwn Warren and his dad. As per below he is sending me the purchase order from ch. 10. 198 Warren Parrôt was cross-examined on why he had said that the lack of a written contract was his oversight. It is fair to say that he was somewhat defensive about the issue. I accept his evidence, however, that he was embarrassed by the fact that he had been asked, that his job was essentially as a salesman ("I was effectively a – one step up from a salesperson"), that he had never had responsibility for writing up a contract of any sort, and that Miffy Coady did all of the contracts for the contract sales people. Given that evidence, I also accept that he thought that in giving the information in the email about the billings and calling his father to send over the purchase order, he had done what he needed to do. 199 While Mr Falconer could not recall whether he read the email correspondence above at the time that he received the email, he said that he expected that he read his personal assistant's email at some stage and saw Warren Parrôt's response. It is fair to assume from this correspondence that the failure to conclude a contract between Bauer and Evergreen was a departure from Bauer's ordinary practice. In addition, Mr Falconer gave evidence that he would have expected that, as a senior person within Bauer, the correspondence to which I have referred was an instruction to make sure that Bauer had a contract with Evergreen. However, no written contract was ever entered into between Bauer and Evergreen, and Mr Falconer accepted that at no stage when committing to the second, third, fourth or fifth series did Bauer seek to require Evergreen to enter into any written agreement in respect of its production of the program. In addition, Mr Falconer accepted that there was no attempt on Bauer's part to require or arrange a different license for the broadcast of the second series with Channel 10 and that, if having a contract between Bauer and Channel Ten was important to him, it would have occurred to him that there was no such contract. Finally, I accept Mr Falconer's evidence that only the CEO of Bauer had authority to enter into a contract to produce a program such as The Car Show, The Boat Show and Discover Downunder, and to enter into a contract to broadcast such a program. 200 While Mr Falconer gave evidence of a conversation with Warren Parrôt in which he was assured by Warren that Trader owned the show, that was not put to Warren Parrôt in cross-examination. In those circumstances, I give that evidence no weight. 6.23 Series 2 to 5 and the transfer to Network Nine 201 The evidence as to the broadcasting and number of episodes made in the various series prior to Bauer's termination of the arrangement with Evergreen are as follows: Program and year of broadcast No. of episodes produced Metropolitan Network Regional Network Series 1 (2005) 8 Network Ten Southern Cross Television (Ten) Series 2 (2006) 12 Network Ten Southern Cross Television (Ten) Series 3 (2007) 26 Nine Network WIN TV (Nine) Series 4 (2008) 30 Nine Network WIN TV (Nine) Series 5 (2009) 18 Nine Network WIN TV (Nine) & Southern Cross Television (Ten) 202 As earlier mentioned, in common with the first series, Evergreen concluded the licence agreement with Network Ten for the second series of Discover Downunder. 203 At the end of the second series, Colin Parrôt had further discussions with Network Ten to broadcast a further 26 episodes. However Network Ten would initially agree only to 14 episodes. This lead Colin Parrôt to ask Warren Parrôt to sound out Mr Falconer to see whether Network Nine might be interested in broadcasting 26 episodes now that the program had been established. In late 2006, Mr Falconer and Warren Parrôt held discussions with Nine Network and WIN TV (Nine Network's regional affiliate). Warren Parrôt reported back to Colin Parrôt in about August 2006 advising that he had approached Mr Falconer who had responded some weeks later advising him that Network Nine were interested and would come back with a time slot. On 1 September 2006, Evergreen sent DVDs to Brent Cubis at the Nine Network in an effort to persuade the network to broadcast the program. While Network Ten had a change of mind in September 2006, nonetheless ultimately the third series was broadcast nationally on Network Nine. Colin Parrôt gave evidence that there was no written licence agreement put in place with either Evergreen or ACP to formalise that arrangement. His evidence accorded with the evidence of Mr Falconer in so far as Mr Falconer said that there were no written contracts entered into between Trader and either Nine Network or WIN TV. Mr Falconer also said that this was because Trader and the Nine Network were part of the same corporate group. 6.24 The program ceases to be broadcast nationally in early 2009 204 In November or December 2008, Penny Wieland of Network Nine advised Colin Parrôt that it would be prepared to broadcast only 13 episodes of Discover Downunder in 2009. Colin Parrôt negotiated with Ms Wieland to raise the number to at least 18 episodes. 205 In early 2009, WIN stopped broadcasting the program on all of its regional networks and then shortly afterwards in Perth and Adelaide. At that stage Nine Network was in a public dispute with WIN TV which had broadcast the program through an arrangement with Nine. As a result, the program was no longer being broadcast nationally which undermined the sponsorship arrangements. Warren Parrôt also gave evidence that the future of where Discover Downunder was going to sit on Channel Nine became a concern for Trader, as well as Evergreen, at this time and that by the end of 2008 he started to look to his career beyond Trader. 6.25 Initial approaches to Network Seven by Colin Parrôt in early 2009 206 In early 2009, Colin Parrôt considered approaching Network Seven because of the difficulties with the regional broadcast of Discover Downunder to ascertain whether Network Seven would be interested in broadcasting the show nationally. At this point, he realised that ACP could cause some difficulties with the broadcast of the program because ACP had registered the name www.discoverdownunder.com.au. 207 In late January 2009, Colin Parrôt had a meeting with Peter Charles, the national sales manager for Channel Seven. Colin Parrôt said that in so doing, it was his view that he could take the program and did not need Trader. At the meeting he suggested that there was an opportunity for Channel Seven with Evergreen to broadcast Discover Downunder at 5pm on Sundays from the end of February. The discussions at that meeting were confirmed in an email from Colin Parrôt to Peter Charles which Colin Parrôt forwarded to Warren Parrôt by email marked confidential on 28 January 2009. Warren Parrôt did not remember the email and said that he did not go to the meeting. 6.26 Early stages in developing "What's Up Down Under" 208 At the same time that Colin Parrôt was approaching Channel Seven, he was developing a program focusing on Australian bush festivals. In his evidence he said that: At the same time as I was talking to Seven about Discover Downunder, I was – we had had numerous requests from the various towns and cities we visited to run a program regarding – and this has been the nub of the whole thing – about Tamworth Music Festival or Deni Ute Muster or the various attractions of Australia that is unique to the world, and the intention was – if you look at my letter early on to Andrew McAvoy – he had always told me to get out of the commercial area and he would do the – they would finance the show. We saw it as an excellent opportunity to do a show nationally on just activities around Australia, and we were going to call it What's Up Downunder,… 209 His evidence was that the program focusing on Australian bush festivals was to be called "What's Up Down Under" and was a separate program from Discover Downunder. 210 In March 2009, Evergreen registered the business name "What's up Down Under". In this regard, the Victorian Business Name Extract identified the date of registration as 29 March 2010. However, the parties' agreed chronology identifies the date in fact as March 2009 which I accept. In the same month Colin Parrôt also began informal discussions with Seven Network for it to broadcast the Discover Downunder television program. At that time, Colin Parrôt invited Channel Seven to come to the National Caravan Convention held in Melbourne so that it would see the size of the industry. Nonetheless Colin Parrôt had not then given up on carrying ACP with him across to the Seven Network as ACP did not then have a national program with Network Nine. 211 Warren Parrôt remembered meeting two other people from Channel Seven in March at the National Caravan Conference. He also said that his father had brought them down to meet different people from the industry and to get a feel for the size of the industry. When he was asked whether he would take the show to another television broadcaster, Warren Parrôt said that "Well, no. I worked for Trader Classifieds, and I was working for Trader Classifieds. So I had some – I had some job opportunities around that time which I declined. And it wasn't really up to me where the – the show went, and I was – I was working for Trader. So if Col had decided to take it somewhere else, I would have to hope that he was going to continue to do work with Trader Classifieds." Furthermore, when it was put to Warren Parrôt that he did not tell anyone at Trader that Evergreen was talking to Channel Seven, Warren Parrôt said that "I may have. I may – I think at the time I was reporting into Chris Morris, who was a general manager there. And I used to have weekly catch ups with him. So I probably did mention it to Chris." It is also apparent from Warren Parrôt's evidence during cross-examination on the email of 28 January 2009 that he expected that Colin Parrôt would have spoken to him about his approaches to Channel Seven: …As I read this – and see if you agree, Mr Parrôt – what Mr Colin Parrôt is doing is really asking Channel Seven whether Channel Seven could broadcast the Discover Downunder show in 2009?---That looks pretty much what he's asking. And so that would have been quite a move that he would have spoken to you about?---Absolutely he would have. So it was – Channel Nine and WIN was becoming somewhat untenable. Yes. But this is for – actually for the channel – I'm sorry, for the series 5 2009?---Yes. Absolutely, yes, which obviously ended up on Channel Nine. But obviously Col continued speaking to Channel Seven beyond that because we still had the difficulty of the Channel Nine/WIN, you know, problems… 212 I accept Warren Parrôt's evidence on these issues. It is clear that there were difficulties caused by the dispute between WIN and Network Nine and the cessation of regional broadcasting of the show, and it is understandable that that would have been a concern to Trader as well as Evergreen. That makes it entirely credible that Warren Parrôt would have raised this with Trader, even though he could not specifically recall doing so many years later. 6.27 Warren Parrôt's power point presentation (17 April 2009) 213 Warren Parrôt was cross-examined extensively on a Power Point presentation (exhibit A18) prepared by him around this time. The presentation was attached to an email dated 17 April 2009 sent to his wife in which he asked her to print four copies of the presentation. The presentation was entitled "Proposed New Business Opportunity". The introduction stated that: For some time we have been discussing the merging and integration of resources, ideas, opportunities, infrastructure- effectively the discussion of creating a new business. The following pages detail the first real opportunity that we have to achieve our dreams, desires and goals. The major factors involved in this process are – • Channel 7 / re-badged version of DDU • Caravansearch.com.au – an RV Classifieds website • … 214 The next slide headed "Channel 7 / DDU" stated that: There may be the opportunity to jump ship (Trader), re-badge DDU and take the show to Channel 7 later in the year. … The major opportunities here are – • We will own the TV Show and the overall project • … 215 The purpose of the cross-examination was to impugn Warren Parrôt's credit and in relation to the knowledge of the person responsible within Trader for the Discover Downunder program as to who had ownership of the Mark. The presentation was not put to Colin Parrôt in cross-examination and Ms Baird SC, senior counsel for Bauer, accepted that it was not relevant to establishing Evergreen's intention or state of mind with respect to the Mark. As such the evidence is of limited utility in resolving the issues in dispute. Warren Parrôt maintained in the face of extensive and vigorous cross-examination on the document put to him for the first time in cross-examination that the presentation was his backup plan which he prepared at a time when he was under great stress ("being ignored by my boss", "feeling frozen out" of his employment, and "under a lot of duress in the company that I was working for") and was "preparing for myself for the worst". That explanation is consistent with the fact that he was subsequently made redundant by Trader on 22 June 2009 and I accept Colin Parrôt's evidence on this point. 216 Warren Parrôt was also cross-examined at some length on an email dated 27 April 2009 from him to his father about costs which Colin was apparently seeking to recover from Trader. The email was written when he was clearly very upset with his father and about his position at work. The email was not put to Colin Parrôt and, with respect, the line of cross-examination took Bauer's claim no further. 217 Contrary to the expressed limitation upon the purpose of the line of cross-examination about Exhibit A18, Bauer submitted in closing address that exhibit A18 together with the email exchange between Warren and Colin Parrôt on 27 April 2009 could be relied upon to demonstrate that Evergreen was well aware that it could not use the name Discover Downunder as the name of the same or a similar television program outside the relationship with Trader, and Evergreen (Colin Parrôt) and Warren Parrôt were working on plans to take the program outside that relationship. Given that Warren Parrôt was working at Trader at the time and therefore that his knowledge was not that of Evergreen (as Ms Baird SC accepted) and that the documents were never put to Colin Parrôt, that submission cannot be accepted. 6.28 Continuing issues with broadcasting the program with Nine and decision to dispense with Evergreen as the producer (March to May 2009) 218 On 25 May 2009, Warren Parrôt was advised by the Nine Network that WIN in Perth and Adelaide would be dropping Discover Downunder from their schedules from 6 June 2009. Keith Falconer wrote shortly thereafter to the CEO of Nine Network advising about revenue risk if Discover Downunder was not broadcast on WIN. Subsequently Southern Cross Network agreed to broadcast the program on its regional network until December 2009. 219 In the period March to May 2009, Trader was in discussions with Channel Nine to dispense with the services of Evergreen. The initiative came from Channel Nine which wanted to change the style of the show away from overt advertorial mentions to more of a lifestyle program. Channel Nine did not consider that the quality of the show was sufficiently high to move forward and they wanted the show to be made a different way with a different producer. As Mr Falconer put it in his evidence, "[t]here was no show with Evergreen, Nine said." Nonetheless, Mr Falconer said that the future of the program was uncertain as the question of whether the program was completely "ditched" was ACP's call, given the variables in terms of costs, sponsors and so forth if the show was to continue in a different form with a different production company. In this regard, Mr Falconer said that "[w]e acted like the owner and Col acted like a contractor." 220 In about May 2009, Trader decided that Evergreen's production services in relation to the program were not required in the future. This decision coincided with the decision to make Warren Parrôt redundant. Evergreen was not told at that time that Channel Nine wanted the program to continue but with a different producer. 6.29 Registration of the domain name and trade mark for What's Up Down Under on 12 June 2009 221 The domain name for What's Up Down Under was registered by Evergreen on 12 June 2009 allegedly to support a different program. Colin Parrôt explained that he registered the domain name given that ACP's registration of www.discoverdownunder.com.au had been raised as a potential concern by Network 7 to the ongoing broadcast of that show. On the same day, Evergreen applied to register the trade mark "What's Up Downunder?" trade mark application no. 1303526. 6.30 Warren Parrôt's redundancy and announcement about the "uncertain future" of Discover Downunder (22-26 June 2009) 222 On 22 June 2009, Trader announced to its staff that Warren Parrôt would be made redundant, citing "tough economic times" and the "uncertain future" of Discover Downunder. That redundancy took effect on 26 June 2009. 6.31 Evergreen's continuing negotiations with Channel Seven to broadcast a program with the name Discover Downunder 223 Evergreen then began formal negotiations with Channel Seven to broadcast the program. As late as 21 September 2009 Warren Parrôt (now representing Evergreen) was negotiating the terms of a contract with Channel Seven for broadcasting a program under the Discover Downunder name. 224 On 23 September 2009, Parable Productions Pty Ltd was incorporated. The following day, Seven Network made a written offer to Parable to broadcast a minimum of 30 episodes of "What's Up Downunder". 6.32 Announcement that Discover Downunder would return (5 October 2009) 225 On 5 October 2009, Trader announced the return of Discover Downunder in 2010, with Channel 9 having committed to 18 episodes. The announcement also stated that the series would be filmed by WTFN, described as an independent TV production company. 6.33 Application to register the Mark on 9 October 2009 226 On 9 October 2009 Evergreen lodged its application to register the mark Discover Downunder in Application No. 1324177. The application was examined in accordance with the requirements of s 31 of the Act and advertised in the Australian Journal of Trademarks. It was accepted for possible registration on 27 January 2011. 