Summary
The latest Federal Court judgment concerning the ongoing trade mark dispute between Food Channel Network Pty Ltd (Food Channel Network) and Television Food Network G.P. (Television Food Network) varies a 2008 decision of the delegate of the Registrar of Trade Marks to remove THE FOOD CHANNEL logo trade mark registration ([2010] FCA 703, 5 July 2010). Not surprisingly, the court found that outsourcing services to a third party (which operates under a different name) is not sufficient to establish use of a trade mark for the purposes of defending a non-use application. However, the decision allows the registration to remain for class 41 services.
The decision further considers the meaning and evidentiary elements of a non-use application for removal of a trade mark pursuant to section 92(4)(b) of the Trade Marks Act 1995 (Cth) (Act). These provisions were recently considered by the High Court in E&J Gallo Winery v Lion Nathan Australia Pty Limited ([2010] HCA 15, May 19, 2010).
Factual background
The trade mark was registered in 1997 by a related entity to Food Channel Network, who assigned the trade mark to Food Channel Network in 2004 and authorised them to use the trade mark as owner. The trade mark was registered in respect of class 38 services (television broadcasting services including free-to-air and cable television broadcasting) and class 41 services (production of television programs and television entertainment).
Between 1999 and 2005, Television Food Network made a number of applications for the registration of trade marks similar to THE FOOD CHANNEL logo trade mark, each of which prompted the filing of notices of opposition on the part of Food Channel Network. The oppositions prompted Television Food Network’s application for removal of the Food Channel Network trade mark on 14 August 2006.
Findings
In considering the elements of a section 92(4)(b) application, Justice Greenwood articulated the two questions to be resolved in the proceedings as whether:
- Television Food Network had standing under section 92(1) of the Act as a ‘person aggrieved by the fact that a trade mark is…registered’, and
- Food Channel Network used the trade mark in Australia or used the trade mark in good faith in Australia in relation to the goods and/or services to which the application related during the three-year period of contended non-use.
Standing as a ‘person aggrieved’ is no longer required for non-use applications under section 92. However, the court found that Television Food Network had standing to bring the application on the grounds of the oppositions which had been filed.
In relation to the use by Food Channel Network of the trade mark, the court made the following remarks in respect of the two classes of service for which the trade mark was registered:
- The court upheld the decision of the Registrar to remove the trade mark from the register in respect of the class 38 services for which it was registered. Food Channel Network was not itself engaged in television broadcasting services (but instead employed ABC Asia Pacific to transmit a broadcast signal), Food Channel Network could not establish use of the trade mark ‘in relation to’ television broadcasting services. It was noted that in order to establish use of the mark in relation to the specified class 38 services, a party must demonstrate use by it of those services.
- The court rejected the decision of the Registrar that the Food Channel Network trade mark be removed from the register in respect of the class 41 services for which the trade mark was registered. The court found that Food Channel Network had acted as a ‘producer’ of finished broadcast programs and in doing so undertook activities of ‘production of television programs and television entertainment’. The court concluded that the use of the trade mark by Food Channel Network in programs produced by it constituted use of the mark in relation to class 41 services and thus the trade mark should remain on the register.
This article was written by Georgina Hey, Senior Associate and Sarah McKeith, Solicitor, Sydney.
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