This Full Court Decision concerned whether Bauer Consumer Media Ltd and Bauer Media Pty Ltd (together, Bauer) had fairly put the Trade Mark Applicant, Evergreen Television Pty Ltd (Evergreen) on notice of Bauer's case on s 59(a) of the Trade Marks Act 1995. The first instance judge held that Bauer had not done so; however, a 2:1 majority of the Full Court held that Evergreen had been fairly put on notice, and went on to find that Bauer had established the s 59(a) ground of opposition to registration, with the result that the Trade Mark at issue was refused registration.
The decision exposes some of the difficulties in pleading in a proceeding that, while constituting an appeal, is to be heard by way of a de novo hearing, particularly in a case where a ground argued below may be argued differently in the Federal Court.
Evergreen and ACP Magazines Pty Ltd (later acquired by the Bauer Media Group) had previously been involved with the production of a television program called "Discover Downunder". After the parties ceased to work together, Evergreen filed Australian Trade Mark Application No. 1324177 for DISCOVER DOWNUNDER in respect of the class 41 services, production of television programs (DISCOVER DOWNUNDER Trade Mark).
Bauer unsuccessfully opposed the registration of the DISCOVER DOWNUNDER Trade Mark on a number of grounds, being ss 41, 42(b), 58, 59(a), 60 and 62A. The way the s 59(a) argument had been put was that Evergreen did not intend to use the DISCOVER DOWNUNDER Trade Mark at all as at the date of application, because, among other reasons, it intended to use a different Trade Mark instead.
Bauer appealed to the Federal Court and also instituted non-use proceedings against the DISCOVER DOWNUNDER Trade Mark (both of which were heard together and dismissed).
In the first instance Federal Court proceedings, Bauer had sought to advance two related arguments as to s 59(a) in its closing submissions, which were:
- The production of television services did not extend to the naming of television programs (known in the proceedings as the "registration application construction issue" – Construction Issue).
- Even if naming television programs was within the scope of the "production of television services," as at the date of the application there was no intention to use the DISCOVER DOWNUNDER Trade Mark to name television programs (Factual Use Issue).
Overall, Bauer's proposition was that there was no intention to use the DISCOVER DOWNUNDER Trade Mark in respect of the production of television services.
Evergreen had objected that the first argument had not been made before the delegate and contended that it had emerged for the first time in cross-examination of one of Evergreen's key witnesses. Evergreen had submitted that this argument had not been clearly raised in the Amended Notice of Appeal. As to this, Bauer asserted that the first argument had been fairly raised in paragraph 16 of the Amended Notice of Appeal, which was in the following terms:
The Delegate erred in finding at paragraph 121 of the Decision that the Respondent had used the Opposed Mark and should have found that the Respondent had not evinced an intention to use the Opposed Mark in Australia within the meaning of s 59 of the Act in relation to the production of television programs and had not used the Opposed Mark in Australia as its trade mark in relation to the production of television programs.
The Honourable Justice Perry held that given the way that Bauer's case had been put before the Delegate, in particular that Evergreen did not have the intention to use the DISCOVER DOWNUNDER Trade Mark at all, amended paragraph 16 did not put Evergreen on notice of the Construction Issue and Bauer needed leave to raise that issue.
Bauer subsequently sought leave to appeal in the first proceedings (the proceedings that originated in the Trade Marks Office) and appealed the second proceedings (non-use proceedings).
Application for leave to appeal
The key issue for the leave proceedings was whether Evergreen had been put on notice that Bauer would be contending that Evergreen did not intend to use, or authorise the use of, the DISCOVER DOWNUNDER Trade Mark in relation to the specific services of production of television programs.
Each of Greenwood, Rangiah and Burley JJ gave separate judgments, with Greenwood and Burley JJ finding in favour of Bauer and Rangiah J dissenting.
Each of Greenwood and Burley JJ found that paragraph 16 of the Amended Notice of Appeal put Evergreen on notice that Bauer would argue that Evergreen did not have an intention to use the DISCOVER DOWNUNDER Trade Mark for the production of television programs. The amendments to paragraph 16, commencing with the words "[t]he Delegate erred in finding...", could have be read as being either still within the scope of the ground as raised before the delegate or as additionally (or alternatively) as raising the Construction Issue. Greenwood J held that the fact that the amended paragraph was capable of being read as raising the Construction Issue of use in respect of the specified services put Evergreen on notice of the second interpretation. Evergreen must also be taken to be aware that:
"...the proceeding before the primary judge under s 56 of the Act is not simply a vehicle for correcting error in the delegate's decision and that the proceeding is a hearing afresh on the merits on questions of law and fact in controversy as framed by the s 56 amended [Notice of Appeal] ..."
Evergreen had neither objected to that amendment nor had it sought particulars. Burley J held that while the opening words of paragraph 16 suggested that the finding related to the Construction Issue was one that the Delegate should have made, even though that argument had not been made before the Delegate, the amendment to paragraph 16 should have been understood as raising the question of whether Evergreen had in fact used the DISCOVER DOWNUNDER Trade Mark in respect of the production of television programs.
Further, contrary to the argument that the Construction Issue had been raised for the first time in cross-examination, it has been raised in the opening submissions. In conclusion, the Construction Issue had been fairly raised and Bauer did not need leave of the Court to do so.
The question of notice having been resolved in Bauer's favour, Burley J (Greenwood J agreeing) then considered the s 59 ground. Bauer's argument here was that Evergreen never intended to do more than to name a specific product, that is a television program, "Discover Downunder" and that there was no intention to use that name in connection with the production of television programs; the relevant production entities being Evergreen itself and (as proposed) Parable Productions. Evergreen argued that the name was applied not just to a program but was intended to be used as part of a range of activities such as promotion and sponsorship, although his Honour did not accept that these would be conducted under the DISCOVER DOWNUNDER Trade Mark but rather under the Evergreen name. His Honour found that the proposed use of the DISCOVER DOWNUNDER Trade Mark as the name of a television program was not used for the production of television programs.
In light of the decisions made on the Application for leave to appeal, it was not necessary to consider the Appeal.
In dissenting, Rangiah J did not accept that any error had been demonstrated in the trial judge's finding that the Construction Issue had not been fairly raised, noting that the trial judge had the advantage of having observed the trial and the way in which it was conducted. His Honour held that there was no need to consider that ground with the result that both appeals should have been dismissed.
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