The opponents (Bauer Consumer Media and Bauer Media) alleged that it produced, since late 2004, a television series relating to caravan and camping in Australia under the trade mark ‘Discover Downunder’.
The applicant’s (Evergreen Television) sole shareholder and director was an employee of the opponent and countered that it was the rightful owner, creator and user of the trade mark ‘Discover Downunder’.
The opposition was pressed in respect of sections 41, 42(b), 58, 59, 60 and 62A, however, the Hearing Officer commented that in order for the sections 42(b), 59, 60 and 62A grounds to be made out, the issue of section 58 (not the owner of the trade mark) was crucial.
Reminding us that the first owner of a trade mark is ‘the party who first uses it as a trade mark’, the Hearing Officer analysed the evidence led by both parties in detail. In his conclusion, the Hearing Officer noted that ‘ACP [being a company owned by the opponent] is the least eligible candidate for authorship of the name’ and that overall, the opponent had not shifted the onus sufficiently for the Hearing Officer to find that the applicant is not the owner of the trade mark.
Having found that the applicant was the owner and first user of the trade mark in Australia, it follows that the grounds pursued under sections 42(b), 59, 60 and 62A each failed. On section 41, the Hearing Officer noted that the trade mark was correctly accepted under section 41(5).
The opposition failed on all grounds and the application will proceed.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team