On 18 June 2020, the Australian Trade Marks Office handed down its decision regarding opposition of the IRON CHEF Trade Mark belonging to our client, Iron Chef Pizza Pty Ltd. The name IRON CHEF is to be used as the name of a food delivery app currently in development by Iron Chef Pizza.
The Opponent, Fuji Television Network Inc, is a Japanese television production company responsible for the Iron Chef cooking program which aired on SBS television during the mid to late 2000s.
The decision was handed down in favour of Iron Chef Pizza and all five of the Opponent’s grounds under sections 42(b), 44, 58, 60 and 62A of the Trade Marks Act 1995 were dismissed.
The decision provides a useful analysis of:
comparison of similarity of goods and services, in particular food delivery vs restaurant services;
the importance of brand extension evidence in connection with television programs;
knowledge of a previous mark in establishing bad faith.
The key statements by Hearing Officer Nicholas Barbey are summarised below:
Section 44: Were Goods and Services Similar or Closely Related?
Given that the Trade Marks in question were clearly identical, the Hearing Officer was called upon to consider the extent to which the competing goods and services were similar to each other.
On the whole, it was held that none of the competing goods and services were similar or closely related to each other for the following reasons.
Applicant’s Goods and Services Opponent’s Goods and Services Reasons for Dissimilarity
Food delivery services
Software for ordering and delivering food
Event management, marketing, advertisement, entertainment and cooking demonstration services Provided by different traders, different end purpose and operate in separate sectors
Restaurant and café services Differs in nature and use of services and provided by different parties
Cutlery, thermometers and clothing Disparate goods
Video and computer game software Differs in purpose and use of products
Essentially, despite the Trade Marks being identical, they are able to co-exist because they relate to different goods and services.
Accordingly, this ground was dismissed.
Section 58: Was Applicant the Owner of the IRON CHEF Mark for food delivery services?
In order to establish a prior right to ownership of the IRON CHEF Trade Mark in relation to food delivery services and software, Fuji was required to show that the services for which had used the IRON CHEF Trade Mark were “true equivalents” or “essentially the same” as those services.
The Hearing Officer that use of the IRON CHEF Trade Mark in connection with the cooking show and for entertainment events were not the same kinds of services as food delivery.
Therefore, it was open for Iron Chef Pizza to be the owner of the IRON CHEF mark in connection with food delivery services and software, and this ground was dismissed.
Section 60: Was there a likelihood that use of IRON CHEF for food delivery services would cause deception or confusion due to the reputation of the IRON CHEF cooking show?
The Hearing Officer accepted the following criticisms of Fuji’s evidence regarding reputation in the IRON CHEF Trade Mark:
A significant portion of the articles produced in evidence were written after the filing of the opposed Trade Mark;
The IRON CHEF cooking show peaked in popularity around 2009 (more than 10 years ago);
Fuji had no history of brand extension or merchandising in connection with the IRON CHEF program.;
No evidence of consumer confusion was led.
Fuji’s evidence also did not delineate between revenue derived from TV show licensing and more recent charitable events, meaning that the extent of its reputation in regards to later activities was difficult to determine.
Notwithstanding this, the Hearing Officer accepted that there was a moderate reputation in the IRON CHEF mark in connection with the Iron Chef TV show. However, the Hearing Officer was not satisfied that two charity fundraiser events held in Australia in 2010 and 2011 were significant enough to establish that this reputation extended to provision of food and beverage services.
In determining whether this moderate reputation would be likely to lead to consumer confusion due to use of the IRON CHEF mark for food delivery services, the Hearing Officer considered the lack of brand extension activities in connection with the Iron Chef cooking program in concluding that there was no consumer expectation that unrelated services were likely to be connected with the Iron Chef cooking program.
Section 42(b): Is use of the IRON CHEF mark for food delivery/software misleading or deceptive?
Given that the test for misleading and deceptive conduct is more stringent than that for likelihood of confusion under section 60, the Hearing Officer found that this test also was not satisfied.
Accordingly, this ground was not established.
Section 62A: Was IRON CHEF applied for in bad faith?
Fuji contended that Iron Chef Pizza should have known of its registrations when applying for the IRON CHEF mark, and that this knowledge indicated that it had applied for the mark in bad faith.
The Hearing Officer rejected this argument and confirmed that the Opponent has the positive onus of proving bad faith rather than the Applicant demonstrating that it had applied for the mark in good faith.
In this instance, the Hearing Officer rejected the assertion that mere knowledge of a prior similar Trade Mark means that the application is made in bad faith.
Accordingly, the bad faith ground was not established.