6.34 Correspondence between the parties following the breakdown in their relationship in relation to the continued production of Discover Downunder with Trader 227 The correspondence between the parties as to their alleged respective rights to use the Mark is not only relevant to the non-use proceedings. It is also relied upon in part by Bauer to contend that Evergreen never had a bona fide intention to use the Mark and is therefore relevant to its objection to registration of the Mark. 228 Upon learning of Trader's intention to produce the sixth series with WTFN, Evergreen through its legal representatives, Wisewould Mahony Lawyers, wrote on 12 October 2009 to ACP Magazines Limited (t/a Trader Classifieds) and sought undertakings that ACP/Trader cease using the name Discover Downunder. In the absence of such undertakings, legal action was foreshadowed. In the letter, Wisewould Mahony Lawyers alleged among other things that: Our client was responsible for the creation of and is the owner of the intellectual property associated with the program including, but not limited to: 1. The title "Discover Downunder"; 2. The theme song and associated music used throughout the program; and 3. The stylised "Discover Downunder" logo featuring a compass point and map of Australia. … Our client considers that the proposed use of the name "Discover Downunder" in relation to the television program, and the use of our client's logo amounts to: 1. An infringement of our client's common law rights to the trade marks "Discover Downunder" and the logo; 2. Breach of our client's copyright in the logo; 3. A false suggestion that the proposed program and/or the website are connected to or otherwise endorsed by our client; and 4. A breach of the Trade Practices Act 1974 (Cth.), in particular sections 52 and 53 and subject your company to injunctive and monetary remedies for trade mark infringement, unfair competition and other actions. Given the previous relationship between our respective clients, our client does not believe that your use of the name "Discover Downunder" is in good faith. 229 From that date onwards, as Evergreen submits, Bauer was on notice that any claim it had to the use of the name was the subject of contest. 230 On 23 October 2009 ACP magazines sent a fax responding to the letter from Wisewould Mahony Lawyers disputing Evergreen's claim to the title Discover Downunder and other intellectual property rights. In the letter, ACP alleged among other things that the Discover Downunder project had its genesis within ACP, with all of the development of the project done under the auspices of ACP and its employees, and that ACP fully commissioned the production of the Discover Downunder Program, paying the entire production cost of every series produced. The letter concluded that ACP declined to give the undertakings requested and reserved its right to take such action as may be advised to protect its rights. 231 Mr Falconer said that Trader made a decision to continue to produce the program under the name Discover Downunder, having received legal advice that it could proceed. Mr Falconer agreed that Trader's position was that it was prepared to go to court to defend the intellectual property rights that it believed it had in the Discover Downunder name and program. 232 On 19 April 2011, Bauer filed a notice of opposition to registration of a Trade Mark, 'Discover Downunder'. 233 In the period up until December 2009 Southern Cross Network continued to broadcast the episodes of Discover Downunder produced by Evergreen Television. Thereafter Bauer continued its involvement with a separate film producer in the production and broadcasting of a television program under the name "Discover Downunder" as follows: Series Year Metropolitan Network Regional Network 6 2010 Nine Network Southern Cross Television (Ten) 7 2011 Nine Network WIN TV (Nine) 8 2012 Nine Network WIN TV (Nine) 9 2013 Nine Network WIN TV (Nine) 10 2014 Nine Network WIN TV (Nine) 10 2015 Nine Network WIN TV (Nine) 234 No series of Discover Downunder was made after 2015. 6.35 Correspondence between the parties with respect to the broadcast by Channel Seven of "What's Up Down Under" 235 On 17 November 2009 Bauer wrote to Channel Seven advising that it was aware that Channel Seven would be broadcasting episodes of a program titled "What's Up Down Under" from February 2010. Bauer advised that it was currently in dispute with Evergreen and that in its opinion the program would constitute misleading and deceptive conduct in breach of s 52 of the Trade Practices Act 1974 (Cth) (then in force), as well as passing off at common law. 6.36 Findings with respect to contested matters of fact relied upon in support of the parties' respective claims for ownership of the Mark 6.36.1 Was there a meeting with Mr Falconer in September 2004 at which Warren Parrôt suggested the name Discover DownUnder? 236 In his affidavit sworn on 17 June 2015 in the appeal proceedings, Mr Falconer deposed: 37. In the period between my initial discussion with Warren and January 2005, there were a number of meetings about the potential program that I attended. A number of those meetings were with Warren and Colin. At one of these meetings in about September 2004 I recall discussing the issue of a suitable name for the potential program. 38. At that meeting Warren made a number of suggestions for possible names for the potential program. I recall him saying words to the following effect: "How about 'Caravanning Australia', 'Caravanning Down Under' or 'Discover Down Under'?" 39. At the time, I was concerned that the potential program needed to have a broader appeal than just for people interested in caravans, and that its name should reflect that broader audience. I recall saying at this meeting words to the following effect: 'The name needs to refer to something wider than just caravans. We need to have something more focussed on travel to reach the right advertising market. 'Discover down Under' could work." 40. I do not recall Colin, Warren and myself having a conversation at any time after this meeting in which we decided that the name 'Discover Down Under' or 'Discover Downunder' would be the name for the potential program. However, by about December 2004 I held the view that the name for the program would be 'Discover Down Under'. I do not recall whether I said to Colin or Warren that this was to be the name for the program, but I regarded that as being the working title for the program as and from about mid-January 2005. (emphasis added) 237 I accept Mr Falconer's evidence that as CEO, he would have ultimate "signoff" on the choice of name from Bauer's perspective. 238 It is helpful to set out in detail the cross-examination of Mr Falconer as to the alleged meeting in September 2004 and his first recollection of it: Your account now is, as I understand it, to the best of your recollection, that in September 2004 you had a meeting with Warren Parrôt and Col Parrôt in which that name was first suggested?--- We kicked around a few names, yes. Is that your evidence? ---That's what it says, yes, in my affidavit, I believe. Well, I'm asking you for your recollection. Do you recollect having a meeting with Warren Parrôt---? --- Correct. --- and Col Parrôt at which that name was first suggested? Correct. Do you agree with me that there is no mention of that meeting in either of your first two declarations before the delegate?---Correct. When did you first remember that there was a meeting in September?--- A meeting? Yes? --- When I had more time to reflect and gather information. Col visited the place regularly, popping in and out, and we had a discussion. Meeting was more informal but we certainly discussed it. In 2011 these events were some seven years – you were being asked to remember seven years earlier, and you did not at that time remember this meeting with Col Parrôt and Warren Parrôt; correct? ---Two thousand – no, not at that time. No. And---?--- But since that time, with a lot more information, research and involvement of people. In December 2012 when you came to make your second declaration, you still had not recalled any meeting with Col Parrôt and Warren Parrôt in which that name was devised? ---Correct. Are you able to identify for the court just when it was that you remembered this meeting in September 2004 between the two – between yourself and the two gentlemen? ---Prior to this process. Not necessarily, but do you remember when? ---No, not specifically. You've identified, or you made reference to, at least, further research and further contemplation and further examination. Are you able to point to any notes of the – a meeting that occurred between yourself and Warren and Col Parrôt in September 2004? --- No, it was a casual – my recollection was Col visited regularly and we had a discussion. But you can't recall when---?---I think Warren – I think Warren refers to lots of casual discussions, not arranged meetings around the project during that process. What's at stake is not whether other people make reference to meetings, Mr Falconer? ---I'm just – I'm just giving you my recollection. But whether you recollect a specific meeting that occurred, you say, in September 2004? ---Yes. Apart from the fact that for a long while you didn't remember that, you say that you now do? ---Yes. And you say it was in September? ---Yes. Although you don't have any notes to point to to suggest it was in September? ---Correct. That's correct. So we're just relying on your recollection when you say it was September? ---Correct. Do you agree with me that your recollection on this has been patchy? ---It's been focused at previous times, at specific times. Well, you've made two formal declarations that it was devised in April 2004? ---Yes. Which you persisted in, even in the face of denials that that was the case? ---Yes. Correct. And then some later point you've remembered it's September 2004? --- In the process of doing research and pull all the information together, plot in a chronological order. What's the research that you point to as causing this refreshing of your memory? ---Talking to staff, talking to how often Col came to the building. Is there somebody in Bauer who has told you that there was a meeting with Col and Warren in September 2004? ---No. That's my recollection. Well, can you identify --- ? ---That's my recollection based on the research that I've done. Let me ask you again. What research – can you point to this research? --- Yes. What is it? ---Talked to my staff, how often did Col come in, did you see us talking to him. Col came in regularly. Are you saying basically you've reconstructed what must have happened? --- No. No. Well, why September? ---It's my recollection. Why September? ---Sorry? Why September? ---Well, chronological order between the events that I did know and to that – so obviously December there was some diarised notes and events. September seems to be my best recollection of the time. So it's a reconstruction, at least as to the date? ---It's my recollection. Well, you – as I understand what you just described, you were reconstructing from other events as to when the meeting must have taken place? ---I'm trying to put a process in terms of remembering, so I don't know – other people remember different times and events that you remember and you work back and try and find a date to the best of your recollection. Because in terms of the question of who first invented the name---?---Yes. --- this meeting is terribly important, isn't it? ---Yes. Because it's now a specific recollection that you have of Warren Parrôt first proposing the name Discover Downunder? ---Yes. And indeed better than that, you actually gave it at least provisional approval? ---Sounded like – sounded like a good name. It certainly covered off what we're trying to achieve with the brand. It certainly covered off what you're trying to achieve in this litigation also, isn't it, Mr Falconer? --- No, to cover off what we're trying to achieve with the brand. Because suddenly it fills what is recognise an awkward gap in the evidence, that it's quite clear from the documentation that the Parrôts produced that the Discover Downunder name must have been after August 2004; that's right, isn't it? ---It's definitely after August 2004. 239 Thus while Mr Falconer agreed that he did not refer to the meeting in his declaration before the delegate, he says he recalled the meeting "prior to" this process which I understand to mean prior to swearing his affidavit sworn 17 June 2015. However, with respect, Mr Falconer's explanation for his recent recollection only of the meeting in September 2004 is vague and unpersuasive. Furthermore, notwithstanding his denial that this was a reconstruction of events, his explanation that he remembered it because of research, talking to staff and unspecified diary entries cannot be characterised otherwise than as a reconstruction. 240 Colin Parrôt denies that this meeting took place and indeed has no recollection of any meeting with Mr Falconer at that time for any purpose. In his evidence, Colin stated that Warren introduced him to Mr Falconer saying "[t]his is my boss, Mr Falconer", I said g'day and that's about it…" Colin says that he did not go to ACP offices all that often in 2004, but probably was there only on perhaps two or three occasions. His evidence suggests that his visits increased when he started producing television shows for Discover Downunder in April 2005. I find that evidence to be entirely credible. 241 Colin Parrôt also checked his diary for the whole of 2004 and did not have any entry recording a meeting with Keith Falconer. Notwithstanding production of his diaries during the trial in response to the notice to produce, that evidence was not contradicted. He also gave evidence that he put "every meaningful meeting" into his diaries, and if it was not recorded in his diaries "it didn't happen". Thus, as Evergreen submits, Colin Parrôt's practice of diarising meetings that are important suggests that if he was having a meeting with the CEO of Trader, he would have diarised it. 242 There was no other documentary evidence that corroborated Mr Falconer's evidence as to the meeting or, importantly, as to the proposition that the name "Discover Downunder" had been settled upon in September 2004. The first time any reference to "Discover Downunder" is found in the email correspondence is following Colin's meeting with Channel 10 on 24 January 2005: see above at [139]-[150]. Yet if that name was being commonly used within Bauer before that time, then there should have been emails, computer files, budgets, spreadsheets, PowerPoint presentations or some other documentation mentioning the name. No adequate explanation has been given for the failure to adduce any such evidence: see above at [73]-[76]. Thus, as Evergreen submits, "the complete absence of any documentation within Bauer that so much as mentions the name 'Discover Downunder' (or anything similar) prior to 27 January 2005 powerfully indicates that the name had no currency within the organisation until that week." 243 Moreover, while Mr Falconer gave evidence that the title was "vernacular internally" and that he probably had a conversation with Miffy Coady or "anybody who was involved in the office at that time", neither Miffy Coady nor Mike Sinclair were called despite being in Bauer's camp and available to be called: see above at [64]-[72]. As such, I feel more confident in rejecting Mr Falconer's evidence on this point. 244 Furthermore, if the name had been settled upon in September or in common use by December 2004, it is unlikely that Bauer would have waited until 4 February 2005 to register a domain name including the name "Discover Downunder" given in particular Mr Falconer's evidence that, in the ordinary course when a name is decided upon for production, those responsible within Bauer will register the domain name as soon as possible. As such, I agree with Evergreen's submission that the date of registration of the domain name further supports the finding that the name Discover Downunder was decided upon only in the week before the domain name was registered. 245 It follows that I do not accept Mr Falconer's evidence that a meeting took place in September 2004 between Colin Parrôt, Warren Parrôt and Kevin Falconer at which Warren Parrôt came up with the name "Discover Downunder" or that any such meeting took place at some other time. It also follows that I do not accept Mr Falconer's evidence that by December 2004 he held the view that Discover Downunder would be the name for the proposed program or that by mid-January 2005 the working title for the proposed program was "Discover Downunder". 246 On the other hand, the account given by Colin and Warren Parrôt as to the circumstances in which the name was settled upon is supported by the independent evidence of Peter Wright as to what occurred at the meeting with Channel Ten and the pub meeting immediately thereafter (see above at [125]-[135]). It also finds support in the email correspondence between Colin Parrôt and Tim Clucas on 27 and 28 January 2005 (see above at [139]-[141] and [149]). The only point of possible inconsistency with their account is the fact that an internal email from Matt Jamieson and entries in Miffy Coady's diary at Bauer (referred to at [142]-[148] above) contain the name "Discovery Downunder" or "Discovery Downunder on 27 January 2005 and therefore one day before Tim Clucas wrote suggesting that the word "Now" be dropped from the title. Given however that there is no doubt that Tim Clucas suggested that that word be dropped, I accept the submission by Evergreen that the most likely explanation for the apparent inconsistency is that Warren Parrôt or those to whom he reported had dropped the word "Now" when reporting back on the events in Sydney. This is consistent with the fact that Warren Parrôt rang Matt Jamieson on 24 January 2005 after the pub meeting and no doubt Miffy Coady, as Warren Parrôt's immediate supervisor would have among the "bunch of people" that Warren Parrôt rang excitedly after the Channel Ten and pub meetings (see above at [135]). It follows that I agree that this apparent inconsistency is an insufficient basis upon which to overturn the substantial body of coherent and plausible evidence in support of the circumstances in which Evergreen submits the name was finally resolved. 6.36.2 Who paid the airfares for the meeting with Channel Ten on 24 January 2005? 247 Colin Parrôt says that he paid for Peter Wright and Warren Parrôt to attend the meeting with Channel Ten on 24 January 2005 in order to demonstrate that the program had actual support both from the industry body and from Bauer. He said that he gave a cheque to Mike Sinclair after the Channel Ten meeting and that "I remember very vividly doing it because Keith Falconer through Mike Sinclair had told everyone that it was not going to cost them one cent. So when I came back, I made the point of giving him a cheque to say, 'There you go, buddy'." 248 Mr Falconer disputed that Colin Parrôt had paid for the trip, referring to the fact that the itineraries showed that the bookings were made by the travel agent for ACP, Carlson Wagonlit. I accept that ACP's normal practice was that, where ACP engaged its travel agent to make travel arrangements, ACP paid for those arrangements. However no evidence was given of payment by either party. Further, Mr Falconer's evidence that the flights were booked by ACP is not inconsistent with Colin Parrôt's evidence that he reimbursed ACP for the flight. Peter Wright could not remember who paid for the airfare. Ultimately I accept Colin Parrôt's evidence because it is not inconsistent with the bookings being made by ACP's travel agent, he gives a credible explanation for reimbursing ACP, namely, Mr Falconer's instructions to Warren Parrôt that this project was to be undertaken at no net cost to ACP, and Mr Falconer accepted that he had given these instructions to Warren Parrôt. I draw the inference more readily given that Bauer did not call Mike Sinclair and gave no reason as to why he was not called. The fact that Mr Falconer said that he gave such instructions in order to motivate his staff to achieve the best outcome is irrelevant. 