Australia: Case Note: Calico Global Pty Ltd v Calico LLC [2018] FCA 2096 (21 December 2018) - trade mark removal for non-use

Two years on from Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (the Lodestar Case), trade mark owners are still at risk of having their trade mark registrations removed from the trade mark register by not exercising actual control over their licensees on the use of the mark.

The Lodestar case had major implications for Australian trade mark owners who do not use a trade mark themselves, but license the use of the trade mark to their licensees. In the event that the trade mark is challenged for non-use, the trade mark owner may not be able to rely on use by its licensee to overcome the challenge if it had not exercised “actual control” over its licensee’s use of the trade mark. The court in Lodestar held that a mere theoretical possibility of contractual control exercisable by the trade mark owner was not sufficient to constitute authorised use for the trade mark. “Actual control” may take the form of “quality control” over the goods and services, or “financial control”, and a court will consider the facts of each case to determine whether actual practical control was present.

In Calico Global Pty Ltd v Calico LLC [2018] FCA 2096, the relevant trade mark owner had its mark removed for non-use. Importantly, the use of the mark by the Licensee did not qualify as “authorised use” due to lack of control by the trade mark owner.


On 7 June 2004, Kevin Owens (Owens) registered the word “CALICO” as a trade mark in respect of services in classes 41 and 44 (the Trade Mark).

On 19 July 2011, Mr Owens assigned all intellectual property in “the Calico System”, including the Trade Mark, to Calico Pty Ltd (Calico). On the same day, as the assignee of the Trade Mark, Calico entered into an exclusive licence agreement with Calico Global Pty Ltd (Global) under which Global had exclusive use of the Trade Mark. The assignment to Calico was, however, not registered until around three years later, on 27 May 2014.

Mr Owens was the managing director of both Calico and Global. Mr Owens also owned 50% of Calico which in turn controlled Global.

In September 2013, Calico LLC (Calico LLC), a United States company, was launched internationally and applied to register its CALICO trade mark with IP Australia with a priority date of 18 September 2013 for a range of goods and services including services in class 44.

Calico LLC applied to the Registrar on 15 May 2014 for removal from class 44 of the Trade Mark based on “non-use”.

In order to defeat Calico LCC’s allegations of non-use, Global had to prove that the Trade Mark had been used either:

  1. from 15 April 2011 to 19 July 2011 by Mr Owens (the then trade mark proprietor); or
  2. from 19 July 2011 to 15 April 2014 by an authorised person being Calico (the unregistered assignee) or Global (Calico’s licensee).

The delegate of the Registrar found that there had been no authorised use to overcome the non-use proceeding and class 44 of the Trade Mark was removed. Global appealed the decision.


The Non-Use Issue

The court was not satisfied from the evidence presented that Calico had used the Trade Mark for the services listed under Class 44 “Medical Services” including health or research services. The services advertised on Calico Global’s website and iPhone application were limited to exercise, fitness and nutritional services. Further, it was evident that any references to medicine or health services did not appear until after 19 September 2013 and Justice Rares concluded that the latter references were not genuine commercial uses and were only published by Calico for the purpose of bolstering their claim for proceedings against Calico LLC.

Importantly, His Honour noted that there was no evidence of any act or use by Mr Owens or Calico that demonstrate actual instance of control by either of them in relation to Global’s use of the Trade Mark. The assignment of the Trade Mark by Mr Owens to Calico demonstrated that he had distanced himself from any practical control over the use of the Trade Mark.

In regards to Global’s claim that Mr Owen’s position as Calico’s manager director inferred that Calico, through him and the licence, controlled Global’s use of the Trade Mark, Rares J rejected this argument and concluded that Calico had a distinct legal personality from Mr Owens and the mere fact that Mr Owens was the managing director of both Calico and Global and owned 50% of Calico which controlled Global, was not sufficient to establish that he exercised actual control of the Trade Mark.

The Discretion Issue

Calico Global also submitted that it would be reasonable for Rares J to exercise the discretion afforded by s101(3) not to remove the Trade Mark from class 44 of the Registry. Despite failing to prove its case to rebut Calico LLC’s allegations of non-use, Global relied on what it argued was genuine and “extensive” use of the Trade Mark. It argued that removal of the mark from this class would “likely lead to confusion” and this was a basis for Rares J to exercise reasonable discretion.

His Honour disagreed. He concluded that Global, Calico and Owen had not acted in good faith because they had begun using the mark after the launch of Calico LLC to pressure the company and Google into a commercial agreement for their gain. Rares J also noted that he feared this would continue if Global were to retain their registration. Rares J disputed Global’s claim that there would be confusion if the mark was removed from class 44 because Global had not used the mark in relation to these proposed services in the three-year period. For these reasons, Rares J was not convinced that it is reasonable that the registration of the Trade Mark in class 44 should remain in place. His Honour’s reasoning implied that there may have been a different outcome in the exercise of his discretion had there been actual genuine good faith use during the relevant periods.

Key Points

This case demonstrated and reaffirmed that:

  • use of a trade mark by a company with permission from or a relationship with the registered owner or assignee alone is insufficient to establish “authorised use” by the registered owner or assignee;
  • a trade mark is only used under the ‘control’ of a registered owner or assignee under the Trade Mark Act if there is “actual” quality and/or financial control and the courts will consider a variety of factors to determine this;
  • a financial interest of 50% of the trade mark owner which in turn control the licensee may not be sufficient to establish “financial control” or other form of control, even though the person holding the financial interest is the managing director of the trade mark owner; and
  • trade mark owners who do not use the trade mark but grant a licence for a related or third party to use a trade mark must actually exercise control over how the licensee uses the mark in relation to the relevant goods and services.

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.

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.

Similar Articles
Relevancy Powered by MondaqAI
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”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions