Food Channel Network (“Network”) has won the latest round in the ongoing legal battle over its FOOD CHANNEL (logo) trade mark.
In Food Channel Network Pty Ltd v Television Food Network GP  FCAFC 58, the Full Federal Court upheld Network’s appeal against a decision that its trade mark 967804 should not be registered on the basis that Television Food Network (Television) had established grounds of opposition under s.59, s.58 and s.44 of the Trade Marks Act.
In the decision, Keane CJ, Stone and Jagot JJ affirmed the principle that in trade mark oppositions “the party who asserts must prove” i.e. that the Opponent bears the onus of establishing the grounds of opposition. However, the issue of the standard of proof required remains a live issue in trade mark law with the court finding it unnecessary to determine whether the standard required is higher than the balance of probabilities.
The Court found the primary judge had erred in ruling that Television had made out a prima facie case that The Food Channel Pty Ltd (“Channel”) (the applicant at the time of filing) was not the owner of the trade mark pursuant to s.58 ground of opposition.
Issues as to ownership arose because the application was filed for FOOD CHANNEL (logo) in August 2003 in the name of Channel and was later assigned to Network. Paul Lawrence controlled both the Network and Channel entities.
The trial judge found that the evidence as to whether Channel or Network was the owner of the mark was confusing. Her Honour ruled that the onus shifted to Network to establish that Channel was the owner of the trade mark at the time of filing the application and that Network had not discharged this onus.
However, the Full Federal Court found it was incorrect for the onus to be shifted to Network. On the facts, it was unclear as to which entity was the first user and therefore, owner of the trade mark. As such, the court found that Television had failed to demonstrate that there was a prior user of the mark which defeated Network’s claim to ownership.
Intention to use
The Court also overturned the trial judge’s decision that Channel had no intention to use the trade mark or authorise use of the trade mark at the filing date of the application and that Television had established the s.59 ground of opposition.
The trial judge considered Television had made a prima facie case that neither Channel or Network had an intention to use because the evidence as to use was from Mr Lawrence who was not an applicant and that this evidence further confused the issue as to which entity used the mark. The onus therefore shifted to Network to establish there was an intention to use at the time of filing which it had failed to do. The trial judge considered the fact that Network and Channel had the same director and shareholder to be of no relevance for the purposes of determining intention to use.
However, the Full Court found the relevant intention was that of Mr Lawrence, as the party controlling both Network and Channel, and that his evidence suggested an intention to use the trade mark. It also considered that on the evidence Network had used the trade mark on recipe cards it supplied to butchers to give to their customers and had used the mark on class 16 goods. As such, Television had failed to establish the s.59 ground of opposition.
On the issue of deceptive similarity, the Full Court found the trial judge had made two errors in principle. Firstly, by expressly declining to consider the comparison of the marks as a whole and also by failing to appreciate that the comparison was of marks used in different trades (class 16 in the case of the Network mark and class 41 in the case of the Television marks).
The Full Court found there were three significant factors that pointed against the marks being deceptively similar. It found the marks did not look the same, did not sound the same and shared only the common element ‘food’.
It also considered that a comparison as to deceptive similarity, one had to bear in mind the difference in trade between the class 16 goods of the FOOD CHANNEL mark and Television’s class 41 services of ‘education; providing of training; entertainment, sporting and cultural activities.
The court said:
“The differences between the two marks are so significant, considered in relation to the different trades in which they are used, that we are unable to conclude that Network’s mark is likely to deceive or confuse confusion that goods bearing its mark originate from Television”.
Accordingly, the s.44 ground of opposition was not established.
In a further blow for Television, the Court upheld Network’s appeal against an award of costs which had been made on the basis of a finding that Network’s conduct had frustrated an earlier mediation.