FEDERAL COURT OF AUSTRALIA

Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507

ORDERS

THE COURT ORDERS THAT:

1.    The appeal from the decision of the Registrar of Trade Marks given by her delegate on 25 August 2014 is dismissed.

2.    The first and second appellants are to pay the respondent’s costs as agreed or assessed.

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

ORDERS

THE COURT ORDERS THAT:

1.    The application for an order pursuant to section 101(2) of the Trade Marks Act 1995 (Cth) that the Registrar of Trade Marks remove the Trade Mark Application Number 1324177 from the Registrar of Trade Marks is dismissed.

2.    The first and second applicants are to pay the respondent’s costs of the application as agreed or assessed.

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

REASONS FOR JUDGMENT

PERRY J:

1.    INTRODUCTION

1    Before the Court are two proceedings commenced by the applicants, Bauer Consumer Media Ltd (BCM) and Bauer Media Pty Ltd (BM) (together Bauer), against Evergreen Television Pty Ltd (Evergreen). The proceedings concern the ownership, registrability and continuance on the Register of Trademarks of trademark application no. 1324177 (the application) for the phrase “Discover Downunder” (in a stylised title case form) (the Mark) in relation to Class 41 of the Register, being “the production of television programs” (the services).

2    The first proceeding, NSD 935 of 2014, (the appeal proceeding) is an appeal pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Act) from the decision of a delegate of the Registrar of Trademarks (the Delegate) given on 25 August 2014 to refuse Bauer’s opposition to registration of the application and to allow the application for the trade mark made on 9 October 2009 to proceed to registration. In the appeal proceeding, Bauer opposes registration on the following grounds: that Evergreen was not the owner of the Mark (s 58), did not intend to use the Mark in good faith (s 59), or applied for the Mark in bad faith (s 62A); that the use of the Mark would be likely to deceive or cause confusion as at the filing date because of the reputation of Discover Downunder as a prior trade (s 60); and that Evergreen’s use of the Mark would be contrary to the Trade Practices Act 1974 (Cth) (TPA) and therefore contrary to law (s 42). While Bauer initially contended also that the Mark is not capable of distinguishing Evergreen services from similar services of other persons (s 41), in closing submissions Bauer stated that this ground was no longer pressed. It is not in dispute that it would suffice if Bauer were to succeed on any of the grounds which were pressed. Save for s 59 as explained below, Bauer accepts that it bears the onus of establishing on the balance of probabilities that these grounds of opposition are made out: see Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (Food Channel); and Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 at [132]-[134].

3    The second proceeding, NSD 682 of 2015, (the non-use proceeding) is an application pursuant to s 101(2) of the Act seeking removal of the Mark from the Register of Trade Marks on the grounds of non-use under s 92(4)(a) or, in the alternative, s 92(4)(b) of the Act. The non-use proceeding was commenced in this Court rather than initially before the Trade Marks Office by reason of s 92(3) of the Act as the appeal proceeding was already pending in this Court. In these proceedings, Bauer contends that Evergreen must establish genuine use of the Application within two separate non-use periods, namely:

(1)    for the purposes of s 92(4)(a) from the Filing Date of 9 October 2009 to 11 May 2015 (the first non-use Period); and

(2)    for the purposes of s 92(4)(b), from 11 May 2012 to 10 May 2015 (the Second Non-Use Period).

4    Bauer accepts that it bears a threshold onus to demonstrate that the Mark has not been used in either of the non-use periods but contends that the onus then shifts to Evergreen to establish use in the relevant periods or in the alternative to establish that the Court ought not to order removal of the trade mark in the exercise of discretion.

5    By orders made by consent on 10 November 2015, both proceedings are to be heard and determined together.

6    For the reasons set out below, I consider that Evergreen is the owner of the Mark and that none of the grounds of opposition are made out. As such the appeal is dismissed. I also consider that the non-use proceedings must be dismissed.

2.    LEGISLATIVE OVERVIEW

2.1    Date of the Act

7    It was not in dispute that the Act applies as at the date on which the trade mark application was filed, namely, 9 October 2009. As a result, this appeal is governed by the Act before it was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) which largely took effect from 15 April 2013.

2.2    Concept of a trade mark

8    A “trade mark” is defined in s 17 of the Act as:

… a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

9    A “sign” in turn is defined in s 6 to include “the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.” It is not in dispute that “Discover Downunder” is capable of being registered under the Act as a trade mark.

10    Registration of a trade mark confers upon the registered owner the exclusive rights to use the trade mark and to authorise other persons to use it in relation to the goods and/or services in respect of which the trade mark is registered, together with the right to obtain relief under the Act for infringement (ss 21 and 22 of the Act).

2.3    Application for a trade mark

11    Section 27 of the Act provides that “[a] person may apply for registration of a trademark in respect of goods and/or services if:

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

(b) one of the following applies:

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

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

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

12    As such, the Act allows an applicant to obtain title to a trade mark prior to use, so long as the requirements in s 27 are met: Food Channel at [49] (the Court).

13    Under s 31, the Registrar must examine and report on whether the application has been made in accordance with the Act and whether there are grounds under the Act for rejecting it. After the examination, the Registrar must accept the application unless she or he is satisfied that it is not made in accordance with the Act or there are grounds under the Act for rejecting it (s 33).

14    It is apparent from the criteria in s 27(b), the grounds of opposition, and the capacity to apply to remove a trade mark for non-use that, while it is an object of the 1995 Act to create, by registration of trade marks, a species of tradeable property in the form of monopoly, that right is to be conferred only where such marks are connected with actual or contemplated trade in goods or services. In this regard, as High Court considered with respect to the 1955 Act in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 (“Nike”), in observing that the Act struck a balance between various disparate interests:

42. …[T]he Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creating of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment …

2.4    Opposition to registration

15    If the Registrar has accepted an application for the registration of a trade mark, a person may oppose registration by filing a notice of opposition under s 52 of the Act. Section 52(4) provides that “[t]he registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.” Section 57 of Division 2 of Part 5 of the Act in turn provides that:

The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.

16    The grounds of opposition are specified in the Act. Relevantly, in the first place, registration may be opposed under s 58 on the ground that the applicant “is not the owner of the trade mark” which is to be assessed as at the date of the application for registration.

17    Secondly, registration may be opposed under s 59 on the ground that:

… the applicant does not intend:

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

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

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

18    Thirdly, registration may be opposed under s 62A on the ground that “the application was made in bad faith”.

19    Fourthly registration may be opposed under s 60 on the ground that the use of the trade mark would be likely to deceive or confuse because another trade mark had previously acquired a reputation in Australia in respect of the same goods or services.

20    Finally, s 42 provides that:

An application for the registration of a trade mark must be rejected if:

(a)    the trade mark contains or consists of scandalous matter; or

(b)    its use would be contrary to law.

21    In this case it is said that at the time of the application for registration, Evergreen’s use of the Mark would be misleading or deceptive contrary to the Trade Practices Act 1974 (Cth) (being the law then in force at the filing date) and therefore contrary to law under s 42 of the Act.

22    Where, as here, the application is opposed, the Registrar must give the opponent and applicant an opportunity to be heard in accordance with s 54 and must thereafter under s 55:

…decide

(a)    to refuse to register the trade mark; or

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2.5    Appeal from a decision of the Registrar on an opposed application to the Federal Court

23    A right of appeal from a decision of the Registrar to the Federal Court under s 55 is provided for by s 56 of the Act. It is important to bear in mind that, notwithstanding its description as an “appeal”, an appeal under s 56 of Act is a proceeding in the original jurisdiction of the Court in which the Court in the exercise of judicial power determines the same statutory questions as those determined by the Registrar in the exercise of executive power: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [32]; Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119 (Malibu) at [6] (Finkelstein J). The Court therefore determines for itself the merits of the application and grounds of opposition, and is not limited to determining whether the Registrar’s decision was correct in law: Jafferjee v Scarlett (1937) 57 CLR 115 at 126; Malibu at [6]. In this regard, Yates J in Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511 explained the manner in which the Court should approach the weight to be given to the decision of the Registrar:

23    What is required in that regard is a hearing de novo in which the Court approaches the matter “afresh and without undue concern as to the ratio decidendi of the Registrar”: Rowntree PLC v Rollbits Pty Ltd (1988) 90 FLR 398 at 403. That said, weight should be given to the Registrar’s opinion as “a skilled and experienced person”: Jafferjee at 126. On some occasions, it has been said that “due weight” should be given to the Registrar’s opinion: Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 at 308. On other occasions, it has been said that “great weight” (Eclipse at 321; Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 41) or “very considerable importance” (Joseph Bancroft & Sons Co v Registrar of Trade Marks (1957) 99 CLR 453 at 457) should be given to the Registrar’s opinion.

24    I do not think that, by using these varying expressions, the cases intend to convey different notions of deference. Nevertheless, the degree to which weight should be given to the Registrar’s opinion will, no doubt, depend on the circumstances of each case and the particular question involved. For example, in the present case, both parties accepted that the weight to be given to the Registrar’s opinion may be affected by the fact that evidence has been adduced in the appeal which was not before the delegate.

25    In Woolworths, French J observed (at 377):

… Weight can be given to the Registrar’s opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as “deceptive similarity” there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean that the Court is bound to accept the Registrar’s factual judgment. Rather it can be treated as a factor relevant to the Court’s own evaluation.

26    Although these observations were made in the context of considering whether a ground of rejection existed under s 44 of the Act in respect of a particular application, they are apposite to a case concerning the application of s 41 of the Act.

24    In other words, while the weight to be given to the evaluation of the Registrar should take account of the Registrar’s expertise and experience, nonetheless it will be affected by the particular circumstances and the particular issue in question.

2.6    Application for removal for non-use

25    Section 92(3) of the Act provides that a person may apply to the Court for orders requiring the Registrar to remove a trade mark from the Register for non-use. Under s 92(4), such an application may be made either on the ground that: (a) when the application for registration was filed, the applicant had no intention in good faith to use or authorise the use of the trade mark in Australia and has not used it in relation to those goods or services at any time up to one month before the non-use application was filed; or (b) where the trade mark has been registered for three years ending one month before the non-use application, at no time during that period has the registered owner used the trade mark in good faith in Australia in relation to the goods or services to which it relates. These provisions are considered in more detail later in these reasons.

3.    WITNESSES

3.1    General

26    On the final day of the hearing, orders were made such that the evidence in one proceeding would be received in evidence in the other proceeding, subject to relevance and the rulings made on objections. That notwithstanding, as I note below, evidence was initially filed separately in the appeal and non-use proceedings and it is apparent (as the parties accept) that not all of the evidence filed in each proceeding is relevant to determination of the issues in the other proceeding.

27    I also note that while initially certain annexures/exhibits to affidavits on which Bauer sought to rely were identified as confidential, on the first day of the trial Bauer abandoned any application for orders to protect the confidentiality of any of those documents.

