Austin Nichols, the owner of WILD TURKEY for bourbon and other
alcoholic drinks, unsuccessfully sought removal of Lodestar's
WILD GEESE registration for beverages in classes 32 & 33.
Austin appealed from the Registrar of Trade Marks to the Federal
Court of Australia, which considered three issues (Austin,
Nichols & Co Inc v Lodestar Anstalt  FCA 39).
Lodestar unsuccessfully challenged Austin's standing in
relation to non-alcoholic beverages in class 32 but not for beers
in class 32 or alcoholic drinks in class 33.
Justice Cowdroy was bound by the joint judgment of four judges
of the Australian High Court in the Health World case, requiring
"person aggrieved" to be liberally construed on the basis
of "trade rivalry" of the parties, not by reference to
minute product analyses.
Accordingly, Austin did not need to trade or intend to trade in
non-alcoholic beverages in class 32 to have standing.
Obstacles excusing non-use
Lodestar argued that non-use of WILD GEESE on alcoholic
beverages (especially whiskey) should be excused because of:
worldwide litigation in relation to the trade mark;
product sourcing difficulties; and
Justice Cowdroy held that section 100(3)(c) excuses non-use
only when external events, not
brought about by the voluntary act of the trade
mark owner, so disrupt the trade in the owner's goods as to
cause the non-use in the relevant period, whether
or not other traders are similarly affected. The owner must show
that "but for" the impediment of a
"trade character", the trademark would
have been used on the goods in the relevant non-use period. They
cannot include, for example, personal illness.
Justice Cowdroy found no basis to excuse non-use:
worldwide litigation and product sourcing issues did not cause
the non-use in Australia. They had not prevented use in other
the restrictions on promotion were very limited.
The discretion not to remove an unused mark is broad, not
requiring exceptional circumstances and is exercised reasonably in
the light of the public interest in expunging unused marks and the
private rights of the parties. Nonetheless, binding precedent
required a sufficient reason to retain the registration in the face
of the non-use applicant's prima facie entitlement to
Justice Cowdroy retained the WILD GEESE registration for limited
goods (whiskey), taking into account the following factors:
substantial use of mark overseas before and after the non-use
period in 34 countries;
various industry awards and a limited public profile in
the legal and financial detriment to the owner if the mark
the relatively short period the mark had not been used;
difficulties in sourcing product;
the non-abandoned of the trade mark;
that wine (the other party's goods of interest) and whiskey
could be distinguished, so separate registrations for WILD GEESE
for wine and whiskey in the name of different owners would not lead
Even so, Justice Cowdroy observed that the right of third
parties to take up an unused trade mark was "a primary reason
why the court should retain a registration only in cases where
there were good reasons to do so".
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).