249 Colin Parrôt also explained that the reason why he brought Warren Parrôt and Peter Wright to the meeting was to give validation to Channel Ten that this was a serious project, i.e., "that the program had actual support and funding by way of sponsorship from both CTIAV and that ACP was interested in promoting the program through its caravan magazines. I also wanted to demonstrate that ACP were genuinely prepared to deal with a program broadcast on a Network other than Nine." He elaborated on the last of these points, explaining that Trader had a relationship with the Nine Network and that Channel 10 was a competitor (albeit that Colin considered that Channel 10 was a more serious competitor than Mr Falconer's evidence might have suggested). Consequently, he considered that Channel 10 might have been sceptical of the suggestion that ACP/Trader would get behind the project if Warren Parrôt had not attended. As Colin Parrôt said, "[i]t was just simply to say the industry was behind me in the form of the CTIA and that the magazines and other people would be taking advantage of peripheral sales, which is what they did do." 250 Consistently with this, Peter Wright gave evidence that Colin Parrôt did "all the discussion work with Tim" at the meeting, and that Peter was largely there in an advisory role to help Tim understand a bit about the caravan industry and how it could be supported. Peter Wright also gave evidence that he understood that Warren Parrôt was there representing ACP, Trader Classifieds "because we needed the financial support from them as well and ACP had a relationship with basically all our members from advertising anyway, so it was, I guess, a hand in glove situation that I could see that position worked." In cross-examination, Peter Wright rejected the proposition that but for ACP and Trader Classifieds, the TV concept would not have progressed: And you understood that the TV concept, the project wouldn't get off the ground – you wouldn't have got to the stage of meeting with Mr Clucas but for ACP and Trader Classifieds having backed it to that point?--- No, not necessarily. I think Colin Parrôt is the one that was very proactive to get this TV program up and running. He was the one that instigated the idea to my president, Kevin Clark, in the early days and certainly he was the driving force behind it all the way through. Certainly – I certainly hear what you have to say about he was the driving force and his energy for the project, but you wouldn't have got, by the end of 2004, to the stage of talking to any broadcaster but for ACP Trader Classifieds having engaged its commitment to the project to that point?--- You may be aware that it was first floated with – through ACP to the affiliate Network Nine and it was knocked back. That was extremely disappointing for me and my association and – and I guess it left us with where do we go next or with or without ACP involvement because we were very keen to get this television program up and running. 251 As I have earlier mentioned, I give Peter Wright's evidence particular weight, and I accept his account of these matters. 6.36.3 When did Colin Parrôt become aware that the domain name www.discoverdownunder.com had been registered on 4 February 2005? 252 In support of its claim to ownership of the Mark, Bauer asks the court to infer that Colin Parrôt knew that Bauer had registered the domain name www.discoverdownunder.com on 4 February 2005 at the time that that occurred. Alternatively Bauer submitted that it should be inferred that Colin Parrôt was aware of the registration of the domain name by 1 April 2005 upon receipt of an email referring to the website, or by July 2005 when he was photographed at a wrap party at the end of the first series in front of a poster which referred to the domain name. 253 It was not disputed by Colin Parrôt that the domain name was registered; nor did he dispute that he was aware that the television program in the first series showed a webpage which had a link to the portal known as RVpoint.com.au. (I note that the RVPoint website was a classified site which was basically concerned with buying and selling). However, Colin Parrôt gave evidence that he did not find out about the registration of the domain name until later. His evidence as to precisely when he found out is inconsistent. At certain points in his evidence he says that he found out in about January 2009 when he had a robust discussion with Warren Parrôt about the matter. At other points in his evidence he said that he only became aware that it was registered when it was pointed out by Mr Falconer in his affidavit. At yet another point, the suggestion is that he found out after the second series. 254 First, I do not accept that Colin Parrôt only found out about registration when he read Mr Falconer's evidence. That is inconsistent with his evidence as to his reasons for registering the domain name www.whatsupdownunder.com.au on 12 June 2009. Specifically he decided that it would be prudent to register that name once he thought of it because Channel 7 had already raised ACP's registration of www.discoverdownunder.com.au as a potential concern to broadcasting that show. Consequently, it is implicit in his evidence that he knew before 12 June 2009 about registration of the domain name by Bauer. Nor is Colin Parrôt's evidence as to that date consistent with the clear and cogent evidence given by Colin and Warren Parrôt about the robust conversation that they had when Colin Parrôt found out about the registration of the website: see at [260] below. 255 Secondly, it was put to Colin Parrôt in cross-examination that he was aware that the domain name had been registered by Bauer at least by the time that he received an email from Warren Parrôt speaking of the Discover Downunder website on 1 April 2005. That email was sent to the Power Pact email address and referred among other things to: Logo's and links for each brand housed at the Discover DownUnder website for the duration of the show (please note - all banners, logo's/links etc when clicked on will link the pc user directly to the exact web page that Fleetwood depict – all rates are inclusive of gst) 256 At the top of the email, Warren has apparently typed "Hi Rob – please print for Col". Rob was Colin Parrôt's assistant Robyn. It was put to Colin Parrôt that the email demonstrated that he was aware that the domain name had been registered at least by April 2005 by virtue of that email. Colin Parrôt did not remember the email and remained firm in his evidence that he did not know that the domain name had been registered until much later. I accept that evidence. In this regard, I note that the email did not specifically mention registration of the domain name or in whose name it was registered. The reference to the Discover Downunder website was also a matter mentioned in the email among quite a long list of matters pertaining to the program. As such, Colin Parrôt may well not have appreciated at the time that the reference to the website might be read as implying that the domain name had been registered, particularly given that he is (in his own words) a bit of a "Neanderthal" when it comes to computers. Colin Parrôt's evidence as to his lack of technological understanding was corroborated by Peter Wright who said that he did not correspond with Colin by email for this reason and that as a consequence they undertook their discussions in relation to the program generally on the phone or in person. 257 Thirdly, it was put to Colin Parrôt that he must have been aware that the domain name had been registered at least by 22 July 2005 when he was photographed standing close to a poster with the domain address in small print in July 2005 at a "wrap party" celebrating the end of the first series. Colin Parrôt accepted that the poster was probably presented to him on the day that the wrap party was held and said that he hung the poster on the wall of his office. In cross-examination as to his knowledge of the website address depicted on the poster, he gave evidence that: You had the opportunity, should you have looked at the poster, to make a comment at the end of the first series?---No, I point out again that I didn't realise it was there until much later. It was probably in the second series or something like that. It was pointed out to me, to be perfectly honest. I had not seen it, and as you can see the size of the type there it is very, very small compared to the word Discover Downunder. Indeed. How big is the poster?---It's 30 by 40 inches. So 30 by 40 inches means that the type – you're saying you couldn't read the type "discoverdownunder.com.au"?---I didn't look at it to be perfectly – I looked at the other type and the all-embracing character of Paul Cronin. That was our talking point, in my office, that was all. And that's because it wasn't actually an important matter for you, whether there was a website?---I beg your pardon. Whether there was a domain name or not?---It was very important to me to know about a domain name afterwards. But I didn't at that time – we only promoted RV point in our TV shows. And if you look through the first series you will see that's all that was ever promoted, RV point. 258 I accept that Colin Parrôt may not have focused upon, or perhaps more likely appreciated the significance of, the website address on the poster. This is consistent with his evidence that he was aware of a Discover Downunder website but thought that it was just a portal to the RV Point website. As Colin Parrôt said: 46. When the program commenced in 2005 it showed a web-page, it contained a link to a portal known as RVPoint.com.au. I believe that through this portal, ACP intended to promote its online classifieds for recreational vehicles. I did not know that this portal provided a link to a separate website for Discover Downunder. I was never asked by ACP nor did I consent to it registering the domain name. I became aware that the Discover Downunder pages were hosted by ACP from the RVPoint.com.au website after the second series. I was not happy about that as it was done without any consultation with me but when I found out, it was too late to do anything about it and I did not wish to rock the boat. 259 Colin Parrôt's evidence that when he found out about registration of the domain name, he was very angry and had a "robust conversation" with Warren Parrôt was entirely credible, as was the reason why he did not then challenge Bauer's actions, namely, that he "thought at that time it was too late to do anything to rock the boat". 260 Colin Parrôt's evidence is corroborated in part by Warren Parrôt's evidence that he "certainly remembered [his father] not being happy" when he found out about registration of the domain name in Bauer's name even though Warren Parrôt could not recall when the conversation took place but thought "it was probably closer to maybe 2007". In this regard, Warren Parrôt found out that there was a standalone Discover Downunder website, as opposed to mere portal to the RVPoint Website, only when he was asked to build the second Discover Downunder website which is when he thought that his father found out about the website as well. As he said in cross-examination: Mr Colin Parrôt says that – gave evidence that he had had a – called it a robust discussion with you about the Discover Downunder domain name at about this time or perhaps a little bit earlier. Do you recollect - - -?---I think it was earlier. I think it was probably closer to maybe 2007. I can't really remember it. I certainly remember him not being happy. I'm sorry, you don't really remember it but you've spoken to him since about - - -?---No. - - - this evidence?---I remember him not being happy about the fact that he didn't realise – neither did I, really, until I was asked to build the second Discover Downunder website which would be a standalone because RV Point had gone off to Carsales with the rest of the online properties. That's when – the first time I ever saw it as its own website. And at that time, I think he really realised it too and wasn't happy about it. By the won [sic] website, you mean on which there was no portal from - - -?---Exactly. So as I said, I saw the Discover Downunder site as a satellite to or a portal to the RV Point site or pages within or however you want to look at it. I didn't know enough about websites at the time. But you do accept that if you typed in Discover Downunder, it would go through the portal and you would be shown - - -?---Absolutely. I accept that. It was just my understanding of websites at the time wasn't what it is now, so - - - Yes. So you accept that it would have shown – for a person just putting in the search term Discover Downunder, that would have gone straight to the Discover Downunder site?---Absolutely. Yes. 261 Warren Parrôt's evidence on this point is supported by an email from him to Evergreen TV on 27 April 2007 in which he says: PS – mate, 1st available episode you can please get Paul, Dean or Tania to mention that the 'video streaming' of some of the present and past segments of Discover Down Under are 'now on line' – log on to rvpoint.com.au – follow the links oto [sic] Discover Down Under and visit the 'Archives section. 262 It follows that I do not accept that Colin Parrôt learnt of the registration of the domain name by Bauer at any of the dates put to him by Bauer. Even though the date on which he learnt about the matter is not clear, I accept that it was much later and probably not until sometime during the second series when Warren Parrôt was asked to build the second website. The evidence that Bauer had registered the domain name on 4 February 2005 does not therefore support the drawing of an inference that Colin Parrôt did not dispute Bauer's ownership of the program at this time. 7. CONSIDERATION: THE APPEAL PROCEEDING 7.1 Issues 263 The issues on the appeal were summarised in the Bauer's opening submissions in the following matter with which the respondent agreed. I have inserted the party's respective positions with respect to each issue into the summary. In Australia, as at the Filing Date: (1) Was Evergreen the owner of the Mark in relation to the Services within the meaning of s 58? Relevantly, was it the first user in the course of trade? Bauer submits the Court should find that Evergreen was not the first user. The Court should answer this issue "no". Evergreen submits that the Court should find that Evergreen was clearly the first user and the Court should answer this issue "yes". (2) Did Evergreen in good faith intend to use the Mark in relation to the Services within the meaning of s 59? Bauer submits the Court should answer this issue "no" whereas Evergreen submits that it should be answered "yes". (3) Did Evergreen make the Application in bad faith within the meaning of s 62A of the Act, noting that authority suggests that surrounding circumstances, including after the Filing Date, are relevant? Bauer submits the Court should answer this issue "yes" whereas Evergreen submits it should be answered "no". (4) (a) Had the phrase 'Discover Downunder' acquired a reputation, and (b) because of that reputation, would the use of the Mark for the Services be likely to deceive or cause confusion, within the meaning of s 60? Bauer submits the Court should answer (a) and (b) "yes". Evergreen submits that the Court should answer (a) "yes" and (b)" no". (5) Would Evergreen's use of the Mark in relation to the Services be misleading or deceptive or likely to mislead of deceive in contravention of ss 52 or 53 of the Trade Practices Act 1974 (TPA), that is, be contrary to law within the meaning of s 42 of the Act? Bauer submits the Court should answer this issue "yes" whereas Evergreen submits it should be answered "no". 264 Bauer abandoned a sixth issue as to whether the Mark was capable of distinguishing Evergreen's Services from the similar services of other persons within the meaning of s 41 of the Act. 265 It was not in dispute before the Registrar or here that the registrability of the application and each of the grounds of opposition raised by the appeal fall to be determined as at the date on which the application (being no. 1324177) was filed by Evergreen on 9 October 2009 (the filing date): Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594 (Kitto J) (Southern Cross). 