Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71

On a proper construction, the s 59(a) ground was sufficiently raised by Bauer in the amended notice of appeal and pleaded case, as well as through submissions and the course of the trial. The relevant required intention is to use the mark in relation to the specified services ('production of television programs'), not merely as the name of an end product. The evidence showed Evergreen intended only to use 'Discover Downunder' as the name of a television program, not as a trade mark for the service of producing programs. Therefore, the application should be refused for lack of requisite intention under s 59(a).

Parties
Applicant/appellant: Bauer Consumer Media Ltd; Applicant/appellant: Bauer Media Pty Ltd; Respondent: Evergreen Television Pty Ltd
Jurisdiction
Australia
Judgment Date
03 May 2019
Procedural Posture
Appeal and Application for Removal of Trade Mark / Full Federal Court – Appeal and Leave to Appeal From a Single Judge
Outcome
Appeal allowed. Application for leave to appeal is allowed. Registrar's decision set aside. Trade mark application refused. Costs awarded to appellants.
Legal Topics
Trade Marks, Opposition to Trade Mark Registration, Intention to Use, Construction of Specification, Non Use Proceedings, Procedural Fairness, Grounds of Appeal, Pleading Issues
Intellectual Property Trade Marks Opposition to Trade Mark Registration Intention to Use Construction of Specification Non Use Proceedings Procedural Fairness Grounds of Appeal +1 more

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Parties

Bauer Consumer Media Ltd

Applicant/appellant

Bauer Media Pty Ltd

Applicant/appellant

Evergreen Television Pty Ltd

Respondent

Procedural Posture

Appeal and Application for Removal of Trade Mark / Full Federal Court – Appeal and Leave to Appeal From a Single Judge

Legal Issues

  1. 1 Whether the applicant for the trade mark (Evergreen) had the requisite intention to use the trade mark in relation to the specified services, namely 'production of television programs', at the filing date.
  2. 2 Whether the primary judge erred in refusing to permit Bauer to advance an argument on the absence of intention to use for the specified services due to alleged lack of notice or pleading deficiency.
  3. 3 Proper construction of 'production of television programs' for the purposes of trade mark intention to use under s 59 of the Trade Marks Act 1995 (Cth).

Ratio Decidendi

On a proper construction, the s 59(a) ground was sufficiently raised by Bauer in the amended notice of appeal and pleaded case, as well as through submissions and the course of the trial. The relevant required intention is to use the mark in relation to the specified services ('production of television programs'), not merely as the name of an end product. The evidence showed Evergreen intended only to use 'Discover Downunder' as the name of a television program, not as a trade mark for the service of producing programs. Therefore, the application should be refused for lack of requisite intention under s 59(a).

Court Disposition

Appeal allowed. Application for leave to appeal is allowed. Registrar's decision set aside. Trade mark application refused. Costs awarded to appellants.

Orders

  • The application for leave to appeal under s 195(2) of the Trade Marks Act 1995 (Cth) is allowed.
  • Orders 1 and 2 of the orders made by the primary judge on 12 May 2017 are set aside.