Author: Allan Woodley
Infringement; revocation for non-use; deceptive similarity; goods of same description; use of trade mark in a different form to that registered; authorised use of trade mark in Australia without knowledge of foreign trade mark proprietor sufficient to defeat non-use revocation action.
EJ Gallo Winery v Lion Nathan Australia Pty Limited (2010 HCA 15)
French CJ, Gummow, Heydon, Crennan and Bell JJ.
In this case the High Court of Australia, on appeal from the Full Federal Court, considered a number of important trade mark issues. A brief outline of the facts and findings is provided below.
EJ Gallo Winery (“Gallo”) brought an action in the Federal Court of Australia against Lion Nathan Australia Pty Limited (“Lion Nathan) for infringement of Australian trade mark Registration No. 787765 BAREFOOT, registered in Class 33 in respect of “Wines being goods in Class 33”. In use, the word BAREFOOT was combined with other words and a bare foot device.
Lion Nathan had applied in Class 32 for registration of several “BAREFOOT” marks, including BAREFOOT RADLER, BAREFOOT RADLER with bare foot device, and LIFE”S BETTER BAREFOOT, in Class 32 in relation to alcohol and beer.
Lion Nathan used the trade mark “BAREFOOT RADLER and bare foot device” in Australia in relation to beer. Gallo’s action for infringement of Registration No. 787765 was unsuccessful in the Federal Court but succeeded on appeal to the Full Federal Court.
The Full Federal Court considered beer (Class 32) and wine (Class 33) to be goods of the same description. They also considered Lion Nathan’s mark BAREFOOT RADLER to be deceptively similar to Gallo’s registered mark BAREFOOT.
Lion Nathan had cross-claimed successfully at first instance for revocation of Registration No. 787765 for non-use. This finding was upheld on appeal to the Full Federal Court. Gallo then appealed successfully to the High Court where it was held that the fact that Gallo’s authorised user of the BAREFOOT mark was unaware that the mark had been imported and sold in Australia by an Australian liquor wholesaler did not disqualify such use as trade mark use in Australia sufficient to defeat the non-use revocation action.
Importantly, Gallo was held to have exercised sufficient quality control over use of the mark by the authorised user.
Use of Gallo’s mark in Australia was minimal – sales of 144 bottles in the relevant non-use period, but was nonetheless held to be genuine commercial use.
Gallo’s use of BAREFOOT in a label together with a bare foot device was held to equate to use of its registered mark, which was BAREFOOT simpliciter – essentially because the concept of the bare foot device was the same as the idea conveyed by the word BAREFOOT. On this basis the Full Federal Court and High Court distinguished the earlier COLORADO case where use of “COLORADO and mountain device” was held not to be use of the mark as registered, COLORADO simpliciter.
The High Court declared that by advertising, offering for sale and selling in Australia beer under the name BAREFOOT RADLER, without the licence or authority of the appellant Gallo, Lion Nathan had infringed Gallo’s Australian registered trade mark 787765 registered in Class 33 in respect of “Wines being goods in class 33”.
The High Court issued an injunction restraining Lion Nathan from selling, advertising or promoting beer under the name BAREFOOT RADLER or any name substantially identical with or deceptively similar to Gallo’s registered trade mark, without Gallo’s licence or authority.
The High Court also ordered the matter to be remitted to the Federal Court for assessment of damages or, at the election of the appellant, an account of profits.
The respondent Lion Nathan was ordered to pay the appellant’s costs of the proceedings at first instance, the costs of the appeals to the Full Court of the Federal Court of Australia, and the costs of the appeal and the application for special leave to cross-appeal to the High Court.
In this case the High Court addresses a number of significant trade mark issues. For further advice in relation to trade mark matters please feel free to contact the writer.