7.2 Summary of key factual findings 266 Drawing upon the previous section of this judgment, it is helpful briefly to summarise key findings of fact for the appeal proceeding as follows. (1) Ultimately it was not in issue that Colin Parrôt conceived of the series concept and approached Trader through Warren Parrôt with the concept (then called "Inside, Outback, downunder with…") in July 2004. At this stage, the proposal was for a series of 4 x ½ hour episodes promoting caravans and camping in Australia. (2) By this time, Colin Parrôt had already had discussions with the CTIA (Qld), Jayco Caravans and the CTIAV, each of whom had expressed their willingness to contribute sponsorships. (3) Following Colin Parrôt's initial approach, a meeting was set up to present the concept to Mike Sinclair. For the purposes of that meeting, Colin Parrôt prepared a proposal dated 10 August 2004 in which Warren Parrôt had limited input. The detailed proposal was for the production of 4 x ½ hour caravan shows on the Nine Network and explained that it had the support of the CTIA, CTIAV, CTIA (Qld) and Jayco. (4) In August 2004 Colin Parrôt engaged Rusty Nayles to compose a jingle incorporating the words "Caravans & Motor Homes Downunder." (5) Mike Sinclair, Ros Bromwich, Warren Parrôt, James and Grant Manson and Colin Parrôt attended the meeting on 25 August 2004. Following discussions with Peter Wright, the name Colin Parrôt then used was "Caravan and Motorhomes Downunder". (6) The meeting was successful and Mr Sinclair instructed Warren Parrôt to work with his father to develop the concept and put a proposal to Mr Falconer focusing on producing the show at no cost to ACP and generating a profit for it. Warren Parrôt gave a PowerPoint presentation internally to Mr Falconer in about September 2004 who approved it so long as it could be done at no cost to ACP. Mr Falconer said that he would take the proposal to Network Nine to see if they would broadcast the program. (7) The proposal expanded to six episodes given the level of industry support, and Trader and Colin Parrôt worked together to attract company brands to participate in the series. (8) When Network Nine rejected the proposal, Colin Parrôt approached the Ten Network and arranged a meeting on 24 January 2005 with Tim Clucas. Warren Parrôt was present at Colin Parrôt's invitation representing ACP/Trader to demonstrate its backing for the program despite the ACP association with the Nine Network. Mr Wright attended for the CTIAV in an advisory role on the caravan industry. Colin Parrôt primarily engaged in the discussion with Mr Clucas. At that meeting, the program was referred to as "Caravan & Motor Homes Down Under". Mr Clucas suggested that the number of episodes be increased to eight but expressed concerns about the name. The outcome of the meeting was, as described by Mr Wright, a "handshake deal'. (9) Immediately after the meeting, Colin and Warren Parrôt, and Mr Wright celebrated at the pub, and Colin Parrôt devised the name "Discover Downunder Now". However, Colin Parrôt s to run the name past Mr Clucas, Mr Wright said that he would have to run it past Kevin Clark, while Warren Parrôt said that he would have to run it by his superiors, specifically Mr Falconer. (10) Colin Parrôt reimbursed ACP/Trader for the costs of the airfares to attend the meeting with Channel Ten by giving a cheque to Mike Sinclair after the meeting. (11) Colin Parrôt sent an email on 27 January 2005 to Mr Clucas seeking his approval for the name "Discover Downunder Now", to which Mr Clucas responded on 28 January 2005 suggesting that the word "Now" be dropped. I do not accept that a meeting took place in September 2004 or at any other time at which Warren Parrôt first suggested the name "Discover Downunder". Nor has Bauer established that "Discover Downunder" was used internally within ACP/Trader before 27 January 2005. (12) On 4 February 2005, the domain name www.discoverdownunder.com.au was registered without Evergreen's knowledge or consent. Colin Parrôt did not find out about registration of the domain name until after July 2005. (13) On or before 7 February 2005, Colin Parrôt engaged Tulloch Advertising to produce the artwork for the program including the Discover Downunder logo used on the program and in relation to its promotion. (14) A promotional video was filmed by Evergreen on 14 February 2005 following a request by Warren Parrôt in early 2005. Some time later, Colin Parrôt provided Warren Parrôt with the video by email and Warren Parrôt passed it on to CDM. For reason I later set out, Bauer has not established a proper basis for inferring that the video provided to CDM was the video exhibit KF-7; nor that the promotional video given to CDM was provided to it before conclusion of the licence agreement between Evergreen and Channel Ten: see below at [280]-[297]. (15) On 25 February 2005, Evergreen entered into a licence agreement with Channel Ten whereby Evergreen granted a licence to Channel Ten to broadcast Discover Downunder. There was no objection raised by ACP/Trader to Evergreen having done so. (16) Colin Parrôt sent a copy of the licence agreement to Warren Parrôt at ACP Trader on 28 February 2005 under a covering letter setting out "our basis for production" of the eight television programs and suggesting terms, namely payment by ACP Trader of a $50,000 deposit with additional $50,000 payments to be made on 1 April, 1 May and 1 June 2005, representing $25,000 per show (as had earlier been agreed). I accept that implicitly by this letter Colin Parrôt gave permission for ACP/Trader relevantly to use the Mark, "Discover Downunder", in furtherance of its business through what was effectively a joint venture with Evergreen for the production and broadcast of the first series, if such permission had not already been given implicitly by Evergreen or was to be inferred by the course of dealing between Trader/ACP and Evergreen. The relationship between Evergreen and Bauer was not one of agency; nor was there any suggestion that Evergreen had agreed to assign its rights in the Mark to Bauer. I do not however accept Colin Parrôt's uncorroborated evidence that that permission was conditional upon his son's involvement. (17) The costs of producing the first series had effectively been met by this stage, with agreement in principle having already been given by industry associations to underwrite all eight episodes. The industry associations confirmed that support shortly thereafter. (18) Preparation for the first series was undertaken collaboratively largely by Warren Parrôt for ACP Trader and Colin Parrôt for Evergreen. I accept that both Warren Parrôt for Trader and Colin Parrôt brought sponsors and advertisers to the show. (19) Trader invoiced sponsors and paid Evergreen an agreed fee for the production and delivery to Channel Ten of each episode in the first series. The contracts with sponsors were also concluded with Trader. I do not consider that these matters demonstrate that Evergreen's role was simply as a contractor to Trader. Rather, it was a pragmatic arrangement to utilise ACP/Trader's accounts department and contractual expertise. (20) The Evergreen logo appeared at the end of the closing credits throughout the broadcast of the first series without objection by Trader/ACP and subsequently until the relationship between Evergreen and ACP/Trader ended, and this was known to Mr Falconer. (21) Evergreen concluded the licence agreement with Network Ten for the second series. Mr Falconer accepted that there was no attempt on Bauer's part to require or arrange a different licence for the broadcast of the second series with Channel 10, notwithstanding that within Bauer, he as CEO was the only person with authority to enter into a contract to broadcast such a program. 7.3 Issue 1: Ownership of the Mark (s 58) 7.3.1 Relevant principles 267 The first issue is whether Bauer has established its ground of opposition to registration of the Mark under s 58 of the Act, namely, that Evergreen is not the owner of the Mark. It will be recalled that s 27(1)(b) of the Act requires that, as at the date of the application, the applicant is using or has authorised use of the trade mark, or intends to use or authorise use of the trade mark. 268 First, as earlier mentioned the onus lies upon Bauer to prove that Evergreen is not the owner of the Mark. As the Full Court held in Food Channel at [26], "[e]ach of ss 58 and 59 of the Act creates a ground of opposition in terms apt to engage the usual rule as to onus of proof that 'the party who asserts must prove.' See Unity Insurance Brokers Pty Ltd v Rocco Pezzano Pty Ltd (1998) 154 ALR 361 at [99]." 269 Secondly, the term "owner" derives its meaning from its common law origins relating to prior use: Food Channel at [55]. Consideration was given to what constitutes first use in Moorgate Tobacco Co Ltd v Phillip Morris Limited (No. 2) (1984) 156 CLR 414 (Moorgate). In particular, Deane J (with whom the other members of the Court agreed) held at 433-434 that: The Court was referred to a large number of cases and to some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purpose of the statutory notion of proprietorship of the mark before registration. The cases establish that it is not necessary that there be an actual dealing in goods bearing the trademark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the Mark (Re Registered Trade Mark "Yanx"; Ex part Amalgamated Tobacco Corporation Ltd. [(1951) 82 CLR at 204-205] or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v Esso Standard Oil (Australia) Ltd [(1960) 103 CLR 391 at 422]. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. 270 In that case, the Court found that that test had not been met, holding that "[t]here was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used." Moorgate at 434. 271 Applying Moorgate, Finkelstein J explained in Malibu that: 27. The use must be in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods with respect to which the mark is used and that person…While the mark must be used for the purpose of indicating a connection in the course of trade, this does not mean that any actual trade or dealing in the goods is required. It is sufficient if there is an offer to trade in the goods, or an existing intention to offer or supply goods bearing the trade mark. 272 Finkelstein J also explained the law to applied depending upon whether or not the mark had been used in Australia prior to registration as follows: 25. What is the law that is to be applied to the facts as I have found them? The appellant is entitled to registration of the trade mark if, at the time of its application, it was the proprietor of the mark within the meaning of the 1955 Act. Proprietorship can arise in one of two ways. 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) 75 CLR 203; Shell Co of Australia Ltd v Rohm & Haas Co (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) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd (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. 273 An example of a case in which the use of the mark was not sufficient to establish ownership is Woolly Bull Enterprises v Reynolds [2001] FCA 261; (2001) 107 FCR 166 (Woolly Bull). In that case, Drummond J held that unsuccessful efforts to persuade a brewery to produce and sell beer under the trade mark "RAGING BULL" were insufficient. His Honour held that: 40… Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect. [The second applicant and controlling director of the first applicant] was never able to get beyond attempting to establish a means for the first applicant to use its mark in trade. That does not amount to any use of the first applicant's mark in trade sufficient to defeat the removal application. It goes no further than discussions preliminary to the first applicant actually committing itself to the use of the mark in the course of trade. 274 Mere authorship however, as Bauer contends, does not constitute use of the trade mark and does not suffice to establish ownership: Aston v Harlee Manufacturing Company (1960) 103 CLR 391 (Aston) at 399 (Fullagar J). Accordingly, the question of ownership of the Mark does not turn upon who created the television series, who was the author of the Mark "Discover Downunder", or who was the main driving force in the preparation of the first series save to the extent that these matters may inferentially support the respective party's claims to first use. 7.3.2 Alleged first use by Bauer by the provision of the promotional video in the course of trade 7.3.2.1 The changes in Bauer's case in the course of the litigation 275 Initially Bauer contended that the first public use of the Mark occurred on or about Monday 21 February 2005 when Bauer's internal staff and contracted media advertising sales representatives, CDM, distributed email copies of the promotional video clip which contained use of the Mark to potential advertising customers of Bauer (e.g. Bauer's written submissions in opening at [40]). 276 Bauer relied in support of its initial case for first use upon the evidence of Keith Falconer in his affidavit of 17 June 2015 at [62]-[65]. The video clip in question was Exhibit KF-7. I note that the clip was not in evidence before the delegate as Keith Falconer was not aware of it at that time. Nor did he remember the video until someone produced it from Bauer's records and did not know where it was located. He also said that there was no record of any email being sent to anybody containing that video and that he did not see anyone else physically sent it out to anyone. 277 In its closing written submissions in reply, Bauer maintained its case that first use occurred by external distribution of the video clip by CDM to potential advertising customers but also submitted that first use occurred when the video clip was provided by Trader to CDM. Specifically in Bauer's reply submissions in closing, it contended that: 9. Bauer's claim to first use of the Mark is not limited to the email distribution by CDM of the advertising video clip to potential sponsors... Bauer first dealt with the video clip in the course of trade by supplying the video clip to CDM for CDM to distribute to potential advertising customers of Bauer, and by its internal sales staff distributing the clip for the same purposes. That anterior use is the relevant first use. Bauer's case is that CDM's conduct in thereafter distributing the clip is subsequent to the dealing in the video clip by email between Bauer's staff and CDM. … The video clip contains the statement that the 'Discover Downunder' program was "created by ACP Trader Magazines group". (emphasis in the original) 278 On the last day of trial in oral closing address, the case for first use by Bauer was put solely on the basis that the distribution of the video clip by Bauer to CDM constituted first use of the Mark by Bauer. In this regard, counsel for Bauer accepted that Mr Falconer's evidence fell short of direct evidence of distribution to external sources from CDM and stated that "[w]e're not relying on the supply from Cameron Damon Media" (emphasis added). Rather, there being no direct evidence that the video was distributed to third parties aside from CDM, Ms Baird SC submitted that: …you don't need to find it any further than the step to Cameron Damon Media. Indeed, your Honour, on the line of authority from Moorgate Tobacco, preliminary steps in the course of trade, whether or not they ultimate result after a priority date, it's usually used, your Honour, when there's overseas trade, can constitute, first use in the course of trade. Here, we are not relying on the preliminary steps of the internal emails and diary entries of meetings on the week of around 27 January, but we say that that does give context and - - - HER HONOUR: Yes. MS BAIRD: - - - consistency - - - HER HONOUR: Yes. MS BAIRD: - - - with this step of the promotional video. And we rely on an external supply, which is Warren Parrôt's clear evidence in writing in his proffered forward in-chief that he was provided with a video and he passed it on. 279 Later in her address, Ms Baird submitted that it was sufficient to satisfy the test of objectively committing to using the mark for Bauer to have sent the promotional video to CDM and said that: …if your Honour looks at the text of the promo itself, it marries up the program and the sponsorship, its trader's program Discover Downunder. If you want to be a sponsor, call us. And if that's – that is as clear as can be a committed intention to use the name Discover Downunder for the program. 7.3.2.2 Evidence bearing on whether and when the promotional video clip was sent to CDM 280 While Bauer did not ultimately rely upon alleged distribution of the video clip to potential customers, the evidence on that point also addressed the issue of the alleged distribution of the video clip from Warren Parrôt to CDM. However, in view of the concession made by Bauer on the final day of the hearing, it is unnecessary for me to make any finding on the alleged distribution from CDM to potential advertising customers. 281 No evidence was led by any officer or employee of CDM who could depose to receiving the video clip or as to the date on which CDM may have received the video clip (or that it was ever sent by them to any potential advertising customers). Nor did Mr Falconer have personal knowledge that the video was sent to CDM or as to the date on which it may have been sent. His evidence was purely hearsay. 282 Bauer rely primarily upon the evidence of Warren Parrôt as to the purpose of the promotional video, that it was provided to him by Colin Parrôt, and that he passed the video clip on to CDM. Specifically, it was Warren Parrôt's evidence that: In early 2005, I asked Evergreen to produce a short video to promote the show through Cameron Damon Media, the internal sales teams and other contracted sales teams in Australia. My purpose in doing this was to allow Cameron Damon Media, and all the sales teams to attract more sponsors which would provide greater revenue to ACP. Col provided me with a video and I passed it on to Cameron Damon Media. (emphasis added) 283 Warren Parrôt's evidence does not deal with the question of when he received the video from Colin Parrôt or when he passed it on to CDM. Nor does his evidence address the means by which the video was "passed … on" to CDM by email or otherwise, or as to any instructions to CDM that might have accompanied the video clip. 284 Colin Parrôt accepted that the promotional video was made but said that "it wasn't sent out to anybody at that time". That evidence in my view needs to be understood in light of the case which Bauer were running at that stage of the trial, i.e., whether the video was sent to potential advertising clients as opposed to CDM. Colin Parrôt said that the only thing he would have done with the video was to show it to Warren Parrôt for two reasons: first, the video had the wrong logo for Discover Downunder on it (i.e. without the compass); and secondly, it had the Channel Ten logo on it which could not have been used until after 25 February 2015 when the licencing agreement was entered into with Channel Ten authorising use of its logo. Colin Parrôt said that he would not have used the Channel Ten logo without the licence agreement notwithstanding that Channel Ten had orally agreed to show the program, and that this was "sacrosanct…I've been producing shows on Channel Ten, Nine, Seven. You do not use their logo without their permission, otherwise you will be in real trouble". He denied in cross-examination that "the Channel 10 logo was a go ahead from the meeting of 24 January – well as soon as the name was agreed?", responding that "When the licence agreement came out, that's when we knew we free to use it." Colin Parrôt also said in response to a further question about the Channel Ten logo that Tim Clucas from Channel Ten had said "not to do anything with Channel Ten until we have the licence agreement". 285 Bauer submits that it is reasonable to infer that Colin Parrôt's evidence in cross-examination on the supposed limitation on the use of the promotional video until after the agreement with Channel Ten was signed was a recent invention and should be disregarded. I do not accept as reliable Colin Parrôt's evidence that Tim Clucas said that the logo should not be used given the passage of time, the lack of any contemporaneous records supporting that contention, and that Colin Parrôt's passionate defence of his rights with respect to his claim over the Mark may have coloured his recollection of events. However, I consider that his explanation of why he would not have used the Channel Ten logo before Channel Ten had effectively "signed on the dotted line" to be entirely plausible and prudent, and I accept his evidence to this extent. 