FEDERAL COURT OF AUSTRALIA

Food Channel Network Pty Ltd v Television Food Network G.P. [2010] FCA 703

THE COURT ORDERS THAT:

1.                  The decision of the delegate of the Registrar of Trade Marks dated 30 October 2008 to remove trade mark registration 733265 from the Register of Trade Marks under the Trade Marks Act 1995 (Cth) (“the Act”) is varied pursuant to s 197 of the Act such that trade mark registration 733265 be removed from the Register of Trade Marks under the Act in respect only of the class 38 services for which it is registered and specified as “Class:  38  Television broadcasting services including free‑to‑air and cable television broadcasting” and trade mark registration 733265 remain on the Register in respect of the class 41 services for which it is registered and specified as “Class:  41  Production of television programs and television entertainment”. 

2.                  The costs of and incidental to the application are reserved. 

3.                  Each of the parties file and serve within 21 days written submissions as to the costs of and incidental to the application.

4.                  The disposition of the costs of and incidental to the application shall be determined on the papers unless a party advises the Court, in its submissions, that it wishes to be heard on the question of costs and if a party does so wish to be heard, a date will be nominated for hearing oral submissions. 

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

Background and short synopsis of contentions

1                     By this application the applicant Food Channel Network Pty Ltd (“FCN”) appeals to the Court in its original jurisdiction under s 104 of the Trade Marks Act 1995 (Cth) (“the Act”) from a decision of the delegate of the Registrar of Trade Marks that “trade mark registration 733265 be removed from the register in respect of all the services for which it is registered”.  The application for removal was made by the present respondent, Television Food Network, G.P. (“TVFN”) under s 92 of the Act on 14 August 2006 on the ground of non‑use pursuant to s 92(4)(b) of the Act. 

2                     Although s 92 of the Act was amended by the Trade Marks Amendment Act 2006 (Cth), the amendments did not take effect until 23 October 2006.  Accordingly, TVFN’s application is governed by s 92 as it stood prior to the amendments.  Section 92 at the relevant date was in these terms:

92.       Application for removal of trade mark from Register etc.

(1)        A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

            …

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

…

(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. 

…

3                     Since the application for removal was filed on 14 August 2006, the relevant period of contended non‑use for the purposes of s 92(4)(b) is the period 14 July 2003 to 14 July 2006. 

4                     Having regard to the powers conferred on the Court under s 197 of the Act, an appeal proceeding under s 104, like an appeal under s 56 of the Act, is a hearing conducted de novo on material properly placed before the Court:  N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited [2008] FCA 1542; Blount Inc. v Registrar of Trade Marks (1998) 83 FCR 50 at 58‑9; 40 IPR 498 at 506; Soncini v Registrar of Trade Marks (2001) 109 FCR 548; 51 IPR 411; Ostrowski‑Meissner v Registrar of Trade Marks (2006) 69 IPR 291 at [7] and [8]. 

5                     However, in a proceeding relating to an opposed application including an appeal proceeding, FCN bears the burden of rebutting any allegation made under s 92(4)(b) that the trade mark has not at any time between 14 July 2003 and 14 July 2006 been used, or been used in good faith, by its registered owner in relation to the relevant services:  s 100(1)(c).  The applicant appellant has relied upon a range of affidavits to seek to rebut TVFN’s contentions of non‑use.  Those deponents have been cross‑examined.  The respondent, TVFN, has relied principally on the affidavits of Ms Jordan (the Senior Vice‑President in charge of international development for TVFN), Mr Tannahill (a Patent and Trade Mark Attorney), as to the sequence of trade mark applications by TVFN and FCN, and Ms Braad (a Solicitor in the employ of TVFN’s Australian Solicitors) as to historical searches of FCN’s website pages at particular dates.  Ms Jordan and Ms Braad were cross‑examined.  Mr Tannahill was not cross‑examined.  Objections to evidence are pressed by each side and those objections are dealt with in these reasons. 

Health World v Shin‑Sun Australia Pty Ltd

6                     Each side called expert evidence directed to the question to whether persons with imperfect recollection dealing with FCN’s trade mark 733265 and particular marks of TVFN might be caused to wonder whether there was a trade connection between those marks.  That question was directed to one of the integers that may have been relevant in determining whether TVFN had standing to apply for removal of FCN’s mark as a “person aggrieved” under s 92(1) of the Act.  However, the policy of the Act demonstrates that those words have a wide meaning to ensure that the register is maintained as an accurate record of marks which perform their statutory function of indicating the trade origin of the goods or services to which it is intended they be applied:  Health World Ltd v Shin‑Sun Australia Pty Ltd [2010] HCA 13 per French CJ, Gummow, Heydon and Bell JJ at [22].  At [43], the plurality noted the observations of Lord Pearce in Daiquiri Rum Trade Mark [1969] RPC 600 at 615:

Thus, the general intention and policy of the Act show, I think, that Parliament intended the words to have a wide meaning.  If an erroneous entry gives to his rival a statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be, affected thereby is “aggrieved” and entitled to ask that the error should be corrected. 

and observed:

Lord Pearce stipulates no requirement that the applicant desires or intends to use or “could use” the mark.  Lord Pearce did not say that a relevant question was whether “the applicant would not take advantage of the opportunity to use the mark”, or whether there was “no reasonable probability” of use.  For him it sufficed that a wrongly registered mark gave its proprietor an advantage to which the proprietor had no entitlement at the expense of rivals.  All that mattered was that there were rivals in relation to the goods to which the mark applied.  It did not matter whether or not they intended to use the mark on those goods. 

and further observed at [45]:

With respect, then, Lord Pearce correctly stated one test, among others, for ascertaining whether a person is “aggrieved”.  It is satisfied here, for Health World and Shin‑Sun are rivals in selling the health products in question.  They are in the same trade, and they each trade in the same class of goods in respect of which the challenged mark is registered. 

7                     Having regard to these observations, questions of whether a person with imperfect recollection having seen TVFN’s applications for registration of particular marks, said to be relevant to standing, might be caused to wonder when seeing FCN’s registered mark 733265 whether there is a trade connection between the marks, is not relevant to the question of whether TVFN is a person aggrieved by trade mark 733265 remaining on the register if the mark ought not to be on the register. 

8                     There are two questions to be resolved in these proceedings.  First, whether TVFN is, under s 92(1) of the Act, a “person aggrieved by the fact that a trade mark is … registered”.  Secondly, whether FCN has discharged the onus of rebutting the contention that “at no time [between 14 July 2003 and 14 July 2006] has [FCN] used [registered trade mark 733265] in Australia or used [it] in good faith in Australia in relation to the goods and/or services to which the application [for removal] relates”. 

TVFN’s contentions

9                     TVFN makes these five central contentions. 

10                  First, notwithstanding the evidence adduced in rebuttal of the contention of non‑use, FCN has failed to establish use of the subject trade mark in the relevant period. 

11                  Secondly, TVFN contends that even if it is assumed that FCN has used the mark in the way it contends, the evidence does not establish that FCN has used the mark in relation to the services in respect of which the trade mark is registered.  Put simply, TVFN contends that FCN does not provide the service of television broadcasting either at all or in the inclusive way described in the registration as “free‑to‑air and cable television broadcasting”.  It may be, it says, that FCN has supplied content to a television broadcaster.  However, the supply of programs or content for transmission by satellite broadcasting in the Asia Pacific region by a body such as “ABC Asia‑Pacific” or, as it is now known, “Australia Network” (and cable re‑broadcasting within countries receiving Australia Network’s satellite transmission) does not engage the service of television broadcasting by FCN as described in the Certificate of Registration.  The television broadcasting service is undertaken or provided by Australia Network.  Nor, it is said, is the supply of programs to a television broadcaster, that is, Australia Network, by FCN for satellite broadcast, a use of the subject trade mark in good faith in Australia in relation to services described as television broadcasting services including free‑to‑air and cable broadcasting. 

12                  Thirdly, TVFN contends that the activity undertaken by FCN in acquiring (that is, by licence) program content from third party suppliers relating to food preparation and the cultural and ethnic influences characterising the preparation and presentation of food and food products, and editing those programs simply for the purpose of adding or endorsing in the credits at the end or the beginning of the program, FCN’s graphic device, does not engage the service of the production of television programs and television entertainment, for which the mark is registered.  Rather, that activity is more properly understood as steps taken in the supply of goods, that is, programs, and having regard to that activity the mark ought to have been registered in respect of class 9 goods rather than production services.  The same reasoning, it is said, applies to the production of programs dealing with related subject matter produced by FCN in conjunction with “NBN Production”. 

13                  Fourthly, TVFN contends that any examples of use of the trade mark and in particular the graphic device on FCN’s website, is not use of the trade mark in relation to the services in respect of which the trade mark is registered as the provision of a website and the uploading of program content to the website for viewing by persons who choose to interrogate the website, does not engage the service of television broadcasting including free‑to‑air and cable broadcasting and nor does it engage the service of production of television programs and television entertainment and is thus not use in relation to the relevant services. 

14                  Fifthly, TVFN says that it is a person aggrieved as it seeks to use particular trade marks in Australia in a common field of activity to FCN in the production, supply and distribution (by television, cable and other electronic means) of programs concerned with food, food preparation and the particular treatment of food products having regard to the cultural and ethical traditions of particular people and thus FCN and TVFN are trade rivals in circumstances where trade mark 733265 erroneously remains on the register.  Further, TVFN says that in respect of a number of its trade mark applications, IP Australia has cited trade mark 733265 as an obstacle to registration having regard to s 44 of the Act and TVFN’s applications were opposed by FCN on the ground of s 44 in reliance on its registered trade mark 733265.  Therefore, it is said, TVFN is a person aggrieved by the fact of registration of trade mark 733265, conferring standing to determine the question of whether trade mark 733265 erroneously remains on the register. 

FCN’s contentions

15                  FCN contends that the evidence it has adduced demonstrates use of the mark in the relevant period in relation to the services in respect of which the trade mark is registered.  It contends that its activity of producing content edited with the subject trade mark for transmission by satellite by Australia Network is use of the mark in relation to the class 38 and class 41 services for which the mark is registered, in Australia, as the footprint for the satellite broadcast by Australia Network covers Australia and is capable of being seen by viewers who have a satellite dish.  Secondly, FCN says that its activities in relation to the dealing in and with licensed programs from third party providers and its activities of causing programs to be produced, edited with the subject trade mark, through the contract use of the facilities of NBN, is use of the trade mark in relation to services described as production of television programs and television entertainment.  FCN further says that uploading program content edited with the trade mark to the website for viewing by persons who choose to interrogate the website also engages the service of television broadcasting as specified.  It follows, it is said, that the examples of use contained within the affidavits relied upon by FCN rebut the contention that at no time has the owner used the trade mark in Australia in good faith in relation to the services to which the rebuttal application relates. 

16                  Having regard to the way the case was conducted, I propose to examine the question of whether FCN has rebutted the contention of non‑use for the purposes of s 92(4)(b) of the Act by examining two questions.  First, whether the evidence demonstrates that FCN has used the trade mark in the way in which it contends and secondly, whether that use, if established, constitutes use of the trade mark in Australia in good faith in relation to services to which the application relates. 

