Australia: Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd (2016) 119 IPR 247; [2016] FCAFC 91

Last Updated: 11 February 2017
Article by Michael Deacon and Chris Bevitt

The Parties

Scandinavian Tobacco Group Eersel BV (STG) is the registered owner of various Australian trade marks. Trojan Trading Company Pty Ltd (Trojan) is the alleged infringer of the trade marks. The judgment of the Full Federal Court (Besanko, Nicholas and Yates JJ) relates to an appeal by STG and its Australian distributor, Scandinavian Tobacco Group Australia Pty Ltd, from the first instance Federal Court decision of Allsop CJ, who dismissed STG's claims against Trojan for trade mark infringement, passing off and contraventions of the Australian Consumer Law.

The Trade Marks

The Australian trade marks in issue were:

  • CAFE CREME (No. 761892) – registered in class 34 for "Cigars, cigarettes, tobacco, tobacco products, smokers' articles, lighters, matches";
  • HENRI WINTERMANS (No. 179680) – registered in class 34 for "Manufactured tobacco, cigars, cigarillos and other manufactured tobacco products";
  • HENRI WINTERMANS (No. 1529889) – registered in class 34 for "Cigarettes, tobacco, tobacco products, smokers' requisites, lighters and matches"; and
  • LA PAZ (No. 643779) – registered in class 34 for "Cigars and cigarillos",

(all together referred to as the STG Marks).

Background and Issues

STG manufactures cigars in Belgium, Holland and Indonesia, during which time the STG Marks are applied to the packaging of the cigars by or under the control of STG.

Trojan imported into Australia genuine STG cigars which had been manufactured and packaged by STG overseas. Trojan then unwrapped and re-packaged the cigars for compliance with the Tobacco Plain Packaging Act 2011 (better known as Australia's "plain packaging laws"), which involved Trojan replacing the original packaging with new packaging and then applying to the new packaging the STG Marks that were on the original packaging.

STG claimed that the importation and sale of the re-packaged cigars by Trojan infringed the STG Trade Marks pursuant to section 120(1) of the Trade Marks Act 1995. Section 120(1) states that "a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered".

Under section 121, a person may also infringe a trade mark by doing certain prescribed acts in connection with the trade mark or the packaging of the goods, as long as those acts have been prohibited by the trade mark owner by notice applied to the goods. Applying the trade mark to goods after the state, condition, getup or packaging in which they were originally offered to the public has been altered is one of the acts which may be prohibited by notice from the trade mark owner. Importantly, STG did not apply any such notice to the original packaging of its cigars.

Trojan relied on section 123 to defend the infringement claim, which states that "in spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to [or the same as] goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark".

STG also claimed that Trojan's conduct constituted passing off and contraventions of sections 18 and 29 of the Australian Consumer Law. Those claims were dismissed and are not discussed here.

Previous Decision

At first instance, Allsop CJ found that the application of the STG Marks by Trojan to the re-packaged cigars was an infringing use of the marks under section 120(1). However, Allsop CJ also found that Trojan had a defence to infringement under section 123.

STG argued that the phrase "has been applied to... with the consent of the registered owner" in section 123 refers to the alleged infringer's application of the trade mark, not to any earlier application of the mark by or under the control of the trade mark owner (in which case, Trojan's re-application of the trade mark would not have been protected by section 123). Conversely, Trojan argued that section 123 is directed to any application of the trade mark by or with the consent of the owner, which means the defence applies if the trade mark has at any time been applied to the goods by or under the control of the owner.

Chief Justice Allsop agreed with Trojan, noting that section 123 only requires that the trade mark has been applied to the goods with the consent of the trade mark owner at some time in the past. Section 123 does not require the goods to continue to bear the mark as applied by the owner. In other words, section 123 will provide a defence in connection with the later use of a trade mark on or in relation to goods, such as re-packaging the goods with the same trade mark, as long as the trade mark was initially used on or in relation to those goods by or with the consent of the trade mark owner. This interpretation was considered to be consistent with the primary purpose of section 123 to protect non-infringing uses of trade marks to indicate a connection between the goods and the trade mark owner, for example in the context of advertising and sale by retailers.

The Decision

The Full Federal Court upheld Chief Justice Allsop's decision stating:

"The language of s123(1) refers to a mark that has been applied to or in relation to goods by or with the consent of the registered owner. The operation of the section is not expressly or impliedly confined to a situation in which the goods still bear the mark as applied by the owner. The temporal requirement of the section will be satisfied if at some time in the past, which may be after the time of manufacture, the mark has been applied to or in relation to goods by or with the consent of the owner. If those goods are later sold by a person in circumstances which involve him or her using a mark that was previously applied by or in relation to the goods by the owner then s123(1) will be engaged."

As a result, the Court held that Trojan's repackaging of the cigars with the original STG Marks fell within the scope of section 123 and that Trojan therefore had a valid defence to STG's trade mark infringement claim.

The Significance

This decision may cause serious concern for trade mark owners wishing to control the quality and nature of their product packaging, particularly where the quality of the product packaging is an important aspect of the owner's branding and goodwill. Applying an appropriate notice to product packaging as contemplated by section 121 is critical to provide grounds to stop importers altering product packaging in certain cases. Trade mark owners could also have other options available in addition to an action for trade mark infringement. Actions for passing off or breach of the Australian Consumer Law could be available, for example if the trade mark owner is able to establish that the re-packaging misleads or deceives Australian consumers or there is a misrepresentation that the re-packaging was carried out with the trade mark owner's consent. The specific circumstances will generally dictate whether these other options are available to trade mark owners.

Read full Scandinavian Tobacco v Trojan judgment

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

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”

Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.