FEDERAL COURT OF AUSTRALIA

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71

ORDERS

THE COURT ORDERS THAT:

1.    The application for leave to appeal under s 195(2) of the Trade Marks Act 1995 (Cth) is allowed.

2.    Orders 1 and 2 of the orders made by the primary judge on 12 May 2017 be set aside.

3.    The decision of the Registrar of Trade Marks made by her delegate on 25 August 2014 is set aside.

4.    Trade Mark Application No. 1324177 is refused registration.

5.    The respondent pay the appellants’ costs of and incidental to this appeal and the costs of the appellants before the primary judge.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

GREENWOOD J:

The essential question in issue

1    This appeal raises, at one level at least, a relatively short point although in order to address the contended error on the part of the primary judge, it is necessary to examine in a little detail exactly how the question in issue arose. The point goes to contentions about the conduct of the case by the appellants before the primary judge and whether the scope of the controversy comprehended an aspect of one of the grounds the appellants sought to rely upon in their opposition to registration of the word mark, Discover Downunder (accepted and advertised arising out of the examination process). In these reasons, I describe the appeal proceeding before the primary judge from the decision of the Registrar’s delegate as the “opposition appeal proceeding”.

2    In making a challenge to registration, the appellants relied upon s 59(a) of the Trade Marks Act 1995 (Cth) (the “Act”). The opposition appeal proceeding arises as a de novo appeal under s 56 of the Act from the decision of the Registrar’s delegate which, of course, engages an exercise of the Court’s original jurisdiction.

3    Section 59(a) of the Act provides, relevantly, that the registration of a trade mark “may be opposed on the ground that the applicant for the trade mark does not intend to use, or authorise the use of, the trade mark in Australia in relation to the goods and/or services specified in the application” [emphasis added].

4    The principal question in issue in the appeal to the Full Court is whether the primary judge erred by refusing to allow the appellants (Bauer Consumer Media Ltd and Bauer Media Pty Ltd (jointly described as “Bauer”)) to contend that the applicant for the trade mark (Evergreen Television Pty Ltd (“Evergreen”)) had no intention to use the trade mark Discover Downunder in relation to the particular services the subject of the application, that is, “production of television programs” as recited in the application document, at the date of filing of the application on 9 October 2009.

5    The primary judge concluded that the case made by Bauer at the hearing in reliance upon s 59(a) of the Act was confined (as it was before the Registrar’s delegate) to a “factual use issue” (at [309]) of whether, on 9 October 2009, Evergreen held an intention to use the mark in the way contended (by Evergreen) and that no part of Bauer’s case, until closing submissions, involved a contention that Evergreen’s intended use did not involve use in relation to the production of television programs and that, at best, Evergreen had only demonstrated that it held an intention to use the mark Discover Downunder as the name or title of a product in the form of a television program or a related multimedia or digital product rather than as a mark for the services of producing such products: Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507.

6    At [314], the primary judge concluded that Bauer’s contention of a lack of nexus between intended use on the one hand, and intended use in relation to the particular services specified in the application on the other hand, was an argument “identified as a primary and distinct ground on which the ground of opposition under s 59 was pressed for the first time in the written closing addresses filed by Bauer over six years after Evergreen had filed its application for registration of the trade mark in October 2009”.

7    The primary judge’s observation that Bauer’s contention on this ground was first raised in closing addresses and not otherwise is, in my respectful opinion, not correct at least so far as the de novo appeal proceeding to this Court from the decision of the Registrar’s delegate is concerned under s 56 of the Act. I respectfully disagree with the primary judge’s conclusion that had her Honour allowed Bauer to press its case in the way framed going to the issue of intended use in the relevant statutory sense, doing so would have given rise to unfairness to Evergreen. In my respectful opinion, Bauer did not require leave to agitate the contention it sought to make and was correct in not seeking leave of the primary judge to do so.

8    In order to address the challenge to the primary judge’s finding at [314] and related findings, it will be necessary to examine Bauer’s amended notice of appeal to this Court from the decision of the Registrar’s delegate, Bauer’s opening written and oral submissions, some of the evidence, the position adopted by Evergreen before the primary judge and the oral and written closing submissions where the point was said to have been first taken by Bauer. It is also necessary to take into account aspects of the statutory integers which condition an understanding of the statutory notion of a trade mark under the Act and that which is asserted when a person makes an application for registration of a trade mark.

9    The extent to which Evergreen was or was not fairly put on notice that Bauer would be contending that Evergreen did not hold an intention on 9 October 2009 to use the mark in relation to the services of “production of television programs” or that it had not used the mark (or authorised others to use the mark) in relation to the specified services in relevant periods (that is, 9 October 2009 to 10 May 2015 for the purposes of s 92(4)(a); and 11 May 2012 to 10 May 2015 for the purposes of s 92(4)(b)) is in part informed by a separate but overlapping proceeding before the primary judge under s 92(1) of the Act heard together with the opposition appeal proceeding: the “non-use proceedings”.

10    By the non-use proceedings Bauer sought removal of Evergreen’s application from the Register of Trade Marks (the “Register”) on the grounds of non-use under s 92(4)(a) or, alternatively, under s 92(4)(b) of the Act. Section 92(1) provides that subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered, removed from the Register. Such an application may not be made under s 92(1) if an action concerning the trade mark is pending in this Court although a person may apply to the Court for an order directing the Registrar to remove the trade mark from the Register: s 92(3). An application made under either s 92(1) or s 92 (3) is described by s 92(4) as a non-use application. It may be made on either or both of two grounds set out in s 92(4) and on no other grounds.

11    Section 92(4)(a) provides that such an application may be made on the ground that on the day on which the application for registration of the trade mark was filed (in this case 9 October 2009), the applicant (Evergreen) had no intention in good faith to use or to authorise the use, of the trade mark in Australia (or to assign it for use) in relation to the services to which the non-use application relates and that the applicant has not used the trade mark or used it in good faith, in Australia, in relation to the services at any time before the period of one month ending on the day on which the non-use application was filed.

12    As the non-use application was filed on 11 June 2015, the relevant non-use period for the purposes of s 92(4)(a) is 9 October 2009 until 11 May 2015.

13    Section 92(4)(b) provides that a non-use application may be made on the ground that the trade mark “has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner used the trade mark in Australia, or used it in good faith in Australia, in relation to the … services to which the application relates” [emphasis added].

14    Bauer relied upon applications under s 92(4)(a) and (b) for removal of the trade mark from the Register in the event that the trade mark proceeded to registration or would proceed to registration should Bauer’s opposition appeal proceeding be dismissed by the primary judge. In particular, as to the s 92(4)(b) ground which is engaged when a “trade mark has remained registered” for the relevant period, Bauer relied upon s 72(1) of the Act as having the effect of engaging s 92(4)(b) in relation to Evergreen’s application. Those matters were contested before the primary judge.

15    The point of present relevance about the non-use proceedings is that they too raised the question of whether Evergreen on 9 October 2009 had an intention to use the word mark in relation to the services specified in the application rather than in any other way and whether, within the relevant periods, Evergreen had used the mark in relation to the services specified in the application.

16    Whilst it is true that the non-use proceedings under both s 92(4)(a) and (b) were addressed as separate questions to be determined according to the integers of those sections and not bundled up with questions expressly raised under s 59(a), there was (and is) an overlap between the two proceedings to the extent that each of them engaged an examination of whether intended use; use prior to 9 October 2009 (said to evidence use at 9 October 2009); and use in fact, involved the necessary statutory relationship of use in relation to the services specified in Evergreen’s application, that is, the services of production of television programs.

17    The primary judge dismissed Bauer’s opposition appeal proceeding and the non-use proceedings.

18    I have had the benefit of reading the reasons for judgment in draft of Burley J and I adopt his Honour’s description of the factual matters, the chronology of events and the examination of the statutory provisions and relevant principles. I will give emphasis to only some aspects of the facts which are addressed comprehensively by his Honour and I will refer to the Act and relevant principles, as appropriate. I have also had the benefit of reading the reasons for judgment in draft of Rangiah J. His Honour considers that the reasons of the primary judge reflect no error. However, I respectfully disagree with his Honour for the reasons set out in these reasons.

19    Evergreen’s application for the trade mark Discover Downunder filed on 9 October 2009 for the services earlier described was advertised under s 34 of the Act on 27 January 2011, as accepted for registration. Part 5 of the Act addresses the topic of proceedings in opposition to registration of an accepted application for registration of a trade mark. Bauer filed a notice of opposition to registration relying on grounds of opposition under ss 41, 42(b), 58, 59, 60 and 62A of the Act. The Registrar’s delegate dismissed each of Bauer’s grounds of opposition. Bauer filed an appeal to this Court under s 56 of the Act and opposed registration of the trade mark in reliance upon the same six statutory provisions although, relevantly for present purposes, the ground of opposition under s 59(a) was amended without objection with the result that Bauer contended before the primary judge (and contends on appeal to the Full Court) that the question in issue in the opposition appeal proceeding before the primary judge went beyond the question the delegate was called upon to decide. I will return to that matter later in these reasons.

20    Bauer also filed its s 92 non-use application as earlier described. Both the opposition appeal proceeding and the non-use proceedings were heard together. The primary judge dismissed Bauer’s appeal from the delegate’s decision. The application for removal of the “trade mark application” from the Register was also dismissed: s 92(4); s 101(2) of the Act.

21    By these appeal proceedings to the Full Court so far as the opposition appeal proceeding is concerned, Bauer asserts that the primary judge erred in refusing to address, on the ground of unfairness to Evergreen, Bauer’s essential contention under s 59(a) as earlier described. Bauer contends that the primary judge ought to have addressed its contention and ought to have upheld its opposition to registration of the trade mark on the s 59(a) ground that Evergreen did not hold a intention to use or authorise others to use the trade mark in Australia in relation to the specified services at the date of application.

The draft grounds of appeal concerning s 59

22    Section 195(2) of the Act provides that an appeal does not lie to the Full Court of this Court from a judgment or order of a single judge of this Court in the exercise of the s 56 jurisdiction to hear and determine appeals from decisions of the Registrar, without leave. Accordingly, the grounds of appeal from the orders of the primary judge concerning the opposition appeal proceeding are framed as draft grounds of appeal in support of the application for leave.

23    Bauer frames the draft grounds of appeal as follows:

1.    The primary judge erred by finding (J [339]) that [Evergreen] established it had a bona fide intention in good faith to use the trade mark … in respect of the services for which registration was sought, namely production of television programs (Services), in Australia at the date when it applied to register the trade mark (namely, 9 October 2009), and in doing so erred by failing to find that [Bauer] had established the opposition ground to registration … under s 59 of the [Act].

2.    The primary judge erred (J [323]) by framing the factual question for the purposes of s 59 of the [Act] as “whether there was a bona fide intention by Evergreen to apply the Mark to a television program in circumstances where What’s Up Downunder had been used for the equivalent program to Discover Downunder which Evergreen produced for broadcast on Channel Seven”.

3.    The primary judge ought to have framed the factual question for the purposes of s 59 of the [Act] as “whether at the date of filing of the application to register the Trade Mark the Respondent had the intention to use in good faith the Trade Mark in relation to the services specified in the application as the ‘production of television programs’”.

4.    The primary judge erred by failing to find that the “registration application construction issue” (as defined at J [302(1)]) had been fairly raised by paragraph 16 of [Bauer’s] Amended Notice of Appeal filed on 11 November 2015.

5.    The primary judge erred by finding (J [315], [317]) that the “registration application construction issue” (defined at J [302(1)]) was a “new argument” which required the grant of leave of the Court in order to be relied upon by [Bauer] in closing submissions.

6.    The primary judge erred by failing to consider the question of the construction of the Services, and in doing so, failed to find that the name of a television program was not services of “production of television programs”.

7.    The primary judge failed to find and ought to have found that use as the name of a television program was not services of the “production of television programs”.

8.    The primary judge ought to have found that at the date upon which [Evergreen] applied to register the Trade Mark (9 October 2009) the intention of [Evergreen] was only to use the Trade Mark as the name of a television program, and that it had no intention to use in good faith the Trade Mark for the “production of television programs”, being the Services for which registration of the Trade Mark was sought.

The registration application construction issue

24    The primary judge at section 7.4.2 of her Honour’s reasons addresses the question: “Is leave required to raise the registration application construction issue?”

25    The registration application construction issue (a term used in grounds 4 and 5 of the draft grounds of appeal) is a term adopted by the primary judge to describe in a shorthand way Bauer’s contention that the relevant intention of Evergreen, for the purposes of s 59(a) of the Act, is to be understood by turning to and construing Evergreen’s application document where it can be seen that the proposed trade mark is to be used in relation to services specified in the application as “production of television programs”. Thus, Bauer contended that the relevant forensic inquiry before the primary judge was whether Evergreen held that intention rather than an intention, for example, to use the trade mark as the name of a product produced as a result of providing those services. Bauer in effect says that the relevant badge of identification of Evergreen’s production services was Evergreen or Evergreen Television and that at no time did Evergreen hold an intention to badge (and thus to use the trade mark to badge) its production services as Discover Downunder. So, for example, Game of Thrones is the name of a very popular television program produced by a production company called “HBO” for broadcast on particular pay/subscription broadcast networks.

26    The primary judge considered, for the reasons at section 7.4.2 of the primary judgment, that leave to agitate the registration application construction issue was necessary (due to the contended lateness in raising the contention in closing submissions) and held that as Bauer had not sought leave, the contention could not be made. The primary judge also considered that had leave been sought, it would have been refused for the reasons set out at [317] of the primary judge’s reasons (quoted at [129] of these reasons). I will return to section 7.4.2 of the primary judge’s reasons later in these reasons.

Some aspects of the Act

27    Section 27 of the Act is in the following terms:

27    (1)    A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)    the person claims to be the owner of the trade mark; and

(b)    one of the following applies:

(i)    the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)    the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)    the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

[emphasis added]

28    The application must include a representation of the trade mark (here, a word mark in any form of script) and specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark: s 27(3)(b). A trade mark may be registered in respect of goods or services (or both) and the regulations provide for classes into which goods and services are to be divided for the purposes of the Act: s 19; Regs 3.1 and 4.2(1)(c), Trade Marks Regulations 1995 (Cth) (the “Regulations”), Schedule 1. The application need not use the language of the particular class of goods or services. The applicant may specify the services within the class in a way that provides sufficient information to enable the Registrar “to decide the classification of the goods or services”: Reg 4.4(7).

29    Regulations made for the purposes of s 19 and s 27(3)(b) adopt an internationally recognised list of classes of goods and services by reference to which applicants specify the goods and/or services for which the trade mark is used or is intended to be used: the 1957 NICE Agreement as revised in 1967, 1977 and 1979. In this case, Evergreen applied for the trade mark in Class 41 which includes entertainment services. As already mentioned, Evergreen described the particular services as “production of television programs”.

30    Absent the specificity in the relationship between use or intended use of the trade mark and particular goods and/or services for the purposes of s 27(3)(b) and the Regulations, the application is bad in the sense that it fails to comply with the Act.

31    Section 27 is framed in the particular language earlier set out due to the integers of s 17 and s 20 of the Act.

32    Section 17 describes a trade mark as a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” Thus, the sign is the instrument of differentiation used or intended to be used to distinguish particular goods or services dealt with in the course of trade by one person from the goods or services of another. That is why the “statutory relationship” between use or intended use of the trade mark and specified goods and/or services is critical.

33    Importantly, an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s (specified) goods or services “in respect of which the trade mark is sought to be registered” from the goods or services of others: s 41(1) of the Act. Section 41(3) and s 41(4) set out the circumstances in which a trade mark is taken not to be capable of distinguishing the designated goods or services of the applicant from the goods or services of others. Section 43 of the Act provides that an application for registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark has, use of the trade mark “in relation to those goods or services” would be likely to deceive or cause confusion.

34    Of course, if the applicant has no intention to use the trade mark or to authorise others to use it or to assign it for use, “in relation to the goods or services specified in the application”, the registration of the trade mark (although accepted) may be opposed on that ground: s 59(a).

35    Section 20 of the Act provides that if a trade mark is registered, the registered owner has, subject to Part 3, the “exclusive rights” to use the trade mark and to authorise others to use the trade mark “in relation to the goods or services in respect of which it is registered”. Those exclusive rights find statutory expression in s 120 of the Act which provides that a person infringes a registered trade mark (that is, infringes upon the bundle of exclusive rights in s 20) if a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark “in relation to goods or services in respect of which the trade mark is registered”. Because a nexus between use and the specified goods or services is critical, registration of a trade mark does not confer a statutory monopoly at large divorced from use in relation to the goods or services specified in the application and in respect of which it is registered.

36    When a party appeals under s 56 of the Act to this Court from an adverse decision of the Registrar or his or her delegate under s 55 of the Act arising out of an opposition hearing, the proceeding before the primary judge (ss 191 and 193 of the Act) is, as a matter of principle, a hearing of the matters in controversy between the parties, in the proceeding, on the merits afresh as an exercise of judicial power: Jafferjee v Scarlett (1937) 57 CLR 115, Dixon J, at 126; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, French J at [32] and [33], Tamberlin J agreeing at [104] to [106]; New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1 at [44], the Court (Kiefel, Allsop and Crennan JJ, as their Honours then were) (an appeal which involved construing s 104(7) of the Patents Act 1990 (Cth) conferring jurisdiction on the Federal Court in appeals against a decision of the Commissioner of Patents in allowing or refusing to allow requested amendments).

37    Importantly, the question before the Court is not whether the delegate has fallen into error in some way or taken into account irrelevant considerations or failed to take into account relevant considerations or in some other way failed to apply statutory considerations defining the limits of the delegate’s decision-making authority, in the sense contemplated by Craig v South Australia (1995) 184 CLR 163 at 179, or Minister for Immigration and Multicultural Affairs v Yusuf (2001) 206 CLR 323 at 351, [82], or Minister for Aboriginal Affairs v Peko-Wallsend Limited (1986) 162 CLR 24. The statutory jurisdiction conferred on the primary judge is an exercise of judicial power in the Court’s original jurisdiction to hear and determine questions of fact and law in controversy according to all of the evidence put on in support of, or in answer to, the relevant case, hearing all of the questions and issues afresh on the merits.

38    Due regard, of course, is given to the decision of the delegate as an experienced person who has considered and determined such matters at an administrative level. That is not to say that contended error on the part of the delegate is entirely irrelevant.

39    Often a party commencing an “appeal”, so called, under s 56 of the Act will seek to illustrate the point to be decided in the judicial proceeding by seeking to demonstrate error on the part of the delegate on a particular topic. That occurs not because jurisprudentially the analysis calls for finding error in the delegate’s reasoning but rather because demonstrating error might aid or assist the court in answering a question in issue in the case which the court has to decide for itself afresh. In Registrar of Trade Marks v Woolworths Ltd 93 FCR 365 at [33], French J observes that if there were any doubt that the Court must determine the matters in issue afresh, s 197 of the Act authorising the Court to admit evidence orally or on affidavit or otherwise; permit examination and cross-examination of witnesses; and order issues of fact to be tried as the Court directs (among other powers), “make plain” that the question of opposition to registration in an appeal proceeding under s 56 of the Act , as an exercise of judicial power, is to be decided on the merits: see s 197(a) to (f) of the Act.

