Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Calico Global Pty Ltd v Calico LLC [2018] FCA 2096 Appeal from: Calico LLC v Calico Global Pty Ltd [2016] ATMO 86
File number: QUD 854 of 2016
Judge: RARES J
Date of judgment: 21 December 2018
Catchwords: TRADE MARKS – Trade Marks Act 1995 (Cth) – appeal from Registrar's decision to remove registration of trade mark from one class of services under s 101(1) Trade Marks Act 1995– whether non-use or use in good faith during three year period prior to application to remove – where unregistered assignment by registered owner of trade mark – where unregistered assignee licensed trade mark to licensee – whether any uses after assignment and licence were by registered owner or authorised user – whether use of trade mark was as badge of origin of services – whether use was of character appropriate to class of registration TRADE MARKS – s 101(3) Trade Marks Act 1995– discretion to allow registration to remain where grounds of opposition established – where registered owner engaged in conduct not in good faith to interfere with opponent's use – where real risk of future repetition of confusing conduct – where trade mark registration in another class not challenged – whether detriment if discretion not exercised
Legislation: Trade Marks Act 1995 (Cth) ss 6, 7, 8, 17, 92, 100, 101, 104 Trade Marks Regulations 1995 (Cth) Sch 1
Cases cited: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2013) 351 ALR 436 Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97 Austin Nichols & Company Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490 Coca Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 Electrolux Ltd v Electrix Ltd (1952) 71 RPC 23 Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 Norman v Federal Commissioner of Taxation (1963) 109 CLR 9 Optical 88 Ltd v Optical 88 Pty Ltd (2011) 197 FCR 67 Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323 Re Nodoz Trade Mark [1962] RPC 1 Salomon v A Salomon & Co Ltd [1897] AC 22 Unilever Australia Ltd v Karounos (2001) 113 FCR 322 Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166
We try to embed the page this law was scraped from. If the site blocks framing, you still get the link and a local excerpt.
Last checked with source on —
Checking whether the official page can be embedded…
Plain-English simplify of this law: a short summary, key points, and both sides of the argument. Generated on first view via Replicate, then cached. Vote on what helps your study.
No study brief is cached for this law yet. Sign up to generate a plain-English brief.
Sign up to generate