TV Stations in Late Night News Spat

Australia’s Channel Nine and Channel Ten have settled their differences over the use of the trademark NEWSNIGHT.  We take a brief look at one of the possible trademark issues in this spat.

The Australian’s Amanda Meade has written an interesting blog post regarding Channel Ten’s proposed use of the trademark NEWSNIGHT for their upcoming late night TV news program.

Channel Ten appear to have unfortunately titled the name of their new nightly news program NEWSNIGHT without realising Channel Nine have trademark registrations for NEWSNIGHT.

As Amanda correctly points out, the Nine Network Australia Pty Limited (“Nine”) owns two registered Australian trademarks for NEWSNIGHT in respect of broadcasting services.

Trademark Applicant Classes
1059821 NEWSNIGHT Nine Network Australia Pty Limited 38, 41
1059823 Nine Network Australia Pty Limited 38, 41

It is interesting to note that both of the trademarks above were filed and registered in early 2005.

Amanda’s blog post indicates that Channel Nine gave permission to Sky News Australia (which Nine part owns) to use the trademark NEWSNIGHT.

This is an interesting point to note because other than use by Sky News, Nine do not appear to have used the trademark NEWSNIGHT.  Had Nine not authorised Sky News to use the mark NEWSNIGHT, the above trademarks may have been vulnerable to removal from the trademark register for non-use.

The reason for this is that the Australian Trade Marks Act 1995 includes provisions for the removal of trademarks which are not being used.  Generally speaking, if a trade mark registration is more than five years old and has not been used in the preceding three years – it is vulnerable to removal for non-use.

Despite the apparent authorised use of NEWSNIGHT by Sky News Australia (saving NEWSNIGHT from a non-use action), Nine filed a new trademark for NEWSNIGHT on 22 May  2012:

Trademark Applicant Classes
1492212 NEWSNIGHT Nine Network Australia Pty Limited 38, 41

The above trademark application is in exactly the same classes of services as the marks which were filed in 2005 and for largely the same services.

So why would Nine file a new trademark? We can only guess, but it may be that Nine had some reservations as to the extent to which (and evidence that) they had actually authorised Sky News to use the trademark NEWSNIGHT.

By filing a new trademark application for NEWSNIGHT in the same set of services, Nine have effectively “reset the clock” on any non-use action and avoided the risk of cancellation for non-use of the trade mark NEWSNIGHT for a further five years.  Of course, any actual use of the trademark (or clear authorised use) from 2005 onward would have also achieved the same effect.

If you have any questions in relation to non-use matters please contact our trademarks group.