3.2    Evidence for Bauer

3.2.1    Mr Keith Falconer (CEO, Bauer, Trader Media (Formerly Trader/ACP))

28    Bauer relied primarily upon the evidence of Keith Falconer who is the Chief Executive Officer (CEO) of Bauer Trader Media and has held that position since March 2004. In that role he had responsibility for approximately 200 staff, 20 to 30 magazines, 5 to 10 websites, and 2 television programmes, the Car Show and the Boat Show. Bauer Trader Media was formerly Trader Classifieds (Trader). Trader was the name of the business division of Bauer Media Pty Ltd, and was formerly known by different names being, chronologically, ACP Publishing Pty Ltd, ACP Magazines Ltd and finally Bauer Media Limited.

29    Prior to his appointment as CEO of Trader, Mr Falconer held the position of Chief Operations Officer for Trader commencing in April 2002. Mr Falconer has worked in the media industry for approximately 29 years and in particular since 1993 for businesses operating in New Zealand and Australia through various corporate ownership structures forming part of the broader Bauer Media group, including when Bauer Media was owned by Publishing and Broadcasting Ltd (PBL) and then by Nine Entertainment Code Pty Ltd.

30    Mr Falconer gave evidence by affidavit sworn on 17 June 2015 and 7 September 2015 filed in the appeal proceeding and in cross-examination. Mr Falconer’s declarations dated 21 December 2011 and 7 December 2012 in the opposition proceeding before the Registrar were also received in evidence as part of Exhibit A19.

31    Mr Falconer also gave evidence by affidavits sworn on 6 October 2015 and 10 November 2015 which were filed in support of the application in the non-use proceedings.

3.2.2    Mr Macek Rubetzki (Media Legal IP)

32    Bauer also relied upon the affidavit of Macek Rubetzki, the Principal Solicitor of Media Legal IP law firm, sworn on 2 October 2015. Mr Rubetzki was not cross-examined. He assisted the applicants’ solicitors in relation to the conduct of the non-use and opposition proceedings before the Registrar including in the undertaking of various searches. He has a solicitor/client relationship with the second applicant, Bauer Media.

33    Those parts of Mr Rubetzki’s declaration dated 15 November 2011 in the opposition proceeding before the Registrar which are contained in Exhibit A19 were also tendered and received in evidence.

3.3    Evidence for the respondent, Evergreen

3.3.1    Mr Colin Parrôt (Evergreen, Power Pact and Parable Productions)

34    Colin (or “Col”) Parrôt, a producer, was the primary witness for Evergreen and gave evidence by affidavit sworn on 10 August 2015 (filed in the appeal proceeding) and 21 October 2015 (filed in the non-use proceeding). In addition, the declarations of Colin Parrôt dated 9 December 2011, 13 or 14 April 2012, and 7 August 2012 were received in evidence as part of Exhibit A19. He was also cross-examined at length.

35    Colin Parrôt established the respondent, Evergreen, in 2001 with cameraman Simon Hearn. They were joint directors and shareholders until 22 November 2007 when Mr Hearn ceased being a director and shareholder and Colin Parrôt became the sole director and shareholder. Evergreen was established to produce television programs for broadcast.

36    Prior to establishing Evergreen, Colin Parrôt worked in the advertising industry producing advertisements. He had an advertising business called Impact Advertising which was established in 1979. From 1998 Colin Parrôt ran an advertising business from an entity called Power Pact Advertising and owned the company Power Pact Advertising Pty Ltd (Power Pact). Power Pact was incorporated in 1998 and engaged in advertising.

37    In addition, on 23 September 2009 Colin Parrôt incorporated Parable Productions Pty Limited (Parable Productions) and was its sole director. Parable Productions was incorporated to produce the program “What’s up down under” and entered into an agreement with Channel Seven for that purpose on 24 September 2009, as I later explain.

3.3.2    Mr Warren Parrôt (former employee, Trader)

38    Warren Parrôt is Colin Parrôt’s son. He was employed between 2000 and 2009 by ACP initially in sales as a Senior Accounts Manager and then in April 2004 as National Corporate Advertising Manager in Trader. In the latter position, Warren Parrôt was responsible for managing an external sales force of contract salesmen engaged to sell advertising space across a portfolio of some 16 magazine titles published by ACP. He also assisted in selling ACP’s online services which were effectively classified advertising websites. In addition, Warren Parrôt was responsible for managing sales in relation to an arrangement between ACP and Q Media, the latter being a company belonging to Mr Glenn Ridge. ACP owned The Boat Show to promote a website and its magazines “Trailer Boat” and “Trade-a-Boat”, while Q Media owned The Car Show which ACP used to promote sales through its website and a magazine called “Unique Cars”.

39    Evergreen relied upon the affidavit of Warren Parrôt sworn on 10 August 2015 filed in the appeal. Warren Parrôt’s declaration dated 10 April 2012 in the opposition proceeding before the Registrar was also received in evidence as part of Exhibit A19. Warren Parrôt was also cross-examined.

3.3.3    Mr Peter Wright (formerly Executive Officer, Caravan Trade & Industries Association of Victoria)

40    Evergreen also relied upon the affidavit evidence of Peter Matthew Wright, retired, sworn on 17 July 2015. Mr Wright was also cross-examined.

41    Mr Wright was the Executive Officer of the Caravan Trade & Industries Association of Victoria (CTIAV) from about July 2001 until 2011 when he retired from that position. The CTIAV is a representative body for trade and retail businesses in the caravan industry in Victoria. Its members are typically manufacturers, retailers and service providers of caravan and camping products. Its objectives included promoting the services of its members to customers. As I later explain, the CTIAV was a principal sponsor of the program, Discover Downunder in the first and second series and agreed to continue funding when the show moved to Channel Nine. As the Executive Officer of the CTIAV, Mr Wright managed its day-to-day operations and was responsible among other things for managing advertising and for sourcing ideas for sponsorship and promotional activities.

42    The CTIAV was one of a number of caravan industry associations at state and territory level, albeit that some such associations had broader membership base (including, for example, caravan parks) than other state associations where caravan parks had a separate association as was the case in Victoria. These associations came under the umbrella of a national association, Caravan Industry Australia (CIA).

4.    FINDINGS AS TO CREDIT

4.1    The impact generally of the passage of time as to the quality of evidence

43    In assessing the evidence, it is important to bear in mind the impact generally of the passage of time upon the quality of evidence available in the case. In particular, the principal events relevant to the appeal proceeding on the basis of which the parties respectively claim ownership of the mark occurred between early 2004 and early 2005. In this regard, as McHugh J in Brisbane South Regional Health Authority v Taylor (1996) 186 CLR 541 at 551 (Brisbane South) explained in identifying the policy underlying the enactment of limitations periods, the impact of the passage of time on the quality of both documentary evidence and the evidence of witness is insidious and cannot necessarily be measured:

The enactment of time limitations has been driven by the general perception that “[w]here there is delay the whole quality of justice deteriorates”. Sometimes the deterioration in quality is palpable, as in the case where a crucial witness is dead or an important document has been destroyed. But sometimes, perhaps more often than we realise, the deterioration in quality is not recognisable even by the parties. Prejudice may exist without the parties or anybody else realising that it exists. As the United States Supreme Court pointed out in Barker v Wingo, “what has been forgotten can rarely be shown”. So, it must often happen that important, perhaps decisive, evidence has disappeared without anybody now “knowing” that it ever existed. Similarly, it must often happen that time will diminish the significance of a known fact or circumstance because its relationship to the cause of action is no longer as apparent as it was when the cause of action arose. A verdict may appear well based on the evidence given in the proceedings but, if the tribunal of fact had all the evidence concerning the matter, an opposite result may have ensued. The longer the delay in commencing proceedings, the more likely it is that the case will be decided on less evidence than was available to the parties at the time that the cause of action arose.

44    Further, McLelland CJ in Equity speaking of the fallibility of human memory in Watson v Foxman and Others (1995) 49 NSWLR 315 (Watson) at 319 pointedly explained the kinds of influences that may impact upon the processes of memory with the passing of time:

…human memory of what was said in a conversation is fallible for a variety of reasons, and ordinarily the degree of fallibility increases with the passage of time, particularly where disputes or litigation intervene, and the processes of memory are overlaid, often subconsciously, by perceptions or self-interest as well as conscious consideration of what should have been said or could have been said. All too often what is actually remembered is little more than an impression from which plausible details are then, again often subconsciously, constructed. All this is a matter of ordinary human experience.

45    To similar effect, Katzmann J stated in Arnautovic v Cvitznovic [2011] FCA 809 at [73] that:

In the absence of notes it is, generally speaking, impossible to accurately recall the terms of any conversation six months after it took place. Human memory is notoriously unreliable. As Spigelman CJ recently observed (“Truth and the Law”, The 2011 Sir Maurice Byers Lecture, 26 May 2011):

Witnesses can, without any dissimulation or propensity to lie, confidently assert the truth of conversations, observations and events which did not happen. The plasticity of memory impedes the truth finding process. This is not an uncommon phenomenon…

46    These observations apply with particular force in this case where, as I observe, there were significant differences in the accounts of the primary witnesses for each party including as to whether or not particular meetings took place, what was said and so forth, the credibility of the principal witnesses was very much in issue, and the primary witnesses for both parties had a considerable stake in the outcome of the proceedings. This means that in the case in particular of Mr Falconer’s evidence and that of Colin and Warren Parrôt, I have given greater weight to evidence which is corroborated by the contemporaneous documents. On the other hand, both parties accepted that Mr Wright had no personal stake in the proceedings and his evidence, subject to the inevitable impact of time, was the more reliable.

4.2    Mr Falconer

47    In controversial matters, I do not consider that Mr Falconer’s evidence can be relied upon absent corroboration. First, there were significant inconsistencies in his evidence before the Registrar and on the appeal. An example concerns the critical issue of when and by whom the name “Discover Downunder” was devised.

48    Secondly, he engaged to some extent in reconstructing events. An example is his evidence attempting to explain how he recalled only in these proceedings that he had had a meeting with Warren and Colin Parrôt in September 2004 at which he says that Warren Parrôt suggested the name “Discover Down Under”: see below at [236]-[239] below.

49    Thirdly, as Evergreen submits, Mr Falconer gave a vague and unsatisfactory account of the efforts undertaken by others to locate documents within Bauer which might have supported his account on matters such as the alleged internal use of Discover Downunder for the program from September 2004: see further at [73]-[76] below.

50    Fourthly, I do not accept Bauer’s submission that Mr Falconer’s evidence, in contrast to that of Colin and Warren Parrôt, was unaffected by advocacy. I formed the impression that vindicating Bauer’s position in the litigation meant a lot to him personally and that is scarcely surprising given his lengthy role within the Bauer group of companies and his level of seniority.

51    In finding Mr Falconer’s evidence on controversial matters is not reliable unless corroborated by documentary evidence or Mr Wright’s evidence, I emphasise that I find only that the likelihood is that this is the result of the passage of time and of the kinds of subconscious influences which may lead to the unconscious reconstruction of events of which McLelland CJ in Equity spoke in Watson (as quoted at [44] above). It is also no doubt affected by the fact that Mr Falconer had many other responsibilities and on his own evidence had limited personal involvement only in the program Discovery Downunder throughout its development and running. That limited involvement is only to be expected given the scale of his responsibilities as CEO of Trader: see above at [28]. In this regard, as I later explain I have also taken into account when relevant the failure by Bauer to call witnesses with personal knowledge of relevant events: see below at [64]-[72].

