Did the Applicant for registration of the trade mark JUST DESSERTS get un-just deserts?
By Fiona Brittain, Special Counsel, Marquette IP
Reality TV is becoming more and more prevalent in our lives with water cooler discussions focusing on Honey Badger’s controversial decision, Justin’s hotness in the jungle, and the villainous exploits of Innes and Jessika. In this competitive environment, the protection of valuable intellectual property associated with reality TV is becoming increasingly essential.
Bravo Media LLC recently sought registration of the trade mark JUST DESSERTS in relation to “entertainment services, namely a reality television series” in Class 41. Bravo is an American pay TV network which provides lifestyle and entertainment shows such as Top Chef and Real Housewives. The mark has been used in the US by Bravo since September 2010 in relation to a television reality show, which is a spin-off from the Top Chef reality TV show. Foxtel acquired the licence to air the show in Australia from 2011 until 2013. The show involves pastry chefs competing in culinary challenges relating to pastries and desserts.
The Australian trade mark application was opposed by Seven Network (Operations) Ltd, which is part of an Australian network of media and broadcasting companies. The opponent relied upon the use of the mark in Australia from February 2016 in relation to Seven’s JUST DESSERTS baking competition reality show, hosted by Adriano Zumbo. The application was opposed under section 41 of the Australian Trade Marks Act 1995 on the basis that the mark did not distinguish the applicant’s services because of its descriptiveness.
This decision contains an interesting discussion regarding the state of the Trade Mark Register and how this impacted IP Australia’s assessment of the mark’s distinctiveness.
Findings Regarding the State of the Register
The Hearing Officer in Seven Network (Operations) Limited v Bravo Media LLC  ATMO 190 noted that the state of the Australian Trade Marks Register was relied upon by both parties.
In connection with the state of the Register, the Hearing Officer noted that most trade marks in the format “JUST” coupled with a descriptive element have attracted grounds for rejection under section 41 in circumstances where the descriptive element describes the relevant goods or services such as books, magazines, software, educational or entertainment services.
In the context of reality television series, the Hearing Officer stated that no supporting evidence of use was required with regard to earlier Australian trade mark registrations for the following marks:
- The Bachelor
- Top Chef
- The Renovators
However, the following marks were assessed as being not registrable by IP Australia:
- Border Patrol
- Band Grand Slam
- My Mentor
- Bridal Bootcamp
In addition to the above-mentioned marks discussed in the decision, it is worth noting that the following relatively descriptive word marks have been registered in this country without evidence of use:
- Grand Designs
- The Bachelorette
- My Kitchen Rules
- Perfect Match
In contrast, the marks Hot Property and Better Homes and Gardens have been registered with supporting evidence of use.
In any event, the Hearing Officer decided that evidence relating to the state of the Register does not outweigh the application of accepted tests for determining distinctiveness.
Findings Regarding Distinctiveness
With regard to the mark’s inherent distinctiveness, it was noted that the JUST DESSERTS mark comprised a double entendre or play on words, as “just deserts” is a well-known saying meaning that people get what they deserve. The mark in question is the phonetic equivalent of this common saying. The Hearing Officer decided that the mark had some inherent distinctiveness because of the double meaning of the words.
With regard to factual distinctiveness, the evidence of use which had been filed on behalf of the applicant was found to be deficient on the basis that there was no evidence of use of the trade mark on its own in Australia, according to the Hearing Officer.
Thus, it was decided that the there was insufficient evidence that the trade mark did or will distinguish the applicant’s services. On this basis, the section 41 ground of opposition succeeded and the application was refused.
Further Comments about the State of the Register
The state of the Register may be relied upon by trade mark applicants in order to support arguments about a mark’s capacity to distinguish (section 41 issues as discussed in this decision), as well arguments about a mark’s ability to co-exist with prior similar marks (section 44 issues).
In Australia, such evidence is frequently disregarded by the Registrar on the basis of the reasoning outlined by Jacobs J in British Sugar Plc v James Robertson & Sons Ltd  RPC 281, 303 (‘Treats’) in which it was stated that one has no idea of the circumstances leading to registration of earlier marks.
In Ocean Spray Cranberry v Registrar of Trade Marks  FCA 177 Wilcox J observed at paragraph 35 (after quoting Jacobs J in Treats):
“Although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.”
It seems somewhat counter-intuitive to assume that marks may have been wrongly registered in the past, rather than assume that they are correctly registered. There is also the important issue of the expectations of trade mark owners that there will be consistency in examination practices. This issue was addressed in Unilever PLC  ATMO 39 (16 May 2001) where the above Ocean Spray passage was discussed as follows:
“The last paragraph is important. Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.”
With respect, it appears inconsistent that marks such as The Bachelor, Perfect Match and Top Chef can be registered without evidence of use, whilst the applicant for registration of JUST DESSERTS (which is a clever and witty play on words in the context of a hotly contested baking competition reality TV show) is required to rely upon supporting evidence of use to show distinctiveness of the mark.
It is unclear whether this decision fits with the pattern of previous decisions made by IP Australia relating to the registrability of names of reality television shows and other marks in a wider context. It would be helpful for trade mark applicants and their advisers if there was a degree of consistency with regard to examination of marks used for reality TV shows (and other marks), giving rise to a greater level of certainty for trade mark owners with regard to the protection of their valuable intellectual property rights. If there is any doubt whether a mark is sufficiently distinctive to qualify for registration, trade mark applicants must be prepared to file supporting evidence of use of the mark in order to obtain a registration.
Cover image by Jordane Mathieu via Unsplash