286 After Colin Parrôt's diaries were produced, the tenor of his evidence is that he accepted that the promotional video exhibit KF-7 was part of the video recorded as shot in the diary entries on 25 January 2005 and 14 February 2005 and placed in a job with Simon Holt on 15 February 2005 to be given to Warren Parrôt by Thursday 17th February 2005: see above at [159]-[160]. The changes which he identified in his evidence were that the video exhibit KF-7 had a "totally different logo on the start" and that his name was cut off the back end of the video. As to the former, the logo which had been commissioned earlier (see above at [157]) was not used in the video-clip Exhibit KF-7. As to the latter change, unlike the end credits ultimately used on the program, the Evergreen name and its distinctive clapper did not appear. In this regard, I also note that it was not put to Warren Parrôt that the video provided to him which he passed on the CDM was the same promotional video as Exhibit KF-7. Finally, the reason that Colin Parrôt gave for accepting that exhibit KF-7 must have been given to ACP was simply because they were in possession of it. 287 The diaries establish that Colin Parrôt was aware at the time that Warren Parrôt required the video by Thursday 17 February 2005. However, neither his evidence nor the diaries establish that the video which is exhibit KF-7 was ever sent to CDM, or the date on which the video or a video changed in the manner suggested by Colin Parrôt was sent to CDM. 288 Keith Falconer's evidence was that, on about 21 February 2005, a promotional item was prepared in the form of a video clip which was "provided to Trader's internal sales staff and also its contracted advertising sales representatives, including Cameron Damon Media" (Falconer affidavit sworn 17 June 2015 at [63]). He could not recall who produced the videoclip but assumed it was Evergreen. His evidence continued: 64. To the best of my recollection, copies of the video clip were shown and emailed to prospective advertisers by Trader's internal sales staff and by its contracted advertising sales representatives, including Cameron Damon Media, prior to the date that the first episode of the program was delivered by Evergreen. 65. I regard that the promotional materials referred to in paragraph 63, including the video clip, were the first public uses of the name 'Discover Downunder' for the program. 289 As to [64] of Mr Falconer's affidavit, filming of the first episode did not occur until after the licencing agreement with Channel Ten was concluded on 25 February 2005. It follows that the first episode must have been delivered by Evergreen to ACP only after conclusion of that agreement. As such, even taken at its highest Mr Falconer's evidence falls well short of establishing that the video clip was sent to CDM before 25 February 2005. 290 Mr Falconer was cross-examined about the promotional video and its distribution to CDM and thereafter to prospective sponsors in the following passage: Can I ask you, have you spoken with people within ACP or Bauer who say that they made any use of that video?---I have, yes. What are the names of those people?---I spoke to Grant Manson. And is Mr Manson being called in this proceeding?---No. Did you speak with anybody else who says they may have made some use of it?---No. Am I safe in assuming that a search has been made of Bauer's records for any evidence that emails were sent to anybody containing that video?---We have no record of an email being sent. … And do I take it from that that you have – you would have not have – you did not do that yourself?---I didn't send, correct. Correct. And I would be right, then, that you don't have a specific recollection of anybody sending that to anybody else?---A recollection? I had a conversation that we went it out to clients and Grant Manson said yes, a conversation. You don't have a recollection - - -?---Sorry. - - - of seeing anybody send that to somebody else?---No, I have never saw anybody physically send it to anybody else. 291 Thus, Mr Falconer's evidence about the use to which the video was hearsay, being what he was allegedly told by Grant Manson of CDM. Nor was Grant Manson called by Bauer despite being a natural person for Bauer to call and being available. As such, I infer that Grant Manson would not have given evidence supporting Mr Falconer's evidence on this issue and do not give Mr Falconer's evidence any weight. I also note that Mr Falconer did not recall the video until someone produced it from Bauer's records after the delegate's decision. When he said that it was his recollection that the video was prepared on or about 21 February 2005, the basis for that "recollection" was again hearsay, namely, "that's what people told me who were directly involved." 292 Finally, Mr Wright's evidence does not shed any light upon when the promotional video might have been sent to CDM as he had no recollection of the video being distributed to potential sponsors at any point in early 2005 and was not asked (and would have been unlikely to have known) when the video was sent to CDM. 7.3.2.3 Findings: has Bauer established that the promotional video clip was sent to CDM before conclusion of the licencing agreement with Channel Ten? 293 Two matters needed to be established by Bauer to make good its case that the sending of the promotional video, Exhibit KF-7, constituted a first use of the Mark, namely that: (1) the promotional video clip, Exhibit KF-7, was sent by Warren Parrôt to CDM; and (2) Warren Parrôt sent the video to CDM before the licencing agreement was concluded between Colin Parrôt and Channel Ten on 25 February 2005. 294 As to (1), the evidence of Warren Parrôt establishes that (a) he received a promotional video from Colin Parrôt but does not establish that that promotional video was Exhibit KF-7; and (b) he sent the promotional video that he received from Colin Parrôt to CDM. 295 As to (2), there is no evidence as to when the promotional video was sent to CDM or indeed to Warren Parrôt save that it was before the first episode was delivered by Evergreen. 296 Bauer submits that "there was no suggestion in the evidence at trial (and none in the affidavit evidence of the Parrôts) that the promotional video was not provided to Warren Parrôt at Trader by 17 February 2005", relying upon Colin Parrôt's diary entry on 15 February 2005 that that was the date on which it was due. Bauer submit that the Court should infer from the fact that the video clip was prepared, its evident purpose of promoting the television program to potential advertisers, and the rush to get sponsors for the first series, that the promotional video, was sent to CDM before 21 February 2005. In this regard Bauer relied upon the statement in the promotional video that "[i]f you want to be a sponsor, call us", as being "as clear as can be a committed intention to use the name Discover Downunder for the program". However the short point is that Bauer chose to run a circumstantial case on this critical issue, despite Mr Falconer giving evidence that he had spoken to Grant Manson precisely on this issue who, according to Mr Falconer's evidence, recalled the video and its use. However, Grant Manson was not called notwithstanding the continuing relationship between Bauer and CDM and the evidence that Mr Falconer had had no difficulty in speaking about the issue with him. As earlier mentioned, no explanation was given for the failure to call Grant Manson. The only inference which can be drawn in these circumstances is that neither Grant Manson's evidence nor the evidence of anyone else at CDM would have assisted Bauer's case that the Court should infer that CDM received the video before Evergreen concluded the agreement with Channel Ten. Accordingly Bauer's failure to call them and to provide a satisfactory explanation for that omission tells against drawing the inference for which Bauer contends: see above at [64]-[72]. Furthermore, for reasons earlier given at [73]-[76], I do not regard Mr Falconer's evidence as to alleged deficiencies in Bauer's records as adequately explaining Bauer's failure to produce any documentary evidence in support of its case on this critical issue. 297 Finally, the short period of time within which the first series was prepared is an insufficient basis on which to infer that the video was given to CDM prior to conclusion of the licencing agreement with Channel Ten. To the contrary, Colin Parrôt's evidence (which I accept) that the promotional video would not have been sent out before the conclusion of the licencing agreement with Channel Ten because it used the Channel Ten logo is telling, given that the point of sending it to CDM was (as Warren Parrôt implied in his evidence) ultimately to circulate it to potential advertising clients. 7.3.3 Failure by Bauer to prove first use 298 The short answer to the issue of ownership is therefore that, even assuming that circulation of the promotional video to CDM could have sufficed in law to constitute first use of the trade mark, that does not prove that Bauer made first use of the Mark because Bauer has failed to prove that it used the Mark before Evergreen's use of the Mark in concluding the licence agreement with Channel Ten on 25 February 2005. The licence agreement identifies the title of the program as "Discover Down Under" and the agreement constitutes a dealing in the course of trade of the television series bearing the Mark thereby satisfying the requirements of first use. 299 In the alternative, Evergreen submitted in its written submissions in closing (bearing in mind that at the time, Evergreen was addressing Bauer's original submission that first use occurred when CDM sent the video to clients) that even if it were established that video invitations were sent to clients of Bauer: (a) Evergreen had already devised the mark by 28 January 2005; (b) Evergreen had already offered to supply the program under that mark to Channel 10 in trade or commerce by 28 January 2005; (c) Evergreen had commissioned logos, scripts, engaged actors and music, all by reference to the name, inter alia, to produce the video advertisement; (d) Evergreen had already reached agreement, at least on an informal level, with Channel 10 to supply the program under the name mark, because an agreement for Channel 10 to broadcast "Discover Downunder" is assumed by the advertisement, and it is clear that there was never any suggestion of a contract between Channel 10 and Bauer; (e) Evergreen was itself promoting the program to sponsors by reference to the mark by 1 April 2005; (f) the advertisement offers to supply "sponsorship packages" to potential customers, possibly in the program, but not under or by reference to the name. 300 The use the Mark in advertisements by April 2005 does not assist Evergreen's case in so far as it would not establish use of the Mark before Bauer's claim that the promotional video was sent to CDM on 17 February 2005. However, it can properly be inferred that Evergreen offered to supply the program under that Mark in trade or commerce by its course of dealing with Channel Ten by the end of January 2005 given in particular the successful conclusion of the meeting on 24 January with Tim Clucas and the email exchanges on 27 and 28 January 2005 on which the name was settled, as well as the commissioning by Evergreen of artwork for the program on or before 7 February 2005. Alternatively again, the factors relied upon by Evergreen at (a) to (d) above inclusive suffice in my view to demonstrate an existing intention by Evergreen to offer or supply the program bearing the Mark to Channel Ten by the end of January 2005, i.e. that Evergreen had by that time objectively committed itself to the use of the Mark in the course of trade. On the basis of the principles earlier referred to, either of these alternatives would suffice to constitute first use before 17 February 2005: see above at [267]-[274]. By the end of January 2005, it cannot be said in my view that Channel Ten and Evergreen were merely at the stage of preliminary discussions or negotiations about whether the Mark would be so used: cf Moorgate at 434. 301 I consider that the ownership which Evergreen asserts over the Mark is also generally consistent with parties' conduct leading up to the first series and with respect to the second series. It can fairly be inferred (as Evergreen submits) from the chronology of events summarised at [266] above that, while Trader and Colin Parrôt worked together collaboratively to get the first and subsequent series 'up and running', Colin Parrôt conceived of the concept and was the 'main driver' behind seeing the program to fruition in the first and second series. In particular, Colin Parrôt arranged industry associations to underwrite the program, he approached Bauer with the concept, he approached the Ten Network and was the main negotiator with the Ten Network, he dealt directly with Tim Clucas to settle upon the name for the program which became the Mark, he covered the costs of the trip to meet with Tim Clucas, he concluded the licence agreement with Channel Ten in the name of his company Evergreen for the first and second series without any objection from Bauer, he commissioned the artwork, logo and jingle, he produced the series, and Evergreen's name filled the screen at the end of the closing credits. I do not therefore consider that in all of the circumstances, Evergreen was merely contracted by Bauer to produce the series and merely acted as agent for Bauer. It also follows that I reject Bauer's submission that Colin Parrôt's claimed ownership over the Mark stemmed from a sense of anger and disappointment on ACP terminating the series, dismissing his son and then announcing a new series of the program and that, until then, the Court should infer that Colin, in common with ACP, assumed that ACP owned the show. 7.4 Issue 2: Did Evergreen intend to use the Mark in good faith when it applied for registration of the Mark (s 59(a)) 7.4.1 Bauer's submissions 302 In closing address, Bauer put its opposition to registration of the Mark by Evergreen under s 59(a) of the Act in two ways. (1) First, Bauer submitted that properly construed, Evergreen's description in its application of the services for which registration is sought would not embrace use of the Mark in the way in which Evergreen intends, namely, to name television programs (the registration application construction issue). (2) Secondly and in the alternative, even if Evergreen's description of the services for which registration is sought would embrace use of the Mark to name television programs, Bauer contends that the evidence discloses that as at the date of the registration application, Evergreen had no intention to use the Mark to name television programs. Rather Evergreen had committed instead to using the name "What's up down under" for the one and only television series which Evergreen intended to produce (the factual use issue). 303 As to the first issue, under s 59 registration may be opposed on the ground that the applicant does not intend to use or authorise use of the trade mark in Australia "in relation to the goods and/or services specified in the application." The importance of the statutory requirement in s 59 is apparent from statutory scheme. Under s 27 of the Act a person may apply for registration of the trade mark "in respect of goods and/or services if:… (b) one of the following applies: (i) the person is using or intends to use the trademark in relation to the goods and/or services;…" In furtherance of this, s 27(3)(b) of the Act requires that the application must "specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trademark." The description given of the intended use is critical to the scheme of the Act as, by virtue of s 20, registration of the trade mark gives the registered owner the exclusive rights to use the trade mark and to authorise others to do so only "in relation to the goods and/or services in respect of which the trademark is registered." In other words, the description of the goods and services in an application for registration defines the scope of the monopoly which the applicant seeks through registration and, together with the sign constituting the trade mark, communicates to the public the scope of that monopoly upon registration. In this regard, a person infringes a registered trade mark under s 120 by use of the trade mark "in relation to goods or services in respect of which the trademark is registered." 7.4.2 Is leave required to raise the registration application construction issue? 304 Bauer contended in closing address that Evergreen never in fact intended to use the Mark in relation to the specified services, i.e., "production of television programs". Rather at best Bauer contends that Evergreen intended to use the Mark to name a television program, i.e., a "product". By way of illustration, Bauer contends that Evergreen uses the name "Evergreen" to describe the service which it provides, namely, the production of television programs. However, Bauer submits that the naming of the end product, being the television program itself, is not encapsulated within the composite phrase used by Evergreen to define the field over which it claims a monopoly. That being so, and it being accepted by Colin Parrôt that Evergreen's intention was only ever to use the mark "Discover Downunder" to name a television program, Bauer submits that Evergreen has failed to establish any intention to use the Mark for the services described in the application. As such, Bauer contends that it must succeed in its opposition to the Mark and that this point is a complete and short answer to the issues in the case. 305 This argument turns upon the proper construction of the description. No issue was taken by Bauer with the submission by Evergreen that this issue had not been raised in the proceedings before the Delegate. Evergreen objected to the issue being raised for the first time in cross-examination and closing written submissions on the appeal. In Evergreen's submission, the issue was not clearly raised by the amended notice of appeal and leave was therefore required to raise it. In its submission, leave should be refused because Evergreen was prejudiced by the late raising of the issue in that, if the issue had been raised below, Evergreen would have had the opportunity to seek to amend the language of the trade mark application if it needed to be corrected. Further and in any event, by running the argument for the first time in closing, Evergreen was deprived of the opportunity to produce any evidence as to any industry meaning of the words used in the description. 306 However Bauer contended that the present proceedings constituted a hearing de novo and the argument now sought to be run had been fairly raised by paragraph 16 of its amended notice of appeal filed on 11 November 2015. Paragraph 16 pleaded that: The Delegate erred in finding at paragraph 121 of the Decision that the Respondent had used the Opposed Mark and should have found that the Respondent had not evinced an intention to use the Opposed Mark in Australia within the meaning of section 59 of the Act in relation to the production of television programs and had not used the Opposed Mark in Australia as its trademark in relation to the production of television programs. (Amendments identified by underlining) 307 At paragraph 121 of the Registrar's decision, the Registrar considered the submission by Bauer that the applicant did not intend to use or authorise use of the trade mark in relation to the services because (allegedly) "[t]here is strong evidence that Evergreen (in conjunction with Parable) intends to use the trademark WHAT'S UP DOWNUNDER (rather than DISCOVER DOWNUNDER) in the future." Specifically, after expressing the view that actions before the priority date have some bearing on the matter, the Registrar found that: In this case the Applicants have used the Trade Mark. There is no conclusive evidence that use inured to the benefit of the Opponents. Use of the Trade Mark before the time of filing must have a major influence on the question of whether the applicant's intended to use the Trade Mark at the date of filing the application. 