FCN’s website use

17                  One aspect of FCN’s contended use might be addressed at the outset.  FCN contends that it took steps to upload program content to its website which, when examined, contains an animated or moving depiction of the trade mark showing food items depicted in the image on the Trade Mark Certificate rotating around the TV antenna and, in addition, a static image consistent with the graphic image contained in the Certificate.  TVFN contends that any use by FCN of the trade mark in relation to the website is irrelevant having regard to the description of services in the Certificate of Registration.  Objection is taken to evidence concerning use of the trade mark in relation to FCN’s website.  I propose to admit into evidence all of the evidence concerning use of the trade mark in connection with FCN’s website and Ms Braad’s evidence on that question in response, for the purpose of addressing the first question of whether the evidence establishes use, and then determining whether that use constitutes use in relation to the services in respect of which the trade mark is registered.  I also admit the evidence on the footing that evidence of whether FCN’s subject trade mark is contained within video images uploaded to the website within the relevant period may be regarded as evidence that, if it were accepted, could rationally affect (directly or indirectly) the assessment of the probability of the existence of a fact in issue in the proceeding for the purposes of s 55(1) of the Evidence Act 1995 (Cth) on the issue of whether it is more likely than not that the subject trade mark was endorsed upon particular program content in the relevant period. 

18                  TVFN put to the sole director of FCN, Mr Lawrence, in cross‑examination that FCN had first taken steps to upload its graphic image in trade mark 733265 on 1 September 2006 approximately two weeks after TVFN filed its removal application.  Extensive effort was made to analyse archival information of FCN’s website throughout the period from early 2003 until well beyond 14 July 2006 referenced through the archival “Wayback” website.  Ms Braad gave evidence that a solicitor reporting to her had examined pages from FCN’s website for each date in the relevant period and no example of the graphic device had been found until 1 September 2006.  However, as the evidence transpired, a particular space within FCN’s webpage containing moving images consisting of program content and an animated graphic image of the static image within the trade mark registration had not been examined.  Upon further examination during the course of the trial and in particular in relation to, for example, the webpage for the date 17 October 2005, it emerged and was accepted by Ms Braad, that an animated version of the graphic image is contained within the website and so too is a static version of the image, for that date. 

19                  I find therefore that so far as the website is concerned, FCN’s website on 17 October 2005 contained both an animated and static version of the image contained within the trade mark Certificate of Registration and I infer that the image both animated and static was uploaded to the website and able to be seen and examined by persons interrogating the website from at least 17 October 2005 until at least 14 July 2006. 

20                  The resolution of that matter, leaves aside for the moment, the question of whether use by FCN of the trade mark by means of its website is use of the trade mark in relation to services in respect of which the mark is registered. 

The subject trade mark

21                  Mr Paul Lawrence is the sole director of and shareholder in FCN.  On 27 March 1997, Mr Lawrence caused “The Food Channel Pty Ltd” (“TFCPL”) to be incorporated.  He is the sole director of and shareholder in TFCPL.  On 28 April 1997, TFCPL filed an application under the Act for registration of a trade mark consisting of the words THE FOOD CHANNEL and an image depicting various items of food suspended above a television aerial or television antenna suggesting motion around the antenna.  The trade mark was entered on the register on 21 January 1998 and registered from 28 April 1997.  The Trade Mark Certificate describes the trade mark as, “Word:  THE FOOD CHANNEL”; “Image:  FOOD ITEMS SPIN AROUND TV ANTENNA” and the graphic image is depicted as follows:

22                  The image is black and white as depicted.  The owner is shown as FCN rather than TFCPL and the trade mark is registered in respect of two classes of services, namely: 

Class:  38  Television broadcasting services including free‑to‑air and cable television broadcasting

Class:  41  Production of television programs and television entertainment

Some general notions

23                  There is, obviously enough, at the very core of trade mark registration, a statutory relationship between the “sign” constituting the trade mark (in this case the words and graphic device) and the goods or services provided in the course of trade by the owner through use of the sign (or intended use):  s 17.  A person may apply for the registration of a trade mark in respect of goods or services (or both) and the application must specify in accordance with the regulations the goods or services (or both) in respect of which registration is sought:  s 27(1), s 27(3).  The exclusive rights given by registration subject to Part 3 of the Act are the right to use, and authorise others to use, the trade mark in relation to goods or services in respect of which the trade mark is registered (s 20); and the right to obtain relief if the trade mark is infringed (s 20(2)).  Apart from other considerations arising under Part 12, the starting point under s 120(1) of the Act is that a registered trade mark is infringed if the 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. 

24                  These are, in one sense, trite observations but they emphasise that what must be rebutted is that at no time during the relevant period has the owner used the trade mark in relation to the services(class 38 services and class 41 services as specified) to which the application for removal relates, that is, the services in respect of which the trade mark is registered recognising, of course, that whether services fall within a particular specification as registered is a question of construction which does not accommodate fine distinctions or slight differences but asks whether use relates to the fundament of the selected description.  In this case, the question is whether FCN’s use is in relation to services falling within the descriptions “television broadcasting services including free‑to‑air and cable television broadcasting” or the “production of television programs and television entertainment”  Although the applicant makes reference to the Trademark Law Treaty agreed at Geneva on 27 October 1994 and acceded to by Australia on 21 January 1998 (which was the subject of a revision, the Singapore Treaty on the Law of Trademarks (2006) for the harmonization of administrative trade mark registration procedures), the International Agreement relating to the classification of goods and services is the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks reached in 1957 at Nice, revised at Stockholm in 1967 and Geneva in 1977 and amended in 1979 (the Nice Union).  Australia became a party to the Nice Agreement on 8 April 1961 and the Geneva revision on 6 February 1979.  The international classification of goods and services is adopted by Part 3 of the Trade Mark Regulations 1995 (Cth) for the purposes of s 19(3) of the Act. 

The evidence of Mr Lawrence

25                  Mr Lawrence gave this evidence‑in‑chief. 

26                  Mr Lawrence is a professional cook and has been involved in the food and catering businesses for 25 years having been involved in catering for the film and television industry.  He began a catering business in 1993 and through that experience assembled a body of recipes and anecdotes concerning catering and the film industry.  He decided to develop a “television food channel with video/film programs” utilising his knowledge and experience.  On 22 July 1997, “with the advent of the internet and the opportunity to advertise and broadcast through the internet” he developed a website and registered a domain (foodchannel.com.au) “dedicated to all things food”.  Mr Lawrence says that he continued to develop the website as “new programs and new tools became available for use on websites such as video streaming and flash drive”.  Mr Lawrence says that from 1997 he produced film for videos, CDs and DVDs for broadcasting on “various distribution mediums of television etc to promote all things food and food related products”.

27                  Mr Lawrence says that in January 2004 he decided to expand to a “network in the Asia Pacific area” and decided to re‑name an existing company he controlled as, “Food Channel Network Pty Ltd”, FCN.  On 15 January 2004, trade mark 733265 was assigned from TFCPL to FCN.  Registration of the assignment occurred on 10 February 2004.  From that date, Mr Lawrence caused FCN to authorise TFCPL to use the trade mark.  He says that from 1997 TFCPL used the trade mark as owner and from 15 January 2004 FCN used the trade mark as owner and TFCPL used it as “authorised user”.  Unhelpfully, throughout Mr Lawrence’s principal affidavit in describing the chronological events, he uses the term “Food Channel” as a collective description of both companies.  It seems however that TFCPL is the contended user of the mark in the period up to 15 January 2004 and thereafter both entities are said to have used the mark in their respective capacities.  At para 17 of Mr Lawrence’s principal affidavit he describes the contemporary sources of income derived by both entities in these terms:

17.       …

(a)        licensing of the video to various broadcasters;

(b)        airtime;

(c)        production of video programs for television broadcasting, advertising and promoting content and production of proprietary food products and services;

(d)        in store presentation for food products by cooking demonstrates and video, selling video productions, DVDs, printed material of recipes etc;

(e)        promoting food, kitchenware and BBQ products of various food producers and product manufacturers used in cooking and entertaining …

28                  At para 18, Mr Lawrence gives examples of the para 17 activities, in these terms:

18.       Examples of this process are a series of food genre video programs produced by Food Channel [that is the collective description for both entities] in Australia and broadcast on niche channels distributed through free‑to‑air satellite television, and DVDs etc.

(a)        “Food Facts” (Italian) is a program series sponsored by ABC Asia Pacific which was a cooking video series which focussed on Facts of regional Italian cooking by an Australia Italian.  This broadcast quality television production was produced in the Hunter Valley and broadcast on television. 

(b)        “Ethnic Cooking” is  another television series that was broadcast via free‑to‑air digital satellite television on the niche genre television service. 

29                  Mr Lawrence says that in November 2001 he met Mr Styles who was the director of sales and marketing for the Australian Broadcasting Commission, Asia‑Pacific.  ABC Asia Pacific was seeking video content for its broadcast service.  Mr Lawrence saw an opportunity to produce content and supply it to ABC Asia Pacific for broadcasting and distribution by ABC Asia Pacific by a satellite service into the Asia Pacific region by means of the satellite footprint provided by the PanAmSat PAS 2 and PAS 8 satellites used by the broadcaster.  Mr Lawrence says that the footprint for these satellites covers the whole of Australia and reception of the unencrypted transmission is available to anyone in Australia who has an appropriate satellite dish.  The only encrypted transmissions by ABC Asia Pacific according to the evidence of Mr Styles all of which I accept were transmissions of Rugby Union games.  At paras 14 and 21 of Mr Lawrence’s principal affidavit, he gives a very broadly based and short unparticularised generic description of the production and distribution of program material which simply swears the issue in a conclusionary way. 

30                  At para 22 Mr Lawrence says that it has been his intention to establish a food channel for all things food and food related in much the same way as there is a “History Channel” or a “Golf Channel”. 

31                  Mr Lawrence describes his activities in greater detail in these terms. 

32                  From 2002 to 2004 TFCPL and FCN licensed for two years the right to broadcast a 39 part program series entitled “Ethnic Cooking” from a company described as “Avoca Media” apparently owned and controlled by Mr Tom Parkinson.  Mr Lawrence says that each of these video programs was edited by inserting an animated version of the graphic image on trade mark 733265 “at the beginning, during and at the end of each program”.  The editing was done by an audio visual equipment hire and production company called “Pro‑Cam” owned by Mr Ian Bates.  Mr Lawrence says that in 2002 he arranged with Pro‑Cam to digitally animate the image on trade mark 733265 in such a way that the food rotates around the TV antenna and to edit the animation onto each Ethnic Cooking program for broadcasting.  He says that Ethnic Cooking video programs edited with the animated image were broadcast by ABC Asia Pacific “for approximately five days per week over the seven day week for a period of two years from around July 2002 to November 2004”. 

33                  In the period 2003 to 2006, TFCPL and FCN purchased a number of video programs entitled “On the Land” from a production company called Ibis Ridge Pty Ltd (“Ibis”) apparently controlled by Mr Les Abel.  These programs were four to five minute video programs.  Mr Lawrence says that these programs were also edited with the animated image “at the beginning, during and end of each video program”.  Mr Lawrence says these video programs were broadcast on television by ABC Asia Pacific in the period 2003 to 2006. 

34                  In 2005, TFCPL and FCN acquired further programs from Ibis for broadcasting on FCN’s website. 

35                  Mr Lawrence says that during the period from July to October 2003 TFCPL and FCN produced and edited 97 four to five minute programs entitled “Food Facts” which were produced for the purposes of a contract with ABC Asia Pacific dated 23 January 2003.  That contract described the programs as the “2003 Program Series (Part 1)” consisting of 97 programs including various subjects with “stand alone themes on food preparation and production”.  The contract provided that the programs would be telecast by ABC Asia Pacific “through its distribution network, cable and direct‑to‑home as shown on footprint maps attached”.  No maps were attached to the copy of the letter annexed to Mr Lawrence’s principal affidavit.  The contract entitled the broadcaster to unlimited playing of the programs in perpetuity.  The total cost of the 97 programs was $110,000.  Mr Lawrence was to provide a delivery schedule for the 97 programs which would fit into the programming schedule of ABC Asia Pacific.  The “Food Facts” delivery schedule shows that episodes 1 to 50 were to be supplied during the period 24 October 2003 to 17 November 2003. 