40    The potential danger, however, in framing a ground of appeal from the delegate’s decision as one of error by the delegate on a particular matter or topic is that a respondent may be apt to think that the question in controversy before the primary judge is the very same question as that in issue before the delegate, and the resolution of the issue by the particular judge, albeit as an exercise of judicial power on the merits afresh, simply involves correcting the contended error which then becomes determinative of the question in controversy before the Court. That, in effect, is Evergreen’s contention before the Full Court. Evergreen says, embracing the primary judge’s conclusion that Bauer framed its contention under s 59(a) until closing submissions as one of error by the delegate in resolving the question before him, that the vice in Bauer’s contention is that Bauer chose to put the same question before the primary judge as one capable of judicial resolution by correcting the error in the answer given by the delegate.

41    Bauer says, however, that the amended notice of appeal from the delegate’s decision, its opening submissions and the focus of its cross-examination on the s 59(a) statutory integers make it plain that its case on opposition before the primary judge embraced a contention of no demonstrated intention in Evergreen to use the mark in relation to the services specified in the application and merely an intention to use the mark as the name of a television product.

42    Section 57 of the Act provides that the registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under the Act, except the ground that the trade mark cannot be represented graphically. On the hearing of an appeal against a decision of the Registrar (or his or her delegate) under s 56 of the Act, the Court may affirm, reverse or vary the Registrar’s decision; give any judgment, or make any order that, in all the circumstances, it thinks fit; and make an order as to costs: s 197(d), (e), (f).

43    As to the onus of proof in opposition appeal proceedings, the onus lies “squarely upon the opponent”: Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 (“Food Channel Network”), Keane CJ, Stone and Jagot JJ at [24] to [36] and particularly at [32], [34] and [36].

44    The standard of proof is on the balance of probabilities: Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388, Besanko, Jagot and Edelman JJ at [133].

45    However, as to opposition under s 59 of the Act, Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 observed at [161] that the subjective nature of the intention contemplated by the section, the presumption of intention flowing from the application for registration and the onus on an opponent, usually make it difficult for an opposition to succeed on this ground. Having discussed particular authorities at [162], Jacobson J, at [163], observed that the “principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark”. That expression of principle was affirmed in Food Channel Network at [39], by the Full Court. The acceptance of that principle by the Full Court is not called into question before this Full Court. It should be noted that the authorities examined by Jacobson J at [162], (Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licencing Inc v Tan (2002) 60 IPR 137; and, Shanahan’s Australian Law of Trade Marks and Passing Off, 3rd Ed, [2.120], [11.10]), address circumstances where an applicant for registration has been put on notice that its intention to use the mark is in issue and the applicant has not responded to the opponent’s evidence. In such a case, a finding of lack of intention may be made. Nevertheless, Jacobson J identified, as the general principle, that which is described at [163], recognised without criticism by the Full Court, as mentioned.

46    As to the strength of the prima facie case to be made out by Bauer before an evidentiary onus shifts to Evergreen, Windeyer J observed in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Limited (1967) 116 CLR 254 at 259 (“Estex”) that “slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user”. Estex is a case concerned with an application for removal of a registered trade mark on the ground that the registered proprietor had not used the mark in Australia in good faith in relation to goods of the class for which it was registered (that is, proof of a negative).

47    In the opposition appeal proceeding before the primary judge, Bauer says that it put Evergreen on notice of a case of lack of intention to use the mark and the scope of the challenge is a function of the amended notice of appeal challenging intended use in relation to the specified services and not simply a “factual use issue” divorced from the statutory relationship of use in relation to the specified services. Bauer says it put on enough evidence to support its contention and Evergreen bears the evidentiary onus of demonstrating intended use in relation to the specified services, not just any use and, in particular, use as a product name for a program.

48    Evergreen says it has discharged its evidentiary onus concerning the case it came to meet of whether it held an intention on 9 October 2009 to use the mark in the way it contended it had used the mark prior to 9 October 2009 without the added gloss of controversy about whether that use engaged use in relation to the specified services. I am satisfied that for the purposes of the s 59(a) ground, Bauer bears the onus of demonstrating and proving on the balance of probabilities the contended lack of intention to use the mark Discover Downunder in relation to the specified services. As to the relevant principles generally, I otherwise agree with the observations of Burley J.

Findings of fact of the primary judge

49    I propose to identify the findings of fact of the primary judge as to the relevant events going to the s 59(a) ground and then identify the way the s 59(a) point was put to and resolved by the delegate which becomes important having regard to the way in which the ground of appeal to the primary judge was framed.

50    In 2004, the second appellant, Bauer Media Pty Ltd was known as ACP Publishing Pty Limited (“ACP”). Its name was later changed to ACP Magazines Ltd. A “business division” of ACP was called “Trader Classifieds” (“Trader”): primary judge (“PJ”) at [28]. Mr Keith Falconer was the Chief Executive Officer of Trader. He held that position from March 2004 and prior to that from 2002 he had been the Chief Operating Officer of Trader. Trader published a number of magazine and periodical titles in Australia including Caravan World and Motorhome & Caravan Trader by which Trader generated revenue from display (classified) print and digital advertisements and feature sponsorships placed in each magazine: PJ at [88].

51    In 2003, Trader commenced offering and providing television programs as an additional advertising and editorial platform to its print and digital portfolio of offerings. Two programs of this kind were The Boat Show and The Car Show. Mr Falconer described these shows as examples of “sponsor funded television programs”: PJ at [89].

52    Mr Warren Parrôt was employed by ACP between 2000 and 2009: PJ at [38]. The precise dates seem to be 17 July 2000 to 26 June 2009. In April 2004, he joined ACP’s Trader business division as National Corporate Advertising Manager: PJ at [38]. Warren Parrôt was responsible for managing a sales force selling advertising space across a portfolio of 16 magazine titles published by ACP.

53    Warren Parrôt’s father, Mr Colin Parrôt established Evergreen in 2001 together with cameraman Mr Simon Hearn. They were joint directors and shareholders until 22 November 2007 when Colin Parrôt became the sole director and shareholder. Evergreen was established to produce television programs for broadcast. Colin Parrôt is “a producer” and has been in the business of producing television programs since 2001: PJ at [34] and [35]. Prior to 2001, Colin Parrôt worked in the advertising industry producing advertisements. His advertising agency, Impact Advertising, was established in 1979. From 1998 he held the issued shares in Power Pact Advertising Pty Ltd and operated an advertising agency through that company: PJ at [36].

54    In July 2004 Colin Parrôt for Evergreen, put a draft proposal to Warren Parrôt (by that time working for Trader) for a television program to be broadcast in 2005 (four 30 minute programs) promoting caravans, camping and must see tourist destinations in Australia. Discussions about that matter continued between both sides engaging the relevant individuals between July 2004 and the first quarter of 2005. The primary judge observes that in exchanges leading up to 28 January 2005, Colin Parrôt had suggested as the name of the new program, Discover Downunder Now. Mr Tim Clucas, Network Head of Production and Development, at Network TEN Australia (“Network TEN”) discouraged, in an email of 28 January 2005, use of that title in favour of Discover Downunder. Colin Parrôt thereafter used the name Discover Downunder for the television program: PJ at [124]-[150].

55    In negotiations between Trader, Evergreen and Network TEN, the original proposal for four episodes became eight to 10 episodes. The arrangements with Network TEN were concluded on 25 February 2005. The first episode (of eight making up Series 1) aired on 14 April 2005 on Network TEN and its affiliate Southern Cross Television: PJ at [172]-[174]; [187]. The agreement between Evergreen (as Licensor) and Channel TEN Pty Ltd (as Licensee) of 25 February 2005, provides that Evergreen grants the Licensee a licence to broadcast eight 30 minute episodes of Discover Downunder (described as the Programs) for the term on all stations within Network TEN’s network.

56    In the result, Trader engaged Evergreen to produce the programs called Discover Downunder. Trader invoiced the sponsors and paid Evergreen an agreed fee for each episode to be produced and delivered to Network TEN in the first series (and a per episode fee for each episode in each series thereafter): PJ at [188]. Series 2 (2006) comprising 12 episodes was also broadcast on Network TEN and Southern Cross Television: PJ at [201]. Series 3 (2007), 4 (2008) and 5 (2009) were broadcast on the Nine Network and WIN TV (a Nine affiliate), and (only in the case of Series 5) also on Southern Cross Television: PJ at [201]–[203].

57    In early 2009, Colin Parrôt considered approaching Network Seven as a broadcaster for the Discover Downunder show nationally: PJ at [206]. In late January 2009, Colin Parrôt had a meeting with Mr Peter Charles, the National Sales Manager for Channel Seven at which Colin Parrôt suggested that there was an opportunity for Channel Seven with Evergreen to broadcast Discover Downunder in a particular timeslot: PJ at [207]. At the same time as these approaches to Channel Seven, Colin Parrôt was developing another program focussing on Australian bush festivals to be called What’s Up Down Under: PJ at [208]-[209]. In March 2009, informal discussions continued with Channel Seven for the broadcast of the Discover Downunder television program: PJ at [210]. Colin Parrôt remained hopeful of taking ACP (Trader) with him across to the Seven Network: PJ at [210]. On 25 March 2009, Warren Parrôt was advised by the Nine Network that WIN in Perth and Adelaide would be dropping Discover Downunder from their schedules from 6 June 2009. Southern Cross Television broadcast the program until December 2009.

58    In the period March to May 2009, Trader was in discussions with Channel Nine to dispense with Evergreen’s services. Channel Nine considered that the program was not of a sufficiently high enough quality and needed a different producer: PJ at [219]. In May 2009 Trader decided that Evergreen’s production services in relation to the program were no longer required: PJ at [220]. Warren Parrôt’s position and role was made redundant on 22 June 2009 and his employment ceased on 26 June 2009: PJ at [222].

59    During September 2009, Warren Parrôt (now representing Evergreen) was negotiating with Channel Seven to broadcast a program under the name Discover Downunder. On 23 September 2009, Colin Parrôt incorporated Parable Productions Pty Ltd: PJ at [37]. On 24 September 2009, Network Seven made an offer to Parable to broadcast a minimum of 30 episodes of a program called What’s Up Downunder: PJ at [224].

60    On 5 October 2009, Trader announced the return of Discover Downunder in 2010 with Channel Nine having committed to broadcast 18 episodes. The series would be filmed by WTFN, described by Trader as “an independent TV production company”: PJ at [225]. On 9 October 2009, Evergreen lodged its application to register the trade mark Discover Downunder.

The proceeding before the delegate

61    In the proceeding before the delegate (Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2014) 108 IPR 529), Bauer opposed registration of the trade mark on these grounds: s 41(trade mark not capable of distinguishing the applicant’s services from the services of other persons); s 42(b) (use would be contrary to law because use would contravene s 18 and s 21(1)(g) and (h) of the Australian Consumer Law); s 58 (applicant not the owner); s 59(a); s 60 (acquired reputation in another trade mark of earlier priority rendering use of Discover Downunder likely to deceive or cause confusion); and s 62A (application made in bad faith.

62    It is not necessary to examine the delegate’s findings on all these grounds of opposition. It is sufficient to note that on the s 58 ground Bauer asserted that it was “the owner of the trade mark in respect of the production of television programs” for the reasons set out in the delegate’s summary at [23] including “because the opponents were the first users of the Trade Mark in connection with the production of television programs”. At [67] the delegate notes in addressing the s 58 ground that “[b]oth sides have an interest in the exact same services” and that “[b]oth sides claim use of the Trade Mark before 9 October 2009 …”. The delegate also notes at [121] that Bauer claimed that any use of the trade mark prior to 9 October 2009 “inured to the benefit of the opponents”. The delegate found that “[t]here is no conclusive evidence” that use prior to 9 October 2009 inured to the benefit of the opponents: delegate at [121] and [135]. The delegate found that Bauer had failed to discharge the onus on the s 58 opposition having analysed the factual background in part described in these reasons.

63    As to s 59, Bauer contended that at 9 October 2009 it was “inherently improbable” that Evergreen had any intention to use the Discover Downunder trade mark because Evergreen had developed another program dedicated to similar subject matter in direct competition with the Discover Downunder series, badged or called What’s Up Downunder. Five factual matters were put forward by Bauer to suggest that Evergreen’s “significant investment” in and commitment to the new program (and the new program name) rendered it unlikely that Evergreen would abandon the new name and start using Discover Downunder in its place.

64    At [120] to [124] the delegate said this:

[120]    As noted earlier, the grounds of opposition must be established at the Priority Date. Mr Merrick [for Bauer] rightly adds the corollary that in the case of section 59, events which take place afterwards might give an understanding of an applicant’s intentions at the time of filing (noted already from Food Channel considered above) but so, too, actions before the Priority Date have some bearing on the matter.

[121]    In this case the applicants have used the Trade Mark. There is no conclusive evidence that use inured to the benefit of the Opponents. Use of the Trade Mark before the time of filing must have a major influence on the question of whether the Applicant’s intended to use the Trade Mark at the date of filing the application.

[122]    Additionally, there is a world of difference between being prevented through circumstances from being able to use a trade mark and not having any intention to use it.

[123]    Further, I think there is sufficient indication that the WHAT’S UP DOWNUNDER trade mark is intended for and applied to a different type of “product”, albeit one with common subject matter.

[124]    I find that, at the date of filing, the Applicant intended to use the Trade Mark and so I find that the Opponents have not established the section 59 ground of opposition.

65    Accordingly, having regard to the matters at [61] to [64] of these reasons, it can be seen and Bauer concedes, first, Bauer’s opposition before the delegate was concerned with whether, on the facts, the opponents were first users of the trade mark in connection with the production of television programs rather than Evergreen; second, whether any use by Evergreen inured to the benefit of Bauer; and third, no part of Bauer’s opposition before the delegate involved a contention that whatever the evidence on use or intended use might be, it was not use “in relation to the services specified in the application”. In fact, at no point in the reasoning, does the delegate identify the specified services for the purpose of defining the content of the features of the Class 41 services “production of television programs” to test whether intended use was use in relation to that which is or might be comprehended by that phrase. That occurred because the question was not put in issue before the delegate by the opponent.

The s 56 notice of appeal before the primary judge

66    In its initial or unamended notice of appeal (the “NOA”) before the primary judge, Bauer relied on the same six grounds of opposition agitated before the delegate. As to the s 59 ground, Bauer contended that the delegate erred in making the finding at [124] that Bauer had failed to establish a ground of opposition under s 59: para 15, NOA. The particulars supporting that contention were paras 69 and 70 of Bauer’s submissions of 12 May 2014 before the delegate and any further particulars to be provided once the evidence had been put on: para 15, NOA.

67    At para 16, Bauer asserted that the delegate erred in finding at [121] that Evergreen “had used the Opposed Mark”.

68    At para 17, Bauer contended that the delegate erred in failing to find that any use by Evergreen “inured to the benefit” of Bauer. Bauer also contended that the delegate erred in finding at [123] that the What’s up Downunder trade mark was intended for and applied to a “different type of product to the Discover Downunder television series”.

69    At para 19, Bauer contended that the delegate should have found that the ground under s 59 was made out.

70    The non-use proceedings were filed on 11 June 2015. Those proceedings were heard together with the opposition appeal proceeding. In all, a substantial body of evidence was put on. Mr Falconer was required for cross-examination by Evergreen. Colin Parrôt, Warren Parrôt and another deponent, Mr Peter Wright, were required for cross-examination by Bauer.

71    As to Bauer’s evidence, Bauer relied upon the affidavits of Keith Falconer sworn 17 June 2015 and 7 September 2015 in the s 56 opposition appeal proceeding and the affidavits of Keith Falconer of 6 October 2015 and 10 November 2015 in the non-use proceedings. Bauer also relied upon two earlier declarations of Keith Falconer sworn 21 December 2011 and 7 December 2012. It also relied on an affidavit of Macek Rubetzki sworn 2 October 2015 and an earlier declaration sworn 15 November 2011. Evergreen relied on two affidavits of Colin Parrôt sworn 10 August 2015 and 2 October 2015 and a declaration of his sworn on 9 December 2011. It also relied upon an undated declaration of Colin Parrôt (but probably sworn 13 or 14 April 2012) and a declaration of his sworn 7 August 2012. It also relied upon an affidavit of Warren Parrôt sworn 10 August 2015, a declaration of his sworn 10 April 2012 and an affidavit of Peter Wright sworn 17 July 2015.

72    Thus, it can be seen that Bauer relied on affidavits in support of the opposition appeal proceeding and non-use proceedings sworn by witnesses across a period from 17 June 2015 to 10 November 2015 and earlier declarations made in 2011 and 2012, all in aid of the hearing on the merits afresh before the primary judge. Evergreen relied on affidavits sworn across the period 17 July 2015 to 2 October 2015 and declarations sworn in 2011 and 2012.

73    On 11 November 2015, Bauer amended its s 56 Notice of Appeal, without objection from Evergreen, such that para 16 of the NOA would now be as follows:

16.    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.

74    At this point, Evergreen (and its advisers) as a party responding to a hearing of issues afresh in the face of affidavit evidence of Bauer in addition to the earlier declarations, had to ask itself (and themselves) the question: what is the case now being advanced by Bauer against Evergreen in opposition to registration of the trade mark in light of the amendment? The amendment to para 16 tells Evergreen that Bauer is contending for these things. First, Bauer maintained the earlier contention that the delegate erred in finding at [121] of the decision that Evergreen had used the trade mark. Second, the trade mark ought not be registered because Evergreen had not evinced an intention to use the trade mark within the meaning of s 59 of the Act (that is to say, Evergreen had not demonstrated an intention to use or authorise the use of the trade mark in Australia) in relation to the production of television programs. Third, Evergreen had not used the trade mark in Australia as its trade mark in relation to the production of television programs.

75    It is true that the words of amendment introduced into para 16 of the NOA commenced with the words “and should have found that” which suggest that the delegate should have found that the second and third contentions made by Bauer by the amendment should have been the basis of the delegate’s decision. However, Evergreen well knew and understood that those two contentions had not been made before the delegate and Evergreen could not reasonably have construed the amendment as adding nothing new at all to the earlier contentions of Bauer before the delegate. To so construe the amendment would have been to render the amending words of addition as adding nothing. By the amendment, Bauer was telling Evergreen and its advisers that the question of Evergreen’s intention to use the trade mark at 9 October 2009 was now subject to an analysis on the facts against the statutory rubric of whether Evergreen held an intention to use Discover Downunder as a trade mark, that is, a badge of identification, of its specified services, production of television programs, and as to use prior to 9 October 2009, the analysis now also alive before the primary judge was whether that contended use was use of Discover Downunder as a trade mark for the production of television programs. It was not open to Evergreen, at least so far as it might wish to assert unfairness based on a contention of no notice of the case to be met, to simply ignore the imperative of the amendment because that was not the case made before the delegate. It should also be noted that the text of amended para 16 did not simply assert no intention in Evergreen to use Discover Downunder by reference to the statutory language of “in relation to the services specified in the application”. It drew Evergreen’s attention to the proposition that Evergreen had no intention to use Discover Downunder in relation to the production of television programs. The contention of no anterior actual use was also framed expressly by reference to use, as a trade mark, in relation to the production of television programs.