308 The Registrar also considered that there was sufficient indication that the WHAT'S UP DOWNUNDER trademark "is intended for and applied to a different type of 'product', albeit one with common subject matter". He concluded at paragraph 124 that at the date of filing Evergreen intended to use the trade mark and the ground of opposition was not established. 309 I accept that this is a hearing de novo. Nonetheless the fact that the registration application construction submission was not raised before the Delegate is relevant to the question of whether Evergreen can fairly be said to have been on notice of the issue: see by analogy SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152 at [35]. Given therefore that paragraph 16 of the notice of appeal must be considered in a context where the issue had not been raised before the Delegate, in my view the paragraph did not fairly give notice of the intention to raise the registration application construction issue now relied upon by Bauer as the primary basis on which it opposes registration under s 59. First, paragraph 16 is ambiguous in that it can be read as seeking to press only the factual use issue, being the basis on which registration of the trade mark was opposed under s 59 before the Delegate, or as intended to raise the registration application construction issue. Secondly, that the amended paragraph should be read in the first sense is reinforced by the fact that paragraph 16 attacks a finding by the Delegate dealing only with the factual use issue and that it is difficult to say that the Delegate erred in failing to make a finding which she was not asked to make. 310 Nor was the issue identified by Bauer in its written opening outline on this appeal. Rather, Bauer submitted with respect to the question of intention to use the trade mark for the purposes of s 59 only that: 41. The present case concerns s59(a) of the Act. The principal inquiry is whether, at the time the Application was made, Evergreen intended to use the Mark, or intended to authorise another to use the Mark, in respect of the Services for which registration was sought in the Application. 42. Whilst an applicant for a Mark is entitled to the benefit of the fact of filing and the presumption of registrability (s 33), as noted above at [15] if an opponent (Bauer) is able to raise a prima facie case by some evidence of lack of intention to use, the evidentiary onus effectively shifts to the applicant (Evergreen). 43. Bauer contends that the evidence will establish that, at the Filing Date, Evergreen did not have the requisite intention to use the Mark, authorise other(s) to use the Mark. Its filing of the Application was a knee-jerk reaction to the breakdown in its commercial relationship with Bauer (the Trader division). (footnotes omitted) 311 The services were defined at [1] of Bauer's opening outline to mean "the services of 'production of television programs' (the Services)" (emphasis in the original). 312 Nor did Bauer submit that it raised the registration application construction issue in oral opening. To the contrary, senior counsel for Bauer submitted that she had not mentioned the matter in opening because she did not wish to foreshadow it before cross-examination of Mr Colin Parrôt. Specifically Ms Baird SC submitted that: I didn't say, "I'm going to put to Mr Colin Parrôt that the – he didn't intend to use the mark for the services and in fact that he only ever was using – intended, even on his case, as the name of a trademark – of a program and in fairness, your Honour, it is not for any person in their opening to foreshadow to the director of a company who's sitting in court what I'm going to ask him in cross-examination. 313 The difficulty with that proposition, however, is that the new argument turned upon the manner in which the words in the trade mark application were to be interpreted, no party having in reality been in any doubt as to the fact that Colin Parrôt wished to use the trade mark as the name of a television program. The line of cross-examination which was pursued with Mr Colin Parrôt did no more than confirm that intention. 314 Accordingly, the fact remains that the argument was identified as a primary and distinct ground on which the ground of opposition under s 59 was pressed for the first time in the written closing addresses filed by Bauer over six years after Evergreen had filed its application for registration of the trade mark in October 2009. 315 In those circumstances notwithstanding the de novo nature of the appeal, I consider that a grant of leave to raise the new argument at such a late stage would be necessary as Evergreen contends. 316 Bauer did not, however, seek leave to raise the argument (and amend its pleadings) preferring to rely upon its primary position that leave was unnecessary. Specifically, Ms Baird contended that: …we say there is no requirement for leave and we do not seek – make any application for leave. If your Honour finds against us, well, that's where it is. 317 I note, however, that if leave had been applied for, I would have refused the grant of leave having regard among other things to the following considerations. First, the argument was sought to be raised for the first time only in closing addresses after both parties had closed their cases and no sufficient explanation was given in my view for the delay. Secondly, I accept the submission by counsel for Evergreen that it has been prejudiced by the late raising of the argument including in particular by reason of being deprived of the opportunity to lead expert evidence as to the manner in which the words in the trade mark application would have been understood in the industry. Thirdly, while it is unnecessary for me to reach a final view on whether the argument had any real merit particularly where expert evidence might have borne upon the issue, it is telling that Bauer did not make this argument in the proceedings before the Delegate. Fourthly, I consider that this is an issue on which I should give weight to the fact that the Delegate, despite her expertise and experience, did not raise a concern as to any disconnect between the description of the services in respect of which the Mark had been registered, on the one hand, and the intended and past uses to which the Mark had been and were to be applied, on the other hand: see above at [23]-[24]. In short, as Mr Stuckey for Evergreen submitted in closing address on the issue: Had it been raised below, it would have been – there would have been the opportunity to seek to amend the application to correct the language, if it needed correcting, to correspond with what it was everyone understood we were seeking. And the second is we have been deprived of the opportunity to produce any evidence as to the trade meaning of the term "production of television programs" for the purpose of construing the issue. But there is another and more fundamental significance to the fact that this argument surfaced only at the very end of the evidence. It is an argument about the ordinary meaning of the phrase in question. And it is not without significance, in my submission, that both parties and the delegate in the Trademarks Office saw no difficulty with the meaning of this expression during the six years the proceeding was before them. In construing the ordinary English meaning of that phrase, it is again not without significance that it wasn't until after the factual matters had been heard in this proceeding that it occurred to anyone that it might be possible to argue that those words have a different meaning from the one that everyone assumed they did. That is powerful evidence that the new argument – the new construction sought to be advanced is not, in fact, the natural and ordinary English meaning of the expression. 7.4.3 Relevant principles 318 As a delegate explained in Suyen Corporation v Americana International Limited [2008] ATMO 4 (Suyen): 30. Use is a cornerstone of trade mark law. It informs virtually every important aspect of it and is fundamental to a trade mark registration system, such as ours, which favours the first to use over the first to file. 31. Within that framework, non-use is the exception. As far back as the case of In re Hudson's Trade Marks (1886) 32 ChD 319, Cotton L.J. said: "The difficulty is this: Is a man to be considered as entitled to the use of any trade mark when he has never used it at all?" (at p.320). That paradox is inherent within our law. The earliest registration systems were intended to provide a statutory scheme to recognize and provide a public register of trade marks already in use. The thirst of the Industrial Revolution demanded a system which somehow catered for trade marks soon intended for use. The resulting compromises gave rise to a number of fictions which survive in our modern law. Old Acts, for example, spelt out that registration is equivalent to public use , a construct to which we still adhere. 319 I note that an appeal under s 59 of the Act against the delegate's decision in Suyen was successful but that nothing in that decision cast doubt upon the correctness of these observations: [2010] FCA 638; (2010) 187 FCR 169. 320 The relevant principles to an assessment of whether there was an intention to use the Mark may be summarised as follows. (1) The filing of an application for registration of a mark is prima facie evidence of an intention to use that Mark: Aston at 401 (Fullagar J); Food Channel at [72]. (2) Consistently with this, non-use without more does not establish that there is no intention to use the Mark. As Fullagar J held in Aston v Harlee Manufacturing Company (1960) 103 CLR 391 (Aston) at 401: There is another element mentioned by Dixon J in the Shell Co.'s Case [(1949) 78 CLR at 627], which is stated as essential to the proprietorship of an unused trademark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of the application, and the making of the application is, I think, to be regarded as prima facie evidence of intention to use.… I think that, on an opposition or a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trademarks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. (3) Once an opponent has made out a prima facie case that there was a lack of intention to use the mark, the onus shifts to the applicant to establish that intention: Food Channel at [72]. "Slight evidence" may suffice to shift the onus "for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user": Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd (1967) 116 CLR 254 at 259 (Windeyer J) (not followed in Re Carl Zeiss Pty Ltd's Application (1969) 122 CLR 1 at 5 on a different issue). (4) Evidence of use or non-use after the date of the application may be relevant to drawing inferences as to the issue of intention as at the date of the application: Sapient Australia Pty Ltd v SAP AG (2002) 55 IPR 638 at 645-646; Food Channel at [74]. 7.4.4 The factual use issue: did Evergreen intend in good faith to use the Mark? 321 Notwithstanding these principles, it must (as Evergreen submits) be a rare case where a party would be held to lack the requisite intention to use the rights conferred by registration in circumstances where that party has demonstrated first use of the Mark and use of the Mark for several years in trade leading to the application for its registration,. 322 Bauer relied on two factual matters to contend that Evergreen did not intend in good faith to use the Mark. (1) First, Bauer alleged that Colin Parrôt only ever intended to take one program to Channel Seven in early 2009 and, when it became apparent that Channel Seven would not broadcast the program under the title of Discover Downunder, then instead applied the name What's Up Downunder. (2) Secondly, Bauer relies upon Colin Parrôt's evidence that he "would use this name [Discover Downunder] to rub their noses in the mud by bringing back Discover Down Under as a destination program that I had originally intended for What's up Downunder." 323 It will be apparent that the two points are interrelated. Specifically, both raise the question of whether there was a bona fide intention by Evergreen to apply the Mark to a television program in circumstances where What's Up Downunder had been used for the equivalent program to Discover DownUnder which Evergreen produced for broadcast on Channel Seven. 7.4.4.1 Evidence bearing on the factual use issue 324 It will be recalled that in early 2009, Colin Parrôt considered approaching Network Seven because of difficulties which had arisen with Network Nine in broadcasting Discover Downunder on regional stations. At the same time Colin Parrôt was developing a program focusing on Australian bush festivals. In his evidence he said that: At the same time as I was talking to Seven about Discover Downunder, I was – we had had numerous requests from the various towns and cities we visited to run a program regarding – and this has been the nub of the whole thing – about Tamworth Music Festival or Deni Ute Muster or the various attractions of Australia that is unique to the world, and the intention was – if you look at my letter early on to Andrew McAvoy – he had always told me to get out of the commercial area and he would do the – they would finance the show. We saw it as an excellent opportunity to do a show nationally on just activities around Australia, and we were going to call it What's Up Downunder,… 325 Colin Parrôt's evidence was that the program focusing on Australian bush festivals was to be called "What's Up Down Under" and was a separate program from Discover Downunder. As earlier mentioned, on 12 June 2009 Evergreen registered the domain name for What's Up Down Under and applied to register the trade mark "What's Up Downunder?" in trade mark application no. 1303526. 326 Following termination of Warren Parrôt's employment on 26 June 2009 and the announcement of the uncertainty over the future of Discover Downunder, Colin Parrôt commenced formal negotiations with Channel Seven to broadcast Discover Downunder. However, he became aware in August 2009 that ACP were engaging with some of the previous sponsors of Discover Downunder including the CTIAV, the CTIA and Jayco who declined to sponsor the program that Colin Parrôt was proposing to broadcast on Network Seven. At no stage during the period from May to September 2009 did anyone from ACP/Trader approach Evergreen or Colin Parrôt regarding production of the program Discover Downunder. Indeed, Colin Parrôt gave evidence that, whilst Network Seven had expressed reservations about the continued broadcast of the program under the name Discover Downunder, he was still hopeful that Network Seven would agree to retain the title. This evidence is corroborated by email correspondence in September 2009 between the Warren Parrôt and Paul Blatchford regarding negotiations of the terms of the contract for Channel 7 to broadcast 30 x 30 minute episodes of "Discover Down Under" with revenue anticipated to flow from the national and state caravan associations and Jayco. 327 However, by late September 2009, the situation had changed. Colin Parrôt gave evidence that: By late September 2009, network Seven had firmed its view that it did not wish to get embroiled in a dispute over the program particularly since ACP had registered the domain name. It became apparent to me that it would not be possible for Evergreen to produce the show with the name Discover Downunder given the concerns raised by network Seven and the fact that sponsors of Discover Downunder were declining to support Evergreen with the continued production of the program as a result of ACP approaching them and advising them that it intended to continue production of the show with another producer. 328 If any validation for these concerns is required, it is found in the letter on 17 November 2009 from Bauer to Channel Seven advising that it was currently in dispute with Evergreen and that it considered that the program What's Up Downunder would constitute misleading and deceptive conduct. 329 Colin Parrôt said that he lodged Evergreen's application for registration of the Mark to protect Evergreen's rights in the investment that it had made to produce a program which had built up a sizeable audience and won the support of sponsors. He instructed Evergreen's lawyers, Wisewould Mahony, to send the letter of demand to ACP magazines to cease using the name Discover Downunder on 12 October 2009 (see above at [228]). 330 In this regard, Colin Parrôt's evidence in his affidavit sworn on 21 October 2015 (in passages which effectively encapsulate Evergreen's case on this issue) was that : 9. It was commercially impossible to persuade sponsors or other networks to support a program when ACP and Network Nine were broadcasting a program with the same name in competition. It was my intention and that of Evergreen to resume the use of the name for the program once Evergreen's legal right to the exclusive use of the name mark was upheld. In the meantime, however, to keep Evergreen's business operating it was necessary to adopt a different name for the program. 10. …in 2009 Evergreen began using the name "What's Up Down Under" instead of "Discover Downunder" and instructed its solicitors to send the letter of demand to ACP… ACP threatened legal proceedings to restrain the production and broadcasting of that program under that name because it claimed the exclusive right to be associated with the name "Discover Downunder" or any program similar to it. 11. Evergreen's application for registration of the trade mark was opposed by the Applicants in a proceeding which I early described as the Opposition Proceeding. Evergreen was obliged to wait until that legal proceeding was completed before it could use the mark commercially without risk of being sued for doing so. (I note that the first sentence which is underlined was received in evidence as a statement of Colin Parrôt's belief only.) 331 It was put to Colin Parrôt in cross-examination that the reason why he applied to register the Mark was because he was shocked, as he said in his evidence, to learn about the announcement by Trader on 5 October 2009 that Discover Downunder would return in 2010. In response, Colin Parrôt said that: No. No, it wasn't the reason. I still had belief that I would turn around, and now because I had time up my sleeve and I had only concepts, I would use this name to rub ACPs nose in the mud by bringing back Discover Downunder as a destination program that I had originally intended for What's up Downunder. And that's not too long a bow to draw. I think it's a lot shorter than yours. So that is the name of a television program, but a different television program?---A program that would be around activities within Australia that Australian tourism would boast about around the world. 