36                  Mr Lawrence says that these videos were broadcast by ABC Asia Pacific from September 2003. 

37                  Mr Lawrence describes the production of each of these programs in this way.  The first series of “Food Facts” was entitled “Italian Food Facts”.  The star of the show was Mirko Grillini.  The production was filmed on site in the Hunter Valley from 12 May 2003 to 15 May 2003.  Twenty episodes or programs of Italian Food Facts were produced.  The programs were completed and delivered for broadcasting in August 2003.  The production was done at the studios of NBN Enterprises (trading as “NBN Productions”) in Newcastle.  TFCPL contracted with NBN Productions for the provision of “production facilities to produce 20 cooking segments for the Food Channel”.  The price was $13,200. 

38                  The second series of “Food Facts” was entitled “Contemporary Food Facts” and consisted of 20 programs dedicated to a separate recipe in each case.  The star of these programs was Katie Carruthers.  The videos were filmed in and around Newcastle.  The programs were produced in the studios of NBN Television in Newcastle and according to the delivery schedule, the programs (episodes 21 to 40) were to be delivered to ABC Asia Pacific between 8 October 2003 and 6 November 2003. 

39                  The third series of “Food Facts” (episodes 41 to 50) was entitled “Educational Food Facts”.  The series looked at the work of chefs in educational institutions and the facilities and courses offered by those institutions concerning food and technology related to food.  The programs were filmed at a TAFE College in Newcastle on 15 July 2003.  The programs were sponsored by the Hunter Institute of TAFE in May 2003.  The delivery schedule provides that these episodes were to be delivered to ABC Asia Pacific by 17 November 2003. 

40                  Mr Lawrence says that in early 2005 expanded broadband internet capacity became available.  He says he therefore took the opportunity to upload video footage to the website “under the animated trade mark 733265”.  As already indicated, the evidence establishes that both the static image and an animated version of the trade mark image was present on the website from at least 17 October 2005. 

41                  Mr Lawrence says that during May 2005 FCN assembled a video compilation of video programs featuring excerpts from the “Ethnic Cooking”, “On the Land” and “Food Facts” programs incorporating the animated image from trade mark 733265.  Mr Lawrence says that that compilation also included excerpts from programs described as “What’s Cooking”.  On 24 May 2005, the video compilation was sent by email to “Visual FX” for editing by Mr Matt Graham of Visual FX for inclusion in a television program called the “Stained Glass Fishbowl” program.  The compilation was included in the program material as a “sponsorship” which bore the characteristics of an advertisement.  Mr Lawrence says that the sponsorship of the program by FCN was designed to promote FCN’s website (foodchannel.com.au).  Mr Lawrence says the program containing the video compilation and animated image from trade mark 733265 was broadcast by a public broadcaster called “Briz 31” in Brisbane 16 times between 1 June 2005 and 15 July 2005.  Mr Lawrence says that after the broadcasting of the program, he noticed an increase in visitations to the FCN website. 

42                  Mr Lawrence’s evidence given in his principal affidavit was sought to be corroborated by other evidence going to each of the above contentions of fact. 

The evidence of Mr Bates

43                  Mr William Bates gave this evidence.  Mr Bates is the proprietor of “Pro‑Cam” and has been the proprietor since 1997.  In January 2002, Mr Bates met Mr Lawrence and showed him trade mark 733265 which Mr Bates said consisted of the words “FOOD CHANNEL” and an image which he reproduces at para 2 of his affidavit.  That image is the image at [21] of these reasons and the image depicted in trade mark 733265.  Mr Bates says that Mr Lawrence wanted to put the trade mark “on a series of tapes of programs for television”.  Mr Bates says that he explained to Mr Lawrence that Pro‑Cam could animate the image such that the fruit, meat, food and vegetables would rotate around the TV antenna as depicted in the image.  Mr Bates agreed to use Pro‑Cam’s “Paint Box Graphics” program to produce the animated image for editing onto tapes of Mr Lawrence’s television programs.  Mr Bates says that Pro‑Cam did so “in early 2002”.  He says that it was in about July or August 2002 that Pro‑Cam sub‑let a commercial unit in television studios in Albion, Brisbane to FCN for use in producing cooking and food videos and in utilising Pro‑Cam’s equipment and services.  He says that in the period January 2002 to October 2005 Pro‑Cam provided editing services to FCN by editing onto programs described as “Ethnic Cooking”, “What’s Cooking” and “On the Land” the animated trade mark. 

44                  Mr Bates says that he can recollect that in or about March 2004 Pro‑Cam edited the animated image onto an FCN video.  Mr Bates annexes to his affidavit a copy of a sample DVD produced at Pro‑Cam showing the animated trade mark image and words.  Mr Bates also says that in or about August 2003 he visited the production offices of FCN at the sub‑let premises at Albion and viewed the television series “Ethnic Cooking” to see for himself the quality of Pro‑Cam’s production and editing of the animated image as shown on ABC Asia Pacific television service as it was broadcast to air.  Mr Bates says that he was happy with what he saw.  Apart from the sub‑letting arrangements, Mr Bates says that Pro‑Cam rented production equipment to FCN for its use in the production of programs and Mr Bates annexes a sample invoice directed to a company described as “Food Channel Pty Ltd”.  Mr Bates thought the invoice related to either a camera, camera deck or camera and/or playback equipment.  The equipment hire fee is $80.00 and the date of the invoice is 1 October 2005. 

45                  In the course of cross‑examination, Mr Bates said that he simply dealt with Mr Lawrence under the description “the Food Channel” and the invoice was directed to Food Channel Pty Ltd.  He said he did not know of the company called [FCN].  Mr Bates was asked whether he had any recollection of a graphic image from an alternative trade mark filed by FCN.  Trade mark number 738571 was filed by FCN on 8 July 1997 and registered on 9 February 1998 in classes 38 and 41 in these terms:

Class:  38  Television broadcasting of programs relating to food or cooking, including free‑to‑air and cable television broadcasting

Class:  41  Production and development of television programs and television entertainment relating to food or cooking

46                  The trade mark consisted of the words “TV Food Network” together with an image of a “TV set with aerial, all grot.  Has various items in screen & atop aerial”.  The trade mark was removed from the register for non‑use.  However, the image appearing on the Trade Mark Certificate and put to Mr Bates was this image:

47                  Mr Bates said he had no recollection of the above image being used.  He said that the trade mark supplied by Mr Lawrence for graphics work was the image on trade mark 733265 (that is, the image at [21] of these reasons).  Mr Bates said that he could not recall the titles of the programs edited with the animated image.  He recalled that they were cooking programs and the reference in his affidavit to the titles was based upon Pro‑Cam’s invoicing records from its database which indicated the programs edited over the period.  The editing was undertaken by Pro‑Cam editors under the direction of Mr Bates.  Mr Bates accepted the possibility that Pro‑Cam had simply edited the animated image onto programs such as “Ethnic Cooking” and “On the Land” supplied to FCN but not produced by FCN. 

48                  Although Mr Bates was pressed with the proposition that the image edited onto particular programs was the image at [46] of these reasons, Mr Bates was clear that the logo edited onto the programs was the image at [21] of these reasons in an animated form.  Mr Bates was asked to look at DVD copies of videotape recordings annexed to the affidavit of Mr Tannahill, a member of the firm Ahearn Fox, the Patent and Trade Mark Attorneys for TVFN, as “IRT‑4A” and “IRT‑14”.  The DVD at “IRT‑4A” is said by Mr Tannahill to be a DVD copy of videotape image of broadcasts by ABC Asia Pacific of Italian Food Facts programs “in or around early 2004”.  The original videotape was said to have been received by Mr Tannahill’s firm from “Trade Mark Investigation Services” who received it from ABC Asia Pacific.  Annexure “IRT‑14” is said by Mr Tannahill to be a DVD copy of television segments produced by TFCPL and broadcast by ABC Asia Pacific satellite television service from 2002 from NBN Television in Newcastle.  Annexure “IRT‑14” is said to be a copy of a DVD provided by Mr Lawrence to IP Australia enclosed with its letter of 20 July 2003 and served on Ahearn Fox as evidence of its use of trade mark 738571 for the purpose of resisting an application for removal of the mark for non‑use. 

49                  Mr Lawrence contended in the letter of 20 July 2003 that trade mark 738571 had been used on a continual basis from January 1998 until October 2003 (which having regard to the date of the letter of 20 July 2003 must have been intended to be a prospective continual use date) on what he described as current television productions and broadcasts.  He said the mark was at the date of his letter currently being used on programs broadcast.  Those programs were said to be 30 minute programs produced, compiled and broadcast daily by ABC Asia Pacific by its satellite service. 

50                  Accordingly, it was put to Mr Bates that the image that may have been edited onto cooking programs was the image at [46] of these reasons.  Mr Bates accepted that one of the DVDs in the credit line contained the image at [46] of these reasons and the other DVD in the credit line simply contained a reference to NBN Productions.  Mr Bates could not tell from the DVDs and particularly the one which exhibits the image at [46] of these reasons whether that image was produced through Pro‑Cam’s facilities.

51                  However, although pressed, Mr Bates confirmed his evidence that his involvement with Mr Lawrence was concerned with organising for a new logo to be animated by Pro‑Cam using its paint box software and, as to Mr Bates’ recollection of doing so in March 2004, he said he relied upon the business records of Pro‑Cam.  Mr Bates was shown the DVD annexed to his affidavit and said that the animated logo being an animation of the image at [21] of these reasons was produced at Pro‑Cam and animated on its “Quantel Hal Box” at its facility at Upper Roma Street. 

52                  As to Mr Bates’ recollection of visiting the production offices of FCN in August 2003, it was put to Mr Bates that these events may have occurred in January or February 2002.  Mr Bates has a very clear recollection of attending the premises because he was interested in the technical quality of the ABC Asia Pacific service.  Mr Bates said that he remembered the occasion because it was the first and only time that he had ever seen ABC Asia Pacific service as broadcast.  He recalls watching the program.  He said that he had no independent recollection that the date was August 2003 and relied upon Pro‑Cam’s records as to the date.  Mr Bates said that Pro‑Cam has records of “release dubs” going back to 2002.  Pro‑Cam has records of all the work that it did for Mr Lawrence.  Mr Bates said that all of Pro‑Cam’s invoices for work done for Mr Lawrence exist for that period and “we did a search through the records as to when … we did release dubs on the Asia Pacific service and … I understand that that’s when – that it was around that time [August 2003]”:  T 39, l 45.  As to the directions given by Mr Bates he said that he particularly remembered organising his “paint box operator” to do the production work to animate the logo and that his direction was to produce the logo and insert it into the programs. 

53                  Mr Bates is an independent witness.  Although in giving evidence he had no present independent recollection of the dates of March 2004 and August 2003 reflected in paras 5 and 6 of his affidavit, I am satisfied that he has a proper basis for concluding by reference to his recollection of his engagement with Mr Lawrence, the job to be done and Pro‑Cam’s business records that the dates nominated by him in paras 5 and 6 of his affidavit are the dates when the events occurred. 

54                  Accordingly, I accept Mr Bates’ evidence on these issues. 

The evidence of Mr Styles

55                  FCN called evidence from Mr Styles.  Mr Styles gave this evidence. 

56                  He is a consultant in the television industry.  In the period August 2001 to February 2008 he was the Head of Sales, Marketing and Distribution for ABC Asia Pacific now branded Australia Network.  Australia Network is an Australian international television service telecasting to over 41 countries throughout Asia, India and the Pacific on the PanAmSat set of satellites.  He says that he is well acquainted with FCN and Mr Lawrence.  He says he was aware of TFCPL, the original company, that ABC Asia Pacific dealt with.  He first met Mr Lawrence in 2001 and discussed the possibility of broadcasting food programs on the ABC Asia Pacific network.  He says he is familiar with FCN’s trade mark 733265 which he depicts at para 6 of his affidavit, and the image he says he is familiar with from that trade mark is the image depicted at [21] of these reasons.  He says that image was used on programs supplied by TFCPL and FCN which he describes as the “Food Channel”. 

