Fuji Television Network, Inc v Iron Chef Pizza Pty Ltd (2021)
This article follows on from the Opposition Case Analysis posted earlier in the year.
This matter involved an application for removal of Fuji Television Network’s (Fuji)’s IRON CHEF trade mark by our client Iron Chef Pizza (Iron Chef Pizza).
Fuji has held this trade mark since 2008, covering a range of goods including kitchenware, software, clothing, as well as entertainment and restaurant services.
Iron Chef Pizza sought partial removal with respect to all goods and services claimed by the trade mark, with the exception of entertainment services in class 41. To defend its registration, Fuji was required to establish use of its IRON CHEF trade mark in relation to these goods and services in Australia between the period September 2015 to September 2018 (Relevant Period).
Fuji contended that use of its IRON CHEF trade mark was demonstrated through the following:
the broadcast of its Iron Chef cooking show, which broadcast in Australia primarily through SBS.
through the presentation of charity dinner events operated by a third party company, Tryber Pty Ltd, the most recent of which took place in 2017 at the Sydney Opera House (Reunion Event).
through guest appearances by one of the “Iron Chefs” (Chef Sakai) at various events throughout Australia since 2015.
Iron Chef Pizza’s primary contentions in response were:
That the 2017 charity event involved the provision of entertainment services, which were services which the removal application was not seeking to exclude;
That otherwise, no use with respect to the goods and services sought to be excluded had been provided.
Fuji was ultimately unsuccessful in establishing relevant use of its IRON CHEF trade mark for the goods and services sought to be removed and Iron Chef Pizza was successful in establishing grounds for removal under section 92(4)(b).
The decision otherwise provides a useful analysis of:
Interpretation of goods and services based on context;
The importance of establishing actual control in the context of establishing authorise use of a trade mark;
The application of brand extension and merchandising links in exercising the Registrar’s discretion in non-use proceedings.
The key statements by Hearing Officer Blake Knowles are summarised below:
Whilst Iron Chef Pizza did not seek to remove “entertainment services” generally from the registration, they did seek to remove “entertainment services in the nature of an animated television series” which were specifically claimed in the registration.
Fuji had never produced the Iron Chef TV program as a cartoon, however they argued that the term “animated” in the context of a television series could also be interpreted as meaning “lively” or “full of excitement”.
The Hearing Officer did not accept that interpretation and found that in context, the term “animated” was clearly in reference to a cartoon, rather than a live action television series delivered in an “animated” manner.
Answer: No!
The Hearing Officer acknowledged the settled authority that the mere granting or existence of a license to use a trade mark is not sufficient to demonstrate “authorised use” of a trade mark. Rather the trade mark owner must demonstrate that they have exercised actual control over how the trade mark is used by the authorised user: Lodestar Anstalt v Campari America LLC [2016] FCAFC 92.
In this case, the factors that went against a finding of exercise of actual control were:
In this case, the factors that went against a finding of exercise of actual control were:
no evidence of a licence with Tryber was produced;
no evidence that Fuji had exercised control over how the IRON CHEF trade mark was used by Tryber in relation to the 2017 Reunion Event was produced.
The fact that the Reunion Event was attended by former “Iron Chefs” from the television programme was not sufficient to establish a form of control over the menu delivered to guests and Fuji did not establish that the “Iron Chefs” were still operating under the employment or control of Fuji.
The guest appearances made by Chef Sakai involved the provision of food and beverage by other traders. Further there was no evidence led to indicate Chef Sakai’s appearances at those events were under the control of Fuji or involved the use of the IRON CHEF trade mark.
For the above reasons, the Hearing Officer was not satisfied that any of the activities relied upon by Fuji involved any “authorised use” of the IRON CHEF trade mark by any third parties.
Notwithstanding that Iron Chef Pizza was successful in satisfying the grounds for its removal application, in non-use cases, the Registrar has a broad discretion to allow registrations to remain if it is satisfied that it is reasonable to do so.
In support of exercise of the discretion, Fuji contended that:
There had not been any abandonment of the IRON CHEF trade mark in Australia in respect to entertainment services, in particular in connection with the Iron Chef TV show.
There was a residual reputation in Australia in the Iron Chef TV show, notwithstanding that the show had been discontinued for some years, which would cause consumers to assume there was a “merchandising link” with use of that mark for other types of goods or services.
Iron Chef contended in response that:
Notwithstanding any use of the trade mark connected to the TV show, there had never been any use of the mark in relation to merchandise products, nor the provision of restaurant services in Australia, being the goods and services the removal application was seeking to remove.
There was no intention by Iron Chef Pizza to associate its services with the Iron Chef TV show.
The Hearing Officer made the following findings in relation each of the following classes of goods and services for which removal was sought:
Although the Examiner found that there was no evidence in relation to use of the IRON CHEF trade mark in relation to the production of an animated television series, he considered that those services would still be covered within the scope of entertainment services generally and that consumers could potentially assume that an animated television series was associated with Fuji due to the residual reputation of the Iron Chef TV show. Therefore, the discretion was exercised to allow registration in relation to an animated television series to remain.
The Hearing Officer acknowledged that the Iron Chef charity dinners held between 2010-2017 did generate some publicity, but that control over the use of the IRON CHEF trade mark at those events had not been established. He also considered that any reputation based on the 2010 and 2011 events had long since dissipated.
The Hearing Officer further found that while use of IRON CHEF for a restaurant or café might bring to mind the Iron Chef TV show, there was no reason why a consumer would think the restaurant or café was connected with that TV show. The fact that the Iron Chef was an older TV show and no longer on air also contributed to that finding.
The fact that Fuji had never engaged in brand extension or merchandising in connection with the TV show, further supported this lack of association.
On that ground, the discretion did not extend to allowing registration for class 43 to remain.
Similarly, the Hearing Officer did not accept that there was sufficient basis to allow registration to remain for merchandise products, given the lack of any evidence of any brand extension ever being associated with the Iron Chef TV show.
Further, he found that there was no evidence of any intention by Iron Chef Pizza to associate their restaurant services with the Iron Chef TV show or characters.
