Mark owner must be identifiable at time of application, says court

In Television Food Network GP v Food Channel Network Pty Ltd (No 2) ([2009] FCA 271, March 27 2009), the Federal Court of Australia has ruled that at the filing date of a trademark application, the owner of the mark must be identifiable and must be the applicant.

The case involved an application for a device mark incorporating the words 'food channel' in the name of Food Channel Network Pty Ltd for goods in Class 16 of the Nice Classification. Television Food Network GP opposed the application based on various registered trademarks containing the words 'food network'. The opposition was dismissed and Television Food appealed.

The primary issue for consideration by the court was the ownership of the mark applied for at the date of filing and whether uncertainty as to ownership at that date was fatal to the application. For completeness, the court considered further grounds of appeal relating to:

• the mark’s alleged deceptive similarity to Television Food's marks;
• misleading and deceptive conduct; and
• passing off.

Section 27(1) of the Trademarks Act 1995 (Cth) provides that "a person may apply for registration of a trademark if the person claims to be the owner of the trademark". The act also provides that the registration is effective from the filing date (Section 72), but allows the registration to be opposed where the applicant is not the owner of the trademark (Section 58).

The court agreed with Television Food that where an opponent to the registration of a trademark makes a prima facie case that the applicant for registration is not the owner, the evidentiary onus shifts to the applicant to establish ownership of the mark at the time of filing. The court found that Television Food had satisfied its burden on the evidence.

In finding that Food Channel had not discharged its evidentiary onus to establish clearly that it was the owner of the trademark at the filing date, the court stated that:

• ‘ownership’ is a key concept within the act that requires certainty; and
• at the filing date, the owner of the trademark must be identifiable and must be the applicant.

The court accepted that it is settled law in Australia that ‘ownership’ of a mark which confers the right of registration under the act arises where the applicant is the author or the first user of the mark.

However, the court ruled that in the present case, the position of ownership between Food Channel and its sole director and shareholder, Mr Lawrence, was so confused on the evidence presented that the owner of the trademark could not be identified at the filing date (or throughout the process). Accordingly, the defect in the original application was fatal to the application.

Stephen Stern and Melissa McGrath, Corrs, Melbourne