Fuji Television Network Inc v Iron Chef Pizza Pty Ltd (2020) ATMO 107 (18 June 2020)
This decision concerns an opposition by Fuji Television Network Inc (“Fuji Television”) to an application by Iron Chef Pizza Pty Ltd (“Iron Chef Pizza”) to register the trade mark IRON CHEF in respect of food delivery services and related software services (“the pending IRON CHEF trade mark”) in Classes 39 and 41. Fuji Television is a production company that owns the rights to the Iron Chef franchise of cooking shows.
Fuji Television opposed the pending IRON CHEF trade mark on the basis that:
- the pending IRON CHEF trade mark is substantially identical with or deceptively similar to prior registrations for the IRON CHEF trade mark in respect of kitchen goods and food/entertainment services owned by Fuji Television (section 44);
- Iron Chef Pizza is not the owner of the pending IRON CHEF trade mark because Fuji Television was the first user of the IRON CHEF trade mark in Australia (section 58);
- due to the reputation of the IRON CHEF trade marks owned by Fuji Television, the use of the pending IRON CHEF trade mark would deceive or confuse (section 60);
- the use and registration of the pending IRON CHEF trade mark by Iron Chef Pizza is contrary to Australian Consumer Law (ACL) (section 42(b));
- the application to register the pending IRON CHEF trade mark was made by Iron Chef Pizza in bad faith (section 62A)
The Delegate determined that none of the above grounds had been established.
Although the pending IRON CHEF trade mark is identical to the IRON CHEF trade marks owned by Fuji Television, the food delivery services for which registration were sought were not held to be similar to the “restaurant services” covered by the prior IRON CHEF trade marks. The fact that “food delivery services” are typically provided by third parties not involved in food preparation was determinative in this respect.
The Delegate held that the section 58 ground had not been established for similar reasons noting that this ground further required use of the earlier mark in relation to the “same kind of thing”.
Fuji Television also failed to establish the section 60 ground as any reputation of the IRON CHEF trade marks was found to be limited to “entertainment services”. The Delegate noted then that the only link between “food delivery services” and the “entertainment services” offered by Fuji Television under the IRON CHEF trade marks was food as their subject matter. As this ground failed, so did the ground of opposition under section 42(b).
The Delegate also did not find that Iron Chef Pizza had applied to register the pending IRON CHEF trade mark in bad faith as per section 62A. This is despite Fuji Television’s allegation that Iron Chef Pizza would have been aware of the prior IRON CHEF trade marks as mere knowledge is not enough to support a finding of bad faith. The Delegate further noted that Iron Chef Pizza did not need to show that this application had been made in good faith as Fuji Television bore the onus of showing that the application was made in bad faith.
Overall, this opposition was unsuccessful as the opponent had failed to establish similarity between the services concerned. This is a reminder that services should not be assumed to be similar on the mere basis of subject matter and the onus of proof rests with the opponent if there is any uncertainty in this respect and otherwise.