Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507

Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507

Evergreen Television Pty Ltd was found to be the first user and owner of the trade mark 'Discover Downunder' in relation to the production of television programs. Bauer failed to establish first use prior to Evergreen's licence agreement with Channel Ten. Evergreen demonstrated intention to use in good faith; application was not made in bad faith. Use of the mark was not likely to deceive or confuse and was not contrary to law. Non-use proceedings failed because Evergreen's inability to use the mark during the relevant periods was due to insurmountable obstacles presented by Bauer's conduct, and discretion was exercised not to remove the mark from the Register.

Jurisdiction
Australia
Judgment Date
12 May 2017
Procedural Posture
Appeal and Removal Application / Judgment
Outcome
Appeal dismissed; removal application dismissed.
Legal Topics
['trade Marks' 'trade Mark Ownership' 'trade Mark Registration' 'non Use Proceedings' 'opposition to Registration']
['intellectual Property'] ['trade Marks' 'trade Mark Ownership' 'trade Mark Registration' 'non Use Proceedings' 'opposition to Registration']

Case Brief

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Procedural Posture

Appeal and Removal Application / Judgment

Legal Issues

  1. 1 ["Whether Evergreen Television Pty Ltd was the first user and owner of the trade mark 'Discover Downunder' for television program production services as at the filing date" 'Whether Evergreen intended to use the mark in good faith when applying for registration' 'Whether the registration application was made in bad faith' 'Whether use of the mark would likely deceive or cause confusion because of prior reputation' 'Whether use of the mark would be contrary to law, specifically the Trade Practices Act 1974 (Cth)' 'Whether grounds for removal for non-use were established']

Ratio Decidendi

Evergreen Television Pty Ltd was found to be the first user and owner of the trade mark 'Discover Downunder' in relation to the production of television programs. Bauer failed to establish first use prior to Evergreen's licence agreement with Channel Ten. Evergreen demonstrated intention to use in good faith; application was not made in bad faith. Use of the mark was not likely to deceive or confuse and was not contrary to law. Non-use proceedings failed because Evergreen's inability to use the mark during the relevant periods was due to insurmountable obstacles presented by Bauer's conduct, and discretion was exercised not to remove the mark from the Register.

Court Disposition

Appeal dismissed; removal application dismissed.

Orders

  • ['The appeal from the decision of the Registrar of Trade Marks is dismissed.' "The first and second appellants/applicants are to pay the respondent's costs as agreed or assessed." 'The application for an order for removal of the trade mark is dismissed.' "The first and second applicants are to pay the respondent's...