In a recent Australian Trade Mark Office decision, Fuji Television Network Inc, owner of the television show IRON CHEF, has failed in its bid to prevent the registration of IRON CHEF in respect of online food deliveries by Iron Chef Pizza Pty Ltd.
Iron Chef is a Japanese themed cook-off television show with a cult following. The show, overseen by host Chairman Kaga, involves a battle between a guest chef and an ‘Iron Chef’. Chairman Kaga provides each chef with limited and/or unusual ingredients, and the winner is decided by a panel of guest judges by tasting the food produced.
Fuji Television Network Inc (“the opponent”) opposed Iron Chef Pizza’s (“the applicant”) trade mark application in respect of online food deliveries on a number of grounds, but notably sections 44 and 60 of the Trade Marks Act.
The applicant submitted that the term ‘Iron Chef’ is not synonymous with the opponent in Australia, and supported the assertion by evidence detailing several third-party restaurateurs within Australia that trade under the name ‘Iron Chef’ or use it as a prominent feature of their trading name.
In reply, the opponent furnished evidence of use of the trademark IRON CHEF and its reputation in Australia.
The delegate was not persuaded under the s44 ground that the applicant’s services were similar or closely related to the services of the existing trade mark registrations of the opponent.
Under the s60 ground of opposition, the delegate found that while IRON CHEF had a moderate reputation in Australia – due to prolonged use in the Australian marketplace by way of the television series shown on SBS Australia between 2003 to 2014 – that reputation was notably in connection with entertainment services in the nature of television cooking shows.
The delegate did not see likelihood of deception or confusion should the applicant use the trade mark in connection with their proposed services. In rejecting the s60 ground, the delegate noted that:
While the trade marks are identical, the evidence demonstrates that the trade mark ‘IRON CHEF’ has a moderate reputation in respect of entertainment services, specifically, television cooking shows (the show absent any food delivery service or opportunity for viewers to order the food created on the show).
The opponent did not provide any evidence of engaging in any substantive form of brand extension or evidence to conclude that consumers would perceive food delivery and online food ordering software services as a natural or logical extension of an entertainment service being a television cooking show.
An ordinary Australian consumer encountering the trade mark ‘IRON CHEF’, when used by the applicant in connection with their services, will not be caused to wonder whether those services originate from the same trade source as that of the ‘IRON CHEF’ television show.
Having not established a ground of opposition, absent any appeal, the delegate directed the trade mark application proceed to registration.