57                  Mr Styles says he met Mr Lawrence again in January 2002 in relation to a series of programs entitled “Ethnic Cooking” and “What’s Cooking” and reached an agreement with him on behalf of “the Food Channel” to broadcast the programs making up those series of programs through ABC Asia Pacific under the trade mark 733265.  He says that in about July 2002 the programs first went to air on ABC Asia Pacific and continued to be put to air until November 2004.  He says that a variety of programs entitled “Ethnic Cooking” and “What’s Cooking” were broadcast throughout the day at 8.30am and 10.30am in the morning and in the afternoon schedule of 12.30pm, 2.30pm and 4.30pm through to the evening timeslots of 7.30pm and 9.30pm.  The programs were broadcast from July 2002 until November 2004.  Mr Styles annexes examples of the broadcast schedule program identifying transmissions across the period for “What’s Cooking”, “Ethnic Cooking” and “On the Land”.  The program schedule for the period 1 December 2001 to 31 December 2008 is in evidence. 

58                  Mr Styles says that in December 2002 he discussed with Mr Lawrence the possibility of additional programs being supplied by FCN and broadcast through ABC Asia Pacific.  Mr Styles reached an agreement with Mr Lawrence for the supply of 25 programs in the total amount of $6,875.  The series was to be called “On the Land”.  Programs were broadcast on the ABC Asia Pacific network from February 2003 until October 2004 “under the Food Channel trade mark 733265”, according to Mr Styles. 

59                  In January 2003, an agreement was reached between ABC Asia Pacific and Mr Lawrence for the production of 97 four to five minute food programs to be produced by the program supplier and supplied in accordance with a delivery schedule to accommodate the broadcasting schedule for ABC Asia Pacific.  Mr Styles annexes at “JS3” a copy of a letter on ABC Asia Pacific letterhead dated 23 January 2003 which is a further copy of the letter annexed as “PLL10” to the affidavit of Mr Lawrence.  The programs were to be telecast by ABC Asia Pacific through its “distribution network, cable and direct‑to‑home as shown on footprint maps attached”.  The footprint maps are not attached to the copy of the letter annexed to Mr Styles’ affidavit. 

60                  Mr Styles says that ABC Asia Pacific paid the first instalment of the contract price on 6 February 2003 for the supply of 30 programs.  Mr Styles says that Food Channel produced a series of programs under the banner “Food Facts” which included programs entitled “Italian Food Facts” and other programs called “Contemporary Food Facts”.  Mr Styles says the “Italian Food Facts” programs were completed and delivered to ABC Asia Pacific in August 2003.  Broadcasting of the programs began in September 2003 and continued up to 2006.  The programs called “Contemporary Food Facts” were completed and delivered in September 2003.  Broadcasting commenced in October 2003 and continued up to February 2006.  The program schedules in support of those dates are attached to Mr Styles’ affidavit. 

61                  Mr Styles at para 12 of his affidavit swears the issue in a conclusionary way by saying that programs entitled “Ethnic Cooking”, “What’s Cooking”, “On the Land” and “Food Facts” were broadcast through ABC Asia Pacific’s television service under the Food Channel trade mark 733265 during the period 14 July 2003 to 14 July 2006.  Of course, the foundation facts which might lead to that conclusion are the facts that are the relevant facts. 

62                  In cross‑examination, Mr Styles was asked to explain the ABC Asia Pacific scheduling program (Exhibit 14) and “JS4” to Mr Styles’ affidavit.  The schedule shows, for example, that “Food Facts” programs under the description “Mirko Grillini’s Italian [Italian Food Facts]”, episode 1 described as “Taglaita” was broadcast 15 times between 1 September 2003 and 24 February 2008.  Similarly, episode 2 of Italian Food Facts under the description “Spaghetti Ai Gamberi” was broadcast 14 times between 2 September 2003 and 5 November 2005.  There were 97 programs or episodes in all.  The programs on the scheduling list “represent the material which was purchased from Food Channel”.  As to the image forming part of trade mark 733265, Mr Styles was asked by FCN’s counsel to explain his recollection of it and said “in so far as the program was concerned, it was included in the program as a moving logo.  The fact is that the food in the logo was actually on a revolving, moving basis”:  T 173, l 7. 

63                  In cross‑examination, Mr Styles was asked to look at the DVD at “IRT‑4A” and the DVD at “IRT‑14” (sometimes called “IRT‑14A”).  As to “IRT‑14” comprising material assembled by Mr Lawrence and delivered to IP Australia and copied to Ahearn Fox, Mr Styles agreed that after scrolling through the credits, a trade mark appeared immediately after the words “Produced By” and the image displayed on the screen when viewing the DVD was the image at [46] of these reasons rather than the image depicted at [21] of these reasons.  As to “IRT‑4A”, Mr Styles agreed that after the scrolling of the credits, the name “NBN Production” appeared in the place where the trade mark had appeared in “IRT‑14” and Mr Styles accepted that there was no trade mark for either TFCPL or FCN incorporated in the program.  Mr Styles noted immediately however that what he had seen “wasn’t a full tape”.  That is – in my opinion, that tape is not complete, because it does not have a – have that trade mark on it … I am not saying it is wrong but the tape is not complete”:  T 181, l 40. 

64                  This exchange then occurred at T 182; l 7 to l 40: 

MR FRANKLIN:  And the trade mark that appeared on 14A appears immediately after the credits and shows the words “Produced By” and a trade mark belonging – a trade of the applicant, but not the trade mark in these proceedings? 

MR STYLES:  It would seem – yes.

MR FRANKLIN:  It showed the trade mark that I took you to, trade mark 738571? 

MR STYLES:  Yes. 

MR FRANKLIN:  Any in precisely the same place on the first tape that I showed you, immediately after the credits, the tape shows the trade mark “NBN”, doesn’t it?

MR STYLES:  Well, it is not truly the NBN trade mark, but I don’t understand how that has happened.  Normally, that is why I said – and normally, NBN would not be involved --- I mean, that is where it was produced, but they are not the producer. 

MR FRANKLIN:  Well, that had “NBN Production” didn’t it?

MR STYLES:  Well, the program isn’t an NBN Production.  It was at NBN, but it’s not NBN Productions.

MR FRANKLIN:  It said NBN Production.  I suggest to you, Mr Styles, that when you in your affidavit say, in particular, paragraph 12, that all of these films were broadcast under the trade mark 733265, that at least in the two DVDs I have shown you, trade mark 733265 doesn’t appear?  And sorry, if I can just withdraw that and preface that, you can accept people have given evidence about this and his Honour can have the DVDs in full if he so pleases, but you can accept that every single one ends the same way, on IRT‑4A each one ends with “NBN Production” in the credits, and IRT‑14A each one ends with “Produced By” and then a depiction of trade mark 738571.  My suggestion to you is that at least on those, trade mark 733265 is clearly not used? 

MR STYLES:  Well I can agree on those two, but in all – I mean, I never watched the program – I can’t watch the program on air because I don’t have a big satellite, but when my office was in Sydney at the ABC, I used to see the programs go through and I mean, I obviously didn’t look at every program, otherwise I wouldn’t have been paid, but the fact is that I had seen programs with this existing logo on it. 

                                                                                    [emphasis added]

65                  In clarification, Mr Styles said that his reference to “the existing logo” was a reference to the animated version of the image in trade mark 733265.  Mr Styles accepted that he had not seen a static version of the image in trade mark 733265 in any of the programs.  Rather, the image was the animated image.  Mr Styles was asked when he might have first seen the animated image and said the first time he saw it was probably when a videotape was presented to him as an example of what the programs might look like.  He thought he would have seen the animated image prior to purchase of the programs on 23 January 2003 and the programs went to air after that date.  The programs were paid for in blocks when the programs were produced.  There were 97 in all and the first block consisted of 30 programs.  Mr Styles thought he saw probably two or three of the programs so as to determine the standard of the program and whether it was acceptable to the “program people”.  Mr Styles said that he looked at two or three programs from each batch of programs making up the 97 programs.  This exchange occurred at T 185, l 14:

MR STEPHENS:  And did you notice whether or not, or can you now recall whether or not any of those of the batches which you looked at had the Food Channel trade mark 733265.

MR STYLES:  They did, but – they did have, because, personally, I didn’t like the logo and I – I think I passed on the information that I would prefer a different sort of – it was nothing to do with me, that’s the producer, but, in effect, I remember seeing it, if only on the basis that I really made comment about the logo.

MR STEPHENS:  Did you see any other logo on Paul Lawrence’s products?

MR STYLES:  No I didn’t.  No.  What I saw today was the first time I’d ever seen that particular logo [that is the image at [46] of these reasons]. 

MR STEPHENS:  Alright.  And so can you say with any certainty that Mr Lawrence’s logo of the Food Channel was shown … on the ABC Asia Pacific network over the period stated in your affidavit? 

MR STYLES:  Yes. 

66                  I accept the evidence of Mr Styles who I found to be an impressive witness. 

The evidence of Mr Riley

67                  Mr Peter Riley gave this evidence. 

68                  He is the Managing Director of Creatop Australia Pty Ltd (“Creatop”) which is a software development, web design and web hosting company.  He says he was contacted in November 2004 by Mr Lawrence and asked to develop a plan for a website for FCN.  On 22 December 2004, a mock website was established.  In March 2005, Mr Riley spoke with Mr Lawrence about the virtue of utilising particular website programs (Jarvascript for dropdown boxes and rollovers, moving images and the streaming of videos and “flash videos”).  Mr Riley says that in early April 2005 FCN’s website “went to air on the internet”.  Mr Riley says that in September 2005 a number of videos were loaded onto the website which included an animated version of an image Mr Riley sets out at para 9 of his affidavit which is the image depicted at [21] of these reasons.  The words “THE FOOD CHANNEL” were also loaded onto the website in conjunction with the animated image. 

69                  Mr Riley says that the animated image has continuously since September 2005 been a feature of FCN’s website.  Mr Riley said that he had taken the opportunity to view the FCN website log and had determined the abovementioned dates from the logs.  An examination of the archival “Wayback” site confirms that FCN’s website on 17 October 2005 depicted the animated image and also a static version of the image.  In the course of cross‑examination, Mr Riley was asked to investigate whether he could identify the relevant logs which enabled him to say in his affidavit that the image had continuously been present on the site from September 2005.  He was not able to locate the logs but asserted that as at 6 June 2009 when his affidavit was sworn, he was able to swear to the dates by reference to the logs.  In any event, it is now clear that the trade mark was uploaded to the website at least from 17 October 2005 and I find that it was present on the website at least until 14 July 2006.  It also follows that the video images uploaded to the website incorporating the animated image contained that animation at 17 September 2005 rather than, for example, as uploaded, a version or animated version of the image depicted at [46] of these reasons. 

70                  I accept the evidence of Mr Riley especially having regard to the corroborative evidence from the archival “Wayback” site. 

The evidence of Mr Day

71                  Mr Matthew Day gave this evidence. 

72                  In the period June 2003 to April 2007, Mr Day was the Programming Manager for a free‑to‑air community television channel called “Briz 31” broadcast in the greater Brisbane area.  In that role, it was Mr Day’s job to negotiate contracts for the sale of air time and related sponsorships for the channel.  Mr Day was also in charge of program scheduling.  He says that on or about February 2005 he met Mr Shane Appleby who was associated with a program called “Stained Glass Fishbowl” produced by a Sydney company for community television for use around Australia.  The program is a variety show related to the arts and popular culture.  Mr Day could not recall the name of the production company but could recall the name of the program.  Mr Day spoke to Mr Lawrence concerning a sponsorship by FCN of the program.  It agreed to do so.  Mr Day says Mr Lawrence provided Briz 31 with a copy of an FCN sponsorship tape that contained promotional material advertising FCN’s website.  The tape included a depiction of the elements of FCN’s trade mark 733265 involving the use of the words “FOOD CHANNEL” and the image set out at para 4 of his affidavit which is the image at [21] of these reasons.  Mr Day says that the image was animated in the tape “such that the food and vegetables etc rotate around the TV antenna with the words Food Channel”. 