76    I nevertheless accept that Bauer could have added, in amended para 16, additional words along the lines in bold as set out below:

16.    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 to the extent Evergreen had any intention to use Discover Downunder (which is denied) it was only as the name of a television program] and had not used the Opposed Mark in Australia as its trade mark in relation to the production of television programs [and to the extent that Evergreen had use Discover Downunder as a trade mark prior to 9 October 2009 it was use only as the name of a television program].

77    However, I do not accept that it was unfair and/or prejudicial to Evergreen not to go further than the amendment to add those additional words to para 16. That follows because the central contention was sufficiently raised by the amendment as made having regard to the considerations at [74] and [75] of these reasons together with the matters at [78] and [79] of these reasons.

78    Also, Evergreen must be taken to understand 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 NOA, an amendment made without objection from Evergreen. It should also be noted that no request was made by Evergreen for particulars of the amended ground at para 16.

79    The role of the amendment in the context of the evidence assembled prior to 11 November 2015 and the very nature of the proceeding itself, was, no doubt, designed to put Evergreen on notice of the case as described at [74] and [75] of these reasons that it would have to meet at the hearing afresh.

80    The hearing commenced on 11 April 2016. Counsel for Bauer, Ms Baird SC (leading Mr Fox), opened the case before the primary judge with a very extensive oral opening on the legal and factual issues (T, p 14 to T, p 64) cross-referenced to Bauer’s written outline. These things should be noted.

81    Having observed from the very outset of the opening (at T, p 14, lns 19-21) that a trade mark is “applied for and indeed registration rights are ultimately granted or not for specific services”, Ms Baird observed that “… [t]his is a specific application and the services are specifically identified as the production of television programs and those services are in class 41” [emphasis added]: T, p 14, lns 21-24. In framing that point further, Ms Baird emphasised the importance of the relationship between the trade mark and intended use in relation to those specified services in this way (T, p 14, lns 28-33):

But your Honour need really note for present that it is important that what we’re concerned with in this proceeding is not the use of the name, per se, but the registrability in the hands of this applicant, Evergreen Television Pty Ltd, referred in the proceedings generally as Evergreen, to be registered as the registered owner of the name, Discover Downunder in relation to the specified services, and those specific services in our submissions, your Honour, we’ve generally referred to S [that is, capital “S”] services.

[emphasis added]

82    Ms Baird then observed that each ground of opposition was addressed in the written opening submissions/outline: T, p 14, ln 43. Bauer’s written opening outline by Ms Baird and Mr Fox of counsel is dated 30 March 2016 approximately 10 days or so before the commencement of the hearing. Ms Baird then again returned to the point made earlier (at T, p 14, lns 28-33), and said this (at T, p 16, lns 24-29):

Now, the evidence of both parties has different focus and a different characterisation, we accept, of certain of the events, but it must be remembered that the question for your Honour is what is the position as at the application date in relation to the registrability proceedings and it is in relation to the use of the mark, or the rights conferred on the applicant to use the mark in relation to the designated services, S services.

[emphasis added]

83    Ms Baird then turned to the questions the primary judge would be asked to answer and observed that “as a convenient guide” they were set out at p 5 of the written outline in relation to the s 56 registrability proceeding. The questions and postulated answers from Bauer’s perspective are set out at para 18 in relation to the registrability proceeding and at para 22 in relation to the non-use proceedings. Before turning to those paragraphs, it should be noted that the introduction in Bauer’s opening outline is in the following terms (reflecting the original emphasis):

A.    Introduction

1.    This is the hearing of two proceedings commenced by the applicants (together Bauer) against Evergreen Television Pty Ltd (Evergreen) concerning the ownership, registrability and continuance on the Register of Trade Marks of trade mark application no. 1324177 (Application) for the phrase ‘Discover Downunder’ (in unstylised title case form) (Mark) in relation to the services of ‘production of television programs’ (the Services):

(a)    …

(b)    …

84    It is not necessary to recite the formal matters set out at para A1(a) and (b) of Bauer’s opening written outline. Issue 2, at para 18 in relation to the registrability proceeding, is put this way:

18.    The following issues arise for this Court’s determination:

In Australia, as at the Filing Date:

(1)    …

(2)    did Evergreen in good faith intend to use the Mark in relation to the Services within the meaning of s 59?

Bauer submits the Court should answer this issue NO.

[emphasis added in bold]

85    At para 24 of the written outline, Bauer said this:

24.    As the chronology shows, whatever the position in the period prior to June 2009 (as to which the parties are in issue), Bauer contends that Evergreen has not used the Mark for the Services or at all since that time.

[emphasis added]

86    At para 35 of the written outline, Bauer said this:

35.    On 9 October 2009, Evergreen lodged the Application. Evergreen did not then, and has not at any stage since then, ever produced a television program under the name “Discover Downunder” for any television network in Australia. It has not, relevantly, used the Mark for the Services.

[emphasis added in bold]

87    As to s 59 specifically, Bauer said this:

Section 59

41.    The present case concerns s 59(a) of the Act. The principal inquiry is whether, at the time the Application was made, Evergreen intended to use the Mark, or intended to authorise another to use the Mark, in respect of the Services for which registration was sought in the Application.

[emphasis added]

88    In expanding upon the questions framed by para 18 in the registrability proceeding, Ms Baird addressed aspects of the statutory scheme starting with s 17 of the Act and accepted that Discover Downunder “could be a trademark” and put the point of particular focus in this way (at T, p 20, lns 16-17): “It’s then the requirement [that] it be used or intended to be used, and it is a distinct [element] – to distinguish goods or services” [emphasis added].

89    As to s 27, Bauer drew the primary judge’s attention to two aspects. First, the section contemplates a claim by an applicant to be the owner (s 27(1)(a)) and second, (at T, p 20, lns 20-25):

And here we are looking at subparagraph (i) [s 27(1)(b)(i)]:

A person is using, or intends to use the trademark in relation to the goods and/or services.

And the reference to the goods and services there is those of the specification.

[emphasis added in bold]

90    Specifically as to s 59, in the context of the remarks quoted at [87] of these reasons, Ms Baird then said this (at T, p 20, lns 30-31):

And then 59, section 59, is concerned with subparagraph (b)(i) again [s 27(1)(b)(i); that is, use or intended use in relation to the goods and/or services].

[emphasis added]

91    At T, p 22, lns 13-15, Ms Baird returned to s 17 of the Act and again emphasised the statutory relationship between the trade mark applied for and “the particular services for which the application is made”. Ms Baird observed that no issue of an intention “to assign” arose in the case (a question that could arise in a relevant case under s 27(1)(b)(iii)), but rather the question was whether the applicant “intend[s] to use or not use” and, importantly, as to whether the trade mark ought to proceed to registration or not, Ms Baird said this (at T, p 22, lns 22-24):

Again [your] Honour, registration of a trademark, so we’re still looking at this particular question of the trademark as per the application”.

[emphasis added].

92    In relation to the non-use proceedings, Bauer explained its contention that the non-use proceedings could be brought whether or not the trade mark had entered the Register or remained an accepted application for which registration was sought: that contention was based upon s 92, s 95(2) and (3) and s 72 of the Act. Bauer explained that because the s 56 opposition appeal proceeding was before the Court, the non-use proceedings were required to be before the Court: s 92(3). Section 92(3) recognises that if “an action concerning the trade mark” is before a “prescribed Court”, there may be questions in issue in the existing proceeding that also concern questions relevant to one or more of the statutory integers of s 92(4)(a) or (b) and thus the s 92 proceedings must be brought before that Court.

93    It will be recalled that the non-use proceeding under s 92(4)(a) was said by Bauer to engage a period of no intention in Evergreen to use the trade mark in good faith in the period 9 October 2009 to (a period ending one month before the filing date on 11 June 2015), 11 May 2015 in relation to the services to which the non-use application relates. The s 92(4)(b) period of non-use or no intention to use in Evergreen was said to engage a three year period of 11 May 2012 to 10 May 2015 in relation to the services to which the application relates.

94    In that context, the overlap between the registrability suit and the non-use proceedings was put this way by Ms Baird (at T, p 27, lns 27-38):

The first ground, your Honour, paragraph (a), is concerned – and it’s quite specific, that on the day on which the application for registration is filed – so, your Honour, this is where the date of 9 October 2009 has a relevance, both for registrability proceedings and for the non-use proceedings, the applicant for registration had no intention to – in good faith to use the mark in Australia in relation to the goods or services to which the non-use application relates.

Just pausing there, your Honour, in the present case that’s all the services of the application. And that the registered owner, that is, the person who would be the owner of the mark that was registered, has not used the mark in Australia in relation to the goods or services at any time before the period of one month, ending on the day on which it is filed.

[emphasis added]

95    As to the case made in the non-use proceeding under s 92(4)(b), Ms Baird put the matters in issue this way (at T, p 28, lns 37-43):

When one comes to the second non-use period, in subparagraph (b), the concern here is the focus on the three years before the non-use application, and it is a query in that time whether there has been use of the trademark in Australia or use in good faith. So they’re two aspects there, your Honour. First, there’s the question of whether there has been any use in relation to the services to which the application relates; and, secondly, even if there was any use, was that use in good faith. And that takes into account colourable uses and the like, or scintilla uses.

[emphasis added]

96    In the written opening outline, counsel for Bauer, at para 22, put the questions in issue in this way:

22.    Accordingly, the issues which arise for determination in the Non-Use proceeding are:

In relation to the First Non-Use Period:

(1)    did Evergreen have an intention to use (or authorise another to use) the Mark in relation to the Services at the time when it made the Application?

Bauer submits the Court should answer this issue NO.

(2)    if ‘yes’ to (1), has Evergreen used the Mark as a trade mark in Australia in relation to the Services in the First Non-Use Period (from the Filing Date to 11 May 2015?

Bauer submits the Court should answer this issue NO.

(3)    if the answer to (1) and (2) is ‘no’, ought the Court, in the exercise of its discretion under s 101(3), nevertheless permit the Mark to remain on the Register?

Bauer submits the Court should answer this issue NO.

In relation to the Second Non-Use Period:

(4)    as a separate matter (irrespective of (1) – (3)), has Evergreen used the Mark as a trade mark in Australia in respect of the Services in the Second Non-Use Period (11 May 2012 to 10 May 2015)?

Bauer submits the Court should answer this issue NO.

(5)    if the answer to (4) is ‘no’, ought the Court, in the exercise of its discretion under s 101(3), nevertheless permit the Mark to remain on the Register?

Bauer submits the Court should answer this issue NO.

[emphasis added in bold]

97    These questions and especially those at paras 22(1) and 22(4) arose out of a controversy between the parties expressly raised on the pleadings in the non-use proceedings. It is not necessary to recite the paragraphs of Bauer’s statement of claim or the paragraphs of Evergreen’s amended defence in these reasons.

98    Notwithstanding the amended notice of appeal, Bauer’s written opening outline and the lengthy oral opening reflecting extensive interaction with the primary judge on the issues as articulated and cross-referenced to Bauer’s written outline, counsel for Evergreen, Mr Stuckey QC, no doubt feeling, by then (starting his remarks at T, p 64 late in the day), some pressure to be brief, saw the case advanced against Evergreen in his way (at T, p 65, lns 24-34):

The factual case which underpins, in the respondent’s submission, the trademark aspects of the dispute really raises three separate but closely related factors. One [factor] is the – who it was that came up with – is the author, in the relevant sense, or the originator of the name, Discover Downunder, the mark. The other [factor] is related to that [factor].

[And that second factor is] What is, in truth, objectively speaking, the nature of the contract between the two parties [ACP and Evergreen], because there undoubtedly was one [the second factor]. And finally – and it to a large extent falls off the answer to those first two questions – who from the early part of 2005 was using the trademark in trade or commerce, and pursuant to what arrangements or agreements, express or implied, were the different parties using those marks [the third factor].

[emphasis added]

99    The primary judge then immediately asked Mr Stuckey the following question and received the following response in relation not the scope of the matters in issue before the primary judge (at T, p 65, lns 36-40):

Her Honour:    Can I just ask, Mr Stuckey, do you agree with the issues which are identified in Bauer’s written submissions at paragraphs 18 and 22 as being the issues that I have to consider? I understand, of course, you take issue with what Bauer submits should be the answer to those issues, but just so that I have certainty at this stage, at least, as to what the parties consider are the questions I need to address.

Mr Stuckey:    Yes, I do agree with those.

Her Honour:    Thank you very much.

100    However, it seems clear enough from Mr Stuckey’s oral remarks from T, p 65 to T, p 72 (cross-referenced to his written opening submissions) that Evergreen perceived the central question to be (at least as to the s 58 ownership and s 59(a) issues) whether Evergreen was the first user/and author and had Evergreen used the mark “in association” with “a program” by the name of Discover Downunder prior to 9 October 2009 and thus whether Evergreen had an intention at 9 October 2009 to continue to do so. Mr Stuckey put it this way in the context of the broadcast of the Discover Downunder television program and references to Evergreen/Parrôt (at T, p 69, lns 21-24):

So in terms of a public assertion of association with the product, it’s certainly the respondent’s case that that was quite clearly an assertion by Evergreen that it was the person in trade or commerce that was associated with that program and the trademark. There’s nothing very much on that to associate it in any way with ACP.

[emphasis added]

101    In Mr Stuckey’s outline, no question is perceived as arising of whether Evergreen’s intention to use or its anterior use did not involve a relationship with the production of television programs and no attempt is made in Evergreen’s written opening to answer Bauer’s contention to that effect: see paras 41, 42 and 43 of Evergreen’s written opening on the s 59(a) point.

102    It should also be noted that in the course of Ms Baird’s introductory remarks (at T, p 12, lns 43-44; T, p 13, ln 1) before commencing the opening address on the issues (at T, p 14), Ms Baird observed that in the written outline “we didn’t in our opening, go into great detail on the facts”. The primary judge at T, p 13, ln 3 responded: “And I understood why that would be so”. Ms Baird responded at T, p 13, lns 5-7 in this way:

Yes. And particularly, your Honour, as indeed in the opening, [as to] certain matters that will arise or may arise in cross-examination I will merely advert to, rather than expose [those matters] in any detail in opening.

103    As already mentioned, the witnesses of Evergreen to be cross-examined by Bauer’s counsel were Colin Parrôt, Warren Parrôt and Peter Wright. A criticism is made of Bauer that it failed to identify the matters it intended to explore with Evergreen’s principal witnesses in cross-examination. There is no obligation on counsel to set out in either a written or oral opening a line of questioning counsel proposes to pursue in exercising a right of cross-examination of the other side’s principal witnesses having regard to the matters reflected in their affidavits (or other matters in issue). So long as the pleadings (in this case, the amended notice of appeal) properly frame a controversy to which a question is relevant, the question can be asked without a need to first identify in an opening address or in a written outline, the line of inquiry a party proposes to pursue with a witness called for cross-examination.

104    Of course, if the pleading does not frame a matter in controversy to which the particular question in cross-examination goes, objection would no doubt rightly be taken to the question put to the witness.

105    Bauer says that a question in issue, deriving from the s 56 amended notice of appeal, taken in conjunction with the very nature of the proceeding itself and the opening oral address and written outline, was whether Evergreen, to the extent it had used the trade mark and contended that it held on 9 October 2009 an intention to use it (or to continue to use it), was, in truth, intending to use (and had used) the trade mark as the name or title of a program (emanating no doubt as a result of a production house, Evergreen, deploying production services to produce it) and that Evergreen had not used, and had no intention at 9 October 2009 to use, the trade mark Discover Downunder in relation to the specified services of production of television programs. It should also be remembered that one of the matters to be examined in cross-examination of Colin Parrôt against the background of the dealings between ACP and Colin Parrôt between 2005 and 2009, concerned his explanation of the reason or reasons for Evergreen filing the trade mark application on 9 October 2009, four days after ACP’s announcement on 5 October 2009 that it was making arrangements for the broadcast in 2010 of episodes of a program called Discover Downunder (an explanation that, to use Colin Parrôt’s evidence in cross-examination, involved the notion that he “would use this name to rub ACP’s nose in the mud by bringing back Discover Downunder as a destination program”, that is the name of a television program).

106    Whether Evergreen had used the trade mark prior to 9 October 2009, or held an intention as at 9 October 2009 to use the trade mark Discover Downunder in relation to the specified services or as the name of a program made by it, was, in my view, a question in issue in the proceeding from 11 November 2015. That question formed part of the controversy between Evergreen and ACP before the primary judge even though it had not been a question alive between the parties before the delegate. Because it was a question in issue before the primary judge, it led to the following questions and answers in an exchange between Ms Baird and Colin Parrôt to which no objection was taken by Evergreen’s counsel (T, p 513, lns 44-47; T, p 514 and 515). This exchange began in the context of questions put by Ms Baird to Colin Parrôt (“CP”) that Evergreen relied upon its use of the trade mark as the title for a program as an answer to Bauer’s registrability case and as an answer to the non-use proceedings case.

Ms Baird:    Well, Mr Parrôt, your counsel and your lawyers have submitted to the Court that even if you get registered – if Evergreen gets registered on the trademark application, and it hasn’t used the trademark – that’s the case, isn’t it? Since 2009 Evergreen hasn’t used the trademark as ...?

CP:    We’ve not been allowed to.

Ms Baird:    No, but you haven’t used it, have you?

CP:    We’ve not been allowed to.

Ms Baird:    You haven’t used it. Please answer the question?

CP:    No, we haven’t used it, no, you’re quite right.

Ms Baird:    Thank you and you haven’t used it as the name of a television program?

CP:    No, we haven’t.

Ms Baird:    And you haven’t used it at all?

CP:    We have the Facebook registered.

Ms Baird:    And that’s what you rely on?

CP:    And we’ve not used that either but we’ve got it there registered.

Ms Baird:    And so your counsel are putting a case, as I understand it, as the applicants understand it, that notwithstanding that you haven’t used the name Discover Downunder for anything, it should - the trademark application should remain registered and they point to [use] up to and including the fifth series of the TV show and [assert] that Evergreen says it used the name Discover Downunder as the name of a television show.

CP:    Correct.

Ms Baird:    You understand that?

CP:    It [the trade mark] was filed under the category of cut television, yes.

Ms Baird:    No, no, no, I am asking about what has happened please focus. If you find a question ambiguous, rather than trying to answer it ask for it again, please Mr Parrôt. …

CP:    Yes, if you could please explain it to me again.

Ms Baird:    [I’m] putting the proposition to you that you, or your lawyers, will rely on the use that you say Evergreen made of the name Discover Downunder as the name of a television show called Discover Downunder that was broadcast first on Channel Ten and then on Channel Nine, up to and including the fifth series; is that correct?