4.3    Mr Colin Parrôt

52    Overall I formed a favourable view of Colin Parrôt’s honesty. He was straightforward in his answers and his evidence was unshaken by extensive and often vigorous cross-examination. There were matters on which he felt confident in his recollection of events and he gave credible answers when pressed as to why he might recall those events. Equally he did not hesitate to state where he could not recall events. That notwithstanding, not surprisingly there was also a degree of reconstruction in his recollection of events by reference to documents, as he accepted for example in his recollection of when the Pilot Promo for the first series was filmed. He was also prepared to stand corrected when he was proved wrong. For example, when the discrepancy between his recollection of the date of an important meeting with Bruce Gordon in 2009 with the date as referenced in his diary and in an email sent the following day was pointed out to him in cross-examination, he immediately accepted the documentary record as correct and was in my view genuinely apologetic about the error saying “I stand corrected. It’s my mistake on that.” He did not doggedly stand by his recollection and try to explain away the documentary evidence.

53    It is, however, also fair to say that Colin Parrôt felt very strongly that he had been wronged by Bauer and that this came out repeatedly in his evidence. I have no doubt that his feeling that he had been wronged was genuinely felt. I also consider that it is likely that his recollection of events was clearer and more specific than that of Mr Falconer, not least because this was a really important matter personally to him. The concept of a program like Discover Downunder was something he had conceived initially back in the late 1980’s and it meant a lot to him to see it brought to fruition. Nonetheless the fact that he gave evidence confidently does not mean that time has not also impacted upon his recollection of events; nor that his strong perception that he is “in the right” may not have subconsciously impacted on his recollection of events and conversations. However, unlike Mr Falconer, in general Colin Parrôt’s recollections on contentious matters are corroborated by contemporaneous records.

4.4    Mr Warren Parrôt

54    Warren Parrôt also clearly felt that he and his father had been wronged, including in the manner in which he personally had been treated in the lead up to his redundancy from Bauer. No doubt, together with the passage of time, that emotional state impacted to some degree upon his evidence. However, I accept him as honest and straightforward. His evidence is largely consistent with his father’s evidence and, more importantly, with the documentary record. I do not accept that his credibility was damaged by cross-examination which was at times extensive and vigorous, including on a series of documents put to him in cross-examination for the purpose of damaging his credibility. For example, one of the major attacks upon his credibility related to a PowerPoint presentation which he prepared in the months leading up to his dismissal. In closing submissions, Bauer submitted that Warren Parrôt’s evidence regarding the circumstances in which he had developed the business plan represented in the PowerPoint presentation for a re-branded television show “was clearly an unreliable reconstruction which he devised in the course of giving his oral evidence.” For reasons I later explain, I do not accept that submission and find credible as against vigorous cross-examination his unshaken and persuasive testimony that he prepared the plan as a backup plan at a time when he was under great stress at Bauer in the period leading up to his dismissal: see below at [213]-[215].

4.5    Conclusion on credit/reliability of witnesses

55    In short, each of the key witnesses, Mr Falconer for Bauer, and Colin and Warren Parrôt for Evergreen, can fairly be described as advocates for a favourable outcome in their respective interests and I accept that each genuinely believed the claim to ownership of the Mark by their respective party. However, as Evergreen submits, a major point of distinction between them is that the evidence of Colin and Warren Parrôt on the critical facts in issue is substantially supported by contemporaneous documentation and the independent evidence of Mr Wright. On the other hand, Mr Falconer’s evidence on controversial matters is substantially inconsistent with the evidence in the documents or uncorroborated by documentary evidence including as to the alleged meeting with Colin and Warren Parrôt on 24 September 2004 at which he said that Warren came up with the name Discover Downunder and the alleged internal use of the name “Discover Downunder” thereafter (see below at [236]-[245]).

5.    DEFICIENCIES IN THE EVIDENCE AND THE DRAWING OF INFERENCES

5.1    The rule in Jones v Dunkel

56    One significant issue between the parties concerned whether adverse inferences should be drawn on the basis of the rule in Jones v Dunkel (1959) 101 CLR 298 (Jones v Dunkel) against Bauer by reason of its failure to call Ms Coady, Messrs Grant and James Manson, and to a lesser extent, Mr Sinclair.

57    The rule in Jones v Dunkel is based on common sense, namely, that an unexplained failure by a party to call a witness may, in appropriate circumstances, base an inference that the evidence of that witness would not have assisted that party's case: Jones v Dunkel at 308 (Kitto J), 312 (Menzies J) and 320-321 (Windeyer J). While the rule may make certain evidence or the inferences which may be drawn from the evidence more probable, it cannot fill gaps in the evidence, or convert conjecture and suspicion into inference: Jones v Dunkel; Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121 at [53] (Gleeson CJ and McHugh J). As for example, Newton and Norris JJ held in O’Donnell v Reichard [1975] VR 916 at 929 in explaining the proper manner in which the rule may be applied;

…where a party without explanation fails to call as a witness a person whom he might reasonably be expected to call, if that person’s evidence would be favourable to him, then, although the jury may not treat as evidence what they may as a matter of speculation think that that person would have said if he had been called as a witness, nevertheless it is open to the jury to infer that that person’s evidence would not have helped that party’s case; if the jury draw that inference, then they may properly take it into account against the party in question for two purposes, namely:

(a) in deciding whether to accept any particular evidence, which has in fact been given, either for or against that party, and which relates to a matter with respect to which the person not called as a witness could have spoken; and

(b) in deciding whether to draw inferences of fact, which are open to them upon evidence which has been given, again in relation to matters with respect to which the person not called as a witness could have spoken.

(emphasis in the original)

58    Underpinning Jones v Dunkel is the general principle tracing back to the remarks of Lord Mansfield in Blatch v Archer (1774) 1 Cowp 63 at 65 that “all evidence is to be weighed according to the proof which it was in the power of one side to have produced, and in the power of the other to have contradicted”. As Hodgson JA (with whose reasons Beazley JA agreed) explained in Ho v Powell [2001] NSWCA 168; (2001) 51 NSWLR 572:

14. … in deciding facts according to the civil standard of proof, the court is dealing with two questions: not just what are the probabilities on the limited material which the court has, but also whether that limited material is an appropriate basis on which to reach a reasonable decision…

15. In considering the second question, it is important to have regard to the ability of parties, particularly parties bearing the onus of proof, to lead evidence on a particular matter, and the extent to which they have in fact done so…

(citations omitted)

59    This principle is not limited to the failure to call a particular witness: other instances where it may be relied upon include a failure to adduce any evidence at all, a failure to produce a particular document, or a failure to prove a particular fact (Payne v Parker [1976] 1 NSWLR 191 (Payne) at 201(3) (Glass JA)).

60    Importantly, Glass JA in Payne at 201 identified three conditions for the existence of the principle in Jones v Dunkel, namely: “(a) the missing witness would be expected to be called by one party rather than the other, (b) his evidence would elucidate a particular matter, (c) his absence is unexplained.” As to the first condition, Glass JA explained at 201 that:

The first condition is also described as existing where it would be natural for one party to produce the witness: … or the witness would be expected to be available to one party rather than the other… or where the circumstances excuse one party from calling the witness, but require the other party to call him… or where he might be regarded as in the camp of one party, so as to make it unrealistic for the other party to call him… or where the witness’ knowledge may be regarded as the knowledge of one party rather than the other… or where his absence should be regarded as adverse to the case of one party rather than the other…It has been observed that the higher the missing witness stands in the confidence of one party, the more reason there will be for thinking that his knowledge is available to that party rather than his adversary… If the witness is equally available to both parties, for example, a police officer, the condition, generally speaking, stands unsatisfied. There is, however, some judicial opinion that this is not necessarily so…. Evidence capable of satisfying this condition has been held to exist in relation to a party’s foreman… his safety officer… his accountant… his treating doctor…

(citations omitted)

61    While Glass JA was in dissent in the result in Payne, these passages were accepted as correctly stating the relevant principles in RHG Mortgage Limited v Rosario Ianni [2015] NSWCA 56 (RHG Mortgage) at [78] per McColl JA (Sackville AJA agreeing).

62    As to Glass JA’s second condition, McColl AJA in RHG Mortgage at [76] explained that “The circumstances for drawing a Jones v Dunkel inference are found where the uncalled witness is ‘a person presumably able to put the true complexion on the facts relied on [by a party] as the ground’ for any inference favourable to the plaintiff”.

63    As to the third condition, her Honour explained in RHG Mortgage that:

75. Any “explanation” such as unavailability or absence of recollection for the failure to call the witness must be established by evidence: West v Government Insurance Office (NSW) [1981] HCA 38; (1981) 148 CLR 62 (at 70) per Murphy J; Rowell v Larter (1986) 6 NSWLR 21 (at 24 – 25) per Young J (as his Honour then was).

5.2    Does Jones v Dunkel apply with respect to Bauer’s failure to call Miffy Coady, Mike Sinclair and Grant and James Manson?

64    Evergreen contends that on each of the points on which Mr Falconer’s sole testimony is the only evidence, there are other witnesses “in the Bauer camp” who ought to have been capable of corroborating his evidence. Specifically, Evergreen relied upon the failure by Bauer to call the following witnesses whose relevant knowledge may be summarised as follows:

(1)    Miffy Coady who had immediate supervision of Warren Parrôt at Trader. In particular, as I later explain, Ms Coady was the author of an email on 27 January 2005 describing the show as “Discover Down Under” and it was her diary entries on 27 and 28 January 2005 which variously described the show as “Discovery Downunder” and “Discover Downunder”, each of which were annexed to Mr Falconer’s affidavit evidence. Bauer relied upon these documents in support of its claim to ownership of the Mark on the basis that they demonstrated that the name Discover Downunder was being used internally within Bauer before Colin Parrôt alleges that the name was settled upon (see further at [140] and [246]);

(2)    Mike Sinclair, who was Bauer’s editor-in-chief and had direct dealings with Colin and Warren Parrôt and the program, including being implicated in certain key controversial events (e.g. the question of who paid the airfares for the meeting with Channel Ten on 24 January 2005 (see at [247] below));

(3)    Grant and James Manson from Cameron Damon Media (CDM) to whom among other things a promotional video had allegedly been sent by Bauer before execution of the contract between Evergreen and Channel Ten, being the act allegedly constituting Bauer’s first use of the Mark. I also note that, despite changing its case as to first use in the course of the trial from the alleged distribution of the promotional video by CDM to potential clients, to Bauer sending the promotional video to CDM (see below at [275]-[279]), Grant and/or James Manson would have had relevant knowledge on either case.

65    With respect to these persons, Mr Falconer gave evidence that:

(1)    Miffy Coady lived only a few streets away from him in Melbourne;

(2)    Mike Sinclair subsequently went to Carsales.com.au (a business which Bauer sold in 2005) and was still there;

(3)    CDM were ACP’s media sales representatives at all relevant times, there is still a commercial relationship between Bauer and CDM for media sales, and James and Grant Manson are still at CDM in Melbourne; and,

(4)    all of these people would have been available to Mr Falconer if he wished to speak to them.