73                  Mr Day says that the program together with the FCN sponsorship tape were broadcast from 1 June 2005 to 15 July 2005 with a total of 16 viewings broadcast over the Briz 31 free‑to‑air community channel.  The debut screening occurred on a Friday night and the channel screened the program late on another night during the week following the Friday launch.  Each sponsorship, or “commercial placement” as Mr Day calls them, were of 30 seconds duration within the program block allocated to a particular program.  Mr Day accepts that these sponsorships are, in effect, advertisements in the sense commercial television broadcasters would understand that term  However, the sponsor is actually a sponsor of the program and the sponsorship segment of 30 seconds is dedicated to the activities of the sponsor. 

74                  I accept the evidence of Mr Day.  Plainly enough, on 16 occasions between 1 June 2005 and 15 July 2005 FCN’s 30 second sponsorship segment was broadcast on Briz 31 incorporating the composite elements of the trade mark involving both the words Food Channel and the animated graphic device. 

75                  On viewing the segment, it commences with the animated trade mark with the food items rotating around the antenna.  It says that the Food Channel broadcasts Australian food knowledge to the world through television production and programming.  It concludes by inviting viewers to discover the world of the Food Channel by going to FCN’s website.  The sponsorship concludes with a further depiction of the logo. 

Further aspects of the evidence of Mr Lawrence and the cross‑examination of Mr Lawrence

76                  Mr Lawrence swore a number of affidavits which were responsive to matters raised in the affidavits of TVFN and particularly the affidavit of Mr Tannahill.  On the question of use of the image contained in trade mark 733265 Mr Lawrence said in his affidavit sworn 2 October 2009 that trade mark 738571 (containing the image at [46]) was used on a number of occasions on some of the cooking programs broadcast by ABC Asia Pacific.  He said at para 7 of his affidavit that most of the programs were broadcast under the 733265 trade mark.  He said he caused trade mark 738571 to be inserted onto approximately eight videos out of a total of 195 video programs.  The remainder of the programs, that is, 187 programs were broadcast under the 733265 trade mark. 

77                  Mr Lawrence was cross‑examined extensively in relation to the various contentions in his principal affidavit and matters addressed in the respondent’s material. 

78                  Mr Lawrence accepted that neither TFCPL nor FCN holds an Australian Broadcasting Licence.  As to the selection of the classes of services in respect of which Mr Lawrence chose to register trade mark 733265, Mr Lawrence said that he had been advised by Mallesons Stephen Jaques to apply for registration in the two nominated classes (see [21] of these reasons).  Mr Lawrence was taken to the 7^th Edition (1996) of the Nice Classification of Goods and Services and accepted that in Class 38 “Telecommunications” he had elected to register the mark for Item B0034 “Broadcasting (Television)”, Item C002 “Cable television broadcasting” and Item T0018 “Television broadcasting”.  Mr Lawrence accepted that he had not registered the mark in the following categories:  Item C0067 “Communications by computer terminals”, Item T0053 “Transmission of messages and images (Computer aided)”, C0068 “Communications by fibre optic networks”, C0075 “Computer aided transmission of messages and images”, C0088 “Computer terminals (Communications by -)”, E0012 “Electronic mail”.  Mr Lawrence accepted that in August 1998 TFCPL had applied for a further trade mark in Class 38 in relation to the services of communication by computer terminals.  Mr Lawrence also accepted that since 1997 his companies have not applied for the image contained in trade mark 733265 in other classes or the same class covering other services until 2006. 

79                  Accordingly, Mr Lawrence seems to have been aware that the registered trade mark concerned particular items within Class 38 and not others although Mr Lawrence contended that “broadcasting” covered a wide range of areas. 

80                  Mr Lawrence was then taken to the 9^th Edition (2007) of the Nice Classification.  Mr Lawrence accepted that one week after the filing of TVFN’s application for removal of the subject mark, FCN filed a further application of the same image depicted in trade mark 733265 for a large range of services in Class 38 including web and internet broadcasting, communication by computer terminals, internet television, internet protocol television broadcasting, internet and online transmission and distribution through computer networks, and the dissemination of food and cooking programs, food news and food‑related content through multimedia communications. 

81                  Mr Lawrence accepted that at no time before 14 August 2006 did TFCPL or FCN apply for registration of the 733265 trade mark image so as to expand the categories of class 38 services that might be brought within the scope of trade mark protection, such as C0072 “Communications by computer terminals”, C0081 “Computer aided transmission of messages and images”, P0077 “Providing access to databases”, P0080 ‘Providing internet chat rooms”, P0086 “Providing telecommunications connections to a global computer network”, P0087 “Providing user access to a global computer network [service providers]” or T0064 “Transmission of messages and images”. 

82                  The point that is sought to be established by demonstrating Mr Lawrence’s acceptance of these matters is that Mr Lawrence could, in 1997, have caused TFCPL or FCN to apply for categories of services falling within class 38 and prior to 14 August 2006 Mr Lawrence could have caused FCN to apply for further categories within class 38 with the result that Mr Lawrence should be taken to have understood that the scope of the registration of the subject mark in the way described within the class 38 specification of services is limited to very particular categories of services, namely, television broadcasting services including free‑to‑air and cable television broadcasting, and what must be demonstrated is that FCN has used the mark in relation to that field of services.  TVFN says that the fact that other services could have been specified and that Mr Lawrence chose not to do so, aids in the construction question as it is clear that the selected and specified services do not extend to the services of broadcasting sounds and images by distributing that material by the internet through a website, otherwise known as web or internet broadcasting or internet television.  It follows, it is said, that use of the trade mark in relation to internet distribution of video material is not use in relation to the specified services in class 38.  The question ultimately is simply one of construing the specification of the services according to the ordinary and natural meaning of the words chosen. 

Mr Tannahill’s evidence concerning TVFN’s trade mark applications

83                  Mr Tannahill gave this evidence. 

84                  On 9 April 1999, TVFN applied for registration of the trade mark FOOD NETWORK with image (Application No. 790731).  The image was this: 

85                  Services in class 38 were specified.  The services included television programming, television production services and the distribution through computer networks and video servers of television programs.  On 7 January 2000, the examiner issued a report citing as a ground for rejecting the application the contention that the trade mark was substantially identical with or deceptively similar to FCN’s trade mark 733265, under s 44 of the Act.  The application did not proceed to registration.  However, TVFN filed a divisional trade mark application number 881667 claiming priority derived from application 790731.  Application 881667 was for the following device:

in the following classes:

Class 38:  Telecommunications services; communication services; broadcasting services; television broadcasting services, wireless transmission and broadcasting of television programs; cable, satellite and direct to home transmission and distribution of television programs including programs relating to food or cooking; on‑line transmission and distribution through computer networks and video servers of television programs; news distribution and newsagency services; gathering and dissemination of news; teletext services; consultancy, information and advisory services relating to telecommunications.

Class 41:  Educational and entertainment services in the television and broadcasting industry including such services relating to food or cooking; television programming and production services; …

Class  42:  Information services relating to food and cooking …

Class  9:  Pre‑recorded video cassettes, video disks, laser disks, pre‑recorded audio tapes, disks, CD‑ROMS …

86                  On 9 April 1999, TVFN applied for registration of the trade mark TELEVISION FOOD NETWORK (Application No. 790732).  On 7 January 2000, the examiner issued a report citing as a ground for rejecting the application the contention that the trade mark was substantially identical with or deceptively similar to FCN’s trade mark 733265, under s 44 of the Act.  The application did not proceed to registration.  TVFN filed a divisional trade mark application number 881666 claiming priority derived from application 790732 in the following classes:

Class 38:  Telecommunication services; communication services; broadcasting services; television broadcasting services; wireless transmission and broadcasting of television programs; cable, satellite and direct to home transmission and distribution of television programs including programs relating to food or cooking; on‑line transmission and distribution through computer networks and video servers of television programs … [and other designations]

Class 41:  Education and entertainment services in the television and broadcasting industry including such services relating to food or cooking; television programming and production services … [and other designations]

Class  9:  Pre‑recorded video cassettes, video disks, laser disks, pre‑recorded audio tapes, disks, CD‑ROMS … [and other designations]

87                  On 15 February 2005, TVFN applied for registration of the trade mark FOOD NETWORK COM with image (Application No. 1041852).  The image was this:

in class 41 in these terms: 

Class 41:  Entertainment services; educational services; provision of entertainment, educational, recreation and cultural information by way of a global communications network … [and other designations]

88                  FCN filed a notice of opposition on 16 August 2006 asserting as a ground of opposition that use of the trade mark, if registered, would offend s 44 of the Act.  Although the notice of opposition does not identify a particular trade mark of FCN which would give rise to the consequences contemplated by s 44 of the Act, the following trade marks or applications for trade marks of FCN having an earlier priority date than 15 February 2005 were these:  FCN trade mark 733265; FCN trade mark 966038 THE COOKING CHANNEL with image; trade mark application 1109677 THE FOOD CHANNEL; and trade mark application 967804 FOOD CHANNEL with image. 

89                  On 18 December 2002, TVFN applied for registration of the trade mark FOOD NETWORK (938228) in the format below:

in class 41 in these terms:

Class 41:  Entertainment services namely production and distribution of television programming; and all other entertainment services included in this class.

90                  FCN filed a notice of opposition dated 19 October 2006 relying upon s 44 of the Act although, like application 1041852, no FCN trade mark or application was cited in FCN’s notice of opposition.  At the time of filing the notice of opposition, FCN claimed to be the owner of only one trade mark registration or pending application having a priority date earlier than the claimed priority date, namely, FCN’s trade mark 733265. 

91                  On 6 July 2001, TVFN applied for registration of the trade mark TELEVISION FOOD NETWORK (881666).  A notice of opposition was filed by FCN dated 25 October 2006 on the ground (among others) that registration of the mark was prevented by s 44 of the Act.  FCN claimed to be the owner of only one trade mark registration or pending application having a priority date earlier than 6 July 2001, namely, trade mark 733265.

92                  Similarly, on 6 July 2001, TVFN applied for registration of the trade mark FOOD NETWORK with image (as set out at [85]) (881667).  FCN filed a notice of opposition on 25 October 2006 on the ground, among others, that registration of the mark was prevented by s 44 of the Act and the only trade mark registration or pending application with an earlier priority date was trade mark 733265.

93                  TVFN’s trade mark applications 790731 and 790732 had FCN’s trade mark 733265 cited against them.  Divisional applications 881666 and 881667 were the subject of notices of opposition by FCN on the ground of s 44 where the only relevant FCN trade mark was 733265.  Each of 881666 and 881667 proceeded to registration although as at the date of TVFN’s application for removal of trade mark 733265, that registered mark was said by FCN’s opposition to be an obstacle to registration of TVFN’s applications.  TVFN’s application 1041852 was opposed by FCN on the ground of s 44 in reliance upon trade mark 733265.  The application continues to be opposed by FCN.  Application 938288 was opposed by FCN on the ground of s 44 of the Act where trade mark 733265 was the only relevant trade mark attracting that contended ground.  The application was subsequently granted although at the date of TVFN’s removal application, trade mark 733265 was the source of FCN’s contended s 44 objection to registration. 

94                  In addition, FCN opposes TVFN’s application filed on 14 August 2006 for registration of a further trade mark (No. 1129625) on the ground of questions of deceptive similarity with FCN’s registered trade mark 733265, although TVFN’s mark is not identified in the material. 

