In E. & J. Gallo Winery v Lion Nathan Australia Pty
Limited  HCA 15, Gallo relied on its trade mark
registration for "BAREFOOT" covering wine to commence
infringement proceedings against Lion Nathan for its use of
"BAREFOOT RADLER" for beer. Lion Nathan counter-claimed
for removal of Gallo's trade mark from the Register on the
basis of non-use.
At first instance, Justice Flick held that Lion Nathan did not
infringe Gallo's trade mark and that the trade mark should
be removed from the Register as there was no "use" of the
trade mark by Gallo merely because wine, by some unexplained
circuitous route, ultimately arrived in Australia. On appeal, the
Full Federal Court ("FFC") agreed that
Gallo's trade mark should be removed taking the view that
the owner of the trade mark must have engaged in conduct of some
type which the owner might reasonably contemplate would
result in dealings with its goods in Australia. The HCA, however,
upheld Gallo's appeal finding that the capacity of a trade
mark to distinguish the owner's goods does not depend on
whether the owner knowingly projects the goods into the
Effect of the decision: The owner of an Australian
trade mark registration should be able to defend a removal
application on the basis of sales in Australia even if they had no
knowledge of those sales or any intention to target the Australian
Other issues: Various other issues were considered by
the HCA, the FFC and Justice Flick including whether Lion
Nathan's radler beers were goods of the same description as
wines (the FFC held that they were).
In Health World Ltd v Shin-Sun Australia Pty Ltd 
HCA 13, Health World unsuccessfully opposed Shin-Sun's
trade mark application for "HealthPlus". After
the "HealthPlus" application proceeded to
registration, Health World commenced rectification proceedings.
At first instance, Justice Jacobson held that, even though
Health World had made out grounds for rectification, it did not
have standing to seek relief because it was not an
"aggrieved" person. The FFC held that the conclusion of
Justice Jacobson that Health World lacked standing to institute
rectification proceedings was correct. The HCA held that there is
no exhaustive test for ascertaining standing. One test, amongst
others, is that a wrongly registered mark gives its owner an
advantage to which the owner has no entitlement at the expense of
rivals. All that matters is that they are rivals in relation to the
goods to which the mark applied. It does not matter whether or not
they intend to use the mark on those goods.
Effect of the decision: For rectification proceedings,
the test of standing will be liberally, and not restrictively,
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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