66    Bauer, however, submitted that it was not suggested in evidence (nor is it the case) that any of those persons is a present employee of Bauer or a person over whom Bauer had any control. As such in its submission there is no basis for drawing any adverse inference against Bauer by reason of it not eliciting testimony from them and to do so would misapply Jones v Dunkel. Rather, Bauer submits that either party could potentially have called any of Ms Coady, Mr Sinclair, or Messrs Manson. In its submission, the fact that neither party called any of these witnesses ought not to have the consequence that a failure to do so should result in an adverse inference being drawn against it.

67    I do not accept Bauer’s submissions.

68    First, the test is not whether the potential witness is a present employee or someone over whom a party had “control”. The question is whether it would have been natural for Bauer or Evergreen to produce the witness. Given that Miffy Coady and Mike Sinclair had previously been employed by Bauer and the issues on which they could have given relevant evidence related to matters of which they would have had knowledge by reason of their former employment with Bauer, they were plainly in the Bauer camp, and it was unrealistic to expect Evergreen to call them. The same is the case with respect to James and Grant Manson who remain in a longstanding business relationship with Bauer. The submission by Bauer that Jones v Dunkel cannot be invoked by Evergreen because the 2005 contract between CDM and Bauer states that CDM is not the agent for Bauer is premised upon the erroneous assumption that the rule applies only where a party has control over the person not called.

69    Secondly, the evidence did not demonstrate that these persons were unavailable. To the contrary, as earlier stated Mr Falconer knew where they were and accepted that he could have spoken to any of them. Indeed, Mr Falconer relied in his evidence upon statements which he attributed to Grant Manson about the use to which CDM put the video (see below at [290]-[291]).

70    Thirdly, Bauer did not dispute that these people could have given relevant evidence. To the contrary it is apparent from the evidence that they would have had personal knowledge of highly relevant facts in issue.

71    Finally, there is no evidence explaining why these persons were not called by Bauer.

72    In those circumstances, as I later explain there are a number of issues in relation to which I consider that an adverse inference ought properly to be drawn against Bauer in line with Blatch v Archer and Jones v Dunkel by reason of Bauer’s failure to call these individuals.

5.3    Failure by Bauer to adduce documentary evidence in support of key aspects of its case

73    Nor is the evidence as to the lack of documents in support of Bauer’s case satisfactory. Mr Falconer gave evidence that in 2004, ACP had no system in place for keeping all of the records relating to a particular transaction together, and that it had “a very manual process around billing” and keeping files in particular matters. While he accepted that Bauer was using email extensively in 2004, that emails back to at least 2003 had been produced, and that Bauer has retained a substantial quantity of its communications, he said that he did not think that Bauer had access to all emails back then – only “[a]t a general level” - and he thought there had been some issues with archiving historic documentation. Significantly there was no direct evidence as to the scope of searches of ACP/Trader documentation that had been undertaken and any difficulties in archiving. Mr Falconer did not personally inspect the records but instructed Macek Rubetzki in the legal department to do so. While Mr Falconer said that he believed that all of the relevant documents that might be found among the records had been found, that was only “[b]ecause that’s what we asked them to do”. He had never asked Mr Rubetzki if he thought that that was what he had done. While Mr Falconer gave evidence that, in making inquiries of other officers at Bauer about what had taken place he “spoke to anyone who was – who I believe was relevant in preparing any affidavit”, when pressed he said that Mr Rubetzki “would be the main person who coordinated it” even though Mr Rubetzki was not involved with the operations of Trader in any way in 2004. Mr Falconer’s evidence ultimately as to the research undertaken remained vague, with Mr Falconer saying that “We would - we checked all facts. We look at – talked to people who would - who were still employed to work during that period. We checked all the facts that we had readily available in the timeframe that we had. So, yes, we talked to a number of people.”

74    As earlier mentioned, Bauer relied upon an affidavit of Mr Rubetszki sworn on 2 October 2015. While Mr Rubetszki had a solicitor/client relationship with Bauer at the time of these proceedings, he was employed by the Nine Entertainment Co group of companies (of which the second applicant, the ACP Magazines Limited, was part) in the role of Trade Marks Counsel. However, Mr Rubetszki did not give any evidence as to the scope of searches undertaken by him within Bauer/ACP/Trader internally; nor does he identify any deficiencies within those organisations in locating historical documents. As such, his evidence takes this issue no further. Indeed, Bauer’s failure to lead evidence from Mr Rubetszki on this issue suggests that any evidence which he might have given on the issue would not have supported Mr Falconer’s evidence as to the completeness of the searches; nor Mr Falconer’s explanation for the lack of documents supporting important aspects of Bauer’s case.

75    The lack of clarity as the nature and scope of the research undertaken into the documentary records, coupled Mr Falconer’s limited or lack of involvement in relevant events, constitutes a serious weakness in Bauer’s case. In particular, it meant that Bauer ran an essentially inferential case despite persons with direct knowledge of contentious matters being within its camp and available to be called.

76    Conversely, the fact that no person, such as Mr Rubetszki, with actual knowledge of any difficulties with locating or archiving documents and the scope of searches undertaken to locate missing documents gave evidence, coupled with the vagueness of Mr Falconer’s evidence on these subjects, mean that I do not accept that a satisfactory explanation has been given for the failure to produce documents that would have been expected to exist on Bauer’s case. These include any documents evidencing the use of the name “Discover Downunder” internally within ACP/Trader before 27 January 2005.

6.    FINDINGS OF FACT

6.1    The importance of the contextual narrative to the parties’ arguments

77    The cases for each party as to the circumstances in which the series and the Mark were created were diametrically opposed and hotly contested. There were, as I have earlier mentioned, strongly held views particularly by Mr Falconer for Bauer, on the one hand, and Mr Colin Parrôt, on the other hand, as to these circumstances. Strictly speaking the fundamental question of ownership of the Mark turns simply upon who first used the Mark. However, both parties relied upon their perception of the background to the creation of the series and authorship of the Mark to support their respective cases as to first use. This was particularly so with respect to Bauer. As its case for first use was inferential, the “narrative” on the basis of which the Court was asked to draw inferences was pivotal. Furthermore, the question of who authored the Mark and who was the main driver in creating the program and in getting it funded and “up and running” is relevant to a consideration of Bauer’s case that Evergreen did not intend to use the Mark in good faith, or applied for the Mark in bad faith. Relevant also to the latter two issues are the circumstances in which the show “What’s up Downunder” came to be created after the relationship between Evergreen and Bauer had broken down and Warren Parrôt had been made redundant.

78    In these circumstances, it is necessary to set out with care my findings as to these contextual matters notwithstanding that ultimately I find that Bauer’s primary case on ownership falls on the simple point that it failed to establish a proper foundation on the basis of which to infer that the first use of the Mark was by Bauer. In effect, as Evergreen submitted, “[t]his is that comparatively rare class of case where the absence of evidence is in fact evidence of absence.”

6.2    Development of the idea by Colin Parrôt and initial support from the industry

79    Colin Parrôt had long held an interest in the caravan and camping industry. During his career in advertising, he produced advertisements for the caravan industry. He became involved in caravans and camping and was known to manufacturers, retailers and distributors of parts and accessories in that industry. His clients included the caravan manufacturers Viscount and Jayco, and retailers including World of Caravans. He often advertised his client’s products through Caravan World Magazine which was a magazine owned by ACP. He worked with officials of the representative bodies in the caravan industry on a number of advertising projects and was acquainted with people at high levels in state caravan associations, state tourism bodies, and camping and National Park bodies.

80    In or around the late 1980’s, Colin Parrôt had the idea of producing a caravan and camping lifestyle program as a platform for advertising the caravan and camping industry and its products and services. He discussed this concept with various people in the caravan industry. However it was not until the late 1990’s that the concept gained any momentum. From about 2000, Colin Parrôt began to receive encouragement for this idea from Kevin Clark, President of the CTIAV, and Peter Wright, the CEO of the CTIAV, to whom Kevin introduced Colin Parrôt.

81    In early 2004, Colin Parrôt had discussions with Peter Wright to find a way in which the CTIAV could be involved in the program to the benefit of its members. In the course of those discussions a name for the program was discussed. Peter Wright indicated that he “was interested in a name which identified the industry.” The name first proposed by Colin Parrôt was “Caravans and Motorhomes Downunder” which Peter Wright agreed to “as it effectively described the products and services relating to the program.”

82    Peter Wright notified Colin Parrôt that the CTIAV would commit funds for the program if he could arrange to have it broadcast nationally as this would broaden the market for the CTIAV members and create an opportunity for him to obtain funding from caravan associations and other states for the program as a means of defraying the production costs.

83    The CTIAV supported Colin Parrôt’s proposal to submit the program to ACP through his son Warren Parrôt who was then an Account Manager at ACP. Peter Wright explained that “[t]he sponsorship in a sense was to assist us in promoting, if you like, our caravan shows. There were situations where we would provide them with a free stand at the show and what would occur there was they would give us, in return, advertising in their magazines.”

84    The CTIAV already had a sponsorship relationship with ACP/Trader, having advertised in Caravan World, a magazine owned by Trader Classifieds, and possibly other magazines in the Trader suite. Part of Peter Wright’s role was to develop the relationship with ACP to assist the CTIAV with general advertising to promote his industry’s products and services.

85    At that time, Peter Wright’s contact at ACP was Ros Bromwich who was the editor of Caravan World. He explained that he spoke with Ros Bromwich every three to four weeks “in the sense of just trying to understand how we can, as I said, tap into the market a lot better than what we have in the past. She was very keen on doing more about promoting our shows, and that was, I guess, a great start for both of us to get the ball rolling and improve our relationships.” At this time, Ros Bromwich was also approaching Peter Wright to try and increase her presence with other industry associations.

86    The CTIAV was keen to participate in an “advertorial” type television program along the lines of the boat and car shows. When Peter Wright joined CTIAV in 2001, one of his priorities was to hold discussions with other industry associations about working together on national programs, given their potential as a means for promoting the industry associations. At that time the CIA (the national body) had a relationship with, for example, the show Getaway which was, according to Peter Wright, a “pretty big hit on Network 9” screening on Sunday nights at 7.30pm which “was a very good time slot for us”. The CIA was trying to get funding from the state organisations to elevate their presence on those programs.

87    By July 2004, Colin Parrôt had spoken also with Ron Chapman who was the acting CEO of the Queensland group, Stuart Livingstone in South Australia of the Caravan Industry Association, Kevin Clark who was president of the CTIAV, and Jerry Ryan from Jayco Caravans who had been a client of Colin Parrôt’s advertising agency for over 30 years. Jayco Caravans was the biggest manufacturer of caravans in Australia. Colin Parrôt explained that “They were all prepared to put their hands in their pockets…. Jerry Ryan was very enthusiastic about supporting anything caravanning, because he is the market leader.… If I could get it up, they would certainly support me. That’s what they had said.”