A further aspect of Mr Lawrence’s cross‑examination

95                  In the course of cross‑examination, Mr Lawrence accepted that he had caused applications 1041852, 938228, 881666 and 881667 to be opposed by FCN in reliance upon s 44 of the Act based upon FCN”s registration trade mark 733265. 

A “person aggrieved”

96                  I am satisfied having regard to the trade marks the subject of those applications involving the words FOOD NETWORK and the devices depicted at [85], [87] and [90] and the specification of the claims, by an applicant asserting use or an intention to use, that opposition to the applications on the ground of s 44 of the Act in reliance upon the registered trade mark 733265, by an actual or potential trade rival, on the opponent’s contended footing that the marks if registered are substantially identical with or deceptively similar to trade mark 733265, confers standing on TVFN to apply for removal of the registered trade mark as a “person aggrieved” with an interest in correcting the register in circumstances where TVFN contends that FCN has not used the registered trade mark as contemplated by s 92(4)(b) of the Act:  Ritz Hotel v Charles of the Ritz (1987) 12 IPR 417; Health World v Shin‑Sun Australia Pty Ltd [2010] HCA 13. 

Broadcasts by ABC Asia Pacific

97                  Counsel for TVFN put to Mr Lawrence in cross‑examination that in order for FCN to establish use of its mark in relation to broadcast services as specified, Mr Lawrence has sought to argue that broadcasts by ABC Asia Pacific are broadcasts that cover the continent of Australia whereas those broadcasts are directed by the broadcaster to countries in Asia, and generally to the north of Australia:  T 111, ls 16 to 18; ls 26 to 28.

98                  The factual position in relation to broadcasts by ABC Asia Pacific is this. 

99                  In the relevant period (that is, 14 July 2003 to 14 July 2006) ABC Asia Pacific broadcast satellite transmissions of programs by Geo‑stationery satellites described as PamAmSat 8 stationed at 166°East and PanAmSat 2 stationed at 169°East.  Annexure “IRT‑4” to Mr Tannahill’s affidavit is a printout of web pages from the ABC Asia Pacific website as at 16 December 2003.  That annexure shows that the broadcaster described PamAmSat 8 as “recommended for viewers in the South East and North Asia” and PanAmSat 2 as “recommended for viewers in the Pacific”.  The website pages say that potential viewers may watch ABC Asia Pacific programs on local cable TV providers (that is, local cable re‑broadcasters of the satellite transmissions) throughout the Asia Pacific region.  The “Where to Watch” page of the website sets out a list of countries offering a cable re‑broadcast service which lists 17 countries from Cambodia to Vietnam.  The list does not include Australia as a country providing cable re‑broadcast services.  The website also says that viewers “can also watch ABC Asia Pacific television [programs] using your own satellite dish and digital receiver.  ABC Asia Pacific Television is broadcast free on both the PAS‑8 and PAS‑2 satellites”.  The web pages also display an indistinct service area map depicting the “satellite coverage area” which, by its shading, shows the footprint for the satellites.  The shading falls outside the land mass of Australia.  The text describes the satellite coverage area as 31 countries from Bangladesh to Vietnam.  Australia is not in the list. 

100               Mr Styles agreed that those pages at “IRT‑4” show the ABC Asia Pacific cable and satellite distribution methods at the relevant time to the countries nominated in respect of those methods.  Mr Styles agreed that exhibit 1, that is, pages from the Australia Network website today, show the distribution map for Australia Network satellite transmissions and the transmission footprint does not cover Australia.  The text identifies a list of 48 countries to which the satellite transmission is provided.  The list does not include Australia.  Mr Styles also agreed that exhibit 5, pages from the Australia Network Annual Report for 2009, suggest by the footprint map depicted and the text describing countries, that satellite transmissions do not include transmissions to Australia, but rather, countries to the north of Australia. 

101               In the context of explaining that China, although not shown in the list of countries mentioned on websites and the list in the Australia Network Annual Report (because the broadcaster does not hold a broadcast licence in China), is nevertheless capable of receiving the satellite transmissions, said this at T 176, ls 31 to 45:

MR FRANKLIN:  It is just that people pick up the signal, do they, from the footprint?

MR STYLES:  People pick up the signal as they wish. 

MR FRANKLIN:  From the footprint? 

MR STYLES:  Yes.

MR FRANKLIN:  Because the footprint covers China?

MR STYLES:  Yes – I mean, it’s true in – it happens in New Zealand and it happens here in Australia, and even though we are not licensed to actually telecast to those countries, there is nothing to stop people picking up a signal because it’s not – it’s not scrambled, as such.  We have one program that’s scrambled, and that’s Rugby Union, and that’s because the Rugby Union people have made a deal with Japanese television so they don’t want us to go into that country …

MR FRANKLIN:  Now, in so far as the satellite transmission can be picked up – technically can be picked up outside the service area – those countries aren’t in the service area.  That is what you – technically there is a spill‑over to other countries because the satellite happens to go to those countries.  Would that be a correct way of putting it?

MR STYLES:  Well, absolutely.  Other than China – I mean, … generally, yes, the satellite – you can’t control the satellite picture.  It goes everywhere, depending on the power of the satellite, of course. 

MR FRANKLIN:  And the satellite will go to its – whatever area it extends to, people outside your service area may technically be able to pick up that transmission? 

MR STYLES:  Absolutely. 

102               Mr Ian McKenzie is the owner of Chromatronics Pty Ltd, a satellite television transmission and broadcasting consultancy company.  Mr McKenzie says he is familiar with the ABC Asia Pacific satellite television transmission network and satellite television broadcasts by the broadcaster.  Mr McKenzie says that recently PanAmSat 2 (Intelsat 2) was replaced with Intelsat 5 and Australia Network now uses Intelsat 5 and Intelsat 8 satellites for its transmissions.  Mr McKenzie says that even though “IRT‑4” does not show satellite transmissions to Australia within the transmission footprint map, “when you put something up on a satellite it goes to the entire footprint of the satellite and you can watch it anywhere within that footprint”:  T 77, ls 9 to 11.  Mr McKenzie noted that Australia is not shown in the list of cable re‑broadcasters as there is no cable re‑broadcaster in Australia.  Mr McKenzie agreed that the objective of the Commonwealth Government in establishing ABC Asia Pacific and maintaining Australia Network was to publicise Australian interests in the Asia Pacific region.  However, Mr McKenzie says that such an objective does not prevent other people from watching satellite program transmissions.  Mr McKenzie agreed that the map shown in the Australia Network 2009 Annual Report does not show Australia within the transmission footprint but noted that although the map shows that it excludes Australia, “I can watch it in my backyard at home”. 

103               Mr McKenzie agreed that the footprint map for Intelsat 8 as shown on a link described as “Pacific” from a website described as “LyngSat”, shows a concentration in the footprint in the Asia Pacific region but disagreed with the proposition put to him that the map shows “some overlap into Australia”.  He put it this way at T 81, ls 13 to 19:

MR MCKENZIE:  It’s not overlap.  It’s a full footprint.  It just means that you need a slightly larger dish in that area.  If you look at the next page, it shows you another map which has got that same map but expanded on a map of the world, and it then has a red oval around it, which is the total area that’s visible where the satellite is visible.  So if you go outside that red line, it is impossible to receive anything, but anywhere within that line, within the area that’s blue – bounded by blue in that, it is possible to receive that satellite. 

                                                                                    [emphasis added]

The transmission contours

104               The transmission band for Intelsat 8 and Intelsat 2 is described as the C band.  The maps show graduated contours for the footprint of each satellite by reference to the incremental size of the receiving dish, in centimetres, needed to receive the transmission.  For example, in the case of Intelsat 8 the centre of the footprint is shown in red (bounded by contour 41) and a viewer would need a dish of 80 to 100 centimetres to receive the transmission.  The next outer contour (40) requires a 100 to 125 centimetre dish and at the next outer contour (39) a 115 to 145 centimetre dish would be required.  At contour 37, the dish needed would be 145 to 180 centimetres.  The footprint within contour 40 is also shown in red as the central part of the footprint.  The area between contours 40 and 37 is shown in yellow as adjacent to the centre of the footprint.  The area between contour 37 and contour 35 (which requires a dish of 180 to 225 centimetres) is shown in light blue and the area between contour 35 and contour 33 (which requires a dish of 225 to 285 centimetres), and taking in the continent of Australia excluding Tasmania, is shown in a darker blue.  The red area takes in the northern parts of Australia.  The yellow area extends to include about 35% of Australia and the light blue area takes in, approximately, a further 40% of the continent.  The entire continent is incorporated within the footprint of the satellite and a substantial part is within the red/yellow elements.  The “Pacific rim” footprint for Intelsat 2 takes in, within a red and yellow shading, the entire continent of Australia. 

105               Mr Gary Salisbury, the owner of a satellite television and internet equipment supply and installation firm called Kansat specialising in satellite dish installations also gave evidence concerning the signal strength and band transmission footprint for PanAmSat 2 (Intelsat 2) replaced by Intelsat 5, and Intelsat 8.  At “GAS1”, Mr Salisbury annexed a map showing, by three white lines, the outer boundary of the C band transmission for PAS2 which shows a footprint covering north and east Asia and the whole of Australia and New Zealand.  The map also shows three red footprint transmission bands for PAS2 confined almost entirely to Australia and New Zealand.  Transmissions from PAS2 are made in C band and Ku band.  The red footprint is the Ku band transmission.  Similarly, the PAS8 footprint lines around Australia shown on “GAS2” are Ku band transmissions and the three white lines show the outer boundary of the PAS8 footprint which includes Australia, north and east Asia including China and Pacific rim parts of Canada and the west coast of the United States.  Mr Salisbury agreed that ABC Asia Pacific made (and makes) its transmission on the C band and that exhibit 6 (the Lyngsat footprint maps for PAS2 and PAS8) is the more appropriate document to look at when considering the boundary and strength of C band transmissions by ABC Asia Pacific (now Australia Network). 

106               Mr Salisbury also agreed with the proposition put to him by counsel for TVFN that a satellite transmission directed at least to viewers in a particular country will also “technically be accessible by people outside [that country]” and that if the transmission is free‑to‑air (and therefore not encrypted) it will be “technically accessible by someone who has a satellite dish that can pick up the satellite beam”:  T 89, ls 37 to 43; T 90, ls 1 to 5.  Mr Salisbury says that he has been in business for 13 years and “is very familiar with free‑to‑air [which he equates with unencrypted satellite television signals] available in Australia which can be received with an appropriate satellite dish, specifically a 2.3 metre diameter dish with C band LNB and digital satellite receiver”.  Mr Salisbury says he installs such satellite dish and receiver systems which enable viewers to receive free‑to‑air broadcasts.  Mr Salisbury says ABC Asia Pacific broadcast free‑to‑air from the beginning of its broadcasts in 2001 and all of its broadcasts were available in Australia to anyone with a satellite dish as described in the quoted passage above. 

Mr Lawrence’s evidence of FCN’s reasons for utilising ABC Asia Pacific transmissions

107               It was put to Mr Lawrence that he understood that ABC Asia Pacific was not broadcast “to Australia” but was simply “technically available in Australia”.  It was also put that Mr Lawrence’s letter to the Managing Partner of TVFN, “Scripps Network” (“Scripps”) of 18 February 2002 seeking access to TVFN’s library of “Food Network” programs recognised, when Mr Lawrence said that Food Channel programs were currently on ABC Asia Pacific’s PAS8 service in “27 countries throughout the region”, that transmissions to the region rather than Australia was the virtue that might excite the interest of Scripps.  Mr Lawrence contended in his evidence that Australia was the focus of his interest and that ABC Asia Pacific transmissions were important to him because the transmissions included Australia and the region. 