CP:    That’s correct.

Ms Baird:    And just so I can be clear [about] it, the use of the name as the name of a television program is what Evergreen intended to do with the trademark – when it filed the trademark application?

CP:    But it embodied DVDs and things like that.

Ms Baird:    DVDs and things like that?

CP:    Well, things that were set at a digital – were sent on to websites and Facebook pages and things like that; video clips.

Ms Baird:    And you’re saying that as at 9 October [2009]?

CP:    I think it’s embraced in that category.

Ms Baird:    If you could just listen to the question, please, Mr Parrôt. As at 9 October 2009, you’re saying that Evergreen had intended to use the name Discover Downunder as the name of DVDs?

CP:    It was embraced in – yes.

Ms Baird:    Is it yes or no?

CP:    Yes.

Ms Baird:    And that was DVDs of a television program called Discover Downunder?

CP:    That’s correct.

Ms Baird:    Is that correct?

CP:    Correct.

Ms Baird:    You’re now saying that at 2009, six years ago, that back in 2009 …?

CP:    Yes.

Ms Baird:    You intended to use the name Discover Downunder as the name [of] first a television program, second as the name of DVDs, and thirdly, as the name of a television …?

CP:    No, digital loops, videos that were supplied to clients to turn around and use on their websites. They all had watermarks on them with the Discover Downunder logo.

Ms Baird:    … it’s basically the medium in which it was sent, isn’t it? So, it’s the TV program whether the TV program, is in the medium of a DVD or the TV program is in the medium of a video loop or the TV program is …?

CP:    Digitally put on a website.

Ms Baird:    Or a … USB?

CP:    Yes.

Ms Baird:    And in each case it’s going to be the TV program?

CP:    Yes, or the Discover Downunder logo.

Ms Baird:    Or the logo. And that’s the extent of it?

CP:    Yes.

Ms Baird:    And to be clear, Evergreen has not done any of those things – has not provided any of those products since it filed for the trademark application?

CP:    No it hasn’t.

[emphasis added]

107    Mr Stuckey re-examined Colin Parrôt and these exchanges occurred at T, p 548, lns 1-26.

Mr Stuckey:    Prior to the name Discover Downunder being settled upon, when you put the proposal to ACP in August of 2004, what was ACP to get out of the proposal, if they were to accept it? What was the benefit to them?

CP:    Exactly what they did get, which was the ability to sell their various multimedia projects in alliance with whatever our TV show was called.

Mr Stuckey:    And how would they go about making the connection between their advertising and the show?

CP:    Well, they sold it as packages. It was for them to turn around and sell which included, “Here’s a television segment for two minutes. Here’s a full page or a series of full pages in [the particular] magazine”. … We give you a tape that goes on your website. There’s – we give you a DVD that goes into – on sale or on show.

Mr Stuckey:    How are they going to identify what the segment was in?

CP:    Well, Discover Downunder was – usually had the watermark …

Mr Stuckey:    And how would you identify the television – how was a trader going to identify the television program it was selling packages in?

CP:    By the name Discover Downunder.

Mr Stuckey:    Thank you?

CP:    It’s the only way they could describe it.

[emphasis added]

108    Colin Parrôt was also cross-examined in relation to the proximity between his having learned of an announcement by ACP (Trader) on 5 October 2009 that ACP was making arrangements for the broadcast in 2010 of the program Discover Downunder, and Evergreen’s filing of a trade mark application for Discover Downunder for “production of television programs” on 9 October 2009. This exchange, on that topic, took place between Ms Baird and Colin Parrôt (at T, p 533, lns 42-47; T, p 534, lns 1-14):

Ms Baird:    And you have put in your evidence that you were shocked [about the announcement] and …?

CP:    Wouldn’t you be?

Ms Baird:    And you – that’s the reason you filed for the trademark, wasn’t it?

CP:    No. No, it wasn’t the reason. I still had belief that I would turn around, and now because I had time up my sleeve and I had only concepts, I would use this name to rub ACP’s nose in the mud by bringing back Discover Down Under as a destination program that I had originally intended for What’s Up Downunder. And that’s not too long a bow to draw. I think it’s a lot shorter than yours.

Ms Baird:    So that is the name of a television program, but a different television program.

CP:    A program that would be around activities within Australia that Australian tourism would boast about around the world.

Ms Baird:    And – sorry, that’s a television program?

CP:    Yes.

Ms Baird:    The name of another television program?

CP:    Yes.

Ms Baird:    And that’s your – then you structured your letter to your lawyers to send the letter [a demand letter to Bauer based on Evergreen’s contended rights in the trade mark Discover Downunder]?

CP:    Yes.

[emphasis added]

109    The hearing of both proceedings took place for five days initially between 11 April 2016 and 15 April 2016. Day 6 was on 3 May 2016 and final closing submissions occurred on day 7 on 25 July 2016. Leading up to closing oral submissions, counsel for Bauer relied upon a written outline of closing submissions dated 17 May 2016. In its closing written submissions, Bauer restated all of the matters previously quoted from its opening submissions. At para 20, Bauer also said this:

In determining the above issues [that is, the issues arising in the s 56 appeal proceeding], the Court is concerned with use of the Mark, and/or intention to use the Mark, in relation to the specified Services. The Court is not concerned with adoption of the Mark simpliciter, nor with use of and/or intention to use the Mark other than in relation to the specified services.

[emphasis added]

110    At paras 52 and 53, Bauer said this:

52.    Mr Colin Parrôt was adamant. As asserted in cross-examination, his expressed intention, as the controlling mind of Evergreen, was that Evergreen intended, at most (whether or not acting in good faith), to use the Mark as the name of a television program, whatever the media it could be delivered in: DVD, on a USB, in video or digitally via a website or, presumably, on film. As he confirmed at T515.35: that is the extent of it.

53.    At most, at any time (and without conceding that such an assertion establishes an intention to use in good faith), Evergreen has only asserted an intention to name a product – a television program – Discover Downunder. Such an intention is not any intention to provide the Services of the Application: ‘production of television programs’. It must follow that the Application cannot be accepted: Evergreen did not have, and does not have, the requisite threshold intention for ownership under s 58, nor an intention to use in good faith within the meaning of s 59 (as to the legal principles see below …). It follows, there not having been any use of the Mark in relation to the Services in either Non-Use Period, that the Mark should not remain on the Register.

[emphasis added]

111    In Evergreen’s closing written submissions before the primary judge, Evergreen at para 2 identified the question in relation to s 59 in this way:

In Australia, as at the Filing Date:

(1)    …

(2)    did Evergreen in good faith intend to use the Mark in relation to the Services within the meaning of s 59?

112    In relation to the question of whether Evergreen had used, and had on 9 October 2009 an intention to continue to use, the trade mark as the name of a program, these observations from Evergreen’s written closing submissions should be noted:

67.    The evidence on behalf of Evergreen is that it intended [on 9 October 2009] to continue to use the name for its outback lifestyle programs. That is intrinsically likely. The reason it used the name “What’s Up Downunder”, earlier reserved for a different program, was the impossibility in persuading a rival station to broadcast a program called “Discover Downunder” when ACP and Channel Nine were broadcasting a program under the same name and asserting the exclusive right to do so.

68.    Bauer contends that having used the mark as the name [of] a television program, and intending to continue to use the mark as the name of a television program, there was no intention to use the name in respect of television production.

69.    Bauer’s contention on this point is essentially that, having used its commercial power to prevent Evergreen from using the mark, there should be inferred from that circumstance a lack of intention on the part of Evergreen to use it. That does not follow, and the argument reflects a tendency on Bauer’s part to seek to advantage itself by its own wrongful conduct.

70.    Bauer seeks to rely upon Colin Parrôt’s evidence that in 2009 he intended to use the name “Discover Downunder” in relation to a television program to be produced and broadcast and disseminated by a variety of different media. It is clear from the evidence that the television program would be produced by Evergreen or under licence by one of its associated companies. A television program is not a “good” in the way that a pair of jeans or a television is. The finished product, regarded as an entertainment, is essentially a service. The production and distribution of such a program falls within the description of the service of producing television programs, at least sufficiently closely to satisfy the question of intention. This is a ground, sought to be developed for the first time during cross-examination, that is, with respect, lacking in merit.

71.    The facts demonstrate an ongoing intention on the part of Evergreen to continue using the mark after October 2009.

[emphasis added]

113    Although, of course, the reasons for judgment of the primary judge are the reasons explanatory of the orders of 12 May 2017 dismissing both the s 56 appeal (and therefore dismissal of the s 59(a) ground of opposition), and the non-use proceedings, the following exchanges between the primary judge and Bauer’s counsel in the course of Ms Baird’s reply should be noted, having regard to the matters ultimately set out at section 7.4.2 of the primary judge’s reasons in refusing to allow Bauer to contend that Evergreen had no intention on 9 October 2009 to use the trade mark in relation to the services of production of television programs. I will then, of course, turn to those reasons after mentioning these matters. Before doing those things, I will note Evergreen’s submissions before the primary judge on the question now in issue.

114    Mr Stuckey, Evergreen’s counsel, in oral submissions on 25 July 2016, said this (at T, p 74, lns 41-46; T, p 75, lns 1-17; the transcript references for the oral submissions on 25 July 2016 commence at p 1 rather than continuing from 3 May 2016 which ended at p 694):

Mr Stuckey:    If I might start with the if I may term it the new issue, which arises for the first time in … paragraph 53 of the final submissions [and] expanded in the reply submissions of 6 June, in a way, to become the principal argument [for Bauer], [to] say that the use of a name … for a television program is not the use of that name in relation to the production of a television [program], is at first sight, surprising. That seems to be an unusual way of using language to suggest that [such use] is not a use of the name in relation to the production of a television program. … [T]he argument that is being advanced is, in my submission, fairly and squarely a question of construction of the words that are being used for the description of the services.

PJ:    There is, it seems to me a question of construction of the words used.

Mr Stuckey:    And it has been open from the very beginning of this argument for Bauer to suggest that the meaning of those words did not encompass what … Evergreen intended to claim.

[emphasis added]

115    Mr Stuckey said that he would wish to refer to the way in which the manner was conducted by Bauer before the delegate and “the way in which this proceeding has proceeded without this issue being raised, until after the evidence had concluded” (at T, p 75, lns 22-27). Mr Stuckey contended that Evergreen would be prejudiced by the “late raising of the issue” and contended that Bauer ought not be permitted to raise the issue. Mr Stuckey contended that had the issue been “raised below” (that is, before the delegate) “there would have been the opportunity to seek to amend the application to correct the language, if it needed correcting, to correspond with what it was everyone understood we were seeking” (at T, p 75, lns 39-42). Mr Stuckey contended that Evergreen had been deprived of the opportunity to produce evidence as to the “trade meaning” of the term “production of television programs” for the purpose of construing the issue (at T, p 75, lns 42-44). Mr Stuckey contended that the matter of “fundamental significance” was that the “new argument” only “surfaced at the very end of the evidence”. Mr Stuckey added (at T p 75, ln 47; T, p 76, lns 1-2) that: “And it is not without significance, in my submission, that both parties and the delegate in the Trademarks Office saw no difficulty with the meaning of this expression during the six years the proceeding was before them”. Mr Stuckey also said this (at T, p 76, lns 4-9):

In construing the ordinary English meaning of that phrase, it is again not without significance that it wasn’t until after the factual matters had been heard in this proceeding that it occurred to anyone that it might be possible to argue that those words have a different meaning from the one that everyone assumed they did. That is powerful evidence that the new argument – the new construction sought to be advanced is not, in fact, the natural and ordinary English meaning of the expression.

[emphasis added]

116    In Ms Baird’s reply (at T, p 144, lns 19-24) she observed, in relation to the “specification” in the trade mark application, that Evergreen, by contending that use of the trade mark as the name of a program involved use of the trade mark “in relation to the service specified in the application”, was asking the Court, in effect, to “rewrite the specification to delete the words ‘production of’” and there was no application from Evergreen to amend the specification. Ms Baird observed that any such application must fail because it would affect third parties.

117    The primary judge asked Ms Baird to address the question of whether leave was necessary to enable Bauer to rely on the point of no intention to use the trade mark in relation to specified services, and to address the question of prejudice suffered by Evergreen “as a result of the late raising of this issue”: T, p 144, lns 26-27. Ms Baird observed that “there is no need for leave” and “there is no prejudice” and “production of television programs is what Evergreen sought to claim”: T, p 144, lns 29-31.

118    The primary judge observed (at T, p 144, lns 33-34) that “nobody seemed to be in any doubt though, as to what that meant when it was before the registrar” [emphasis added]. Ms Baird responded (at T, p 144, lns 36-40): “The question is section 58, section 59, section 60, 62A and 42 and non-use, and that turns on, as my opening submissions made clear, on a question [of] … all that is being sought is an application to register the mark for the specified services” [emphasis added].

119    The primary judge asked Ms Baird to comment on the point “that if this point had been raised before the registrar, or even earlier in this case, [Evergreen] might have sought to lead expert evidence as to what the meaning of that phrase is”: T, p 144, lns 45-47. Ms Baird observed that it is not a question of “expert evidence” and “[t]here’s no suggestion that the phrase has anything other than its ordinary meaning and that is an objective question”: T, p 145, lns 1-3. The primary judge observed (at T, p 145, lns 11-13) that Evergreen contends that “it fits within [that is, use of the trade mark as the name of a program fits within the notion of production of television programs] the natural and ordinary meaning [of the specified services], but that he [Evergreen] has been deprived of the opportunity, the matter being put in issue, to call any expert evidence”.

120    Ms Baird responded by observing (at T, p 145, lns 19-46) that, first of all, “production of television programs is what Evergreen sought” and “[i]t did not seek to specify television entertainment or TV programs”. Ms Baird observed that Class 41 services can comprehend a range of entertainment services and Class 38 comprehends transmission and other services. Ms Baird observed that the evidence put forward by Evergreen “is that it is certainly open to persons in the field and in the industry to … specify what they want to do, and specify, for example, that they want to claim television entertainment or that they claim entertainment in the nature of TV programs by pay or subscription or free to air television” [emphasis added]. However, “Evergreen did not” (at T, p 145, lns 43-46).

121    The primary judge then observed (at T, p 146, lns 2-4) that the notice of appeal did not seem to “fairly … raise this issue, and the issue does appear to have been raised in closing submissions” [emphasis added].

122    In response, Ms Baird said this (at T, p 146, lns 6-13) and the primary judge (“PJ”) responded (at T, p 146, lns 15-18) as follows:

Ms Baird:    With respect, your Honour, the issue was not just raised in closing submissions. It has been up front and forefront in my opening submissions [the written outline] and orally, and may I take your Honour through to that, but also say that my friend is [confusing] if you like, … the class that it says and what it is that in fact Evergreen has claimed. What I can say at the conclusion of the trial is that the statements in opening submissions and on the amended notice of appeal, [are] where we clearly identified that there was no intention in relation to the production of television programs …

PJ:    I read that ambiguously, I have to say, when I read it, it could have meant one of two things, if I go back to the notice of appeal, because the amendment could have meant not evinced an intention to use the mark. It doesn’t necessarily raise any issue as to construction.

[emphasis added]

123    This exchange then followed (at T, p 146, lns 20-44; T, p 147, lns 4-21):

Ms Baird:    Well, yes, your Honour.

PJ:    I must say, in the way it had been argued earlier and given your reliance on evidence which was oral evidence adduced in the course of the trial [by which the primary judge seems to be referring to answers by Colin Parrôt in cross-examination], as I understand it, I don’t see why one would have read that in the way that you now contend.

Ms Baird:    Well, your Honour, with respect, paragraph 16 says:

[s]hould have found that the respondent had not evinced an intention to use the mark – opposed mark in Australia within the meaning of section 59 in relation to the production of television programs …

PJ:        … ambiguous.

Ms Baird:    … and [had] not used the opposed mark in Australia as its trademark in relation to the production of television programs.

With respect, we could not have been clearer.

PJ:    I really don’t see that as being so crystal clear and, if it was crystal clear, why was it not spelt out in opening submissions?

Ms Baird:    … [W]hat we have done here is to make good what we put in terms in opening submissions from the very first paragraph.

PJ:    So where is it raised in your opening outline?

Ms Baird:    Your Honour, paragraph 1, production – the services of production of television programs; the services.

PJ:    I just don’t see that raising squarely and fairly the issue in paragraph 16.

Ms Baird:    The very issue of the production of television programs. I am sorry, your Honour, we cannot make it any clearer.

PJ:    But that’s just quoting the words of the application.

Ms Baird:    But those are. That is. That is the specification.

PJ:    Ms Baird, you don’t fairly and squarely, as I currently see it, raise the question of construction, and to point to a quotation of the words used in the application and the fact that they’re quoted in bold, doesn’t, to my mind, fairly and squarely raise the construction issue.

[emphasis added]

124    The primary judge pressed Ms Baird with the propositions reflected in the above transcript and as to the issue of failing to identify precisely the line of questioning to be examined with the witnesses called for cross-examination, Ms Baird said this (at T, p 147, lns 41-46):

… what I was trying to get at when I said to the Court I don’t want to go into this further because it will be the subject of cross-examination of Mr Colin Parrôt and … I wanted to find out what it is he says he’s doing, what it is he says he intends to do. How can I make that good, other than writing exactly [the] specification of services. It is express, it is …

125    It will be recalled from these reasons at [102] that Ms Baird explained that Bauer in the opening address did not go into great detail on the facts and the primary judge responded by saying that her Honour understood why that was so. Ms Baird responded by affirming that position particularly as, so far as the opening was concerned, certain matters would arise or may arise which would be the subject of cross-examination with the result that Ms Baird would merely advert to, rather than expose, those matters in any detail in the opening.

126    The primary judge then turned to Bauer’s non-use case “in relation to use of the mark as a name” (at T, p 148, lns 1-6) although Ms Baird observed (at T, p 148, ln 8) that Bauer’s case is non-use of the mark “as the mark for the services”. Ms Baird sought to explain the essence of Bauer’s contentions in this way (at T, p 148, lns 40-47; T, p 148, lns 3-10):

… [W]e say fairly and squarely, Evergreen did not intend to use, and has not used, the mark as the name for the specified services; production of television programs. [First Track] Second Track, Evergreen did not intend, at the filing date, to use the mark for the specified services – well, for anything. Whether it is the specified services or the name, TV as a TV program, at the filing date Evergreen had no intention in good faith, on the balance of probabilities, on the extent to which we need to establish our case in the appeal, whether that be for production of television programs or whether that be the name of a TV program.

On one … – line we say that … because [Evergreen] has moved its intention to What’s Up Downunder and we look at the chronology. On the second line we say because production of TV programs is what it has always used Evergreen for, it continues to use Evergreen … Parable Productions has made clear in cross-examination that the limit of its intent, even on its case, was only as the title. Then we come to non-use, it doesn’t matter which limb you go down, whether it be the name of the program or whether it be the name for the production of TV programs, Evergreen, at the filing date, did not intend to use it.