6.3    Initial approaches to ACP

6.3.1    Trader’s business strategy relating to sponsored television programs

88    As I have earlier mentioned, Trader was a division of the ACP. The strategy of the Trader business was and is to develop a portfolio of products across print, digital and other media to offer potential advertisers a suite of solutions to meet their advertising and marketing needs. At the relevant time, Trader published a number of magazine and periodical titles in Australia, including ‘Caravan World’ and ‘Motorhome & Caravan Trader’. The primary sources of income generated by Trader from these titles were display (or classified) print and digital advertisements and advertorials, and feature sponsorships placed by businesses in these publications. Each magazine and periodical had its own business model. The objective of print and digital editorial content was generally to inform readers regarding purchasing options for new and used products. For example, Caravan World magazine featured editorial content intended to encourage people to buy and sell caravans.

89    In 2003 Trader commenced offering and providing television programs as an additional advertising and editorial platform to its print and digital portfolio. The two programmes then produced of this kind were “The Boat Show” and “The Car Show”. Mr Falconer described these shows as “examples of sponsor-funded television programs”. As a result, by 2004 Trader’s suite of advertising platforms encompassed print, digital and television media platforms. Mr Falconer explained that:

… the costs of production of such sponsor funded television programs were not met from receipt of a licensee from the broadcaster and had to be covered from another source of funding. In the case of the sponsor funded television programs The Car Show and The Boat Show, Trader assumed the cost of having them produced for it as well as the financial risk of failing to obtain sufficient revenue to cover these costs.

90    He further accepted in cross-examination that:

And the key to a sponsored TV program is that sponsors are found to underwrite the cost of producing the program?---That’s a factor, yes.

That’s why it’s called a sponsored TV program?---Correct.

And typically the type of sponsors that might be interested in providing the money to underwrite a television program, they may well be industry bodies that are – money is subscribed to them by their members in order to promote the industry as a whole?---Yes.

91    Mr Falconer explained that Trader sought to achieve a number of outcomes from the strategy of offering to its customers a suite of advertising platforms including market growth. After a lengthy cross-examination on the point, he eventually accepted that if a television program were successful that would be a contributing factor to the strategy and that, if enough sponsorship money were raised to create the program and broadcast it, “[i]t helps, yes, helps achieve what the end outcome that we’re after”. He further accepted in cross-examination that:

There will be no contribution to the achievement of your strategies from a sponsored television program if the television program is not made; that is a fair statement, is it not?---Yes, that is.

And to ensure that it is made, either you raise enough money from sponsors to put it on - - -?---Yes.

- - - or Bauer pays the shortfall in the sponsorship?---We analyse whether the risk worth taking and we would take the risk, yes.

Yes. And you were concerned that programs ideally would be at no net cost to Bauer?---That would be a nice outcome, yes.

6.3.2    Presentation of the opening draft for a pilot program (July 2004)

92    In about July 2004, Colin Parrôt approached Warren Parrôt and asked him to try and raise the idea of the program with one of his senior managers at ACP. Warren Parrôt had assumed the position of National Corporate Sales Manager in Trader in April 2004 as a result of which the Boat Show and the Car Show were among his portfolio of responsibilities. It was for this reason that Colin Parrôt “presented his television show concept to his son, knowing that it could be of interest to him and his endeavours and to the company that he worked for.” As earlier mentioned, by this stage Colin Parrôt had had extensive discussions with Mr Clark from the Victorian Caravan Industry, Mr Chapman the acting CEO of the Queensland Caravan Group, Jerry Ryan of Jayco Caravans, and Peter Wright, the CEO of the CTIAV, and each of them had expressed a willingness to contribute sponsorships. In Colin Parrôt’s words, “They were very keen.”

93    On 15 July 2004 Colin Parrôt prepared an “opening draft for a pilot of the television program” to be broadcast the following year. He showed this to Warren Parrôt to explain the concept. The opening draft recorded a possible title of “Inside, Outback, downunder with…” and identified Paul Cronin as a possible host. The concept was described as:

CONCEPT – To present a series of 4 x half hour programs promoting caravans and camping in Australia involving various styles of caravans, campers and pop ups and towing vehicles. Holiday parks and “Must See” Tourist destinations. Together with towing tips and great ideas to get the most out of a Caravan/Camping Holiday.

Segments ) 4 x 2 minutes

Per Show ) 3 x 1 minute breakers going into or out of.

94    The second page suggested a jingle reciting “Caravan Australia for the things you need to know”.

95    At some time in August 2004, Colin Parrôt engaged Rusty Nayles Music Pty Ltd (Rusty Nayles) to compose a jingle incorporating the words “Caravans & Motor Homes Downunder.”

6.4    The presentation to ACP on 24 August 2004

96    Sometime after Colin Parrôt’s initial approach to his son in July 2004, Warren Parrôt told Colin Parrôt that he had discussed the idea with ACP’s Editor-in-Chief, Mike Sinclair, who had expressed interest in it. A meeting was set up so that the concept could be presented to Mr Sinclair.

97    In preparation for the meeting, Colin Parrôt put together a written proposal. Colin Parrôt gave a copy of the presentation or a document very similar to it to Warren Parrôt before the meeting. However, he denied that Warren Parrôt had any input into the proposal save for accepting, when his attention was drawn in cross-examination to the reference in the presentation to the “your ACP, Nine MSM [sic] Multi Media push”, that his knowledge about this came from Warren Parrôt. He said that he knew nothing about ninemsn except for that which he was told by his son. In accepting his son’s involvement to this extent only when it was specifically put to him, I gained the impression that Colin Parrôt had simply overlooked that aspect when initially denying that his son had “some input into what he should put into the proposal” rather than that he had been intentionally underplaying his son’s involvement. Colin Parrôt also asked Warren Parrôt to whom he should speak in relation to the presentation and was advised by Warren Parrôt to speak to Mike Sinclair who “has the edge of all of those things.” I accept Colin Parrôt’s evidence that Warren Parrôt had no other substantive input into the document.

98    In this regard, I note that Warren Parrôt’s evidence in cross examination on his involvement in preparation of the presentation and after the meeting was that:

When Mr – your father was preparing his presentation to present to ACP to Mike Sinclair, you assisted him in identifying who he should present to?---Well, I think he – he would have me a whole bunch of questions and I would have answered them, because any good salesman obviously tries to get the briefs so they can answer it properly, yes.

And indeed, so, in fact, it would be appropriate for presenting to Trader rather than to any other business?--- It’s like – when I go and try and sell something to somebody I will go and ask them questions first and get some answers, so that I know exactly how I’m going to present it.

And you gave those answers and - - -?--- I – I gave you some answers, yes.

…

And you identified Channel Nine as the broadcaster because it was associated with Trader?--- Yes, absolutely. It was basically a sister business, so you can imagine that would be where you would go first.

99    Aside from identifying Channel 9 as the broadcaster, Warren Parrôt did not give evidence that he was involved in preparing the presentation for the lunch meeting. His evidence was only as to what he thought he would have done. As such, his evidence does not contradict his father’s evidence and in part confirms his father’s evidence. By contrast Warren Parrôt was clear that he had involvement after the meeting in August 2004 in preparing a presentation that he gave internally.

100    The proposal for the meeting on 25 August 2004 was dated 10 August 2004. It stated that it was submitted by “C. J. Parrot” and appeared with the logo of Colin Parrôt’s advertising company, Power Pact. The proposal stated that it was to Warren Parrôt, National Corporate Sales Manager, ACP Trader Classifieds, copied to Mike Sinclair and to Grant and James Manson from CDM.

101    The proposal was then for the production of “4 x Half Hour Caravan Shows on Channel 9 Network @ 4.30pm on 5th, 12th, 19th and 26th March 2005 prior to the Car Shows re emergence in April.” By way of background, the proposal explained that Colin had “vast experience in both the Caravan Industry and Television Production.” On the topic of industry support, the presentation stated that:

We have canvassed support through our many contacts in the Caravan Industry, Kevin Clark the CTIA (Vic) President is also my client at World of Caravans and he in turn referred me to Peter Wright the CEO of CTIA (Vic). A self explanatory letter is enclosed.

Separately I have had similar conversations with Ron Chapman the CEO of the CTIA (Qld) and Mr. Gerry Ryan, past president of the CIA National Body and Managing Director of Javco [sic] Caravans …. Australia’s largest manufacturer.

Everyone is very excited and keen to support the TV Show.

I have suggested they watch your current Car Show as typical format for “Caravan Australia” in that the emphasis will be on the Caravan product not the tourist parks, or site seeing destinations, but the styles, finishes, designs and facts around Caravans and Caravanning.

Peter even gridded up some topics he thought worth covering. Both Vic & Qld have offered their full support … and I’m sure other states will join them once we get the go ahead.

102    The concept was explained in the following terms:

The Concept for “Caravan Australia” to be truly valuable to your ACP, Nine MSM Multi Media push should reflect your magazine “Caravan World” and other relevant titles.

We imagine just such a show with segments on –

•    Caravan types, differences and individual benefits

•    Internal design, layouts and finishes

•    Towball/Weights Towing technicalities and regulations

•    Backing, parking, stowing tips

•    Annexes and awnings limitations and tips on canvas care

•    Water filtration, toilets protocol on emptying sullage

•    Cooking, recipes, food storage/procurement/handy tools

•    Caravan Insurance – types of cover available

•    Packing/Storage

•    Bikes, Boats and Park Protocol

PLUS anything else we can think of.

We realise to make this a “must watch” T.V. Show we must have a BIG NAME anchor and have initiated discussions with Australia’s favourite father figure, the voice of authority and integrity Paul Cronin a snapshot of him follows, together with a suggested script for a pilot/promo video to sell to sponsors.

103    Under the heading “Promotion”, the presentation stated that:

An important ingredient in the unification of our Multi Media energies is to get both the Caravan Industry Members, and the general public behind the show and watching it each week, and to go out and buy your magazines…and search your website.

This starts with the sell into the industry with invitations to participate and showcase their products in the TV show and obviously encouraging them to take a package that incorporates the show and your Caravan magazines and Car Point/Nine MSN.

To that end we suggest producing a Pilot promo featuring Paul Cronin outlining the concept of the show and explaining how to participate. These could be sent to manufacturers, advertisers etc. as VHS or CD Rom.

104    Costs were given as follows:

Subject to the finalisation of all SHOWCASES and location requirements we have calculated the cost to research, script, and film (Beta SP) 4 x 24min T.V. shows including post edit and talent fees to cover Paul Cronin and a 35+ female co host would be $25,000 per show (including filming in Queensland and South Australia).

It’s a given that we can be a great influence and will help you greatly in the securement of additional sponsors and industry support. This will prove most profitable for you and inspire us even more.

105    The presentation concluded in summary:

To achieve all we hope and to maximise “sell in” time we propose producing a pilot promo along the lines of the script enclosed and start to develop script ideas for each show, these will be modified as we acquire products to showcase.

In order to get underway we would look for a deposit payment of $15,000. A further payment of $22,500 would be required on finalization of scripts and development of shooting schedule, with a further $22,500 on completion of the first show. The balance would be paid each week prior to broadcast, on delivery of the tape.

106    Colin Parrôt described his presentation in his evidence as a “concept” for a caravan tv show, but nonetheless as “pretty developed”.