108               It seems to me that the emphasis in the letter (although in early 2002) is directed to the commercial utility of the regional transmissions by ABC Asia Pacific rather than the capacity of Australian citizens to receive transmissions in Australia (with appropriate equipment).  Nevertheless, the fact is that satellite program transmissions were capable of being seen in Australia by those citizens having the relevant equipment and although the evidence of distribution or installation is slight, it is clearly more than trivial having regard to the evidence of Mr McKenzie and Mr Salisbury and the acceptance by Mr Styles that unencrypted transmissions could be received. 

109               It follows from the evidence of Mr Styles, Mr McKenzie and Mr Salisbury all of whose evidence I accept, that ABC Asia Pacific commenced transmissions on C band by PAS2 and PAS8 for the principal objective of providing a free‑to‑air satellite service to people in countries of the Asia Pacific region having the appropriate dish and receiver, and to domestic cable re‑broadcasters of the satellite signal in each of the listed countries in order to carry content or programs to an international audience.  It seems clear enough that the principal objective was not founded upon providing Australian viewers with another free‑to‑air platform by satellite.  There were no cable re‑broadcasters in Australia of that signal. 

The actuality of the footprint

110               However, notwithstanding the principal objective, the C band transmission by ABC Asia Pacific was broadcast by satellites having a footprint which enabled those free‑to‑air transmissions to be seen in Australia and the maps at exhibit 6 do not put Australia at the outer boundary of the signal.  The graduated contours of signal strength show that Australian viewers were capable, perhaps as a “technical” matter of satellite signal distribution but nevertheless as an actuality of the footprint, of seeing, if they chose to install an appropriate dish and receiver, the unencrypted transmissions of FCN’s programs by that broadcaster.  I accept that Mr Salisbury has since 2001 conducted the business of installing in Australia satellite dish and receiver equipment capable of receiving the C band transmission of ABC Asia Pacific and I infer that there are other firms throughout Australia that have also installed such equipment. 

111               It follows that if the FCN programs broadcast by ABC Asia Pacific contain the animated or static trade mark (words and image) of trade mark 733265, that trade mark in relation to those programs, was capable of being seen in Australia in the period of the broadcasts, according to the broadcast schedule. 

Did the programs contain the trade mark depicted on registered trade mark 733265? 

112               Mr Lawrence was cross‑examined extensively about the representations he made to IP Australia and the trade mark examiner in his letter dated 20 July 2003 and his statutory declaration dated 20 May 2003.  That material concerned steps taken by Mr Lawrence and TFCPL in opposing TVFN’s application before the Registrar for removal of TFCPL’s trade mark 738571 (as described at [46] of these reasons) from the register.  In the letter of 20 July 2003 Mr Lawrence said that the application for registration was made with an intention in good faith to use the mark in relation to the goods and services specified and “in fact has been used” within the period relevant to the removal application.  The use was put by Mr Lawrence this way: 

·                      Registered trade mark 738571 has been used on a continual basis from January 1998 – October 2003 on current television productions and broadcasts.  The mark is currently being used on programs broadcast;

·                      30‑minute programs were produced, compiled and broadcast daily via Australia’s ABC Asia Pacific satellite television service from 2002 from NBN Television in Newcastle Australia;

·                      Attached are television segments that have been produced and are currently broadcast;

…

·                      Attached are television segments as evidence of use that have been produced and are currently broadcast;

113               Copies of the letter and attached material was delivered by Mr Lawrence to Ahearn Fox, the patent and trade mark attorneys for TVFN. 

114               Mr Lawrence was asked to look at the DVD at “IRT‑4A” consisting of 20 episodes of “Food Facts” programs all of which were “Italian Food Facts” episodes with Mirko Grillini and the DVD at “IRT‑14” which is a copy of the program segments delivered by Mr Lawrence to Mr Tannahill’s firm together with a copy of the letter of 20 July 2003 sent to the examiner.  The shorter DVD, “IRT‑14”, contains four or five Italian Food Facts programs and two contemporary Food Facts programs.  Mr Lawrence accepted that in the credits at the end of the shorter DVD are the words “Produced by” and then trade mark 738571 rather than trade mark 733265.  Mr Lawrence also accepted that in the longer DVD, “IRT‑4A”, appearing in the credits is the trade mark “NBN” and below that the word “Production” and no trade mark of TFCPL or FCN. 

115               Mr Lawrence contended that the longer DVD is based on an incomplete tape (video) as it also shows a countdown sequence from 9 to 1 which would not be present in the completed program.  In any event, none of those programs show trade mark 733265 any FCN or TFCPL trade mark. 

116               As to the apparent anomaly that none of the “Italian Food Facts” programs contain any FCN trade mark, and Mr Lawrence’s contention of continuous use, made to the Registrar, Mr Lawrence contended that 195 programs were produced and broadcast on ABC Asia Pacific and of those, six to eight, were endorsed with trade mark 738571.  Mr Lawrence contended that trade mark 733265 was edited onto the other 187 programs. 

117               Counsel for TVFN put to Mr Lawrence that what he was seeking to convey to the Registrar by his letter of 20 July 2003 was that from January 1998 until October 2003 trade mark 738571 was the mark used by TFCPL continuously on programs broadcast by ABC Asia Pacific and not registered trade mark 733265.  Mr Lawrence maintained his evidence that eight programs were endorsed with 738571 rather than all programs.  Counsel for TVFN also put to Mr Lawrence that what he was seeking to convey to the Registrar by his letter of 20 July 2003 was that 738571 was used by TFCPL on programs broadcast daily via ABC Asia Pacific satellite service from 2002.  Mr Lawrence maintained his evidence that the transmissions were daily although not necessarily every day.  He reasserted his evidence that there were approximately eight programs involving “Ethnic Cooking” and “What’s Cooking” and some programs with “Food Facts” which were endorsed with trade mark 738571. 

118               Two contentions emerge from these matters.  The first is that when it became necessary for Mr Lawrence to convince the Registrar that use had been made in the relevant period of trade mark 738571, Mr Lawrence was willing to represent to the Registrar use of the kind described in the letter of 20 July 2003 and when registered trade mark 733265 is under attack Mr Lawrence is willing to assert extensive use of that trade mark on the programs broadcast by ABC Asia Pacific.  It follows, in effect, that what is put is that great caution should be applied before accepting, as probative evidence, the assertions made by Mr Lawrence as, it is said, Mr Lawrence “created” the tape showing trade mark 738571 specifically to try and avoid 738571 being removed and therefore the evidence of use of 733265 is unreliable.  Secondly, the absence of any FCN or TFCPL trade mark on the longer DVD suggests that trade mark 733265 was not endorsed on the programs broadcast by ABC Asia Pacific in the relevant period and those programs simply bore the credit line “NBN Production”. 

119               An objective examination of the material suggests that Mr Lawrence may well have over‑enthusiastically asserted (either consciously or unconsciously and I make no finding as to that matter) before the Registrar the use or extent of use of trade mark 738571 and he seemed to suggest by the letter of 20 July 2003 that the relevant mark used on programs (although perhaps not all programs) broadcast in respect of the periods discussed was 738571 rather than 733265.  The period addressed by the letter is January 1998 to a prospective date of October 2003 (recognising that the letter was written in July 2003).  Whatever may have been the position in relation to the editing of an FCN trade mark onto program footage in that period, there remains the question of whether the programs and particularly those programs under the banner “Food Facts” broadcast by ABC Asia Pacific across the period of the broadcasting schedule, went to air edited with the animated version of trade mark 733265.

120               Mr Lawrence says that those programs did go to air so endorsed.  Mr Bates was commissioned to use his company’s paint box technology to animate the trade mark.  The trade mark was edited onto programs.  Mr Bates says that his records informed him that Pro‑Cam edited the animated trade mark (733265) onto “Ethnic Cooking”, “What’s Cooking” and “On the Land” in the period January 2002 to October 2005.  Programs within each of those series were broadcast by ABC Asia Pacific.  It is more likely than not that the broadcast programs contained the animated trade mark applied to them by Pro‑Cam.  Mr Bates saw an example of one transmission.  He can recall that on or about March 2004 Pro‑Cam edited the animated mark onto a Food Channel video.  The animated trade mark was uploaded to FCN’s website at least by 17 October 2005 which is consistent with the dates when Mr Bates says he was undertaking editing work.  Mr Bates has no recollection of the image depicted in 738571 and recalls only the image depicted in 733265.  Mr Styles recalls the animated image in 733265 if only for the reason that he did not like it and thought it ought to be changed. 

121               In January 2003, Mr Styles reached agreement with Mr Lawrence for the supply of 97 programs for broadcast in tranches with “Italian Food Facts” starting in August 2003 through to 2006.  “Contemporary Food Facts” were completed and delivered in September 2003 and broadcast from October 2003 to February 2006.  The contract entitled the broadcaster to unlimited playing of the programs in perpetuity.  The programs “Ethnic Cooking” and “What’s Cooking” were broadcast from July 2002 to November 2004.  They appear to have been broadcast approximately daily at the timeslots described by Mr Styles.  Having regard to Mr Lawrence’s evidence and the other evidence I have mentioned, I am satisfied that the “Food Facts” sequence of 97 programs went to air by satellite transmission by ABC Asia Pacific edited with the animated trade mark depicted on 733265 in the period between 14 July 2003 and 14 July 2006 and I so find.  I also find that it is more likely than not that at least a number of the programs broadcast by ABC Asia Pacific in the series “Ethnic Cooking”, “What’s Cooking”, and “On the Land” contained an edited animated version of the trade mark 733265 and having regard to the evidence of Mr Bates and Mr Styles I broadly accept Mr Lawrence’s evidence on this question. 

Production activities

122               Mr Lawrence was also challenged in cross‑examination as to the nature of the activities which led to the development or “production” of programs. 

123               TVFN put to Mr Lawrence that the production of the programs making up the “Food Facts” series of programs was done and undertaken by NBN, and NBN applied its production logo to each program for that reason.  It was the producer, it is said.  Mr Lawrence says that he remained the “Executive Producer” of each program; “came up with the recipes”; “came up with the talent” [Mirki Grillini and others]; and “contracted in” the production services and facilities of NBN – “we hired their services for producing programs, for outsourcing”.  Mr Lawrence accepted that the programs described as “Contemporary Food Facts” and “Educational Food Facts” (both under the banner of “Food Facts”) were produced “in Newcastle with NBN Television” and that FCN “hired television production services from NBN”:  T 149, ls 21 to 45; T 150, ls 1 to 13.  Mr Lawrence said that he was the Executive Producer on both Contemporary Food Facts and Educational Food Facts. 

124               Mr Lawrence contended that what was supplied to ABC Asia Pacific represented “programs – Ethnic Cooking, What’s Cooking and On the Land … a niche genre of programming on food and cooking”.  Mr Lawrence also contended that viewers would see those programs all branded “Food Channel”.  Although Mr Lawrence contended that niche genre programming styled Food Channel carried on ABC Asia Pacific might be thought of as, or elevated to the position of, a “channel”, in a broadcasting sense because a separate channel simply represents a compilation of the same class or genre of programming (T 148, l 41), it is clear that neither TFCPL nor FCN achieved Mr Lawrence’s aspiration described as para 22 of his principal affidavit (see [30]) of establishing, operating or supplying a dedicated broadcasting channel specializing “in all things food and food related in much the same way as there is a ‘History Channel’ or a “Golf Channel’”, or at all. 

