Bauer Consumer Media Limited v Evergreen Television Pty Ltd  FCA 507 (12 May 2017)
Unsuccessful appeal by Bauer against the Registrar’s decision refusing their opposition to trademark registration of DISCOVER DOWNUNDER (Stylised) filed on 9 October 2009 for the production of television programs in Class 41. The Registrar’s earlier decision is reported here
Bauer also failed in their application for removal of the ensuing registration of the DISCOVER DOWNUNDER trade mark on the ground of non-use.
While assessing the credibility of the witnesses, Perry J noted that the claims to ownership date back to 2004 and 2005 and passage of time has an effect on on the quality of evidence and the fallibility of human memory. Her Honour considered that Mr Falconer’s evidence on behalf of Bauer could not be relied upon on controversial matters without corroboration. His evidence contained significant inconsistencies and he engaged to some extent in reconstructing events. Her Honour considered the evidence of Mr Colin Parrot and Mr Warren Parrot on behalf of Evergreen to be generally reliable and better supported by contemporaneous documentation. Her Honour was also critical of Bauer’s failure to (i) call other witnesses with greater personal knowledge of the events than Mr Falconer and (ii) satisfactorily explain why documents could not be produced in support of their case.
Opposition to registration
On the ownership ground, Perry J found that Bauer could not prove that it made any use of the DISCOVER DOWNUNDER trade mark before Evergreen’s first use of this mark in late January 2005 by having formed an existing intention to offer or supply the television program bearing this mark to Channel Ten and ultimately concluding a licence agreement with Channel Ten on 25 February 2005. The evidence did not support Evergreen being contracted by Bauer to produce the television program and merely being an agent for Bauer.
On the issue as to whether Evergreen had formed an intention in good faith to use this trade mark at the time of filing its trade mark application on 9 June 2009, Bauer sought to draw a distinction between the service of producing television programs and to merely name a television program. This was not before the Registrar and was raised for the first time by Bauer in cross-examination and its closing written submissions on the appeal. Perry J considered that Evergreen had not fairly been put on notice of this issue. Bauer also contended that, as at 9 June 2009, Evergreen intended to use WHAT’S UP DOWNUNDER in connection with production of a television program to be broadcast on Channel Seven. However, her Honour rejected this and held that Evergreen did, at that time, still have an intention to use DISCOVER DOWNUNDER and that the other name was for a different concept attributable to Channel Seven not wanting to get involved in a dispute with a rival broadcaster concerning the DISCOVER DOWNUNDER name.
Bauer also argued that Evergreen filed the DISCOVER DOWUNDER trade mark application in bad faith as a step taken to block Bauer from using this mark, but Perry J quickly dismissed this and found that Bauer fell well short of establishing bad faith.
Bauer also relied on s60 based on its reputation in the DISCOVER DOWNUNDER trade mark, but this also failed. Fundamentally, s60 was problematic because the ‘other trade mark’ being relied upon by Bauer under that section was the same mark owned and used by Evergreen. Further, the use relied upon by Bauer was with the permission of Evergreen. Bauer never used this mark independently of Evergreen’s rights.
Bauer also argued that use of the DISCOVER DOWNUNDER trade mark by Evergreen would be contrary to the Australian Consumer Law because it would falsely represent some sponsorship, approval or affiliation with Bauer. However, since the s60 ground failed, this further ground of opposition also failed.
Non-use removal application
Bauer relied on s92(4)(a) and (b). Under s92(4)(a) it argued that Evergreen had no intention to use the DISCOVER DOWNUNDER trade mark at the time of filing its trade mark application and had not used it at any time up until one month before filing of the removal application on 11 June 2015. The relevant non-use period was from 9 October 2009 to 11 May 2015. Under s92(4)(b) Bauer argued that Evergreen had not used this mark during the three year period from 11 May 2012 to 10 May 2015.
There was a preliminary issue as to whether removal could be ordered where the relevant trade mark has not yet been registered. Perry J was inclined to accept Bauer’s argument that, at least a non-use removal application before a Court, could be pursued even though the trade mark is not yet registered and her Honour did not draw any distinction between s92(4)(a) and s92(4)(b). However, this was obiter as it was unnecessary to decide the point because removal was inappropriate in the circumstances of this case.
Perry J had already found that Evergreen did have a good faith intention to use the DISCOVER DOWNUNDER trade mark at the time of filing its trade mark application, so s92(4)(a) could not be satisfied. Further, her Honour also found that Evergreen did actually use or authorise the use of this mark for the relevant class 41 services from 2005 to 2009.
Under s92(4)(b) it was not in dispute that Evergreen did not use the DISCOVER DOWNUNDER trade mark during the relevant three year period, but Evergreen relied on s100(3)(c) that this failure to use was due to circumstances that were an obstacle to use. The relevant circumstances were that Bauer’s conduct in broadcasting a national television program under the identical trade mark and threatening legal action rendered it impossible for Evergreen to use the same mark for the production of television programs. Perry J accepted that Bauer’s conduct caused non-use of the DISCOVER DOWNUNDER trade mark in a practical business sense in that no other network would broadcast the program produced by Evergreen under the same name. Given this finding, it was not necessary for her Honour to also decide whether the present litigation constituted an obstacle to Evergreen’s use of this mark.
Finally, Perry J commented that, even if Bauer’s conduct was not a true obstacle to Evergreen’s use of the mark, it would have been reasonable to exercise discretion in Evergreen’s favour and not order removal of its mark once registered.