127    The primary judge (at T, p 149, lns 25-28) asked Ms Baird what she would wish to say on the question of leave if her Honour considered that “the issue” was not fairly raised. Ms Baird observed (at T, p 149, lns 30-31) that “first of all, there [are] some transcript references where I did repeat the matter [that is, the contention constituting the question in issue]”. Ms Baird (at T, p 149, lns 31-36) accepted that:

I didn’t say, “I’m going to put to Mr Colin Parrôt that – he didn’t intend to use the mark for the services and in fact that he only ever was using – intended, even on his case [to use the mark], as the name of a trade mark – of a program and in fairness, your Honour, it is not for any person in their opening to foreshadow to the director of a company who’s sitting in court what I’m going to ask him in cross-examination.

128    That observation resulted in this exchange (at T, p 149, lns 38-47; T, p 150, ln 1; lns 17-19; lns 22-47):

PJ:        But is that fair?

Ms Baird:    Yes, your Honour.

PJ:    I mean at the end of the day you’re talking about construing what the application was for. That’s what I understand.

Ms Baird:    … I’m saying it’s not construing what the application is for. It’s clear what the application is for. That’s where my friends and I differ. It is for the production of TV programs. That’s what it says. That’s what it’s for. If your Honour rewrites it to say, “Well production of TV programs is not production of TV programs [i]t’s the name of a TV program”, well, then, your Honour, that is a different case and that case, if my friend wants to make application, it’s for him to make an application to say, “Well, actually I want to have leave to amend the specification to say … it’s actually for the name of a TV program”, then, in my respectful submission, whilst he may make that application, that would be to change – expand or change the specification and that is not permitted, and that is not permitted not because of an inter parties fight, but because of the Register.

PJ:    No, no, I appreciate why … it’s not permitted, if I accept your submission.

Ms Baird:    Your Honour, as to leave, in the present instance … may I first of all go to my friend’s submission at paragraph 70 of his closing submission where he has … raised it unfairly because in his paragraph 70 … he doesn’t make any large song and dance about the submission. What he says is, “This is a ground sought to be developed for the first time during cross-examination that is, with respect, lacking in merit”. … He doesn’t say “of which we’ve never had notice”. He just says “sought to be developed” and “lacking in merit”. …

In relation to leave, … for there to be a matter regarding leave, it has got to be something outside the amended notice of appeal, a fresh point that Evergreen is not adequately on notice about prior to that, and if that’s such a case, your Honour would be in fact finding that the amendment of 11 November 2015 is inadequate and, with respect, in our submission, we have made it clear, plain to any trademark person reading the matter, knowing of the trade mark requirements for registration, that is it – we say there is no intention to use the mark for the services that they’ve specified. …

That is for the production of television programs. We don’t have to say, “but by the way … you’ve really used it for this”. We don’t even know, or accept, that there was any intention to use it for anything else as at September and October 2009.

Your Honour, we should also note there were no particulars sought of the amendment at all. My friend did not make – it’s clear that they did not, at that stage, see any ambiguity or untowardness of it, and the matter proceeded to trial.

Section 7.4.2 of the reasons for judgment of the primary judge

129    The primary judge refused to allow Bauer to rely upon its s 59(a) contention as explained in these reasons, for the following reasons:

7.4.2.    Is leave required to raise the registration application construction issue?

304    Bauer contended in closing address that Evergreen never in fact intended to use the Mark in relation to the specified services, i.e., “production of television programs”. Rather at best Bauer contends that Evergreen intended to use the Mark to name a television program, i.e., a “product”. By way of illustration, Bauer contends that Evergreen uses the name “Evergreen” to describe the service which it provides, namely, the production of television programs. However, Bauer submits that the naming of the end product, being the television program itself, is not encapsulated within the composite phrase used by Evergreen to define the field over which it claims a monopoly. That being so, and it being accepted by Colin Parrôt that Evergreen’s intention was only ever to use the mark “Discover Downunder” to name a television program, Bauer submits that Evergreen has failed to establish any intention to use the Mark for the services described in the application. As such, Bauer contends that it must succeed in its opposition to the Mark and that this point is a complete and short answer to the issues in the case.

305    This argument turns upon the proper construction of the description. No issue was taken by Bauer with the submission by Evergreen that this issue had not been raised in the proceedings before the Delegate. Evergreen objected to the issue being raised for the first time in cross-examination and closing written submissions on the appeal. In Evergreen’s submission, the issue was not clearly raised by the amended notice of appeal and leave was therefore required to raise it. In its submission, leave should be refused because Evergreen was prejudiced by the late raising of the issue in that, if the issue had been raised below, Evergreen would have had the opportunity to seek to amend the language of the trade mark application if it needed to be corrected. Further and in any event, by running the argument for the first time in closing, Evergreen was deprived of the opportunity to produce any evidence as to any industry meaning of the words used in the description.

306    However Bauer contended that the present proceedings constituted a hearing de novo and the argument now sought to be run had been fairly raised by paragraph 16 of its amended notice of appeal filed on 11 November 2015. Paragraph 16 pleaded that:

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 section 59 of the Act in relation to the production of television programs and had not used the Opposed Mark in Australia as its trademark in relation to the production of television programs.

(Amendments identified by underlining)

307    At paragraph 121 of the Registrar’s decision, the Registrar considered the submission by Bauer that the applicant did not intend to use or authorise use of the trade mark in relation to the services because (allegedly) “[t]here is strong evidence that Evergreen (in conjunction with Parable) intends to use the trademark WHAT’S UP DOWNUNDER (rather than DISCOVER DOWNUNDER) in the future.” Specifically, after expressing the view that actions before the priority date have some bearing on the matter, the Registrar found that:

In this case the Applicants have used the Trade Mark. There is no conclusive evidence that use inured to the benefit of the Opponents. Use of the Trade Mark before the time of filing must have a major influence on the question of whether the applicant’s intended to use the Trade Mark at the date of filing the application.

308    The Registrar also considered that there was sufficient indication that the WHAT’S UP DOWNUNDER trademark “is intended for and applied to a different type of ‘product’, albeit one with common subject matter”. He concluded at paragraph 124 that at the date of filing Evergreen intended to use the trade mark and the ground of opposition was not established.

309    I accept that this is a hearing de novo. Nonetheless the fact that the registration application construction submission was not raised before the Delegate is relevant to the question of whether Evergreen can fairly be said to have been on notice of the issue: see by analogy SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152 at [35]. Given therefore that paragraph 16 of the notice of appeal must be considered in a context where the issue had not been raised before the Delegate, in my view the paragraph did not fairly give notice of the intention to raise the registration application construction issue now relied upon by Bauer as the primary basis on which it opposes registration under s 59. First, paragraph 16 is ambiguous in that it can be read as seeking to press only the factual use issue, being the basis on which registration of the trade mark was opposed under s 59 before the Delegate, or as intended to raise the registration application construction issue. Secondly, that the amended paragraph should be read in the first sense is reinforced by the fact that paragraph 16 attacks a finding by the Delegate dealing only with the factual use issue and that it is difficult to say that the Delegate erred in failing to make a finding which she was not asked to make.

310    Nor was the issue identified by Bauer in its written opening outline on this appeal. Rather, Bauer submitted with respect to the question of intention to use the trade mark for the purposes of s 59 only that:

41. The present case concerns s 59(a) of the Act. The principal inquiry is whether, at the time the Application was made, Evergreen intended to use the Mark, or intended to authorise another to use the Mark, in respect of the Services for which registration was sought in the Application.

42. Whilst an applicant for a Mark is entitled to the benefit of the fact of filing and the presumption of registrability (s 33), as noted above at [15] if an opponent (Bauer) is able to raise a prima facie case by some evidence of lack of intention to use, the evidentiary onus effectively shifts to the applicant (Evergreen).

43. Bauer contends that the evidence will establish that, at the Filing Date, Evergreen did not have the requisite intention to use the Mark, authorise other(s) to use the Mark. Its filing of the Application was a knee-jerk reaction to the breakdown in its commercial relationship with Bauer (the Trader division).

(footnotes omitted)

311    The services were defined at [1] of Bauer’s opening outline to mean “the services of ‘production of television programs’ (the Services)” (emphasis in the original).

312    Nor did Bauer submit that it raised the registration application construction issue in oral opening. To the contrary, senior counsel for Bauer submitted that she had not mentioned the matter in opening because she did not wish to foreshadow it before cross-examination of Mr Colin Parrôt. Specifically Ms Baird SC submitted that:

I didn’t say, “I’m going to put to Mr Colin Parrôt that the – he didn’t intend to use the mark for the services and in fact that he only ever was using – intended, even on his case, as the name of a trademark – of a program and in fairness, your Honour, it is not for any person in their opening to foreshadow to the director of a company who’s sitting in court what I’m going to ask him in cross-examination.

313    The difficulty with that proposition, however, is that the new argument turned upon the manner in which the words in the trade mark application were to be interpreted, no party having in reality been in any doubt as to the fact that Colin Parrôt wished to use the trade mark as the name of a television program. The line of cross-examination which was pursued with Mr Colin Parrôt did no more than confirm that intention.

314    Accordingly, the fact remains that the argument was identified as a primary and distinct ground on which the ground of opposition under s 59 was pressed for the first time in the written closing addresses filed by Bauer over six years after Evergreen had filed its application for registration of the trade mark in October 2009.

315    In those circumstances notwithstanding the de novo nature of the appeal, I consider that a grant of leave to raise the new argument at such a late stage would be necessary as Evergreen contends.

316    Bauer did not, however, seek leave to raise the argument (and amend its pleadings) preferring to rely upon its primary position that leave was unnecessary. Specifically, Ms Baird contended that:

…we say there is no requirement for leave and we do not seek – make any application for leave. If your Honour finds against us, well, that’s where it is.

317    I note, however, that if leave had been applied for, I would have refused the grant of leave having regard among other things to the following considerations. First, the argument was sought to be raised for the first time only in closing addresses after both parties had closed their cases and no sufficient explanation was given in my view for the delay. Secondly, I accept the submission by counsel for Evergreen that it has been prejudiced by the late raising of the argument including in particular by reason of being deprived of the opportunity to lead expert evidence as to the manner in which the words in the trade mark application would have been understood in the industry. Thirdly, while it is unnecessary for me to reach a final view on whether the argument had any real merit particularly where expert evidence might have borne upon the issue, it is telling that Bauer did not make this argument in the proceedings before the Delegate. Fourthly, I consider that this is an issue on which I should give weight to the fact that the Delegate, despite her expertise and experience, did not raise a concern as to any disconnect between the description of the services in respect of which the Mark had been registered, on the one hand, and the intended and past uses to which the Mark had been and were to be applied, on the other hand: see above at [23]-[24]. In short, as Mr Stuckey for Evergreen submitted in closing address on the issue:

Had it been raised below, it would have been – there would have been the opportunity to seek to amend the application to correct the language, if it needed correcting, to correspond with what it was everyone understood we were seeking. And the second is we have been deprived of the opportunity to produce any evidence as to the trade meaning of the term “production of television programs” for the purpose of construing the issue. But there is another and more fundamental significance to the fact that this argument surfaced only at the very end of the evidence. It is an argument about the ordinary meaning of the phrase in question. And it is not without significance, in my submission, that both parties and the delegate in the Trademarks Office saw no difficulty with the meaning of this expression during the six years the proceeding was before them.

In construing the ordinary English meaning of that phrase, it is again not without significance that it wasn’t until after the factual matters had been heard in this proceeding that it occurred to anyone that it might be possible to argue that those words have a different meaning from the one that everyone assumed they did. That is powerful evidence that the new argument – the new construction sought to be advanced is not, in fact, the natural and ordinary English meaning of the expression.

Consideration of the grounds of appeal

130    In my respectful opinion, the primary judge erred in refusing to allow Bauer to rely on its contentions addressed to the s 59(a) ground of opposition as described in these reasons. Accordingly, Bauer has established grounds 4 and 5 of the draft grounds of appeal. That follows in my respectful opinion for a number of reasons.

131    First, Evergreen asserted and the primary judge accepted and found that Bauer’s contention that Evergreen had no intention on 9 October 2009 to use the trade mark in relation to the production of television programs had been raised for the first time, in cross-examination and closing written submissions: PJ at [305], [310], [312], [314] and [317]. This finding is not correct. The contention that Evergreen did not intend on 9 October 2009 to use the trade mark in relation to the production of television programs was expressly raised by para 16 of the amended notice of appeal. I will, however, return to that matter later in these reasons.

132    The contention was raised by Bauer’s written opening outline and as the extracts from the very lengthy oral opening by Ms Baird show, the matter was directly addressed with the primary judge at the outset of the hearing: see particularly [79], [80], [86], [87], [88], [89], [92] and [93] of these reasons.

133    Second, at [312] of the primary judge’s reasons, the primary judge says that Bauer (by Ms Baird) did not submit “that [she had] raised the registration application construction issue in oral opening” and that, to the contrary, Ms Baird had “submitted that she had not mentioned the matter in opening because she did not wish to foreshadow it before cross-examination of Colin Parrôt”. The primary judge at [312] quotes an extract from the transcript (which is also noted at [127] of these reasons). However, the correct position is that Ms Baird did not say that she did not wish to raise the issue in opening. She did raise the legal issue in her lengthy opening as mentioned earlier. Ms Baird said that she did not wish to outline, in the course of the oral opening (or for that matter in Bauer’s written outline of opening) the facts which would or might be matters the subject of her cross-examination of Colin Parrôt. That is a very different thing: see [102] and [127] of these reasons.

134    Third, It should also be noted that when the primary judge put to Ms Baird the notion that the issue had been first raised in closing submissions, Ms Baird who could not have been expected to immediately turn up all the references in the transcript of oral opening noted in these reasons, did make the point that, “first of all, there [are] transcript references where I did repeat the matter”: see [127] of these reasons.

135    So, it is, in my view, incorrect to say that Ms Baird did not submit that the s 59(a) issue had been raised in the oral opening. In fact, Ms Baird submitted that Bauer (she) had been “up front and forefront in my opening submissions and orally” (see [122] and [123] of these reasons and the paragraphs previously mentioned at [132] of these reasons).

136    Nor is it correct to suggest that the statutory words in s 59 “in relation to the goods and/or services specified in the application” are simply words of addition. They are critical statutory integers of s 59 viewed within the structure of the Act having regard to the considerations discussed at [27] to [34] of these reasons.

137    Fourth, as to the elements of Bauer’s written opening outline, emphasised and taken up by Ms Baird in the course of her oral opening, see [83], [84], [85], [86] and [87] of these reasons as to the way in which the point is put in the written opening outline to which Ms Baird spoke in the course of her extensive oral opening.

138    Fifth, as to the overlap with the non-use proceedings where the question arises, see [94], [95] and [96] of these reasons.

139    As to Bauer’s s 56 amended notice of appeal and the relationship between the grounds recited in that document and the scope of the hearing before the delegate, these matters should be noted. I accept that the fact that Bauer’s s 59(a) contention presently in issue and agitated before the primary judge was not raised before the delegate, is not irrelevant. Bauer initially sought to frame the s 59(a) ground of appeal as a proposition that the delegate had erred in finding at [121] that Evergreen “had used the Opposed Mark”. That ground, although the subject of a proposed hearing afresh before the primary judge on all the evidence (including further affidavits) in support or in answer to that case was, at that point, confined to that question. However, once the amended notice of appeal was filed on 11 November 2015, the scope of the ground of opposition changed. The circumstance that the question before the delegate was a question falling to be answered within the limits of whether Evergreen had used the opposed mark or not (thus evidencing an intention to use at 9 October 2009, otherwise called the “factual use issue”), was not something that Evergreen could properly regard, objectively viewed, as defining the limits of the question before the primary judge. I agree with Burley J and also with Rangiah J that although analogically raised by the primary judge, the authority of SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs (2006) 228 CLR 152 at [35] is ultimately not helpful because an s 56 opposition proceeding is a hearing afresh on the merits on the matters in controversy, and the language and text of the ground of appeal changed on 11 November 2015.

140    The primary judge says that Bauer’s change to para 16 (see [73] of these reasons) did not “fairly” give Evergreen notice of Bauer’s intention to raise the question now in issue: PJ at [309]. That is said to follow, by the primary judge, for two reasons. First, para 16 as amended is “ambiguous” because “it can be read” as seeking to press, again, only the factual use issue agitated before the delegate and, alternatively (or as well as) the amendment can be read as “intended to raise the registration application construction issue”: PJ at [309]. Once it is accepted (as plainly it must be) that the amendment to para 16 is capable of being read as intending to raise, as an aspect of the s 59(a) ground before the primary judge, the so-called “registration application construction issue” (as to which see [24] and [25] of these reasons), Evergreen was on notice of the capability of such a reading by reason of the text of the amendment: see also [75] of these reasons. If Evergreen failed to explore with Bauer any particulars of the ground or, perhaps more importantly, chose to view amended para 16 through the prism of para 16 in its unamended form or through the prism of the particular question agitated before the delegate and no more, it is not possible to sustain the proposition, as found by the primary judge, that amended para 16 “did not fairly give notice of [Bauer’s] intention to raise the registration application construction issue” now in issue.

141    As mentioned earlier in these reasons, perhaps Bauer also could have said something along the lines of: by this amendment we say that use of the mark as the name of a television product called Discover Downunder is not use of the mark in relation to the production of television programs. In substance and effect, Bauer did draw Evergreen’s attention to the challenge to Evergreen’s intention to use and its anterior use of the trade mark in relation to the production of television programs. Its amendment did expressly refer to the production of television programs. As the primary judge observed, the text of the amendment was capable of being read that way. Bauer’s amendment engaged the integers raising that contention expressly by reference to the necessary relationship between the mark and the production of television programs not simply by reference to the phrase “the specified services”. As Ms Baird observed before the primary judge (with no disrespect intended at all to those advising Evergreen but simply objectively viewed), the amendment of 11 November 2015 made it “plain to any trademark person reading the matter, knowing the trademark requirements for registration that … we say there is no intention to use the mark for the services that they’ve specified”: see the final transcript exchange between Ms Baird and the primary judge at [128] of these reasons.

142    In my view, Evergreen was not prejudiced on the footing that the present issue was first raised in cross-examination and Bauer’s closing address because the foundation facts of that contention are not so. Evergreen was sufficiently on notice of the contention and it could have elected to call evidence about the steps comprehended by the phrase production of television programs. It could have done so because it was, objectively viewed, on notice of a challenge to registration of the trade mark on the footing that the statutory integers were not made out because Evergreen had, on 9 October 2009, no intention to use the mark Discover Downunder as a badge of identification of the production of television programs.

143    For all these reasons, I am satisfied that Bauer has established grounds 4 and 5 of the draft grounds of appeal. As to the s 59(a) ground of opposition to registration (grounds 6 and 7), I agree with the observations of Burley J at section 6.2 of his Honour’s reasons. I also agree that leave to appeal is to be granted for the reasons at section 6.3 of the reasons of Burley J. I also agree that it is unnecessary to address questions arising in relation to the non-use proceedings. I agree with the orders proposed by Burley J set out at section 7 of his Honour’s reasons.