125               Mr Lawrence on behalf of either or both of TFCPL and FCN supplied programs under contract to ABC Asia Pacific.  The contract for “Food Facts” is styled as a “program supply agreement”.  However, the Food Facts programs had to be conceived, planned, organised, recipes developed, talent hired, production schedules developed in sympathy with the broadcaster’s program schedule, services and equipment hired, sound, lighting and studios obtained, post‑production done and programs edited to a final deliverable product in order to perform the contract.  All of those activities are central to the “production of television programs and television entertainment”.  The fact that Mr Lawrence may have hired or contracted for the use of sets, studios, facilities, equipment and specialist operators, in producing the programs does not mean that FCN was not engaged in production activities. 

126               Is every producer of a film that contracts in production facilities, services and staff to operate those facilities no longer characterised as engaged in production simply because a large part of the contracted functional activity is undertaken by the contractor?  I accept that Mr Lawrence acted as Executive Producer or coordinator in production of the “Food Facts” programs and secured aspects of the production services necessary to make each program. 

127               The “Ethnic Cooking” series of 39 programs licensed from “Avoca Media” and the programs making up the “On the Land” series licensed from Ibis are in a different category as they did not engage TFCPL or FCN in all of those activities.  The programs were supplied in broadcast form from the licensor in each case.  Mr Lawrence acted as a program supplier and undertook a process of contracting for Pro‑Cam to edit the trade mark onto the programs and supply the programs for broadcast “topped or tailed” to the identifier of the supplier.  However, even though these activities are in one sense minor steps of attribution editing so as to associate or identify the licensed programs with the supplier to the broadcaster and therefore do not involve a contribution to the production of the creative content, they are nevertheless a production activity as a precursor to the supply, as between the program supplier and the broadcaster, of finished edited product. 

128               I find therefore that in relation to these programs, TFCPL and FCN also acted as a “producer” of finished broadcast programs and in doing so undertook activities of “production of television programs and television entertainment” (class 41, [21]). 

129               FCN’s “sponsorship” compilation for the program “Stained Glass Fishbowl” incorporating the animated 733265 trade mark, regarded by Mr Day as an advertisement by another name, was edited by visual FX but compiled by FCN as producer of the compilation. 

130               I am satisfied that the use by FCN of the animated trade mark edited onto programs produced by it constitutes use of the mark in relation to the class 41 services for which trade mark 733265 is registered, in the relevant period. 

Class 38 – the television broadcasting services

131               Mr Lawrence also relied upon an affidavit which set out a schematic depiction of a broadcasting network and the steps involved in making a satellite transmission.  Neither TFCPL nor FCN holds a broadcasting licence.  Neither company engaged in the class of activities understood as the broadcast by satellite transmissions of broadcast material or content.  The broadcaster was ABC Asia Pacific and it seems that the broadcast signal, at least in the early period, was transmitted from NBN’s studio facilities in Newcastle.  Accordingly, neither company was engaged in activities described as “television broadcasting services including free‑to‑air and cable television broadcasting”.  The class 38 services as specified concern the broadcasting of a television signal capable of being received by a television device and include a transmission by cable or a free‑to‑air transmission to a receiving device (aerial or antenna) linked to a television device.  The words specifying the service do not include transmissions to computers, web‑broadcasting over the internet or the service of uploading video images to a website which might be interrogated by persons attracted to the website resulting in viewings of video or program material.  Plainly enough, fine distinctions must be avoided but the words must be given their ordinary and natural meaning.  Other class 38 services could have been specified taking advantage of other categories of service within class 38 under the 7^th Edition of the Nice Classification which, applying the ordinary and natural meaning of the words comprehended by those other categories of service within class 38, extend to communications to and between computers and the other possible descriptions mentioned at [78].  The 9^th Edition also contained additional categories of service that might have extended the scope of the registered trade mark, if made the subject of an application ([80] and [81]). 

132               The question that arises is whether the activities of use of the trade mark constitute use by FCN in relation to “television broadcasting services including free‑to‑air and cable television broadcasting” even though FCN is not itself engaged in television broadcasting services and nor specifically free‑to‑air or cable television broadcasting. 

133               It seems to me that the answer to that question is an entirely straightforward one.  The structure of the Trade Marks Act necessarily requires a relationship between the trade mark and the goods or services provided in the course of trade by the owner through use (see [23] and [24] of these reasons).  In order to establish use of the mark in relation to the specified class 38 services, FCN must demonstrate use by it of those services.  Section 92(4)(b), from the perspective of the trade mark owner, is speaking of my use in relation to the goods and/or services in question.  If a trade mark owner can, for the purposes of the Act, demonstrate use in relation to the trade mark by adducing evidence that the mark has been used on programs broadcast by someone else (a third party) that provides the specified broadcasting services, such a construction gives the phrase “in relation to” a very wide field of operation not comprehended by the Act.  The phrase “in relation to” can mean almost anything in the abstract but must necessarily be given a meaning in context.  The relevant context is the structure and purpose of the Act which dictates the orthodoxy of the phrase and which requires a relationship between the owner of the trade mark, use (or at the application date, intended use) and goods or services in respect of which use, in trade, is to occur and for which the mark is registered, as specified, according to the ordinary and natural meaning of the language used. 

134               Use of the mark in relation to goods and services is not established by showing use of the mark in relation to services provided by someone else.  Section 7 of the Act which provides that use of a trade mark in relation to services means “use of the trade mark in physical or other relation to the services” does not have the effect of providing, for the purposes of the Act, that the meaning of the phrase “in relation to services” means use by the trade mark owner in relation to services provided by someone else. 

135               It necessarily follows that FCN has not established use of the mark in relation to the specified class 38 services. 

The affidavits of Mr Tannahill and Ms Jordan

136               Mr Tannahill was not cross‑examined.  Challenges are made to Mr Tannahill’s affidavit on the ground of relevance to the issues in controversy.  I admit Mr Tannahill’s affidavit subject to the paragraphs not relied upon by TVFN as the matters deposed to are relevant to the question of whether TVFN is a person aggrieved under the Act and whether FCN has used the mark in the relevant period.  The affidavits are admissible under s 55(1) of the Evidence Act 1995 (Cth).  Mr Tannahill deposes to the trade mark applications and registered trade marks of TVFN. 

137               Ms Jordan is responsible for the international marketing of TVFN programs internationally and is responsible for the contracting arrangements with domestic broadcasters in each relevant country.  She says that Australia is a significant market for TVFN programs.  She says that over the last 13 years she has considered enquiries from Australian sources about broadcasting TVFN programs.  She also says that TVFN programs generate substantial revenue from distribution activities in Australia.  Ms Jordan says that TVFN’s original Australian licensee was Continental Programming Australia IP known as “Odyssey Australia” (“Odyssey”).  Odyssey held a licence to distribute programs in the period 27 June 1999 to 30 June 2005.  Odyssey ceased broadcasting in or about 2004.  In entering into international licence agreements it was generally a term of the licence agreements between TVFN (or Scripps as the managing agent of the limited partnership) that at least one of the FOOD NETWORK trade marks be featured for a minimum of five seconds at the beginning and end of the programs broadcast under licence.  The trade marks referred to by Ms Jordan are the devices depicted at [85] and [89] of these reasons. 

138               Ms Jordan says that prior to signing the licence agreement with Odyssey, a third party dispute arose.  On 20 July 1999, the solicitors for TFCPL wrote to Odyssey alleging that TFCPL was the owner of registered trade mark 738571; that Optus Vision was broadcasting cable programming featuring a copyright notice “TV Food Network GP 1997” together with a copy right logo and making certain demands.  Although Odyssey denied infringement of TFCPL’s mark, Odyssey elected to remove the above “tagline” from the programs.  The dispute was ultimately settled.  Ms Jordan says that she cannot say that every program broadcast by Odyssey under its licence with TVFN displayed a FOOD NETWORK trade mark as she did not watch the broadcasts in Australia and Odyssey no longer exists.  TVFN’s programs were shown on cable by Odyssey until at least 2004.  TVFN’s present licensees in Australia are XYZ Networks Pty Ltd (“XYZ”) and SBS Australia (“SBS”).  XYZ has been broadcasting Food Network programs on its Lifestyle Food Channel (Foxtel) since May 2004 and Ms Jordan expects that XYZ will be broadcasting such programs well into the future. 

139               It is a term of the licence agreement with XYZ that the licensee is not entitled to edit any part of the programs provided to it by TVFN.  Annexure “KJ7” sets out two pages of programs licensed to XYZ and broadcast in the period 1 April 2004 to 30 December 2007.  Under the licence agreement the trade marks and service marks required to be used with TVFN’s programs include TELEVISION FOOD NETWORK, FOOD NETWORK, TVFN, TVFN WITH DESIGN and foodnetwork.com. 

140               Apart from XYZ, SBS has been broadcasting Food Network programs entitled “Iron Chef America” since about 2006.  Ms Jordan says that Food Network logos are included in the Iron Chef American programs.  The licensee is required to broadcast the programs without any change or editing of the programs and in particular without removing the TVFN trade marks and service marks. 

141               I accept the evidence of Ms Jordan and find that TVFN has broadcast programs in Australia directed to the topics of food and the treatment of food, extensively in Australia.  I find that the broadcast licensees XYZ and SBS are required to broadcast the programs without deletion of TVFN’s trade marks and service marks and that its programs have been broadcast to air bearing the marks referred to by Ms Jordan. 

142               I find that TVFN and FCN are rivals in a common field of activity.  TVFN also produces a wide range of food related programming for international distribution and distribution in Australia. 

143               FCN relied upon a number of affidavits from its solicitor, Mr Hauff.  That evidence was not put forward as expert evidence.  Mr Hauff’s evidence challenges aspects of Mr Tannahill’s affidavit and to that extent is argumentative or proceeds on the basis of point and counter‑point propositions.  I propose to admit into evidence all of the affidavits of Mr Hauff although, plainly enough, to the extent that the material is simply argumentative (as in large part it is) I have treated the material as submissions.  Mr Hauff also seeks to give evidence on questions of fact in issue in the proceedings to the extent that he says he has not seen, although having looked at TVFN programs, TVFN trade marks as described by Ms Jordan and particularly the logos she refers to (depicted at [85] and [89]) on the program Iron Chef America on the Lifestyle Channel.  However, the evidence of Ms Jordan as to the orthodox and systematic licensing of TVFN programs into Australia for distribution by XYZ and SBS on terms requiring use of the marks and no permitted editing of program material is persuasive in finding that the TVFN marks are used in Australia. 

144               However, TVFN, like FCN, does not have a broadcasting licence in Australia. 

145               A number of objections have been taken to the affidavits of Mr Lawrence directed to the question of relevance largely having regard to a view that might be taken as to the scope of the words specifying the services in respect of which trade mark 733265 is registered.  I admit into evidence all of Mr Lawrence’s affidavits.  I admit them having regard to the approach I have taken of determining firstly, whether there has been use of the mark and then secondly, whether that use is use in relation to the services for which the mark is registered.  I admit into evidence on the same footing the affidavits of Mr Styles, Mr Salisbury, Mr Day, Mr Bates, Mr Riley and Mr McKenzie.  The extent to which I have relied upon those affidavits is apparent from the analysis of the facts in these reasons. 

146               As I indicated, I similarly admit into evidence the entirety of Mr Tannahill’s affidavit (subject to the parts not relied upon by TVFN) and the affidavit of Ms Jordan which goes to the question of whether TVFN is a person aggrieved. 

147               Section 197 of the Act provides that the Court may affirm, reverse or vary the Registrar’s decision or give any judgment, or make any order, that, in all the circumstances, it thinks fit:  s 197(d) and (e).  The decision of the Registrar ought to be varied by ordering that trade mark registration 733265 be removed from the register in respect only of the class 38 services for which it is registered described as “television broadcasting services including free‑to‑air and cable television broadcasting” and that trade mark registration 733265 remain on the register in respect of the class 41 services described as “production of television programs and television entertainment”. 

148               The parties will be ordered to provide submissions on costs arising out of their consideration of these reasons, within 21 days. 

Associate:

Dated:         5 July 2010