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The Food Channel trademark cases

By James Wan

What you need to know (in a nutshell)

  1. The party opposing the registration of a trademark must bear the burden of proving grounds for opposition in an appeal to the Federal Court.
  2. The Federal Court rejected the argument that the difficulties of establishing lack of ownership or intention to use should shift the evidential burden to the applicant.
  3. The Full Court found that the trademarks in question were not deceptively similar when viewed as a whole and considering the differences in the specified goods and services

Full Article

The current Federal Court ruling related to the dispute between Food Channel Network Pty Ltd and Television Food Network GP, clarifies that if someone opposes a trade mark application they must provide proof of their opposition when appealing to the Court.

Food Channel Pty Ltd intended to trademark the words “Food Channel” plus a cartoon of a television with banana and chilli antennae. The application was given over to their related entity, the Food Channel Network, but Television Food Network opposed this registration.

The Registrar disagreed with Television Food Network’s refusal of registration, believing it was not reasonable to assume that Food Channel Network had no plans for the mark and that there were notable differences between them.

The Federal Court sustained Television Food Network’s appeal and denied registration of the mark. The primary judge found that there wasn’t enough evidence to prove ownership at the date of application, neither company intended to use it and in reality, the mark was confusingly similar to Television Food Network’s trademark.

The full court of the Federal Court denied TV Food Network’s claim that difficulties in establishing no ownership (section 58 of the Trade Marks Act 1995) or lack of intent to use the mark (section 59 of the Trade Marks Act 1995), required a shift of evidence burden for an applicant. The Court decided that filing an application for registration is prima facie proof indicating an intention to use, and it would only be when an opponent presented contrary evidence proving there was none.

Lacking sufficient proof of who used the trade mark first, the Court found that it was up to the opponent to prove this. Since they could not do so, their case failed due to a lack of evidence.

The Court found that, when comparing the two trademarks as a whole and considering their different products/services, TV Food Network’s mark was not deceitfully similar to Food Channel Network’s. They had no resemblance in look or sound apart from the word “food”.