Something to chew on: the Food Channel trade mark cases

In the latest Federal Court judgment dealing with issues in the ongoing trade mark dispute between Food Channel Network Pty Ltd and Television Food Network GP, the Full Federal Court has confirmed that the party opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. 

The Food Channel Pty Ltd had applied to register a trade mark consisting of the words “Food Channel” and a cartoon picture of a stylised television with a banana and chilli as the antennae.  During the application process, it assigned the trade mark application to the Food Channel Network, which is a related entity. The registration was opposed by Television Food Network. 

The Registrar rejected Television Food Network’s opposition to registration on the grounds that it was not appropriate to draw an inference that Food Channel Network did not intend to use the mark and that the marks were not deceptively similar.

On appeal to the Federal Court, the primary judge upheld Television Food Network’s appeal and ordered that registration of the mark be refused, concluding that (i) it was not possible on the evidence to establish that Food Channel Network was the owner of the mark at the date of the application; (ii) neither Food Channel Network or Television Food Network intended to use the mark; and (iii) the mark was in fact deceptively similar to Television Food Network’s trade mark.

The Full Court of thef Federal Court rejected Television Food Network’s argument that the difficulties facing an opponent attempting to establish lack of ownership (section 58) or lack of intention to use (section 59) meant that an evidential onus should shift to the applicant.  The Full Court held that the filing of an application for registration of a mark is prima facie evidence of an intention to use that mark and that it is only when an opponent has made out a prima facie case that there was a lack of intention to use a mark that the onus shifts back to the applicant to establish intention. 

On the point of ownership of the mark,  the Full Court noted that due to limited evidence it cannot be determined which party used the trade mark first.  As the opponent has the onus of proof, the lack of clear evidence as to prior use is a fatal deficit in the opponent’s case, not the applicant’s.

In comparing the trade marks, the Full Court found that Television Food Network’s trade mark was not deceptively similar to Food Channel Network’s trade mark when viewed as a whole and having regard to the differences in the goods and services specified. The marks neither looked nor sounded similar and the only common feature of the marks is the word “food”.

Click here for a copy of the judgment.

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