7.4.4.2 Findings on the factual use issue 332 Bauer contended that Colin Parrôt should not be believed in his evidence that he intended to use the name Discover Downunder as the destination program which he originally intended to call What's Up Down Under? In Bauer's submission, the Court should find that Evergreen only ever intended to use the name Discover Downunder for the program which it produced with Channel Seven under the title What's Up Down Under?. As Bauer submitted in its submissions in closing: 88. … in the first half of 2009, before the Filing Date, Evergreen had taken express steps to re-brand the television program commissioned and paid for by Trader and broadcast for 5 series under the name 'Discover Downunder' with the new name 'What's Up Downunder'. It did so for the purpose of its negotiations with the Seven Network, which subsequently became the broadcaster of the program bearing that name: see chronology Annexure B. Bauer submits that the decision to adopt the name 'What's Up Downunder' evidences that there was no intention to use the Mark as the name for the television program as at the Filing Date or for the Services. … 90. For Evergreen and the Parrôts in 2009 there was only ever one television program, whatever it was going to be called: 333 Bauer further submitted that the application for registration of the Mark was "a knee-jerk reaction to the breakdown in its commercial relationship with Bauer (the Trader division)." 334 I do not agree. First, I consider that Colin Parrôt's evidence that when he applied for registration he intended to use the Mark for the destination program for which he had originally devised the name "What's Up Downunder" is entirely credible. Colin Parrôt clearly articulated a different concept for the program which he originally intended to call What's Up Downunder and explained how he had conceived of the concept. A program about tourism activities such as music festivals around Australia is not the same as a program focused upon promoting the caravan industry, as the Delegate effectively found. Furthermore Evergreen's explanation as to why it had to apply the title What's Up Downunder to the Channel 7 equivalent of the Discover Downunder program is intrinsically likely, namely, the impossibility of persuading a rival television station to broadcast a program called Discover Downunder when ACP and Channel Nine were broadcasting a program under the same name and asserting the exclusive right to do so. 335 Bauer also submitted that the steps taken by Evergreen to secure the What's Up Downunder name are consistent with Evergreen recognising at the time that the name of the television program was not Evergreen's to use freely and separately from its relationship with Trader. However, that point is met in my view by the email correspondence in September 2009 between Warren Parrôt and Paul Blatchford referred to as [326] above. 336 As earlier mentioned, Bauer also placed considerable weight on the emotive statement by Colin Parrôt that he "would use this name to rub ACPs nose in the mud by bringing back Discover Downunder as a destination program…" This was said variously to demonstrate a lack of any bona fide intention to use the Mark and indeed to demonstrate bad faith. 337 First, however, I consider that that statement needs to be understood in context, namely, as an expression of exasperation by a man who passionately believed that he had created this program, largely got the program 'up and running', and owned the rights to the program and the Mark which rights had in his view been wrongly denied in litigation running since 2011 (taking into account the opposition proceedings before the Delegate). Secondly, I agree with the submission by counsel for Evergreen in closing address that that statement "plainly demonstrates, if it is accepted, that Evergreen does intend to continue to use the trademark, once it actually has it, for the production of television programs." Far from being a statement of intention to register the Mark simply as to block Bauer from using the Mark or authorising others to do so, the statement is one of intention to use it. It follows therefore the statement does not demonstrate a lack of intention to use the Mark in good faith and falls far short of establishing that the application to register the Mark was made in bad faith. 338 Nor is this a case where a lack of intention to use the Mark can be inferred from a lack of involvement in the opposition proceedings: cf e.g. Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20 at [51]-[52]; and Southcorp Brands Pty Ltd v CAN Industries Pty Ltd [2014] ATMO 27 at [12]-[19]. To the contrary, Evergreen's lawyers wrote to ACP/Trader only three days after lodging the application for registration of the Mark demanding that they cease using the name Discover Downunder, and Evergreen has vigorously and consistently defended the opposition and non-use proceedings. 339 It follows that, even assuming (which I doubt) that Bauer made out a prima facie case, for the reasons set out above Evergreen has established that it had a bona fide intention of using the Mark at the date of the application for registration of the Mark. 7.5 Issue 3: Was the application for registration of the Mark made in bad faith? (s 62A) 340 While Bauer argued that Evergreen had made the application for registration of the Mark in bad faith for the purposes of s 62A of the Act, Bauer expressly disavowed any allegation that Evergreen engaged in an act tantamount to fraud. Rather, Bauer submitted that Evergreen's act in applying for registration was a reflection of its significant disappointment in no longer being appointed by Trader as the television producer for Discover Downunder and that it was a "knee-jerk" reaction. Bauer submitted that it should be characterised as a step taken to "block" Bauer from using the Mark and that this sufficed to establish bad faith in this statutory context. 341 The following principles were identified by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565 with respect to the application of s 62A of the Act. (1) First, bad faith for the purposes of s 62A must be established as at the time that the application for registration is made and must relate to the making of the subject of that application (at [145]). (2) Secondly, "… the onus of proving bad faith rests on the opponent. While the seriousness of an allegation of bad faith that 'impugns the character of an individual or collective character of a business' requires correspondingly cogent evidence… the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt." (at [145]). In other words, in line with Briginshaw v Briginshaw (1938) 60 CLR 336, the seriousness of an allegation made, and the gravity of the consequences flowing if the allegation is made out, bear upon whether the allegation is established to the reasonable satisfaction of the decision-maker. (3) Finally, as to the standard of conduct which may constitute bad faith in its statutory context, Dodds-Streeton J held that: 164. Bad faith, in the context of s 62A, does not, in my opinion. require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct. 165. The formulation in United Kingdom authority of bad faith is falling short of the standard of acceptable commercial behaviour observed by reasonable experience persons in a particular area is, in my view an apt touchstone.… 166. Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscious character. 342 Bauer has fallen well short of discharging the onus upon it of establishing bad faith for the purposes of this provision. To the contrary, it follows from the finding that Evergreen had a bona fide intention to use the Mark at the time that it applied for registration of the Mark that it did not make that application in bad faith. The application was not made merely to "block" Bauer from using the Mark. 7.6 Issue 4: Alleged confusion by reason of another trade mark having acquired a reputation (s 60) 343 Section 60 as amended in 2006 provides that: 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. 344 Prior to the amendment which took effect on 23 October 2006, it was also necessary to demonstrate that the other trade mark was substantially identical or deceptively similar to the Mark which was the subject to the registration application. 345 To establish the ground of opposition under s 60, it falls upon Bauer to demonstrate that at the priority date of Evergreen's application for registration: (1) there was another trade mark; (2) which had acquired a reputation in Australia; (3) amongst a significant section of the public; (4) such that use of the Mark would be likely to deceive or cause confusion. 346 It was not in issue that the "other trade mark" need not be registered. 347 With respect to the first element, Bauer contends that: In the present case, the other trade mark is 'Discover Downunder', used and broadcast as the name of the television program in the circumstances of Trader's arrangements with Evergreen for production of the program in the period 2004 – 2009 and also used in that period by Bauer in connection with the Bauer websites at rvpoint.com.au and discoverdownunder.com.au and with the Bauer magazines Caravan World, Caravan Trader and Campervan and Motorhome Trader, including by Bauer's obtaining of advertising revenue and sponsorship for the television program … and for those Bauer websites and magazines. Bauer contends that, for the reasons which follow, the evidence establishes that it had established a reputation in that trade mark as at the Filing Date by that use in those circumstances. 348 There are, however, a number of difficulties with Bauer's submission. 349 First, as Evergreen submits, before the application for registration in October 2009, there was but one trade mark used by Evergreen and ACP/Trader in respect of services, being the trade mark Discover Downunder used and broadcast as the name of the television program. It is clear from the evidence that any use by ACP/Trader of the Mark was intended to claim (legitimately by reason of the permission given by Evergreen to ACP/Trader) an association with the television program Discover Downunder. 350 Secondly, as Evergreen submits, a trade mark owner, whether registered or not, can authorise others to use the Mark without the trade mark owner losing its rights in respect of the Mark. Indeed, an intention to authorise another person to use the trade mark is one means by which ownership of the trademark can be established, and the right to use and authorise others to use the Mark to the exclusion of all others is the essence of the right with respect to a trade mark. By way of example, as Evergreen submitted, just as all manner of businesses entering into relationships with Coca-Cola Amatil Ltd associate their products or services with the Coca-Cola trade mark, that is not the use of a separate trade mark with a separate reputation. Evergreen produced and supplied a television program for broadcast to the public to which the Mark was affixed, while Bauer used the same mark with Evergreen's permission in relation to the sale of advertising involving the program and the promotion of its websites by reference to the program. Given the findings I have earlier made, Bauer never used the name of the trade mark independently of Evergreen's rights. 351 Thirdly, as Aickin J held in Pioneer Kabushiki Kaisha v Registrar of Trade Mark (1977) 137 CLR 670 at 683: … the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive. 352 In this case, the Mark was used on each episode of Discover Downunder broadcast across the first five series to the date on which Evergreen applied for registration of the Mark, and the closing credits for each of those episodes ended with Evergreen's logo and film clappers filling the screen. It follows, as Evergreen owned the Mark and there was no agreement whereby Evergreen acted as Bauer's agent or had assigned the Mark to Bauer, that the use of the Mark by Bauer (as well as by Channels 9 and 10) was with Evergreen's consent or licence and that the Mark therefore accurately conveyed a trade connection with Evergreen. 353 It follows that the ground of opposition under s 60 of the Act must fail. 7.7 Issue 5: Whether use of the Mark by Evergreen would be contrary to law (s 42(b)) 354 Bauer alleged that Evergreen's use of the Mark in relation to the Services would be misleading or deceptive or likely to mislead or deceive in contravention of ss 52 or 53 of the then TPA and would therefore be contrary to law within the meaning of s 42 of the Act. Section 52 of the TPA provided that: (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. 355 In turn, s 53 provided that: A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: (a) falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have a particular history or particular previous use; … (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; (d) represent that the corporation has a sponsorship, approval or affiliation it does not have. … 356 However, Bauer properly conceded that "[t]he s 42 ground raises similar issues to the s 60 ground and Bauer accepts that its case rises no higher than that ground. Bauer submits that if its case under s 60 succeeds, then it should also succeed with respect to the s 42(2) ground." Equally, as it is implicit in Bauer's concession, it follows that the argument under section 60 having being dismissed, this ground must fail for the same reasons: see also the delegate's decision at [116]. 8. CONSIDERATION: THE NON-USE PROCEEDING 8.1 Relevant provisions: removal from the Register for non-use 357 Part 9 (ss 92-105) of the Act deals with removal of a trade mark from the Register for non-use. Section 92(3) of the Act provides that a person may relevantly apply to the Court for an order directing the Registrar to remove a trade mark from the Register (a non-use application). 358 Under s 92(4), an application for removal may be made on the following grounds only: An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: (a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) 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 to which the non-use application relates and that the registered owner: (iv) has not used the trade mark in Australia; or (v) has not used the trade mark in good faith in Australia; in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed. (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Note 1: For file and month see section 6. 359 With respect to the timing of an application for removal, s 93 provides that: (1) Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark. (2) An application on the ground referred to in paragraph 92(4)(b) may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark. 360 Section 92(4)(a) and (b) provide distinct and alternative grounds for review 361 With respect to the onus of proof, s 100 provides that: (1) In any proceedings relating to an opposed application, it is for the opponent to rebut: (a) any allegation made under paragraph 92(4)(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith: (i) to use the trade mark in Australia; or (ii) to authorise the use of the trade mark in Australia; or (iii) 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 to which the opposed application relates (relevant goods and/or services); or (b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services. Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)). Note 2: For file, month and registered owner see section 6. (2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: (a) the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or … Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)). Note 2: For registered owner see section 6. (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or … (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period. Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)). Note 2: For registered owner see section 6. 362 Section 101 relevantly confers a discretion on the Court not to order removal of a trade mark despite being satisfied that the grounds on which removal is sought have been established, as follows: (2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. (emphasis added) 363 By s 103 of the Act, the Registrar must comply with an order of the Court under s 101. 364 Finally, under s 105 of the Act, the Court may give a certificate to the registered owner of the Mark that it has been used in good faith or has not been used due to an obstacle for a particular period. Specifically, that section provides that: (1) If in any proceedings relating to an opposed application the Registrar or the court has found that: (a) a trade mark has been used in good faith during a particular period; or (b) a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use; the Registrar or the court must, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings. (2) In any subsequent proceedings in which non-use of the trade mark is alleged: (a) the certificate is, on being produced, evidence of the facts stated in it; and (b) if the proceedings are determined in favour of the opponent and, on or before filing the notice of opposition, the opponent notified the applicant of the contents of the certificate—the opponent is entitled, unless the Registrar or the court otherwise directs, to have the opponent's full costs paid by the applicant. 8.2 Issues 365 As at 11 June 2015 when the non-use proceeding commenced, the application for registration of the Mark had been on foot for more than five years. As a result, Bauer contends that the non-use proceeding was brought on grounds available under ss 94(4)(a) and (b) by reason of the provisions of ss 72 and 93(1) of the Act respectively. 366 Bauer pleads two separate non-use periods in the non-use proceeding: (1) the relevant non-use period for the purposes of s 92(4)(a) of the Act is the whole of the period from the filing date of 9 October 2009 to 11 May 2015 (the First Non-Use Period); (2) the relevant non-use period for the purposes of s 92(4)(b) of the Act is the whole of the period from 11 May 2012 to 10 May 2015 (the Second Non-Use Period). (collectively the Non-Use Periods) 367 Bauer contends that unless Evergreen can establish genuine use of the application within both of these periods, it cannot successfully defend the removal application. Thus, in Bauer's submission, if Evergreen does not do so (that is, if Bauer meets the threshold onus and Evergreen does not establish relevant use satisfying both ss 92(4)(a) and (b)), the Court may, in the exercise of discretion determine whether, nevertheless, the Mark should remain registered on the basis that dismissal of the appeal will result in registration of the Mark. 368 The issues in the non-use proceedings were summarised in the Bauer's opening submissions in the following manner: In relation to the First Non-Use Period: (1) did Evergreen have an intention to use (or authorise another to use) the Mark in relation to the Services at the time when it made the Application? (2) if 'yes' to (1), has Evergreen used the Mark as a trade mark in Australia in relation to the Services in the First Non-Use Period (from the Filing Date to 11 May 2015)? (3) if the answer to (1) and (2) is 'no', ought the Court, in the exercise of its discretion under s 101(3), nevertheless permit the Mark to remain on the Register? In relation to the Second Non-Use Period: (4) as a separate matter (irrespective of (1)-(3)), has Evergreen used the Mark as a trade mark in Australia in respect of the Services in the Second Non-Use Period (11 May 2012 to 10 May 2015)? (5) if the answer to (4) is 'no', ought the Court, in the exercise of its discretion under s 101(3), nevertheless permit the Mark to remain on the Register? 