Bauer Consumer Media Ltd v Evergreen Television Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 03 May 2019
• Neutral Citation: [2019] FCAFC 71
• Date: 03 May 2019
• Court: Full Federal Court (Australia)

FEDERAL COURT OF AUSTRALIA

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71

Appeal from:	Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507
File number(s):	NSD 808 of 2017NSD 809 of 2017
Judge(s):	GREENWOOD, RANGIAH AND BURLEY JJ
Date of judgment:	3 May 2019
Catchwords:	TRADE MARKS – consideration of the nature of an appeal to the Federal Court of Australia under s 56 of the Trade Marks Act 1995 (Cth) (the “Act”) from a decision of the delegate of the Registrar of Trade Marks – consideration of the essential statutory features of that which constitutes a trade mark for the purposes of the Act – consideration of the relationship between ss 17, 20, 27 and 120 of the Act – consideration of the elements of s 59 of the Act in the context of those provisions ; TRADE MARKS – consideration of whether the applicant for the trade mark in suit had an intention to use the trade mark, or authorise the use of the trade mark, in relation to the specified services, namely, the production of television programs – consideration of the relationship (if any) between the case made by the opponent to registration before the primary judge under s 59(a) of the Act and non‑use proceedings under s 92(1) of the Act also heard before the primary judge at the same time as the hearing of the s 56 proceeding, relying upon grounds arising under s 92(4)(a) and s 92(4)(b) of the Act ; PRACTICE AND PROCEDURE – consideration of whether in the s 56 proceeding under the Act before the primary judge, the respondent (applicant for the trade mark “Evergreen”) was fairly put on notice that the appellant (opponent to registration of the trade mark, “Bauer”) was or would be contending for the proposition that Evergreen did not intend to use, or authorise the use of, the trade mark in relation to the production of television programs, that is, in relation to the specified services – consideration of whether Bauer’s s 59(a) ground was confined to a question of an intention to use, or use at a relevant time, of the trade mark rather than a question of intention to use or use of the trade mark in relation to the specified services – consideration of Bauer’s amended notice of appeal to this Court – consideration of Bauer’s opening address, closing address and aspects of the evidence – consideration of Evergreen’s contentions on the question of procedural fairness
Legislation:	Migration Act 1958 (Cth), s 425 Trade Marks Act 1995 (Cth) ss 7, 17, 19, 20, 27, 31, 41, 42, 43, 55, 56, 57, 48, 59, 59(a), 72, 92, 92(4), 100, 101, 195(2), 197, 209, 210, 211 Federal Court Rules 2011 (Cth) Div 34.3 rr 34.24, 34.24(2) and 34.26
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd; (2017) 345 ALR 205 Aldi Foods Pty Ltd v Morrocanoil Israel (2018) 358 ALR 683 Allesch v Maunz (2000) 203 CLR 172 Aston v Harlee Manufacturing Co (1967) 103 CLR 391 Banque Commerciale SA v Akhil Holdings Ltd (1990) 169 CLR 279 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2014) 108 IPR 529 Bauer Consumer Media Limited v Evergreen Television Pty Ltd [2017] FCA 507 Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 Craig v South Australia (1995) 184 CLR 163 Construction, Forestry, Mining and Energy Union v BHP Coal Pty Ltd [2007] FCAFC 50 Dare v Pulham (1982) 148 CLR 658 Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Limited (1967) 116 CLR 254 Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 Fox v Percy (2003) 214 CLR 118 Gould, Birbeck and Bacon v Mount Oxide Mines Ltd (in liq) (1916) 22 CLR 490 Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 Health World Ltd vShin-Sun Australia Pty Ltd (2008) 75 IPR 478 House v R (1936) 55 CLR 499 Jafferjee v Scarlett (1937) 57 CLR 115 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 Leotta v Public Transport Commission (NSW) (1976) 9 ALR 437 Maloney v Commissioner for Railways (NSW) (1978) 18 ALR 147 Minister for Aboriginal Affairs v Peko‑Wallsend Limited (1986) 162 CLR 24 Minister for Immigration and Border Protection v SZVFW (2018) 357 ALR 408 Minister for Immigration and Multicultural Affairs v Yusuf (2001) 206 CLR 323 New England BiolabsInc v F Hoffman-La Roche AG(2004) 141 FCR 1 Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 Pfizer Corp v Commissioner of Patents [2006] FCAFC 190; (2006) 155 FCR 578 Phillip Morris Products SA v Sean Ngu [2002] ATMO 96 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382 Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd(1963) 109 CLR 407 Stefanovski v Digital Central Australia (Assets) Pty Ltd [2018] FCAFC 31 SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs (2006) 228 CLR 152 Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388 Tommy Hilfiger Licencing Inc v Tan (2002) 60 IPR 137 White v Overland [2001] FCA 1333 Woolworths Ltd v BP PLC (No 2) (2006) 70 IPR 25
Date of hearing:	9 May 2018
Date of last submissions:	9 May 2018
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	286
Counsel for the Applicants/Appellants:	Mr A D B Fox
Solicitor for the Applicants/Appellants:	Dentons
Counsel for the Respondent:	Mr S Stuckey QC
Solicitor for the Respondent:	Wisewould Mahony Lawyers

ORDERS

		NSD 808 of 2017
BETWEEN:	BAUER CONSUMER MEDIA LTD First Applicant ; BAUER MEDIA PTY LTD Second Applicant
AND:	EVERGREEN TELEVISION PTY LTD Respondent

		NSD 809 of 2017
BETWEEN:	BAUER CONSUMER MEDIA LTD First Appellant ; BAUER MEDIA PTY LTD Second Appellant
AND:	EVERGREEN TELEVISION PTY LTD Respondent

JUDGES:	GREENWOOD, RANGIAH AND BURLEY JJ
DATE OF ORDER:	3 MAY 2019

THE COURT ORDERS THAT:

1. The application for leave to appeal under s 195(2) of the Trade Marks Act 1995 (Cth) is allowed.

2. Orders 1 and 2 of the orders made by the primary judge on 12 May 2017 be set aside.

3. The...