Associate:

Dated:    3 May 2019

REASONS FOR JUDGMENT

RANGIAH J:

144    I have had the advantage of reading the judgment of Burley J in draft. Although I recognise the force of his Honour’s reasoning, I respectfully depart from His Honour’s conclusion that the appeals should be allowed. I gratefully adopt his Honour’s summary of the facts and submissions. I will also adopt his Honour’s abbreviations.

145    Section 59 of the Act provides, relevantly:

59    Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

                       (a)    to use, or authorise the use of, the trade mark in Australia; or

                          …

in relation to the goods and/or services specified in the application.

146    In its closing address before the primary judge, Bauer submitted that the trade mark DISCOVER DOWNUNDER should be refused registration on the ground that Evergreen only intended to use the trade mark as the name of a television program, and, therefore, did not intend to use the mark in relation to the services specified in the application, namely production of television programs. Her Honour held that Bauer had not fairly given notice of that ground. In my respectful opinion, her Honour made no error in so holding.

147    I propose to set out extracts from the primary judge’s reasons at some length, firstly, because the fundamental issue in the appeal is whether the reasons have been shown to contain error affecting the orders made and, secondly, because I substantially agree with them. Her Honour said:

304    Bauer contended in closing address that Evergreen never in fact intended to use the Mark in relation to the specified services, i.e., “production of television programs”. Rather at best Bauer contends that Evergreen intended to use the Mark to name a television program, i.e., a “product”…

305    This argument turns upon the proper construction of the description. No issue was taken by Bauer with the submission by Evergreen that this issue had not been raised in the proceedings before the Delegate. Evergreen objected to the issue being raised for the first time in cross-examination and closing written submissions on the appeal. In Evergreen’s submission, the issue was not clearly raised by the amended notice of appeal and leave was therefore required to raise it...

306    However Bauer contended that the present proceedings constituted a hearing de novo and the argument now sought to be run had been fairly raised by paragraph 16 of its amended notice of appeal filed on 11 November 2015…

307    At paragraph 121 of the Registrar’s decision, the Registrar considered the submission by Bauer that the applicant did not intend to use or authorise use of the trade mark in relation to the services because (allegedly) “[t]here is strong evidence that Evergreen (in conjunction with Parable) intends to use the trademark WHAT’S UP DOWNUNDER (rather than DISCOVER DOWNUNDER) in the future.” Specifically, after expressing the view that actions before the priority date have some bearing on the matter, the Registrar found that:

In this case the Applicants have used the Trade Mark. There is no conclusive evidence that use inured to the benefit of the Opponents. Use of the Trade Mark before the time of filing must have a major influence on the question of whether the applicant’s intended to use the Trade Mark at the date of filing the application.

308    The Registrar also considered that there was sufficient indication that the WHAT’S UP DOWNUNDER trademark “is intended for and applied to a different type of ‘product’, albeit one with common subject matter”. He concluded at paragraph 124 that at the date of filing Evergreen intended to use the trade mark and the ground of opposition was not established.

309    I accept that this is a hearing de novo. Nonetheless the fact that the registration application construction submission was not raised before the Delegate is relevant to the question of whether Evergreen can fairly be said to have been on notice of the issue: see by analogy SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152 at [35]. Given therefore that paragraph 16 of the notice of appeal must be considered in a context where the issue had not been raised before the Delegate, in my view the paragraph did not fairly give notice of the intention to raise the registration application construction issue now relied upon by Bauer as the primary basis on which it opposes registration under s 59. First, paragraph 16 is ambiguous in that it can be read as seeking to press only the factual use issue, being the basis on which registration of the trade mark was opposed under s 59 before the Delegate, or as intended to raise the registration application construction issue. Secondly, that the amended paragraph should be read in the first sense is reinforced by the fact that paragraph 16 attacks a finding by the Delegate dealing only with the factual use issue and that it is difficult to say that the Delegate erred in failing to make a finding which she was not asked to make.

310    Nor was the issue identified by Bauer in its written opening outline on this appeal. Rather, Bauer submitted with respect to the question of intention to use the trade mark for the purposes of s 59 only that:

41.     The present case concerns s59(a) of the Act. The principal inquiry is whether, at the time the Application was made, Evergreen intended to use the Mark, or intended to authorise another to use the Mark, in respect of the Services for which registration was sought in the Application.

42.     Whilst an applicant for a Mark is entitled to the benefit of the fact of filing and the presumption of registrability (s 33), as noted above at [15] if an opponent (Bauer) is able to raise a prima facie case by some evidence of lack of intention to use, the evidentiary onus effectively shifts to the applicant (Evergreen).

43.     Bauer contends that the evidence will establish that, at the Filing Date, Evergreen did not have the requisite intention to use the Mark, authorise other(s) to use the Mark. Its filing of the Application was a knee-jerk reaction to the breakdown in its commercial relationship with Bauer (the Trader division).

(Footnotes omitted.)

311    The services were defined at [1] of Bauer’s opening outline to mean “the services of ‘production of television programs’ (the Services)” (emphasis in the original).

312    Nor did Bauer submit that it raised the registration application construction issue in oral opening. To the contrary, senior counsel for Bauer submitted that she had not mentioned the matter in opening because she did not wish to foreshadow it before cross-examination of Mr Colin Parrôt. Specifically Ms Baird SC submitted that:

I didn’t say, “I’m going to put to Mr Colin Parrôt that the – he didn’t intend to use the mark for the services and in fact that he only ever was using – intended, even on his case, as the name of a trademark – of a program and in fairness, your Honour, it is not for any person in their opening to foreshadow to the director of a company who’s sitting in court what I’m going to ask him in cross-examination.

313    The difficulty with that proposition, however, is that the new argument turned upon the manner in which the words in the trade mark application were to be interpreted, no party having in reality been in any doubt as to the fact that Colin Parrôt wished to use the trade mark as the name of a television program. The line of cross-examination which was pursued with Mr Colin Parrôt did no more than confirm that intention.

314    Accordingly, the fact remains that the argument was identified as a primary and distinct ground on which the ground of opposition under s 59 was pressed for the first time in the written closing addresses filed by Bauer over six years after Evergreen had filed its application for registration of the trade mark in October 2009.

315    In those circumstances notwithstanding the de novo nature of the appeal, I consider that a grant of leave to raise the new argument at such a late stage would be necessary as Evergreen contends.

316    Bauer did not, however, seek leave to raise the argument (and amend its pleadings) preferring to rely upon its primary position that leave was unnecessary…

(Underlining added.)

148    The “factual use issue” referred to by the primary judge at [309] was a submission made by Bauer before both the Registrar of Trade Marks and her Honour that Evergreen did not intend to use the mark at all. The “registration application construction submission” referred to at [309] and [312] was the submission made by Bauer before her Honour that Evergreen only intended to use the mark as the name of a television program, and not in relation to production of television programs.

149    Division 34.3 of the FCR deals with appeals from decisions of administrative decision-makers in intellectual property proceedings. Rule 34.24(2) requires that a notice of appeal state the grounds relied on in support of each order sought and particulars of each such ground. Under r 34.26, a party is not entitled to tender evidence or make submissions in support of a ground of appeal not stated in the notice of appeal or a ground of which particulars have not been given.

150    A notice of appeal does not come within the definition of a pleading in Sch 1 of the FCR. Division 34.3 does not contain any equivalents of r 16.02(2)(c) and (d), which require that a pleading must not be evasive or ambiguous, or be likely to cause prejudice, embarrassment or delay. Nevertheless, a notice of appeal under Div 34.3 in the original jurisdiction of the Court must have the same functions as a pleading. One of those functions is to state with sufficient clarity the case that must be met: Gould, Birbeck and Bacon v Mount Oxide Mines Ltd (in liq) (1916) 22 CLR 490 at 517; Dare v Pulham (1982) 148 CLR 658 at 664; Banque Commerciale SA v Akhil Holdings Ltd (1990) 169 CLR 279 at 286. In that way, pleadings serve to ensure the basic requirement of procedural fairness that a party should have the opportunity of meeting the case against him or her: Akhil Holdings at 286.

151    As the primary judge recognised, the appeal was a hearing de novo. It was not necessary for Bauer’s grounds of appeal to allege error on the part of the Registrar’s delegate. But Bauer chose to do so. That course was apparently taken because demonstration of a material error would support orders that the decision be set aside and that registration be refused. The difficulty with that course was that Bauer’s expression of the relevant ground of appeal was ambiguous and unclear.

152    The relevant ground was contained in the following paragraph of the amended notice of appeal:

16.     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.

153    In order to construe para 16 of the notice of appeal, it is necessary to describe the findings made by the delegate at para 121 of his decision. At paras 118 to 124, the delegate dealt with Bauer’s ground of opposition under s 59(a) of the Act. That ground was that Evergreen did not, at the date of the application, intend to use DISCOVER DOWNUNDER as the name of a television program, because its intention was to use WHAT’S UP DOWNUNDER instead. Bauer submitted before the delegate that, “it is inherently improbable that Evergreen has any intention at all to use the DISCOVER DOWNUNDER trademark”. However, at para 121, the delegate found that Evergreen had made use of the DISCOVER DOWNUNDER trade mark in the past, and that such use had a major influence on the question of whether Evergreen intended (at the filing date) to use the mark. Then, at para 124, the delegate found that Evergreen intended to use the mark, and found that Bauer had not established the ground of opposition.

154    It may be seen that before the delegate, Bauer’s sole ground of opposition under s 59(a) of the Act was that Evergreen did not intend to use the trade mark at all. The primary judge had to decide whether para 16 of the amended notice of appeal raised with sufficient clarity, not only the ground taken before the delegate, but an additional ground that Evergreen intended to use the trade mark only as the name of a television program, and not in relation to production of television programs. In other words, the primary judge had to decide whether Evergreen had been given fair notice of that additional ground.

155    The notice of appeal, like a pleading, must be construed objectively: cf Construction, Forestry, Mining and Energy Union v BHP Coal Pty Ltd [2007] FCAFC 50 at [42]. It was necessary for the primary judge, and it is necessary on appeal, to consider how a reasonable person in Evergreen’s position would understand para 16 of the notice of appeal. There is a danger in too finely construing the paragraph in order to determine what is actually meant. Such an approach risks applying a subjective test. That said, it is necessary to construe the paragraph.

156    It may be observed that para 16 of the amended notice of appeal does not expressly state that a ground of opposition is that Evergreen only intended to use the trademark as the name of a television program and, therefore, did not intend to use the mark in relation to the production of television programs. The paragraph merely describes an error made by the delegate in para 121 of his decision and describes what should have been found by the delegate. The paragraph does not say what findings should be made by the Court, even though that was the relevant issue in a hearing de novo. If it is to be found the ground was raised, it must be by implication from the words used and the manner of conduct of the proceeding; and if it was raised, the issue of whether it was fairly raised would remain to be considered.

157    Bauer’s submission is that the phrase in para 16, “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” clearly raised an additional, separate and distinct ground of opposition. That submission ignores the words preceding that phrase. Those words cannot be ignored because the paragraph should be understood as a whole. The opening words assert error by the Registrar’s delegate in finding at para 121 of the decision that Evergreen “had used” the trade mark. The words “and should have found that” is a transitional phrase indicating that the delegate ought to have made the findings set out thereafter instead of the erroneous finding. The ground of appeal as a whole relies upon the delegate’s error. It does not clearly assert an additional and distinct ground that Evergreen intended to use the trade mark only as the name of a television program, and not in relation to production of television programs.

158    The primary judge, while recognising that the appeal was a hearing de novo, considered that the fact the contentious ground was not raised before the Registrar’s delegate was relevant to whether Evergreen could fairly be said to have been on notice of the ground. Her Honour drew an analogy with SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs (2006) 228 CLR 152 at [35]. Bauer criticises this aspect of her Honour’s reasoning on the basis that the relevant provisions of the Migration Act 1994 (Cth) cannot be compared to those of the Act. I accept that this criticism is well-founded, but it does not answer her Honour’s point that the fact the ground was not raised before the delegate was relevant to whether Evergreen was fairly put on notice of the ground. That is because para 16 expressly draws in the delegate’s findings, making those findings relevant to the understanding of the paragraph.

159    Paragraph 16 of the amended notice of appeal refers to the ground of objection stated in s 59(a) of the Act. In the context of this case, there were two methods by which that ground might have been made out. The first was to establish that Evergreen did not intend to use the trade mark at all. The second was to establish that Evergreen intended to use the trade mark only as the name of a television program, and not in relation to the service specified in the application. Bauer says it relied on both, but if that was so, care had to be taken in drafting the ground to avoid confusion. That is because to simply allege that Evergreen did not intend to use the trade mark in relation to the production of television programs could encompass either or both. Paragraph 16 certainly raises the first method, but the issue is whether it should be understood as also raising the second as an additional and distinct ground.

160    In para 16 of the amended notice of appeal, Bauer expressly alleges that the delegate’s finding in para 121 of his decision that Evergreen “had used” the trademark was erroneous. In that context, the more natural reading of para 16 by a reasonable person in Evergreen’s position would be that the paragraph raised the same ground that was raised before the delegate, namely that Evergreen had not used and did not intend to use the trade mark at all. That the paragraph says the delegate should have found that Evergreen had not evinced an intention to use, and had not used, the trade mark in relation to the production of television programs does not clearly indicate that a different and distinct ground was now also being raised. The confinement of the ground to complaint of error on the part of the delegate suggests the contrary.

161    I can accept that on an alternative reading, para 16 might be seen as also raising an additional ground to the effect that Evergreen did not intend to use the trade mark in relation to the specified service of production of television programs. However, that is not obvious in the context, and such a ground is certainly not expressed clearly.

162    That is not necessarily fatal. As was observed by the Full Court in Stefanovski v Digital Central Australia (Assets) Pty Ltd [2018] FCAFC 31 at [65], “A fair amount of tolerance can be justified as long as the circumstances are such that all parties to the action have had fair notice of what will be determined”.

163    The question is whether Evergreen was given fair notice of Bauer’s ground. I agree with Burley J that a practical assessment must be made. The primary judge approached that task by first examining whether there was a lack of clarity in the notice of appeal, and, tacitly, the extent to which it was unclear. Her Honour decided that the relevant paragraph did not give fair notice of the contentious ground. Her Honour then examined whether the lack of clarity had been overcome by Bauer’s conduct of the case.

164    Bauer arguably raised the contentious ground at paras 35 and 41 of its written opening submissions, but those paragraphs must be read in the context of the submissions as a whole. Paragraphs 42 and 43 suggest that the issue under s 59(a) of the Act was the same issue raised before the delegate, namely whether Evergreen had used the trade mark at all. There was no clear statement that a separate ground was also being relied upon. I agree with her Honour that the lack of clarity in para 16 was not resolved by the written opening submissions.

165    It is significant that Bauer’s senior counsel’s oral opening address did not clarify that she was raising a separate ground that Evergreen did not intend to use the trade mark in relation to production of television programs. The primary judge did not accept the legitimacy of the reason given for failing to raise the issue, namely that senior counsel did not want to expose her cross-examination. Her Honour pointed out that the line of cross-examination pursued sought no more than to confirm that Mr Parrôt had intended to use the trade mark as the name of a television program. Mr Parrôt was not asked whether Evergreen had intended to use the mark for the production of television programs. It is apparent that senior counsel for Bauer deliberately and tactically refrained from raising the contentious ground in her opening address, but it is difficult to understand why that was necessary if, as Bauer asserts, the ground was clear from the amended notice of appeal.

166    Further, it is not apparent from paras 11 and 16 of Bauer’s statement of claim in its application for removal of the trade mark from the register that it was raising the contentious ground. The particulars of para 11 refer to the proceedings before the delegate and to a lack of intention by Evergreen to use the mark at all. They do not refer to an absence of intention to use the mark for the service of production of television programs specified in the application. Further, those particulars assert that Bauer was the sole party that had used or authorised the use of the mark. That suggests that the issue being raised under s 59 of the Act was that Evergreen had not used, and therefore did not intend to use, the trade mark at all. Bauer did not clearly and obviously plead the case that it now asserts it was raising.

167    It is necessary to bear in mind that the appeal from the judgment of the primary judge is an appeal by way of rehearing: see Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at [20]. The powers of the appellate court are only exercisable where the appellant can demonstrate that the judgment is the result of some legal, factual or discretionary error: Allesch v Maunz (2000) 203 CLR 172 at [23]. The views and conclusions of the trial judge ultimately have to be shown to be wrong, and should not be laid to one side and a simple re-argument of the case take place: Branir at [30].

168    In Fox v Percy (2003) 214 CLR 118, the plurality considered the “natural limitations” faced by an appellate court, observing at [23] that these are not limited to evaluation of the credibility of witnesses:

On the one hand, the appellate court is obliged to “give the judgment which in its opinion ought to have been given in the first instance”. On the other, it must, of necessity, observe the “natural limitations” that exist in the case of any appellate court proceeding wholly or substantially on the record. These limitations include the disadvantage that the appellate court has when compared with the trial judge in respect of the evaluation of witnesses’ credibility and of the “feeling” of a case which an appellate court, reading the transcript, cannot always fully share. Furthermore, the appellate court does not typically get taken to, or read, all of the evidence taken at the trial. Commonly, the trial judge therefore has advantages that derive from the obligation at trial to receive and consider the entirety of the evidence and the opportunity, normally over a longer interval, to reflect upon that evidence and to draw conclusions from it, viewed as a whole.

(Citations omitted, underlining added.)

169    In Branir, Allsop J (as the Chief Justice was then) also discussed the limitations upon an appellate court at [28]:

The advantages of the trial judge may be more subtle and imprecise, yet real, not giving rise to a protection of the nature accorded credibility findings, but, nevertheless, being highly relevant to the assessment of the weight to be accorded the views of the trial judge.

170    The approach in Branir has been affirmed by the Full Court in Aldi Foods Pty Ltd v Morrocanoil Israel (2018) 358 ALR 683 at [10] and [45].

171    The question the primary judge had to decide was whether Evergreen was provided with fair notice that Bauer was raising a ground that Evergreen only intended to use the trade mark as the name of a television program, and not in relation to the production of television programs. The question was one of fact, but required her Honour to make an evaluative judgment; although it has not been submitted that the judgment was discretionary: cf Minister for Immigration and Border Protection v SZVFW (2018) 357 ALR 408 at [18], [85]–[87], [143]–[147], [153]–[154].

172    Her Honour reached the conclusion that Evergreen had not been provided with fair notice, not only by considering the text of the amended notice of appeal, but by examining the way the trial was conducted, including the written submissions, opening addresses, cross-examination and closing addresses. The conduct of the trial was important because it may have overcome the lack of clarity in the notice of appeal. Having observed the whole of the trial unfold, her Honour had an advantage over the appellate court. I do not suggest that the advantage is unassailable, but that adequate weight should be given to the judgment exercised by the primary judge.

173    I have not expressly mentioned the countervailing arguments until now. They have been succinctly and clearly expressed by Burley J at [256] to [265] and that makes it unnecessary for me to repeat them. Although I appreciate the force of his Honour’s analysis, it will be apparent by now that I do not entirely share the views expressed by his Honour.

