Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39

FEDERAL COURT OF AUSTRALIA

Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39 Citation: Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39

Parties: AUSTIN, NICHOLS & CO INC and RARE BREED DISTILLING LLC v LODESTAR ANSTALT

File number: NSD 518 of 2009

Judge: COWDROY J

Date of judgment: 4 February 2011

Catchwords: TRADE MARKS – Appeal from decision of a delegate of Registrar of Trades Marks – Application for removal of trade mark on grounds of non-use – Whether Applicants have standing as a person aggrieved for purposes of s 92 of the Trade Marks Act 1995 (Cth) – Whether Applicants in same trade as owner of contested trade mark – First Applicant and owner of contested trade mark both producers of whiskey – Whether Applicants have standing as a 'person aggrieved' in relation to non-alcoholic goods in Class 32 – Held – Applicants trade rivals of owner of contested trade mark – Applicants have standing as a 'person aggrieved' pursuant to s 92 of the Trade Marks Act 1995 (Cth). TRADE MARKS – Appeal from decision of a delegate of Registrar of Trades Marks – Application for removal of trade mark on grounds of non-use – Non-use in relevant three year period conceded by Respondent – Whether any obstacles to use existed such that s 100(3)(c) of the Trade Marks Act 1995 (Cth) has effect – Respondent engaged in multiple jurisdiction trade mark litigation – Respondent denied permission to exhibit product a Cannes trade fair – Respondent experienced delays in production – Held – Respondent adopted deliberate strategy to market product in other jurisdictions in priority to Australia – Litigation proved no bar to use of trade mark and promotion of product in other jurisdictions – Delays in production had been rectified before the completion of the relevant non-use period – No causal connection demonstrated between failure to use the mark and denial of exhibition space in Cannes – Respondent's claims not sufficient to constitute obstacles for the purposes of s 100(3)(c) of the Trade Marks Act 1995 (Cth). TRADE MARKS – Appeal from decision of a delegate of Registrar of Trades Marks – Application for removal of trade mark on grounds of non-use – Respondent's non-use of contested trade mark established – Whether Court should exercise discretion under s 101(3) of the Trade Marks Act 1995 (Cth) to retain trade mark on the Register of Trade Marks – Scope of discretion under s 101(3) – Whether any public confusion would be caused by removal of the trade mark – Held – Respondent has developed limited international and domestic reputation – Possibility of public confusion should mark be removed – No apparent prejudice would result should the mark be maintained – Circumstances warrant the exercise of the Court's discretion to retain the trade mark on the register.