Bauer Consumer Media Ltd v Evergreen Television Pty Ltd  FCAFC 71 (3 May 2019)
Leave to appeal was granted with Bauer being successful in the appeal. The orders made by the primary judge and the Registrar’s decision were set aside, resulting in Evergreen being refused trademark registration of DISCOVER DOWNUNDER.
Evergreen’s application for trademark registration of DISCOVER DOWNUNDER was filed on 9 October 2009 for the production of television programs in class 41.
The judgement of the primary judge, Perry J is reported here
Bauer’s appeal was successful under the s59 lack of intention to use ground of opposition.
Before Perry J, Bauer sought to draw a distinction between the service of producing television programs and the name a television program (product). This was not before the Registrar and was raised for the first time by Bauer in cross-examination and its closing written submissions. Perry J considered that Evergreen had not fairly been put on notice of this issue. Bauer also contended that, as at 9 October 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 contended that it had sufficiently pleaded its case and the primary judge erred in refusing to address the s59 ground due to unfairness to Evergreen.
Burley J gave the leading judgment in allowing Bauer’s appeal. His Honour considered the primary judge did err in refusing Bauer to advance its argument going to lack of intention by Evergreen to use the DISCOVER DOWNUNDER mark for the claimed services, namely production of television programs. Although unnecessary to decide, his Honour also considered Bauer’s non-use application would succeed.
The primary judge found, in effect, that the assumed position between the parties in the case was an agreement that any use of DISCOVER DOWNUNDER by Evergreen fell within the scope of “production of television programs”. Perry J found that it would have been unfair to permit Bauer to depart from that position in the absence of a properly notified intention to do so.
Burley J considered the intention to use issue based on the distinction between the provision of a service and the name of a product was sufficiently clearly notified to Evergreen in the pleaded case and in the manner in which the proceedings were conducted, and the learned primary judge erred in declining to consider it. Although the pleaded case could have been made clearer, it was sufficiently foreshadowed.
His Honour considered the language “production of television programs” is clear. The verb “production” is an ordinary English word, which means “the act of producing, creation or manufacture”. The use or intended use of a trade mark for the production of television programs will involve the use or intention to use that mark “in physical or other relation” to services for the creation or manufacture of television programs. The evidence of Colin Parrôt, speaking for Evergreen, presented a clear picture that Evergreen did not intend for DISCOVER DOWNUNDER to be used as a trade mark for the production of television programs, but as the name of a television program produced by Evergreen and by reference to the name Evergreen. At all stages in the development of the DISCOVER DOWNUNDER program, the steps identified were conducted by and under the name of Evergreen, not DISCOVER DOWNUNDER. A distinction is to be drawn between the acts of production or creation of a television program and the result of that process. The proposed use of DISCOVER DOWNUNDER as the name of a television program is not use for the production of television programs.
Greenwood J agreed with the reasons of Burley J and considered the approach taken by the primary judge was incorrect. Intention was put in issue in the amended Notice of Appeal and it was relevant that, in the concurrent non-use proceeding, Bauer also asserted a lack of intention on the part of Evergreen. Evergreen was not prejudiced on the footing that intention was first raised in cross examination and Bauer’s closing address because that was not supported by the facts in the transcript.
Rangiah J gave a dissenting judgment and found no error by the primary judge in finding that Evergreen had not been fairly given notice of the intention to use ground of appeal based on the distinction between the service of producing a television program and the name of a television program. His Honour noted that the primary judge had observed the whole of the trial unfold and had an advantage over the appellate court. While it was not suggested that advantage is unassailable, adequate weight should be given to the judgment exercised by the primary judge.