174    I consider that no error was made by the primary judge in concluding that Evergreen had not been provided with fair notice that Bauer was raising the contentious ground; and that Bauer required leave to raise the ground. In my opinion, grounds 4 and 5 of the draft notice of appeal cannot succeed.

175    Grounds 6 and 7 of the draft notice of appeal assert that the primary judge erred by failing to consider whether use of the trade mark as the name of a television program was not use in relation to the production of television programs. However, the primary judge was not required to consider a ground that her Honour had ruled could not be relied upon. These grounds should not succeed.

176    I would allow the applications for leave to appeal, but dismiss both appeals with costs.

Associate:    

Dated:    3 May 2019

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1.1    The trade mark application, the parties and the proceedings

177    The appellants, Bauer Consumer Media Ltd and Bauer Media Pty Ltd (collectively, Bauer) oppose the registration of Trade Mark Application No. 1324177 for the words DISCOVER DOWNUNDER (the mark). The application was filed by the respondent, Evergreen Television Pty Ltd, on 9 October 2009 in respect of the following services in class 41 of the Trade Marks Register maintained pursuant to the provisions of the Trade Marks Act 1995 (Cth):

Production of television programs.

178    The Application was examined pursuant to s 31 of the Act and advertised as accepted in the Australian Journal of Trade Marks on 27 January 2011 with an endorsement, relevantly, that the provisions of s 41(5) of the Act applied. Bauer filed a notice of opposition to the registration on 19 April 2011. On 25 August 2014 a Delegate of the Registrar of Trade Marks dismissed the opposition; Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2014) 108 IPR 529 (Delegate’s Decision).

179    Bauer then filed an appeal pursuant to s 56 of the Act from the Delegate’s Decision (Opposition Appeal). It also filed a separate application pursuant to s 101(2) of the Act seeking removal of the application from the Register on the basis of non-use pursuant to s 92(4) of the Act (Non-use Proceedings). The learned primary judge considered the proceedings together and dismissed both; Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2017] FCA 507 (Decision).

180    Bauer now appeals from the Decision. Leave to appeal is necessary insofar as the Decision is an appeal from the Delegate’s Decision; s 195(2) of the Act. In this regard Bauer relies on grounds set out in a draft Notice of Appeal (Draft Appeal). Bauer does not require leave to appeal from the dismissal of the Non-use Proceedings and has filed a separate Notice of Appeal in relation to those proceedings (Non-use Appeal). By Orders made on 21 July 2017, argument in relation to the application for leave to appeal and the appeal from the Delegate’s Decision was heard at the same time as argument in relation to the appeal from the Non-use Proceeding.

1.2    The issues on appeal and conclusions

181    Section 59(a) of the Act relevantly provides that the registration of a trade mark may be opposed on the ground that the applicant does not intend to use or authorise the use of the trade mark in Australia in relation to the goods and/or services specified in the application. The issues in this appeal turn upon whether the learned primary judge erred in refusing to permit Bauer to advance an argument, based on s 59(a), that Evergreen had no intention to use the words DISCOVER DOWNUNDER in respect of the particular services that are the subject of the Application, being the production of television programs in class 41. If she did, then the issue for the appeal from the Opposition Appeal and the Non-use Proceedings is whether or not Bauer has established a lack of intention to use those services.

182    In my respectful view, the learned primary judge did err in refusing to permit Bauer to advance its argument. Having regard to the evidence before the primary judge it is my view that the ground of opposition raised under s 59(a) of the Act succeeds. I also consider that the arguments under s 92(4)(a) would succeed. In the circumstances it is not necessary further to consider the appeal in the Non-use Proceedings on the basis of the application of s 92(4)(b) of the Act. I would grant leave to Bauer to appeal from the Opposition Appeal and allow the appeal with costs. For the reasons set out in section 6 below, I do not consider that it is necessary to make orders save as to costs in the appeal from the decision in the Non-use Proceedings.

2.    BACKGROUND

2.1    The factual background

183    Before identifying the issues relevant to the appeal it is convenient to set out something of the background to this protracted dispute, taken from the unchallenged findings of fact of the primary judge.

184    Colin Parrôt is the sole director and shareholder of Evergreen. He has long had an interest in the caravan and camping industry and in the late 1980s had the idea of producing a lifestyle television program for advertising the caravan and camping industry. It was not until mid-2004 that the idea began to turn to reality. In July 2004, Colin Parrôt approached his son, Warren Parrôt, with the concept, which included that various industry groups interested in the production and use of caravans would act as sponsors to fund the cost of producing the show. Warren Parrôt at the time was the National Corporate Advertising Manager of Trader Classifieds, which was a business division of Bauer Media (at various times Bauer Media was known as ACP Publishing Pty Ltd and ACP Magazines Ltd). Bauer Media was part of a group of companies owned by Publishing and Broadcasting Ltd, which also included Nine Entertainment Co Pty Ltd.

185    Colin Parrôt prepared a proposal for the production of 4 x half-hour shows on the Nine Network with the sponsorship of various caravan related industry groups. Trader Classifieds liked the idea, and Warren Parrôt was instructed to work with his father further to develop the proposal and develop an idea for the production of the show which would be at no cost to Bauer, and generate a profit for it. Subsequently, senior management in Trader Classifieds approved the proposal as developed and agreed to put it to Trader Classified’s related company, Nine Network. However, the Nine Network rejected the idea, and Colin Parrôt then approached Network Ten with the concept in January 2005. Network Ten entered into a licensing agreement with Evergreen on 25 February 2005, having agreed on 27 January 2005 that the show would be called DISCOVER DOWNUNDER. Network Ten broadcast two series of DISCOVER DOWNUNDER in 2005 and 2006. After this, the Nine Network agreed to take up the show, and broadcast series 3, 4 and 5 in the period from 2007 – 2009. However, in early 2009 Nine Network could no longer broadcast the show nationally, which undermined the sponsorship arrangements that provided funding for it. Colin Parrôt then began to negotiate with Network Seven for the national broadcast of DISCOVER DOWNUNDER. At the same time he began developing a separate television program focusing on Australian bush festivals called “What’s up Down Under”. Ultimately, the relationship between Evergreen and Bauer broke down. Warren Parrôt was made redundant from Trader Classifieds in June 2009 and he began working for Evergreen to negotiate with Network Seven for the broadcast of a program under the DISCOVER DOWNUNDER name. However, on 24 September 2009, Network Seven made a written offer to a company controlled by Colin Parrôt to broadcast a minimum of 30 episodes of “What’s Up Downunder”. Further, on 5 October 2009 Trader Classifieds announced the return in 2010 of the broadcast of DISCOVER DOWNUNDER to be filmed by WTFN, an independent production company, using the support of some of the same caravanning industry sponsors used for the version of the show when Evergreen was involved. As noted, on 9 October 2009 the Application was lodged by Evergreen.

2.2    The Delegate’s Decision

186    At the hearing before the Delegate, Bauer contended that the Application should be refused essentially because any use by Evergreen of DISCOVER DOWNUNDER was for and on behalf of Bauer. As is typical in trade mark oppositions, this was expressed in several different ways having regard to the particular grounds of opposition available under the Act.

187    The Delegate’s Decision indicates the manner in which the case was put as follows:

(1)    In the context of the ground that Evergreen did not own the mark (s 58 of the Act), Bauer contended that Warren Parrôt, as an employee of Bauer, was the author of the name and that by reason of the relationship between Bauer and Evergreen, it was Bauer and not Evergreen who had first used the mark in connection with the production of television programs. Furthermore, since 2005 Bauer has used the trade mark in the operation of a website and secured sponsorship arrangements and derived significant income from the use of the trade mark the subject of the application.

(2)    In the context of the ground that the Application is similar to a trade mark that has acquired a reputation in Australia (s 60 of the Act), Bauer contended that by its use of DISCOVER DOWNUNDER in connection with the television series, it had established a reputation in Australia and that any registration of DISCOVER DOWNUNDER in the name of Evergreen would be likely to deceive or cause confusion

(3)    In the context of the ground that the use of the Application would be contrary to law (s 42(b) of the Act), Bauer contended that the use by Evergreen of the mark would be likely to be misleading or deceptive and thereby contravene ss 18 and 29(1)(g) and (h) of the Australian Consumer Law because of the reputation that Bauer had developed in the DISCOVER DOWNUNDER show. By reason of that reputation, Bauer contended that Evergreen’s use of the mark would falsely convey to the public that there was a connection between Evergreen and Bauer.

(4)    In the context of the ground that the Application was made in bad faith (s62A of the Act), Bauer contended: that Evergreen had derived substantial revenue from providing services to Bauer Media in connection with the DISCOVER DOWNUNDER series; that during the 5 years that Evergreen provided production services to Bauer Media, it did not make any claim to the DISCOVER DOWNUNDER trade mark; and that it was only after Bauer Media terminated Warren Parrôt’s employment and the future of the television series became uncertain that Evergreen developed a competing product, namely the “What’s Up Downunder” program.

(5)    In relation to the ground that the trade mark is not capable of distinguishing the services from the goods or services of other persons (s41 of the Act), Bauer contended that the trade mark examiner had accepted the application on the basis that the words “discover” and “downunder” are relatively non-distinctive, and that accordingly only by operation of s 41(5) could the mark achieve registration. It submitted that in circumstances where the only use of the DISCOVER DOWNUNDER mark inured to the benefit of Bauer, not Evergreen, the Application should be refused;

(6)    In the context of the ground that Evergreen did not at the time of the application intend to use the mark (s 59(a) of the Act), Bauer contended that the development by Evergreen and Colin Parrôt of the show “What’s Up Downunder?” was inconsistent with an intention on the part of Evergreen to use the DISCOVER DOWNUNDER mark. In this regard, Bauer relied on evidence that: in June 2009 Evergreen had applied to register as a trade mark WHAT’S UP DOWNUNDER in class 41 for “Production of radio and television programs”; it had also registered this phrase as a business name; and it had had caused a television program with this name to be prepared and broadcast which directly competed with Bauer’s DISCOVER DOWNUNDER show. It submitted that these matters indicated that it was improbable that Evergreen has or had any intention to use the DISCOVER DOWNUNDER trade mark after 9 October 2009.

188    The Delegate rejected each of these grounds. He observed that a common thread running through the grounds was the contention that it was Bauer and not Evergreen who had produced (through Evergreen on a commissioned basis) and promoted the television series before the filing date of 9 October 2009. His central conclusions were expressed in relation to the lack of ownership ground, where he found that it was more likely than not that it was either Evergreen, or Evergreen and Network Ten jointly, who authored the name DISCOVER DOWNUNDER, but not Bauer (via Warren Parrôt). Although not clearly stated, the Delegate appears to have regarded it as significant to his conclusions that it was Evergreen, not Bauer, who had entered into the licence agreements with Network Ten and that this led to the production of series 1 and 2 of DISCOVER DOWNUNDER by Network Ten. The application of the words DISCOVER DOWNUNDER in this context appear to have led to the conclusion, expressed in the Delegate’s Decision at [121], that Evergreen had first used the trade mark.

189    The Delegate ultimately was not satisfied that Bauer had discharged its onus of establishing that any person other than Evergreen was the owner of the mark, having regard to a paucity of evidence to support the contention that Evergreen produced the show for and on behalf of Bauer. He said:

[102]    Taking the evidence as a whole, there is much to underpin an interpretation that [Bauer] was motivated to support the television series and see it brought to air, if necessary on a rival network, for the sole reason to boost circulation of its stable of camping and caravanning magazines if that could be done without cost to it and (so it follows) with as little commitment from it as was required to bring that about.

190    Thus, although the arrangements between Bauer and Evergreen were sufficient to indicate that Bauer had provided “support” for the television series, no agreements adduced in evidence indicated to the satisfaction of the Delegate that Evergreen had produced the television series for or on behalf of Bauer.

191    The Delegate found that these findings yielded the consequence that Bauer had not established that it was the owner of the mark (s 58), had not established that it had a reputation in the mark (s 60), had not established that by use of the mark Evergreen would cause consumers to be misled (s 42(b)), and had not established that the acceptance of the application by the examiner under s 41(5) could only have arisen on the basis of the use by Bauer of the trade mark.

192    It is relevant to quote the following aspects of the Delegate’s reasons for rejecting the ground advanced pursuant to s 59(a) of the Act (no intention to use):

[121]    In this case the applicants have [sic – applicant has] used the trade mark. There is no conclusive evidence that use inured to the benefit of the opponents. Use of the trade mark before the time of filing must have a major influence on the question of whether the applicants intended to use the trade mark at the date of filing the application.

193    It is not entirely clear to what “use” the Delegate is referring in paragraph [121], but it appears to be to earlier findings made by the Delegate as to the terms of the agreement between Evergreen and Network Ten, pursuant to which Evergreen granted Network Ten a broadcast licence for the program title “DISCOVER DOWNUNDER” and warranted that it owns and has complete and exclusive rights in each program (at [47], [48]). The Delegate went on:

[122]     Additionally, there is a world of difference between being prevented through circumstances from being able to use a trade mark and not having any intention to use it.

[123]     Further, I think there is sufficient indication that the WHAT’S UP DOWNUNDER trade mark is intended for and applied to a different type of “product”, albeit one with common subject matter.

194    In the result, the Delegate dismissed the opposition with costs.

3.    THE DECISION OF THE PRIMARY JUDGE

3.1    Introduction

195    In the Opposition Appeal, Bauer (with one significant exception) relied upon the same broad grounds that were advanced before the Delegate, save that in its closing submissions it abandoned reliance on the inherent adaptability ground based on s 41 of the Act. The exception concerns Bauer’s attempt to advance an argument not only that any use by Evergreen of the DISCOVER DOWNUNDER trade mark was by or on behalf of Bauer, but, in the alternative, that even if Evergreen had used DISCOVER DOWNUNDER as a trade mark, it had failed to do so in relation to the particular services specified in the application, namely for “the production of television programs”.

196    For reasons further explained below, the primary judge refused to permit Bauer to advance this alternative argument and it is this refusal that is the focus of Bauer’s Draft Appeal before this Court. Related submissions are also made in relation to the appeal from the decision of the primary judge in the Non-use Proceedings.

3.2    The relevant findings of the primary judge

197    Of particular relevance is the pleaded case in the Amended Notice of Appeal before the primary judge concerning the ground of opposition advanced under s 59 of the Act, which is set out in full below (the underlined words are those which were added in the amended version):

15.     The Delegate erred in finding at paragraph 124 of the Decision that the Appellants failed to establish a ground of opposition under s 59.

Particulars

The Appellants refer to and rely upon the matters set out in paragraphs 69 and 70 of the Submissions.

The Appellants may provide further particulars after the evidence in this proceeding is filed.

16.     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.

17.     The Delegate erred at paragraph 121 of the Decision in failing to find that any use by the Respondent of the Opposed Mark inured to the benefit of the Opponents.

18.     The Delegate erred in finding at paragraph 123 of the Decision that there was a sufficient indication that the Respondent's WHAT'S UP DOWNUNDER trade mark is intended for, and applied to, a different type of product to the Discover Downunder television series.

19.     The Delegate should have found that the Appellants made out a ground of opposition under s 59.

198    The underlined words were introduced by amendment without objection in November 2015, some 6 months before the hearing date.

199    The learned primary judge rejected all of the grounds of opposition. She made careful and extensive findings of fact based on detailed affidavit evidence and cross examination. In relation to the challenge under s 58 (ownership), the primary judge found that Bauer had failed to prove that Bauer had used DISCOVER DOWNUNDER prior to Evergreen’s use of the mark in concluding the licence agreement with Network Ten on 25 February 2005.

200    The only findings that are challenged in the Draft Appeal concern the ground of opposition that relies on s 59 of the Act. The primary judge considered that two issues were raised in closing submissions in relation to this ground, which she summarised as follows:

[302]     In closing address, Bauer put its opposition to registration of the Mark by Evergreen under s 59(a) of the Act in two ways.

(1)    First, Bauer submitted that properly construed, Evergreen's description in its application of the services for which registration is sought would not embrace use of the Mark in the way in which Evergreen intends, namely, to name television programs (the registration application construction issue).

(2)    Secondly and in the alternative, even if Evergreen's description of the services for which registration is sought would embrace use of the Mark to name television programs, Bauer contends that the evidence discloses that as at the date of the registration application, Evergreen had no intention to use the Mark to name television programs. Rather Evergreen had committed instead to using the name "What's up down under" for the one and only television series which Evergreen intended to produce (the factual use issue).

201    It will be seen that the second of these bases is similar to the argument advanced before the Delegate on this subject.

202    The central finding that Bauer challenges in its Draft Appeal is the primary judge’s refusal to permit Bauer to advance in closing submissions an argument based on what she defined as the “registration application construction issue”. In short, that argument was that the services are confined to “production of television programs”. Bauer contended that the evidence given in the proceedings does not demonstrate that Evergreen intended to use or used DISCOVER DOWNUNDER in respect of those services, but simply as the name for a television show. This, it submitted, was fatal to Evergreen’s ability to demonstrate that it intended to use the mark. The primary judge’s conclusions in this respect give rise to all of the grounds of appeal set out in the Draft Appeal.

203    In this regard the reasoning of the primary judge was as follows:

(1)    Objection was taken by Evergreen to the issue being raised. It submitted that the point was not advanced before the Delegate but was raised for the first time in cross-examination of Colin Parrôt and in closing written submissions on appeal. Evergreen submitted that the issue was not clearly raised in the Amended Notice of Appeal and leave was required for it to be raised. Bauer responded by contending that the argument had been fairly raised in paragraph 16 of the Amended Notice of Appeal and that in the context of a hearing de novo, the issue was properly pleaded and advanced in closing submissions.

(2)    Paragraph 16 of the Amended Notice of Appeal referred to the Delegate’s Decision at [121]. At [307] the primary judge notes that the Delegate considered that actions before the filing date may have a bearing on the matter of intention to use the mark, and then quotes paragraph [121] of the Delegate’s decision (set out above in [189]) where the Delegate makes his finding that Evergreen has used the Trade Mark.

(3)    The primary judge then states:

[309]    I accept that this is a hearing de novo. Nonetheless the fact that the registration application construction submission was not raised before the Delegate is relevant to the question of whether Evergreen can fairly be said to have been on notice of the issue: see by analogy SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; (2006) 228 CLR 152 at [35]. Given therefore that paragraph 16 of the notice of appeal must be considered in a context where the issue had not been raised before the Delegate, in my view the paragraph did not fairly give notice of the intention to raise the registration application construction issue now relied upon by Bauer as the primary basis on which it opposes registration under s 59. First, paragraph 16 is ambiguous in that it can be read as seeking to press only the factual use issue, being the basis on which registration of the trade mark was opposed under s 59 before the Delegate, or as intended to raise the registration application construction issue. Secondly, that the amended paragraph should be read in the first sense is reinforced by the fact that paragraph 16 attacks a finding by the Delegate dealing only with the factual use issue and that it is difficult to say that the Delegate erred in failing to make a finding which she was not asked to make.