107    Peter Wright did not recall having seen the presentation that Colin put forward at the meeting on 24 August 2004. However, he agreed that the statement in the presentation that “[b]oth Vic and Queensland have offered their full support, and I’m sure other states will join them once we get the go ahead” represented his understanding at the time. He explained that:

Colin had been – approached us or approached my president, Kevin Clark – I would say early 2004, I would have thought – to try and get a TV program up for the association, and certainly there were a lot of discussions between Colin and myself and my president throughout the course of – of 2004 in relationship to how best this could be done. We certainly thought that approaching ACP and their, obviously, relationship with Network Nine and their affiliate WIN TV would be certainly beneficial for the association

108    Colin Parrôt presented the presentation on 25 August 2004 at a lunch meeting held at a Greek restaurant, as Mike Sinclair wanted. The date is confirmed by Colin Parrôt’s diary entry.

109    Present at that meeting were Mike Sinclair, Bauer’s Editor in Chief, Warren Parrôt, and Ros Bromwich. While Paul Cronin, the actor who Colin intended to host the show, was also in attendance, as were James and Grant Manson of CDM, Colin Parrôt gave evidence that “Ros Bromwich and Mike Sinclair were the two kingpins I needed to turn round and present to in a way that they had – would have some influence on us going to going ahead. CD Media, Grant Manson and James Manson… were sales and production people that we used and they were along to turn round and probably make up the party.” In this regard, Colin regarded this as a meeting on important matters to seek to persuade ACP to support the television program in the push that Colin wanted to make to Channel 9.

110    Keith Falconer did not attend the meeting but was aware that it was taking place. He also gave evidence that this was one of two pitches that came to his desk in 2004.

111    Notwithstanding the proposed title of the television program on the presentation, Colin gave evidence that the name he used at the meeting, following a discussion with Peter Wright, was “Caravan and Motorhomes Downunder”. That was the name which was ultimately presented to Tim Clucas at Channel 10 on 24 January 2005.

6.5    Follow up after the presentation

112    Following the meeting, Colin Parrôt did not make a record of what was said, but he put a tick next to the entry in his diary “to say I had a good hearing.”

113    Consistently with this, Mike Sinclair instructed Warren Parrôt to work with Colin Parrôt to develop the concept further and to put together a proposal to present to Keith Falconer focusing on how the show could be produced at no cost to ACP and how sufficient revenue would be created to generate a profit for ACP.

114    Warren Parrôt then worked on a PowerPoint presentation with his father which he presented internally to Keith Falconer in about September 2004. Warren Parrôt did not retain a copy of that presentation. He explained that during the latter part of 2004:

Well, we already had a concrete concept, an idea, which is a matter of crystallising it. I had to – basically, the presentation I put together was how it could benefit Trader. So I took – would take that to Keith and I sat down with him and said, “Well, this is what’s” – “This is what we can do.”

115    More specifically, Warren Parrôt’s evidence about the meeting with Keith Falconer was that:

When I spoke with Keith about the presentation, he said to me words to the effect that the program would be useful for promoting the ACP stable of caravanning magazines and would give him an excuse to launch an on line stable-mate for those magazines called RVpoint.com.au. He said to me that if we could find the money and get it on TV at no cost to ACP then we could go ahead. He agreed to take the program to network Nine to see whether they were prepared to broadcast the program. He did not discuss the name of the program with me at all.

116    Colin Parrôt followed up the matter with Mike Sinclair a month or so after the meeting who said that ACP was still waiting to hear back from Channel Nine.

6.6    Next steps as at 20 September 2004

117    By email dated 20 September 2004, Colin Parrôt sent an email to Warren Parrôt identifying the next steps that needed to be taken to bring the concept forward at that stage. He said that by the email he was “pressing Warren though – to go and annoy Keith to turn around and get an answer from Channel Nine.” The email read:

Just arrived back from my sabbatical fishing trip and thought I’d jot down some thoughts on Paul Cronin’s Caravans & Motorhomes Downunder TV Show.

Once Keith has settled on time and dates for shows with Nine Network and amounts required to achieve the returns he wants we can hold a meeting with the CTIA of Vic and get undertaking for subsidy.

We would then get undertakings from other states CTIA’s. Deposit payment would be required at this point. I would then propose we make a short video/DVD for circulation using Paul Cronin explaining the shows and inviting participation.

On receipt and compilation of participating companies/brands we would set out to create the 6X 24 minute TV Shows having regard for:

1.    Situation (location of shoot)

2.    Brand of Van/emphasised

3.    Other Products covered

4.    Paul and other peoples participation

we would then set up a shooting schedule and embark on the process to have the bulk of work completed by mid November – before the heat and the holiday period thus giving us maximum time to edit and sweeten the shows for the New Year.

Time is tight – decisions await.

118    Colin Parrôt was cross-examined on the email. He explained that the reference to the amounts to achieve the returns he wanted was a reference to working out Trader’s budget and revenue, and that those amounts needed to be worked out before he could go to the CTIAV and get a commitment from them. At this stage he said that the primary industry association he was focused on was the CTIAV. The reference to the “deposit” in the email was to the deposit payment from Trader set out in his presentation in August 2004. He agreed that, while he could not remember precisely when the promotional video/DVD using Paul Cronin was made pending arrival of his diaries from Melbourne (which had been the subject of a notice to produce), the email suggested that he would not be making the video/DVD until the previous steps were completed. It was Colin Parrôt’s evidence that he and Trader would participate in attracting company brands to participate in the program. At this stage he said that the concept had evolved to six television programs from the four programs initially proposed in the presentation in August 2004 because “we knew we had that sort of backing. That’s why we tried to make it more.” That backing was said to be from the industry associations with whom he had conversations as to how he was progressing and demands from them to have a show. He said that there was a lot of enthusiasm and that, while at that time he did not have an undertaking for a subsidy from the CTIA of Victoria or the other states, they had promised to do so.

119    The email was retrieved from Colin Parrôt’s records. A handwritten notation on the email made by Colin Parrôt reads:

6 shows @ $25,000ea = $150,000

need 30 companies @ $5000* = $150,000 (*2mins national = $5000 or CTIA indemnity

120    Colin Parrôt explained that the handwritten note was what he had told Warren Parrôt. The note set out ways in which Colin Parrôt was looking to generate $150,000 which was a cost that he was meeting and not Trader. He said that he “was very, very confident that the associations were going to snap up the underwriting of the costs” (as they still do with respect to his current industry TV show, What’s Up Downunder). The figure of $150,000 represented the cost he would charge Trader for the six shows and that any monies received above that would be profit for Trader. In this regard, it was his evidence that:

“That “they” in that instance is Trader? --- Yes.

What you would charge Trader to produce the show? --- Yes.

And the 30 companies at 5000 was your note as to how Trader could ---? --- Glean the money.

--- Get the money?--- If they – they would make more because I had underwritten the basic shows.

And you had – you told Warren that – that note is something you spoke to Warren about?--- The potential to make a lot of money for Trader, and it did.

And in terms of that potential, that was part of what Warren saw as would benefit him within the company?---Correct.

6.7    The alleged meeting in September 2004 between Mr Falconer and Mr Colin Parrôt

121    Mr Falconer gave evidence of a meeting said to have occurred between him and Colin Parrôt in September 2004 at which he alleged that Warren Parrôt suggested the name “Discover Downunder”. This evidence was very much in dispute. Specifically, Evergreen denied that any such meeting occurred, with Colin Parrôt giving evidence that he never had a meeting with Mr Falconer, and that the name “Discover Downunder” was first suggested at the pub meeting on 24 January 2005. For reasons I later explain, I accept Colin Parrôt’s evidence on these issues.

6.8    Network Nine are not interested (mid to late January 2005)

122    Keith Falconer learnt that Network Nine declined the opportunity to broadcast the program in mid to late January 2005.

123    When Colin Parrôt heard that Channel Nine were not interested in the program, he was still determined to proceed with the concept and informed Warren Parrôt that he would approach other networks. Warren Parrôt came back to Colin Parrôt and told him that ACP would still consider supporting the program through its magazines if it was broadcast on another station, so long as the program could be produced at no cost to ACP. Colin Parrôt then decided to take the proposal to Channel Ten:

I was very frustrated with the lack of knowledge about how Keith was going in Channel Nine, because we got the knowledge just before Christmas that Channel Nine weren’t interested, and that’s when I said, not Keith, there’s two other commercial stations that are now committed to the industry; I will go and see Channel Ten. And I went to Channel Ten at my expense with Peter Wright and with Warren, and the reason I know I paid back the – it was because Keith didn’t want to have any cost to this thing, and I made the point of writing a cheque out for those airfares and giving it to him or giving it back to Sinclair, actually, after the trip.

6.9    The meeting with the Ten Network on Monday 24 January 2005

124    Colin Parrôt approached the Ten Network and arranged a meeting for 24 January 2005 with Tim Clucas, the Network Head of Production and Development at Network TEN Australia, in Sydney. Also attending the meeting were Warren Parrôt on behalf of ACP/Trader and Peter Wright on behalf of the CTIAV. The question of whether ACP covered the costs of the airfares or whether Colin Parrôt reimbursed ACP was disputed. For reasons I later explain, I accept Colin Parrôt’s evidence that he reimbursed ACP.

125    At the meeting with the Ten Network the program was still being referred to by the name “Caravan & Motor Homes Downunder”, as had been the case since the meeting on 24 August 2004. However, Colin Parrôt gave evidence that at the meeting Tim Clucas said:

I’m sorry, your evidence about this meeting that Mr Clucas said that the - - -?---He didn’t like the name.

And he said it wasn’t sexy enough?---No, actually the - - -

Would you recall that?---Channel Nine said it wasn’t sexy enough. He didn’t have any dispute about that. What he said was, “Why don’t you come back with a name that has got more go about it”. He recited his experience with Channel Seven when he was at Channel Seven and a fellow came to him and offered a TV show called Four-wheel Drive Australia and he said we renamed it The Great Outdoors. So that indicated what we needed to turn round and do and in going over to the pub afterwards and having a few beers, that’s exactly what I came up with.

Right. And you already had the Downunder part?---Yes.

126    Colin Parrôt denied in cross-examination that Warren Parrôt was using the name “Discover Downunder” at the meeting with Tim Clucas and said that the name had not been decided then.

127    Peter Wright gave evidence which corroborates Colin Parrôt’s evidence on this point saying that he did not have any recollection of Warren Parrôt putting forward any name at that meeting. He recalled that the “stumbling block” in the meeting was the name, that the issue arose before the end of the meeting, and that in his view insufficient time was devoted to that issue at the meeting. I give Peter Wright’s evidence on this point particular weight given the importance attributed by his association to the need for the name of the show to be descriptive of the product. Peter Wright also gave evidence that, even if the name had been decided at that meeting, he would still have to run the name past Kevin Clark because he was concerned that the association may not put up the funds if their brands were not part of the title.

