25 October, 2013

Rare Breed Distilling LLC v Lodestar Anstalt [2013] ATMO 85

Rare Breed Distilling LLC v Lodestar Anstalt [2013] ATMO 85

This matter concerned an application for removal of two trade marks:

Registration No. 1066646 WILD GEESE WINES

Registration No. 1066650 WILDE GEESE

The parties had been engaged in a long litigious history where by the removal applicant had its own WILD GEESE mark removed under a decision of the Full Court of the Federal Court of Australia.

The matter was further complicated as, since the above applications were lodged, there had been several assignments of the marks, as well as restructurings, so that the marks were eventually registered to Skyy Spirits LLC.

The application for removal was based upon the grounds under s 92 of the Trade Marks Act that the marks had not been used or used in good faith in Australia for a continuous period of three years.

wild geese wines

The key issue in this proceeding was not whether there had been use of the mark in that period, but whether the use of that mark in the period was under the control of the owner of the marks. There had been use of the marks on the label of bottles of wine sold in the relevant period, in the form as depicted to the left.

As a brief side note the Delegate noted that the amount of wine sold according to the evidence led (700 bottles) was sufficient to meet the standard of use as inferred from the High Court’s decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 (in that case, 41 sale proven).

The Delegate considered the law with respect to authorised users as defined by subsections 8(1) and 8(2) of the Act, as a person who uses the trade mark under the control of the owner of the trade mark, and that such control need not be limited to quality or financial control.

The Delegate found that to determine whether there was control does not require examination of specific ‘instances’ of control, but rather, looks to the relationship two parties being considered. In most cases, a licensing agreement specifying terms with respect to control would be sufficient for a licensee to meet the definition of authorised user.

However, in this case, although there was a licence agreement between the trade mark owner and the user of the trade mark, there was evidence which brought into doubt the true state of affairs of the relationship of the user and the owner, and shifted the onus to the removal applicant. According to the evidence, and in particular the terms of the agreement between the owner and the user in this case, all evidence spoke towards there being no relationship involving control, and therefore no establishment of an authorised user relationship under the Act.

The Delegate then considered section 101(3) of the Act, under which the Registrar is given discretion to not remove a trade mark even where the grounds to do so are established. In considering the case law on the topic, the Delegate was not convinced that this case warranted an exercise of the discretion in favour of the removal opponent, and orders were made for the removal of the trade marks.

To view the Office decision, click here.

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