(4)    The primary judge then finds that the issue was not identified by Bauer in its oral or written outlines in opening. When challenged on why it was not raised in oral submissions in opening, Ms Baird SC, who appeared for Bauer at trial, contended that to do so in the presence of Colin Parrôt, who was then sitting in Court, would be to signal a line to be taken in cross examination. The primary judge then observes (emphasis added):

[313]    The difficulty with that proposition, however, is that the new argument turned upon the manner in which the words in the trade mark application were to be interpreted, no party having in reality been in any doubt as to the fact that Colin Parrôt wished to use the trade mark as the name of a television program. The line of cross-examination which was pursued with Mr Colin Parrôt did no more than confirm that intention.

(5)    The primary judge then concluded that the argument was identified as a “primary and distinct ground” on which the s 59 opposition was pressed for the first time in closing submissions. In those circumstances, she considered that leave to amend was necessary. Bauer did not seek leave to raise the argument and amend its pleadings. Even so, her Honour concluded that she would not, if asked, have granted leave, because: first, the issue was raised for the first time in closing submissions with no explanation; secondly, she accepted the submission by Evergreen that it has been prejudiced by the late argument because of being deprived of the opportunity to lead expert evidence as to the manner in which the description of the services in the Application would have been understood in the industry; thirdly, because, whilst unnecessary to decide whether the argument has any real merit, particularly where expert evidence might have borne on the issue, it was “telling” that Bauer did not make the argument before the Delegate; and fourthly, because weight should be given to the fact that the Delegate did not raise any concern with the issue before her.

204    In relation to the “factual use issue”, the learned primary judge made findings of fact that Colin Parrôt did, at the time that Evergreen filed the Application, intend to use it in respect of a television program. Bauer had contended that by registering a domain name and applying for a trade mark for WHAT’S UP DOWNUNDER? in June 2009, Colin Parrôt had abandoned all thoughts of using DISCOVER DOWNUNDER in relation to a television show. However, the primary judge accepted the evidence of Colin Parrôt that:

(1)    by late September 2009 Network Seven had decided that it did not wish to be involved in a dispute over the use of a show called DISCOVER DOWNUNDER in circumstances where Bauer had indicated to it and to potential program sponsors that Nine Network intended to continue production of the show with another producer and that by reason of these circumstances it was, in his opinion, commercially impossible to persuade sponsors or other television networks to support a program with the same name as that being used by Nine;

(2)    in 2009 Evergreen began using the name WHAT’S UP DOWN UNDER? instead of DISCOVER DOWNUNDER and instructed its solicitors to send a letter of demand to Bauer. In return, Bauer threatened legal proceedings to restrain the production and broadcasting of WHAT’S UP DOWN UNDER? because it claimed the exclusive right to be associated with the name DISCOVER DOWNUNDER or any program similar to it; and

(3)    Evergreen’s application for registration of the trade mark DISCOVER DOWNUNDER was opposed by Bauer and Evergreen was obliged to wait until that proceeding was completed before it could use the mark commercially without the risk of suit.

205    In the Non-use Proceedings, Bauer relied on s 92(4) of the Act which provides:

(4)     An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a)     that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)     to use the trade mark in Australia; or

(ii)     to authorise the use of the trade mark in Australia; or

(iii)     to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)     has not used the trade mark in Australia; or

(v)     has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(b)     that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)     used the trade mark in Australia; or

(ii)     used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

206    Section 100(1) of the Act provides, in broad terms, that in any proceedings relating to an opposed application for non-use it is for the opponent (i.e. the owner of the trade mark) to rebut the allegation of non-use.

207    The ground relied upon by Bauer under s 92(4)(a) required the primary judge to consider whether or not, when the application for registration of the trade mark was filed, Evergreen had no intention in good faith to use or authorise the use of the trade mark in relation to the services to which the non-use application relates and that Evergreen has not used the trade mark in Australia in good faith in relation to the services in respect of which it was registered. The primary judge concluded as follows (emphasis added):

[374]     Applying first the criterion in s 92(4)(a), I have already found that Evergreen did intend in good faith to use or to authorise the use of the Mark in Australia when it applied for registration of the mark. Accordingly this criterion is not satisfied.

[375]     Secondly and in any event, for reasons earlier given Evergreen was the owner of the Mark having first used the Mark on 25 February 2005, and did in fact use, and authorise the use of, the Mark for the Services from 2005 to 2009. It follows that Evergreen used and authorised use of the Mark at a time before the period of one month ending on the day on which the non-use application was filed, namely, 11 May 2015. In this regard, to the extent that the argument by Bauer under s 92(4)(b) [sic, 92(4)(a)] is premised upon its submission that Evergreen’s description in its application of the services for which registration is sought does not extend to the use of the Mark to name television programs (the registration application construction issue), I have already held that that issue could not be raised without leave, which was not sought.

208    It will be seen from the italicised words in the quote from [375] that there was a direct overlap between the “registration application construction issue” relied upon by Bauer in the Opposition Appeal and in the Non-use Proceedings.

209    Under the s 92(4)(b) ground relied upon by Bauer, it was necessary for Evergreen to rebut Bauer’s allegation that there had been no use in good faith by it of the DISCOVER DOWNUNDER Mark in the period from 11 May 2012 to 10 May 2015. It was not in issue that Evergreen did not use the DISCOVER DOWNUNDER mark in that period, however, Evergreen relied on the operation of s 100(3)(c) of the Act, which provides:

(3)    For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used , or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

…

(c)    the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

210    The primary judge accepted Evergreen’s submissions that because Bauer was continuing to broadcast the television program under the name DISCOVER DOWNUNDER after the filing date of the application, it had established that there was an obstacle to the use of the trade mark during that period.

211    The primary judge also accepted Evergreen’s submission that the Court ought to exercise its discretion under s 101(3) of the Act so as not to make an order for the removal of the Application. That subsection provides:

(3)    If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

212    In this regard the primary judge considered first, that there was no independent evidence to suggest that not removing the Application (despite non-use) would cause confusion or deceive the public by reason of the reputation which DISCOVER DOWNUNDER may have acquired in the period from 2010 to 2015, notwithstanding Evergreen’s association with the mark prior to that time (as noted at the end of the closing credits). Secondly, she noted that she had already found that Evergreen intended to and continues to intend to use DISCOVER DOWNUNDER. Thirdly, she also accepted that the sustained response by Evergreen to the opposition and appeal from the opposition indicated a continued intention on the part of Evergreen to use it. Fourthly, she accepted that there was a real and practical impediment to Evergreen using the mark by reason of Bauer continuing to broadcast the television program under the name DISCOVER DOWNUNDER. Finally, the primary judge considered that the conduct of Bauer, in continuing to use the name without Evergreen’s permission despite being on notice of Evergreen’s claim to ownership, was relevant.

4.    THE ARGUMENTS ON APPEAL

213    It is convenient first to identify the arguments raised on appeal in the Draft Appeal and the Non-use Appeal, before turning to the relevant law and consideration of the arguments raised.

214    In the Draft Appeal Bauer raises three broad arguments that were developed in argument as follows.

215    First, it contends (grounds 4, 5) that the primary judge erred in finding at [315] that Bauer was not entitled to raise the registration application construction issue without first obtaining leave to do so (the pleading issue). It will be recalled that this argument concerned the proper construction of the services in respect of which the Application was sought, namely, “production of television programs”. The nub of the argument that Bauer sought to advance below was that the use of DISCOVER DOWNUNDER as the name of a television show does not constitute use for the production of television shows. Bauer contended that the clear evidence, and apparently agreed position between the parties, was that Evergreen used the trade mark only for the former. As such it had no prior use of the mark and no intention to use it for the latter. Bauer contended at trial that this issue was adequately raised in paragraph 16 of its Amended Notice of Appeal and by reference to the manner in which it opened and conducted its case. It now submits that the primary judge incorrectly found that the issue was not adequately raised.

216    Evergreen contends that paragraph 16 of the Amended Notice of Appeal is ambiguous and accordingly could have several meanings. It submits that the ambiguity of the pleading is to be resolved having regard to the manner in which the proceedings were conducted by the parties before the Delegate. In those proceedings the question of whether or not the use of DISCOVER DOWNUNDER in respect of the television show amounted to use in the production of television programs did not arise. This was because the issue between the parties was confined to consideration of which party should be regarded to have used the mark and Bauer contended in effect that any use by Evergreen was as its agent or under their authority and direction and should be regarded as use by Bauer. In that context, the only possible reading of paragraph 16 prior to amendment was that it challenged the Delegate’s decision that Evergreen had used the mark at all, and the original meaning did not change by reason of the amendment.

217    Evergreen further submits that after the amendment Bauer continued to argue that there had been no use by Evergreen because any use of DISCOVER DOWNUNDER in relation to the television show was by or on behalf of Bauer. In this regard, Evergreen submits that paragraph 16 is to be regarded as simply amplifying that submission. It should not be construed to be read as raising a new argument, namely that use by Evergreen of the words DISCOVER DOWNUNDER as the name of a television program is not use in respect of the production of television programs within class 41. Such an approach would be inconsistent with the argument advanced before the Delegate because it indicates that even use by or on behalf of Bauer would not be sufficient; therefore, it represents an inconsistent alternative argument that ought to have been clearly pleaded. Accordingly, Evergreen submits that the primary judge was correct to find that the argument had not been sufficiently raised. Furthermore, Bauer did not before the primary judge seek leave to amend its Notice of Appeal to raise the argument, which was no doubt a considered tactical decision. It has the effect of leaving questions of prejudice, adjournment and the administration of justice to one side. Evergreen submits that in making that decision Bauer was unwilling to risk affording Evergreen the opportunity to meet the point on amendment.

218     Secondly, Bauer contends that the primary judge should have proceeded to consider the scope of the services in the context of the evidence and concluded that Evergreen did not have the requisite intention to use the mark in relation to those services (grounds 6, 7) (the section 59 issue). It submits that properly understood, naming a television program DISCOVER DOWNUNDER does not represent use or the proposed use of that name for the “production of television programs” within class 41, which as ordinary English words concern the act of producing or creating television programs. If Evergreen had intended to use the mark for the name of a television program it should have been for goods in class 9, not services in class 41. The primary judge acknowledged at [313] that there was no dispute that the evidence of Colin Parrôt on behalf of Evergreen was that it wished to use the words DISCOVER DOWNUNDER as the name of a television program only. Accordingly, Bauer submits that this court on appeal should reach the same conclusion.

219    Evergreen submits that the parties conducted the proceedings before the primary judge prior to final submissions on the basis that there was no issue between them as to construction of the services. No evidence was called from a person experienced in the television production industry as to trade meanings to be attributed to the words in question. Evergreen accepts that while it is “in one sense” correct to say that Evergreen only ever intended to use the name DISCOVER DOWNUNDER as the name of a television program, that program was not a “product” offered for sale by Evergreen but it formed the “engine of a broader commercial activity undertaken by [Evergreen] which it offered to publishers and broadcasters, and which constituted the only commercial reason for making the program in the first place”. By reference to a range of factual findings made by the primary judge, Evergreen contends that the use and proposed use by Evergreen of DISCOVER DOWNUNDER was within the class of services for the production of television programs. Evergreen submits that it is only when one first abbreviates the activities associated with the name of DISCOVER DOWNUNDER to describe it as a television program, and then inserts a false dichotomy between products and services, that the argument advanced by Bauer appears plausible. It further contends that the primary judge’s apparent view on this subject (although she did not have to decide it) was that the proved and proposed use was within the language of the class claimed.

220    The third point advanced by Bauer in the draft Appeal is focused on the factual question of the intention of Evergreen to use the DISCOVER DOWNUNDER mark at the filing date (grounds 1, 2, 3 and 8). The primary judge found at [339] that Evergreen had a bona fide intention of using DISCOVER DOWNUNDER. In her reasoning at [323], the primary judge posed the question as whether there was a bona fide intention by Evergreen to apply DISCOVER DOWNUNDER “to a television program”, in circumstances where WHAT’S UP DOWNUNDER had been used for the equivalent program to DISCOVER DOWNUNDER which Evergreen produced for broadcast on Channel Seven. Bauer submits that this is not the correct question, which ought to have been whether or not Evergreen had the intention to use the Mark in relation to the services specified in the Application, and without consideration to the circumstances concerning the WHAT’S UP DOWNUNDER program. Evergreen correctly points out that this is simply a subcategory related to the second issue, and it is not necessary to refer to it further.

221    In the appeal in relation to the Non-use Application, a number of similar issues arise.

222    With respect to the s 92(4)(a) issue (grounds 1, 2 and 6), Bauer submits that the question focuses on whether, at the date of filing the Application, Evergreen had no intention in good faith to use DISCOVER DOWNUNDER in relation to the services to which the application related. As noted above, at [375] the primary judge refused to permit Bauer to advance the registration application construction issue in relation to s 92(4)(a). Accordingly, the outcome of the pleading issue and the section 59 issue will determine the outcome of the s 92(4)(a) appeal.

223    In relation to the s 92(4)(b) issue (grounds 3 and 5(c)), Bauer contends that substantially the same issues arise, but that because there is no dispute that Evergreen has not used the DISCOVER DOWNUNDER mark in the relevant non-use period, the question for determination was whether, under s 100(3)(c) of the Act, there was an obstacle to the use of the trade mark. Bauer submits that the primary judge erred in finding that Evergreen had rebutted the non-use allegation because of the operation of s 100(3)(c).

224    In relation to the discretionary considerations which arise under s 101(3) of the Act, Bauer contends that exercise of discretion has miscarried (grounds 4, 5 and 6). In this context, Bauer contends that the primary judge failed to focus on the correct question, namely whether the obstacles to use facing Evergreen concerned the use of DISCOVER DOWNUNDER in respect of the production of television programs. On this basis, the primary judge ought to have found that it was not reasonable to exercise the discretion under s 101(3) not to remove the Mark from the Register. Evergreen accepts that the additional argument raises the same question but contends that there is an additional hurdle to success facing Bauer, which is that it must establish error on the part of the primary judge within the meaning of House v R [1936] HCA 40; (1936) 55 CLR 499.

5.    THE RELEVANT LAW

225    The Opposition Appeal was filed in the Federal Court pursuant to s 56 of the Act, which provides that an applicant or opponent to opposition proceedings may appeal to the Federal court from a decision of the Registrar.

226    A Notice of Appeal is required to be filed, pursuant to r 34.24 of the Federal Court Rules 2011 (Cth) (FCR) which provides:

34.24 Starting an appeal—filing and service of notice of appeal

(1)    A party who wants to appeal from a decision of the Commissioner must, within 21 days of the date of the decision, file a notice of appeal, in accordance with Form 92.

(2)    A notice of appeal must state the following:

(a)    the Commissioner from whom the appeal is brought and the date of the decision;

(b)    whether the appeal is from the whole or a part of the decision (including, if from a part only, details of the part);

(c)    the order or orders sought;

(d)    the grounds relied on in support of each order sought;

(e)    the particulars of each ground relied on.

Note:    The Registrar will fix a return date and place for hearing and endorse those details on the notice of appeal. The return date will be at least 28 days after filing.

(3)    The applicant must serve the notice of appeal on the Commissioner and each other party to the appeal within 5 days after filing the notice of appeal.

227    FCR 34.26 provides:

34.26 Grounds of appeal or particulars not stated in notice of appeal

A party is not entitled to tender any evidence or make any submissions in support of:

(a)    a ground of appeal not stated in the notice of appeal; or

(b)    a ground of appeal of which particulars have not been given in the notice of appeal.

228    An appeal from the decision of a Delegate is an appeal in name only. The use of the word “appeal” in s 56 does not confer appellate jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the Delegate, as an executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time; New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213; (2004) 62 IPR 510 at [44] (Kiefel, Allsop JJ, as their Honours then were, and Crennan J) , Woolworths Ltd v BP PLC (No 2) [2006] FCAFC 132; (2006) 70 IPR 25 at [137] (Heerey, Allsop (as his Honour then was) and Young JJ).

229    Section 197 of the Act provides that on hearing an appeal against a decision or direction of the Registrar, the Court may do any one or more of; admit further evidence; permit examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar; order an issue of fact to be tried as it directs; affirm, reverse or vary the Registrar’s decision; give any judgment or make any order that in all the circumstances it thinks fit; and order a party to pay costs to another party.

230    The requirements of rr 34.24 and 34.26 of the FCR are to be understood in the context of the nature of the appeal to which they refer. They provide a framework for the Court to conduct hearings, but given the nature of the hearing, attention is drawn not to the question of whether or not there is error on the part of the Delegate, but as to what the grounds of opposition raised by the Notice of Appeal are. In this context it is perhaps regrettable that a practice has developed whereby the party applying to the Court for relief pursuant to s 56 of the Act feels obliged to refer to alleged errors on the part of the Delegate. The content of FCR 34.24 does not require this, but rather directs attention to the global question of whether or not the appeal is from the whole or part of the decision (r 34.24(2)(b) of the FCR) and then requires the document to address the orders sought and the “grounds” relied upon and particulars thereof in support of each order (r 34.24(2)(c)-(e) of the FCR). In this context the reference to “grounds” of the appeal should be understood to be to the grounds for opposing registration specified in Division 2 of Part 5 of the Act.

231    In Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010) 240 CLR 590 the plurality (French CJ, Gummow, Heydon and Bell JJ) said the following concerning the scheme of the Act insofar as it concerned the condition of the Register (footnotes omitted, emphasis added):

[22]     Secondly, the legislative scheme reveals a concern with the condition of the Register of Trade Marks.  It is a concern that it have "integrity" and that it be "pure".  It is a "public mischief" if the Register is not pure, for there is "public interest in [its] purity".  The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied. 

[23]    This concern and this interest are reflected in the following scheme.  If an application is made to have a mark registered which does not meet the criteria for registration, there are two opportunities for registration to be prevented.  And if a mark has been registered which does not meet the criteria for remaining on the Register, a further opportunity exists to have the Registrar adjust it. 

[24]     The first opportunity arises when an application is lodged.  Section 31 of the Act creates a duty on the Registrar to examine and report on whether the application has been made in accordance with the Act, and whether there are grounds under Pt 4 Div 2 for rejecting it.  The Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or there are grounds for rejecting it (s 33). 

[25]     Even if the application is accepted, a second opportunity arises.  Section 34 creates a duty on the Registrar to advertise the decision to accept the application in the Official Journal of Trade Marks.  This enables those who wish to oppose registration to do so pursuant to s 52 of the Act.  Section 52 has no standing requirement.  If opposition proceedings are not brought, or if they fail, the trade mark is registered (s 68). 

[26]    However, a third opportunity to ensure the purity of the Register arises, for recourse can be had to s 88 or s 92.  Those sections require applicants under them to be "aggrieved".  It is not the case that any applicant who wants the Register rectified or a mark removed is "aggrieved" merely by reason of that desire:  the word has a filtering function.  But against that legislative background, it is not clear why the word should be construed restrictively rather than liberally. 

232    Part 3 of the Act concerns trade marks and trade mark rights. Section 17 provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.