128    Warren Parrôt’s evidence was that he attended the meeting with Tim Clucas as Trader’s representative, although it was Colin who had invited him to go up for the meeting. His evidence was that one of the roles he had at the meeting with Channel Ten “was to show a unified front between what Col was doing with Evergreen and Peter Wright and the associations, as well as – as well as Trader, absolutely”. His recollection was that Mr Clucas “wasn’t a fan” of the name. While it was put to Warren Parrôt in cross-examination that “Discover Downunder” was a working title which had been adopted by Trader internally before the meeting with Channel 10, which he denied, it was not specifically put to him that he mentioned the name first in that meeting.

129    Warren Parrôt further gave evidence that:

Yes. Now Channel Ten offered a test series?---Yes.

Of eight shows?---Yes.

And you had previously been thinking – or Mr Colin Parrôt had been thinking of four shows when you did the presentation in August?---I can’t remember how many episodes covers through to - - - 

Well, let’s just take you to – you do know that the episodes had increased?---Sorry?

You knew that the number of episodes increased by the time you’ve got - - -?--- Well, part – part of the discussion in that meeting I think was – I think Tim Clucas said, “If you’re going to give it a go you’ve got to have a certain amount of episodes.” So, you know, I think he was the one who suggested eight episodes, to be honest, so.

And your planning had been on four episodes?---Well, my planning – I hadn’t been on anything. I was just grateful to be there and that we became a success and we all – all got a chance to do it, so.

130    All three witnesses who were in attendance at the meeting therefore deny that the name had been settled at the time of the meeting. I attribute particular weight to Peter Wright’s evidence in this regard, given that all parties accept that he has no interest in the proceeding.

6.10    The pub meeting following the meeting with the Ten Network

131    Immediately following the meeting with Tim Clucas, Colin Parrôt’s evidence is that he, Peter Wright and Warren Parrôt went to lunch at a pub near the offices of the Ten Network in Sydney.

132    Colin Parrôt’s evidence of that lunch meeting was that they discussed the name of the show and exchanged various ideas. His evidence is that he came up with the name “Discover Downunder Now” at the pub:

I was still interested in using the word “Downunder” and came up with the name “Discover Downunder Now” which I thought caught the program’s intended promotion of the great outdoors.

133    Peter Wright described the mood after the meeting with Channel Ten as “jubilation”. His evidence was that he, Colin and Warren were “quite confident” that Channel Ten would take up the program, describing it as a “handshake deal”. His evidence as to the discussion of the name of the program at the pub lunch meeting corroborates Colin Parrôt’s evidence that Colin came up with the name:

We exchanged several ideas for a name but I distinctively remember Colin using the words ‘Discover’ and ‘Downunder’ and in different variations, including, “Discover Downunder Now".

134    Peter Wright indicated to Colin Parrôt that he would have to run that name by Kevin Clark, and he recalls Colin Parrôt indicating he would go back to Tim Clucas with his idea for the name. In this regard, Mr Wright’s evidence was that he could not give approval without first running the name past Kevin Clark because it would depart from including a reference to an industry product in the title and the concern that the CTIAV may not wish to fund the program as a result. He does not recall Warren Parrôt indicating that he would need to talk to his superiors, specifically Keith Falconer, about what he might think about the name as well. While Colin and Warren Parrôt each gave evidence that Peter Wright agreed to the name, I accept Peter Wright’s evidence that he regarded Kevin Clark’s approval as necessary. As Peter Wright reported to Kevin Clark, his evidence on this topic is the more reliable.

135    Warren Parrôt agreed that the mood after the meeting was “fantastic”. His evidence was that the name “Discover Downunder Now” was decided upon at the pub lunch meeting, and that it was Colin Parrôt who came up with the name. Warren Parrôt’s evidence was that he would have called Matt Jamieson at Trader later that afternoon, as well as “a whole bunch of people”.

6.11    Filming of the pilot promo for the television program on 25 January 2005

136    While Colin Parrôt was initially confused about the date on which he filmed the Pilot Promo for the program, his diary record for 25 January 2005 recorded the following appointment at 10am:

Film Eastwood Park – Paul Cronin

PILOT PROMO Caravan Downunder

137    Colin Parrôt gave evidence that he could have recorded the filming in his diary in anticipation of a positive response from Channel Ten. I accept that that is the most likely reason for the use of the name “Caravan Downunder” rather than “Discover Downunder Now” in the diary entry, that is, that the diary entry was entered before the pub meeting on 24 January 2005.

138    Colin Parrôt confirmed that the pilot promo was filed at Eastfield Park and that it had to be dubbed over. The pilot promo was not in evidence as it does not appear to have been able to be located.

6.12    Email correspondence on 27 and 28 January 2005

139    Two sets of email exchanges occurred on Thursday 27 and Friday 28 January 2005 following the public holiday on 26 January.

(1)    The first exchange commenced with an email from Colin Parrôt using the title Discover Downunder Now”, and Mr Clucas’ response on 28 January 2005 suggesting that the word “Now” be dropped.

(2)    The second exchange occurred in the interim and consisted of internal emails within Trader which described the proposed program variously as “Discover Downunder” and “Discovery Downunder”.

140    These exchanges are important because, as I later explain, Bauer argue that the reference to “Discover Downunder” as opposed to “Discover Down Under Now” in the internal emails is evidence that the phrase Discover Downunder was being used internally within Bauer consistently with Mr Falconer’s evidence that Bauer invented the name before this time. Bauer relies in this regard upon the fact that the email from Tim Clucas suggesting that the word “Now” be dropped from the name was not been received until 28 January 2005. For this reason the email exchanges should be set out in detail.

141    Colin Parrôt accepted that he could not finally decide the name at the pub when they had the meeting on 24 January 2005 because “I had to get approval from Tim. It was Australia Day the next day. I sent an email of appreciation for his time and made the suggestion. He came back and said drop the word now.” That evidence (save for the error as to the date, Australia Day being Wednesday 26 January 2005) is corroborated by the email exchange between Colin via his Power Pact email address and Tim Clucas on 27 and 28 January. At 11.09am on 27 January 2005 with the subject heading “Discover Downunder Now”, Colin Parrôt wrote:

Tim,

On behalf of Warren, Peter and myself many thanks for your time and suggestions last Monday re our proposed TV Show for Caravans & Motorhomes renamed “Discover Downunder Now”. Peter will go out to all his members and advise the possibility of cross promotion of their Annual Caravan and Camping Shows which fall on:

2nd-10th April for Sydney (Rosehill)

27th April-3rd May for Melbourne (Caulfield Racecourse)

8th-14th June for Brisbane (Showgrounds).

We will provide a running sheet and timed script for the suggested first show and supply a CV on the achievements of our production staff and credits as you requested early next year.

142    Keith Falconer exhibited to his affidavit an email from Matt Jamieson to Warren Parrôt and Miffy Coady dated 27 January 2005 at 4:09pm, the subject line of which was entitled “Discover Down Under”. The email read:

Attached are some of the issues for Discover Down Under.

I am not sure if I missed anything from our discussion on Tues Warren, let me know if I have.

Likewise Miffy, if there are any additional issues that need to be covered off let me know and I will add them. I am sure there will be, but this is a starting point at least.

143    In cross-examination, Mr Falconer did not accept that “our discussion on Tues Warren” in the email from Matt Jamieson on 27 January 2005 was a reference to the day after the meeting with Colin Parrôt, Warren Parrôt, Peter Wright and Tim Clucas. However, in my view it is self-evident that the reference to “our discussion on Tues Warren” was a reference to the Tuesday after the Monday meeting with Tim Clucas. This accords with Warren Parrôt’s evidence that he likely would have called Matt Jamieson after the meeting with Mr Clucas along with everyone else.

144    Mr Falconer accepted, however, that he could not point to any documentation before 27 January 2005 that contained the words ‘Discover Downunder’. He accepted that if there had been earlier entries they presumably would have been found. He also had no explanation for why the name did not appear in any of Bauer’s records before 27 January 2015, notwithstanding his evidence that the name was being used by people internally within Bauer before that date.

145    Mr Falconer also exhibited to his affidavit in reply an entry in Miffy Coady’s Microsoft Outlook diary (Ms Coady’s diary) dated 27 January 2005 at 1.58pm entitled ‘Matt & Nigel re.RVpoint and Discovery Downunder’, apparently recording a meeting between her, Matt Jamieson and Nigel Dearing. Mr Dearing is an executive web producer for Trader. It will be recalled that Miffy Coady was Warren Parrôt’s supervisor at Trader. Keith Falconer’s evidence was that the word ‘Discovery’ in Miffy Coady’s diary entry was a mistyping of the word ‘Discover’ although he did not suggest that he had actual knowledge of this. Reliance is again sought to be placed on the omission from the diary entry of the word “Now” in support of Bauer’s case.

146    Also exhibited to Mr Falconer’s evidence was another diary entry of Miffy Coady dated 28 January 2005 at 12.05pm entitled ‘The Caravan Show: Discover Downunder planning’. The diary entry was also addressed to Miffy Coady, Warren Parrôt, Matt Jamieson and Mike Sinclair. Mr Falconer’s evidence was that the latter diary entry “records the correct name of the proposed program as I recall it being used within Trader at that time”. Warren Parrôt does not remember the meeting, but does not dispute that he would have attended.

147    On 28 January 2015 at 12.18pm, Miffy Coady replied to Matt Jamieson’s email of 27 January 2015 (also addressing the email to Warren Parrôt), saying that:

Lets discuss further on Monday – the main requirement is a business plan for Trader Classifieds (overview, ownership details, Channel 10’s involvement detailed out, revenue, sales commission, production costs, time & resource, mkg. budgets etc)…similar document to The Car Show.

148    While no party sought to make any submission with respect to the issue, I note that the email referred to “ownership details” being one of the subjects for discussion. It would appear, unfortunately for all concerned as events have worked out, that that issue was not resolved at the meeting.

149    Finally, in response to Mr Colin Parrôt’s email of 27 January 2005 (see [141] above), Tim Clucas wrote on 28 January 2005 at 12.58pm:

I like the new name but, although I understand the reason for it, I don’t think the “Now” in title adds anything. “Discover Downunder” rolls off the tongue and sums up the freedom and adventurous spirit that must motivate those people who caravan, motorhome, camp out, buy 4-Wheel-Drives, go trekking, etc. It’s a name that embraces so much more than simple caravans.

150    Thereafter Colin Parrôt used the name Discover Downunder for the television program.

6.13    Registration of the domain name on 4 February 2005

151    On 4 February 2005, the domain name www.discoverdownunder.com.au was registered. There was no direct evidence as to who registered the domain name although, as at 18 April 2011, the registrant was identified as ACP Magazines Limited. Keith Falconer’s evidence was that he did not recall who arranged for the domain name to be registered. However his expectation was that Warren Parrôt did so as part of his role as the project manager for the program. Warren Parrôt’s evidence was that it would not have surprised him if, once the show had been identified as “a goer”, Nigel Dearing had registered the domain name since “Col wasn’t really a web producer” and Trader “would have seen that as no different to what they did with the car show or the boat show”. While Bauer alleged that the domain name was registered by ACP, Evergreen submitted that the evidence did not show who registered the domain name on 4 February 2005. Nonetheless the likelihood is that Bauer registered the domain name consistently among other things with Warren Parrôt’s evidence.

