Onus is on opponent to establish that applicant is not owner of mark

Australia
In Food Channel Network Pty Ltd v Television Food Network GP ([2010] FCAFC 58, June 2 2010), the Full Court of the Federal Court of Australia has allowed an appeal by Food Channel Network Pty Ltd and dismissed Television Food Network GP's opposition to the application for the registration of a trademark comprising the words 'food channel' and a television screen device, in respect of stationary and printed materials.

Television Food opposed Food Channel's application on the grounds that:
  • the mark was deceptively similar to its three trademarks, which comprised the words 'food channel' and a circle device (Section 41 of the Trademarks Act 1995 (Cth)); and
  • Food Channel was not the owner of the mark at the time of the application (Section 58) and did not intend to use, or authorize the use of, the mark (Section 59).
Television Food failed before the registrar of trademarks, but succeeded on all grounds on appeal to the Federal Court. The Full Court of the Federal Court then reversed the decision of the trial judge on all grounds.

First, the Full Court held that the trial judge had erred in shifting the evidentiary onus onto the applicant (ie, Food Channel) to establish that it was the owner of the mark: the evidentiary onus is on the opponent (ie, Television Food) to establish that the applicant is not the owner of the mark. The issue as to ownership arose because the managing director and sole shareholder of Food Channel, Paul Lawrence, was also the owner of The Food Channel Pty Ltd. Television Food argued that, while the application for registration was made by The Food Channel Pty Ltd, Food Channel was the owner of the mark at the time the application was made. The fact that there was considerable confusion over who owned the mark meant that Television Food had failed to establish that Food Channel was not the owner of the mark.

Second, the court found that the trial judge had erred in concluding that Food Channel's mark was substantially identical or deceptively similar to Television Food's marks. The court concluded that the differences between the marks were significant - as they did not look the same or sound the same, and shared only the common element 'food', Food Channel's mark was not deceptively similar to Television Food's marks.

Finally, the court held that the trial judge had erred in finding that Food Channel had no intention of using the mark at the date the application was made. The court, accepting the affidavits of Lawrence, held that the relevant intention was that of Lawrence, as the owner of Food Channel and The Food Channel Pty Ltd. The court concluded that Lawrence's affidavits, and the evidence that Food Channel had used the mark on recipe cards, established that The Food Channel Pty Ltd did have an intention to use, or authorize the use of, the mark at the date of the application.

While each case will turn on its own facts, and notwithstanding that the applicant was ultimately successful, this case highlights the potential dangers that an applicant may face when there is ambiguity as to the owner of a mark at the time the application for registration is filed.

For a background discussion on this case please see "Mark owner must be identifiable at time of application, says court" and "Test for leave to appeal under Section 195(2) reconsidered".
 
Des Ryan and Danielle Roberts, Davies Collison Cave Law, Melbourne

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