369 Bauer contended that each of these questions should be answered "no". Evergreen submitted that questions (1) to (3) should be answered in the affirmative, taking issue with the definition of the first non-use period on the ground that the question is whether there was use at any time before the period of one month prior to the filing of the non-use application. Evergreen accepted with respect to question (4) that there had been no use of the Mark in the second period but said that question (5) should be answered "yes" on the ground that Bauer's conduct presented an insurmountable obstacle to use by Evergreen. 8.3 A preliminary issue 370 A preliminary issue was raised by Evergreen as to whether the removal of the Mark could be ordered, as sought by Bauer, in circumstances where the trade mark has not in fact been registered. In this regard, Bauer relied upon s 72(1) of the Act which provides that registration of a trade mark is taken to have had effect from and including the date on which the application is filed on the ground that that deeming effect could arise only after registration had in fact occurred. Bauer contended that this was a misconstruction of the statutory scheme, submitting that: Section 92(1) makes clear that a trade mark may be removed before it is registered. Section 93 and s 95 similarly provide that an application for removal need not await registration. The references to "applicant for registration" and "registered owner" in paragraph 92(4)(a) make clear that the relevant use can only be used after the day on which the application for the registration of the trade mark was filed 371 There is considerable force in Bauer's submissions on this issue. In particular, as Bauer submits, under section 92(1) an application may be made to the Registrar to have a trade mark "that is or may be registered removed from the Register" (emphasis added). Furthermore the present non-use proceedings are, of course, instituted directly in this Court under s 92(3) which provides that an application may not be made to the Registrar but may be made to the Court for an order directing the Registrar to remove the trade mark from the register "if an action concerning the trade mark is pending in a prescribed court". It was not in issue that that precondition is met where, as here, the trade mark has not yet been registered. That being so, s 92(3) lends support also to Bauer's submission. However it is unnecessary to decide the point of construction in this case for the reason that in any event no order for removal would be made for the reasons which follow. 8.4 The first non-use period 372 The applicable criteria for removal under s 92(4)(a) with respect to the first non-use period are that: (a) when the application for registration of the trade mark was filed, the applicant had no intention in good faith to use or to authorise the use of the trade mark in Australia in relation to the goods and/or services to which the non-use application relates; "and that" (b) the registered owner has not used the trade mark in Australia or has not used the trade mark in good faith in relation to those goods and/or services "at any time before the period of one month ending on the day on which the non-use application is filed" (emphasis added). 373 The use of the word "and" in s 92(4)(a) makes it clear that both criteria must be met before the power to remove is engaged. 374 Applying first the criterion in s 92(4)(a), I have already found that Evergreen did intend in good faith to use or to authorise the use of the Mark in Australia when it applied for registration of the mark. Accordingly this criterion is not satisfied. 375 Secondly and in any event, for reasons earlier given Evergreen was the owner of the Mark having first used the Mark on 25 February 2005, and did in fact use, and authorise the use of, the Mark for the Services from 2005 to 2009. It follows that Evergreen used and authorised use of the Mark at a time before the period of one month ending on the day on which the non-use application was filed, namely, 11 May 2015. In this regard, to the extent that the argument by Bauer under s 92(4)(b) is premised upon its submission that Evergreen's description in its application of the services for which registration is sought does not extend to the use of the Mark to name television programs (the registration application construction issue), I have already held that that issue could not be raised without leave, which was not sought. 376 It follows that Evergreen has rebutted the allegation of non-use in the first non-use period on the balance of probabilities for the purposes of s 100(1)(a) and (b) of the Act. 8.5 The second non-use period 8.5.1 Circumstances in which non-use is rebutted by an obstacle for the purposes of s 100(3)(c) 377 Under s 92(4)(b) and s 100(1)(c) of the Act, it is necessary for Evergreen to rebut Bauer's allegation that there had been no use, or no use in good faith, by Evergreen of the Mark within the second non-use period being 11 May 2012 to 10 May 2015 378 It is not in issue that Evergreen did not use the Mark during this period. However Evergreen relies upon s 100(3)(c) which provides that: (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: … (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period. 379 Section 100(3)(c) was intended to give the subsection a wider operation than its predecessor provision, being s 23(4) of the 1955 Act. As Drummond J explained in Woolly Bull: 46. ... It is now not necessary to show unusual or abnormal, as opposed to normal or usual, trading conditions (a difficult concept to comprehend and apply) before s 100(3)(c) can operate. Ordinary incidents of the trade cycle commonly encountered by traders, as well as abnormal ones, are now within the provision. Further, it is clear that a circumstance of a trading nature that has an impact only on the registered owner can also now be relied on to justify non-use of the mark. 380 Nonetheless by reason of the fact that the circumstances must be "an obstacle to the use of the trade mark by the registered owner", Drummond J considered that "[t]his suggests that they must arise from or comprise events external to the registered owner in the sense of not having been brought about by the voluntary act of the owner" (at [47]). However his Honour considered that not all circumstances brought about by the voluntary act of the owner fell within the provision. Rather, Drummond J held that: 55. In my opinion, circumstances within s 100(3)(c) will only exist when events arise that are capable of disrupting trade in the area of commercial activity in which goods bearing the registered owner's mark are traded. For the statutory excuse to be made out, those circumstances must cause (in a practical business sense) non-use of the particular mark by the owner, whether or not they have an impact on any persons other than the owner of that mark who are also involved in that same area of commercial activity. There must be a causal link shown between the relevant circumstances and the mark's non-use. This requirement arises from the fact that s 100(3)(c) creates an excuse only where the mark has not been used by the registered owner "because of" circumstances etc. It will not assist the opponent to removal to show the existence of an impediment to use of the kind referred to in s 100(3)(c) if he does not also establish that, but for that impediment, he would have used the mark. Cf In re James Crean & Son Ld's Trade Mark at 162. 56. Circumstances that do not have a trade character but which only affect a mark owner in his personal character, such as illness afflicting the owner of the mark that is sufficiently disabling to prevent the owner using the mark, can never therefore found an answer within s 100(3)(c) to an application for removal of the mark for non-use. 381 However, it is sufficient if the obstacles exist for part (but more than a de minimis part) of the three-year non-use period for the purposes of s 100(3)(c) of the Act: Woolly Bull at [58]. 382 In short, an obstacle for the purposes of s 100(3)(c) of the Act must be: (a) of a trading nature; (b) arise from or comprise events external to the registered owner in the sense that they were not brought about by the voluntary act of the owner; (c) be capable of disrupting trade in the area of commercial activity in which goods or services bearing the registered owner's mark are traded; and (d) have caused in a practical business sense non-use of the Mark. See also: Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39 (Austin Nichols (FCA)) at [103]–[108] (Cowdroy J) (subject to an appeal on different grounds ([2012] FCAFC 8 (Austin Nichols (FCAFC)); and UCP Gen Pharma AG v Mesoblast Inc [2012] FCA 210 at [26] (Jessup J); but note the doubts expressed by Katzman J in Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 at [175]-[176]. 383 Finally, I note that Cowdroy J in Austin Nichols (FCA) considered that the question whether litigation can constitute an obstacle to use in Australia for the purposes of s 100(3) of the Act is not clear. While acknowledging that authorities of the Federal Court have held that litigation relating to the use of a trade mark is not an 'obstacle' to trade (citing Unilever Australia Ltd v Karounos and Another [2001] FCA 1132 at [68] (Hill J) and Conquip Holdings Pty Ltd v S & A Restaurant Corporation [2000] AIPC 91-547), his Honour noted that the facts in those cases involve litigation on a far smaller scale and pointed to the fact that the effect of litigation on commercial behaviour of a company cannot be underestimated. Austin Nichols however concerned the alleged impact of worldwide litigation by the applicant for removal, as opposed to the proceeding itself for removal for non-use of the trade mark. In the circumstances, to the extent if any that Evergreen relied upon the present litigation as an obstacle, I do not consider it necessary to determine this question given the other factors as I explain below. 8.5.2 Was there an obstacle to use of the Mark by Evergreen under s 100(3)(c) so as to rebut non-use? 384 Evergreen cites Bauer's conduct in conjunction with Channel 9 in broadcasting a national television program under and by reference to the Mark "Discover Downunder", as having rendered it for all practical purposes impossible for Evergreen to use the Mark in relation to the intended services. Evergreen also relies upon Bauer's conduct in having threatened legal action if any name it regarded as deceptively similar to Discover Downunder was used with respect to a rival product. Specifically, Evergreen submits that: 114. The facts make clear that Bauer's conduct presented an insurmountable obstacle to use of the trade mark by Evergreen during the period from October 2009 to June 2015 within the meaning of Section 100(3)(c). Bauer's decision to take the mark for itself and to use it in respect of the very same goods and services that Evergreen traded in, so as to appropriate the reputation of that program for itself, precluded any continued use by Evergreen until such time as this dispute was resolved and the mark registered, so as to confer on Evergreen the rights afforded by the Act. 115. So long as Bauer arranged the broadcast of a television program under the name "Discover Downunder" there was an insurmountable obstacle in the path of Evergreen using the mark. Commercially, no other network would try to run a competing program with the same name, and it was apparent that Bauer would (as it did) threaten legal proceedings in relation to any attempt by Evergreen to exercise its rights. The imbalance in power and resources requires the determination of this proceeding and the registration of the mark before use can be made of the name. 385 I accept Evergreen's submissions as to the insurmountable nature of the obstacle that confronted it by reason of Bauer continuing to broadcast the television program under the name of Discover Downunder. That obstacle was plainly of a trading nature, arose from acts external to Evergreen being undertaken independently by Bauer, and was capable of disrupting trade in the area of commercial activity the subject of the Mark. 386 Bauer however contends in effect that Evergreen has not demonstrated that this obstacle caused non-use of the mark. Specifically, Bauer submits that it cannot be inferred that it was Bauer's conduct that led to Evergreen ceasing to use the Mark commercially on the ground that Evergreen had no intention to use the Mark for the services of production of television programs because it only ever intended to produce the program ultimately given the name What's Up Down Under. However, for reasons earlier given I have rejected that submission and found that Evergreen intended to use the Mark at the time that it applied for registration of the Mark. That being so, there is no reason to suppose, and none was put forward by Bauer for supposing, that Evergreen's intentions in this regard changed after registration of the Mark. To the contrary, Evergreen's vigorous defence of the proceeding before the Delegate and in the proceedings in this Court suggests the contrary. In those circumstances, it is plain for the reasons given by Evergreen that Bauer's conduct in broadcasting a program under the name Discover Downunder caused non-use of the Mark in a practical business sense, namely, that no other network would broadcast the program under the same name. 8.5.3 Exercise of discretion 387 In the alternative, even if Bauer's conduct in broadcasting the television program under the name Discovery Downunder for the years 2010-2015 did not constitute an obstacle for the purposes of s 100(3)(c) of the Act, Evergreen submits essentially for the same reason that the Court ought exercise its discretion under s 101(3) so as not to make an order for removal of the trade mark. That subsection provides that: (3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. 388 The policy of the Act was identified conveniently in Davison and Horak, Shanahan's Australian Law of Trademarks and Passing off (6th Ed, Thomson Reuters) at [70.2505]: The policy of the 1995 Act is to facilitate the removal of an unused trade mark. Section 101(3) requires that the Registrar or the Court be "satisfied that it is reasonable" not to remove a trade mark where grounds for removal have been established. Further, the public interest in the integrity of the Register will generally demand the removal of an unused trade mark. 389 In this regard the Full Court held in Austin Nichols first that "[t]he question to be asked is whether it was reasonable not to remove the trade mark from the Register, although the trademark had not been used during the statutory period." (at [28]). The question is not whether there is any or sufficient justification for the exercise of discretion: Austin Nichols at [28]. 390 Secondly, the Full Court held that "[f]or the discretion to operate in favour of the registered owner, the Court must be positively satisfied that it is reasonable that the trademark should not be removed.… This is a legal, and not merely an evidential, onus" (at [44]). 391 Thirdly, their Honours, in holding that it was not irrelevant for the primary judge to have regard to the interests of the owner of the trade mark, held that: 35. As the primary judge pointed out, the discretion under s 101(3) is a broad one. Whilst it might also be true to describe it as "unlimited", as his Honour also did (citing Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 176 FCR 300 (Pioneer) at [167], [172], [173]), in the sense that there are no express limits on it, more correctly it is a discretion limited only by the subject matter scope and purpose of the legislation and, in particular, by the subject matter, scope and purpose of part 9 of the Act.… Only if the subject matter, scope and purpose of the legislation impliedly exclude the interests of the owner of the trademark could it be said that those interests are irrelevant to the exercise of discretion. In our view it does not. 392 In this regard, the Full Court considered that those principles identified in Nike at [42] as underpinning the 1955 Act equally underpin the 1995 Act, namely: the interest of consumers in recognising trade mark of the badge or origin of goods or services and in avoiding deception or confusion as to that origin, on the one hand; and the interest of traders in protecting the goodwill through the creation of the Mark against infringement and profiting from the Mark by licensing or assignment, on the other hand. The Full Court concluded with respect to the exercise of discretion by the primary judge that: 38. The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion. There is no doubt that his Honour took Lodestar's interests into account but he was not wrong to do so. They were not irrelevant. 393 In this case, first, there is no independent evidence to suggest that not removing the Mark on the Register despite non-use would cause confusion or deceive the public by reason of the reputation which Discover Downunder may have acquired in the period 2010 to 2015, notwithstanding Evergreen's association with the Mark prior to that time at the end of the closing credits. Nor is there a proper foundation on which to infer such an adverse impact on the public interest. Secondly, I have already found that Evergreen intended and continues to intend to use the Mark. I also accept that the active defence of the opposition proceeding before the Delegate and in the appeal and non-use proceedings in this Court bears out that Evergreen has not lost interest in using the Mark in the future, as Evergreen submitted. Furthermore I accept that there was a real and practical impediment to Evergreen using the mark in relation to the services by reason of Bauer continuing to broadcast the television program under the name of Discover Downunder in 2010 to 2015. Finally, that conduct was undertaken by Bauer without Evergreen's permission despite being on notice of Evergreen's claim to ownership of the Mark. In those circumstances, if it were necessary to decide the issue I am satisfied that Evergreen has established that it is reasonable to exercise the discretion so as not to make an order for removal of the Mark and that no such order ought to be made. 9. CONCLUSION 394 For the reasons set out above, Bauer's appeal against the decision of the Delegate to register the Mark "Discover Downunder" on the Register of trade marks is dismissed with costs. The application by Bauer for an order removing the Mark from the Register is also dismissed with costs. I certify that the preceding three hundred and ninety-four (394) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perry. Associate: Dated: 12 May 2017