152    There was, however, a dispute as to when Colin Parrôt became aware that the domain name had been registered. For the reasons set out later below, I do not accept that Colin Parrôt found out about registration of the domain name until after July 2005, contrary to Bauer’s contentions: see at [252]-[262] below.

153    Mr Falconer accepted in cross-examination that if he was going to put out a television program to be called “Discover Downunder”, he would want to register the domain name as soon as possible because delay would risk someone else registering the domain name first. However, he said it would “not necessarily” be the case that Bauer would take steps to arrange registration of the domain name as soon as a name was settled. Mr Falconer acknowledged that the domain name registration occurred within a week of the first reference to the name Discover Downunder in the records of Bauer and within a short period of time after the meeting on 24 January 2005.

6.14    Commissioning of the logo (7-8 February 2005)

154    Bauer did not contend that it produced the logo for the program. Colin Parrôt gave evidence that he engaged Neil Tulloch of Tulloch Advertising to produce the artwork, including “at my request a representational logo of the ‘Discover Downunder’ name which was used on the program itself and in relation to its promotion and redistribution.” That was said to be supported by the reference to work on “graphics” in an invoice issued to Power Pact Advertising dated 11 February 2005 which charges for items on two days as follows:

(7/2/05) WORK ON VARIOUS PROJECTS FOR THE FORTHCOMING ‘CARAVAN’ TV SHOW ‘DISCOVER DOWNUNDER’ INCLUDING SCRIPTS, SCHEDULES GRAPHICS , AND PRINTOUT OF PROPOSAL – 5 HOURS

(8/2/05) MORE WORK ON COL’S CARAVAN TV SHOW PROPOSAL

155    Given the timing of the work undertaken by Tulloch Advertising and the express reference in the invoice item for 7 February 2005 both to “graphics” and to Discover Downunder, I consider that the document corroborates Colin Parrôt’s version of events.

156    The fact that the invoice was made out to Power Pact was touched upon in cross-examination of Colin Parrôtt, who explained in response that Neil Tulloch is “an artist he’s not an accountant. He just writes his jobs out and sends them on a paper…”. The implication, which I consider to be credible, is that Mr Tulloch would not necessarily have been particularly concerned about which of Colin Parrôt’s entities was invoiced. However, it was not put to Colin Parrôt in cross-examination that he had requested the work to be done on behalf of Power Pact rather than Evergreen. Nor was any issue raised in final submissions based upon the fact that Power Pact were invoiced. I also note that Colin Parrôt was quite relaxed about when he used, for example, a Power Pact email address as opposed to an Evergreen email address and, while that is not good business practice, it is not surprising that Colin Parrôt apparently made no issue about the fact that the invoice (and other invoices in evidence) were made out to Power Pact at the time.

157    The logo prepared by Tulloch Advertising and used on the show in due course consisted of a map of Australia with the word “Discover” across it. The letter “o” in “discover” formed a magnetic compass, and the word “discover” formed the arc of a circle with its centre on the “o” as follows:

6.15    Email from Miffy Coady on 8 February 2005

158    On 8 February 2005, Miffy Coady by email informed Warren Parrôt and Keith Falconer that she had spoken with Gregg Haythorpe about a meeting between him and John Alexander. Mr Haythorpe was then a senior executive within the PBL group (then the owners of Bauer and the Nine Network), while John Alexander was then CEO of Bauer Media. In the email, Ms Coady stated:

1.     GH updated JA on The Caravan Show he said to go for it with Channel 10 – lock in the contract/ownership etc.

6.16    The promotional video produced in February 2005

159    Initially, there was an issue in the evidence about when the promotional video was prepared. However, Colin Parrôt’s recollection, when prompted by his diary entries, was that filming for a promotional video took place on 25 January 2005 with a reshoot on 14 February 2005 at Eastfield Park. His diary entry on 25 January 2005 states:

Paul Cronin

Meet Simon Hearn             Eastfield Park

film promo for                KC + Col Tobin

Caravan Show

160    On 15 February 2005, Colin Parrôt’s diary records at 10am that “Placed ACP Email Job with SIMON Told him Waz need it by Thursday.” The reference to Simon was to Simon Holt who was the film editor at Evergreen. The reference to “Waz” was a reference to Warren Parrôt. Simon Holt was given the reshoot of the promo video to edit. I note that the diary mistakenly recorded ‘Eastwood’ at the location whereas the correct location was Eastfield.

161    A promotional video exhibited to Mr Falconer’s affidavit (exhibit KF-7) had the title “Discover Downunder” but did not have the logo. In the course of the video, Paul Cronin steps out of a green Nissan, saying “G’day. This email contains all the details about our exciting new TV show Discover Downunder. Now we go to air lunchtime each Sunday on the Ten Network right around Australia. It’s created for the Caravan and Camping Industry by ACP Trader Magazine Group, there’s limited sponsorship packages available and first in will be best dressed. Oh and help Aussie discover Downunder.” The video depicts the Channel Ten logo together with a still of magazine covers at the base of part of the video. The video concludes with the words “Call Warren Parrôt” and provides his telephone number. There is no reference to Evergreen in this video.

162    Bauer contend that by 17 February 2005, this promotional video (i.e. exhibit KF-7) was provided to Trader by email. No email sending the video was in evidence. However, Bauer place considerable weight upon Warren Parrôt’s evidence in chief that, after asking Evergreen in early 2005 to produce a short video to promote the show through CDM, the internal sales teams and contracted sales teams, “Col [Parrôt] provided me with a video and I passed it on to Cameron Damon Media” (emphasis added).

163    The question of whether the promotional video being exhibit KF-7, was provided to CDM and if so, when, was in dispute and is considered below at [281]-[297]. Bauer ultimately relied upon the provision of the video clip to CDM to establish that the first public use of the Mark as a trade mark occurred by it on or about Monday 21 February 2005.

6.17    Conclusion of the licence agreement with Network TEN on 25 February 2005

164    Shortly after the name was changed to Discover Downunder on Evergreen’s case, Evergreen entered into a television program licence agreement (the licence agreement) with Channel Ten Pty Ltd. The entry by Evergreen into the licence agreement is relied upon by Evergreen as the first use of the Mark and is therefore relied upon it to establish that it is the owner of the Mark.

165    The licence agreement is dated 25 February 2005 and states that it is between Evergreen as the “Licensor” and Network Ten Pty Limited as the “Licensee”. It provides that in consideration for a nominal payment by the licensee, “the Licensor grants to the Licensee for itself and its assigns a licence to broadcast by television the motion pictures hereinafter described and referred to as ‘Programs’” for the two year term of the licence, namely, 8 x 30 minute episodes of Discover Downunder on all stations within Network Ten’s network, its affiliates and associates. Further, by special clause 1, Evergreen granted Network Ten “the non-exclusive right to use, store, reproduce, diffuse and/or transmit in any format all or part of each episode together with or independently of other subject matter by means of the Licensee’s nominated internet web site for the purposes of promoting Licensee and the broadcast of the Programs by the Licensee.” Under the agreement each episode was to be delivered at least 10 days prior to broadcast and to be broadcast in Australia on all stations within the Licencee’s network, its affiliates and associates. The terms of the licence permitted Evergreen to withdraw the licence to any program because of any dispute, claim, liability or inability to supply it, but should it do so, Evergreen became liable to replace the program with one of comparable appeal.

166    The licence agreement is signed by Colin Parrôt on behalf of Evergreen and by Sarah Henderson, the Network Business Manager-Programming, for Channel 10.

167    Colin Parrôt gave evidence the arrangements with Channel Ten “were totally between myself and Ten … nothing to do with Trader” and that while “we” did give Channel Ten a commitment that the advertising spots (being a number of 30 second television commercial spaces during each broadcast) would be filled, “we would do that… there was no commitment from Trader at all to Channel Ten. It was all Col Parrôt, Evergreen, PowerPact; whatever you want to call it…. They put the demand on me to turn and do those sorts of things because they knew I had clients like Jayco, and I had the advertising support from the individual associations which are comprised – people like Supreme Caravans, Royal Flair Caravans and those sorts of people. There was no commitment to Trader at all.” While this evidence was challenged in cross-examination by reference to a letter attached to an email dated 9 September 2005 from Trader Classified to Peter Wright and copied to Colin Parrôt, that letter related to funding for the second series: see further below.

6.18    Letter advising ACP of the licencing agreement between Evergreen and Channel Ten (28 February 2005)

168    Colin (under the letterhead of Power Pact) sent a copy of the licence agreement as an attachment to a letter dated 28 February 2005 addressed to “Mr Warren Parrôt, National Corporate Sales Manager, ACP Trader Classifieds”. That letter provided:

Following our initial proposal of 10/8/04 for 4 x half hour TV shows on the Nine Network and the incredible sequence of events that has transpired since, I felt it prudent to reconstruct our basis for the production of 8 x half hour TV Shows on the Network Ten titled “Discover Downunder”.

As most caravan reviews will be conducted out of Melbourne and obviously the vehicle sponsor supplied would probably need to provide us with a permanent tow vehicle here for 4-5 weeks and arrange other vehicles for 5-10 days in QLD and 5 days in SA.

Whilst the number of shows has doubled and other factors have come into play including the addition of Dean Allen Craig as extra male presenter, we have been able to maintain our rate of $25,000 per show, provided we get your editorial input to glean enough ideas for 8 shows… and rather than invoice you in our original proposal we suggest as follows $50,000 deposit and $50,000 on 1/4/05, $50,000 on 1/5/05 and $50,000 on 1/6/05.

We hope you agree and as Paul Cronin has already acted in good faith (so to speak) with his filming of the video email, present our deposit invoice with this letter.

Also included is our contract with Network Ten duly signed and returned last week for your reference.

Warren, it’s a great tribute to you that this has come to fruition, I truly hope it is the start of a fantastic annual series that will be both profitable to your company, the Caravan Industry in general and the Australian public.

(emphasis added)

169    There is no evidence of any letter from Warren Parrôt or anyone else from Bauer objecting to, or raising any queries about, the fact that the enclosed contract for the broadcast of the first series was between Evergreen as licensor and Network Ten.

170    The letter enclosed an invoice for a deposit to be paid by Trader. Colin Parrôt gave evidence that Trader was already committed to paying the deposit and “we talked about it extensively with Mike Sinclair and the justification was so long as I can make it cost negative to Trader, they were very happy to go along, not only initially with Channel Nine but later on with Channel Ten.” He said that the television program was not going to happen until the deposit was paid. He described it as “seed money” and “a deposit for my – for them to buy my show.”

171    Colin Parrôt also gave evidence that he gave permission by this letter to Warren Parrôt as the National Corporate Sales Manager at Trader to use the program, the name of the program and the logo in his job at Trader to in furtherance of his sales for Trader magazines and that that would have been implicit in his many conversations with his son. The tenor of his evidence (bearing in mind that it is given in circumstances where the program continued after Warren Parrôt’s employment was terminated) was that he gave permission to Trader to use the trade mark as the name of the program with his son’s involvement. He denied that Warren Parrôt for Trader gave him permission to use the name for the television program saying “Who could say that? Who would be silly enough to say that… why would you think that Warren needed to give me permission to turn around and do something that I achieved?”

6.19    Preparation for the first series