High Court Dismisses Special Leave Application From Lodestar Anstalt v Campari America LLC [2016] FCAFC 92

The High Court of Australia has dismissed an application for special leave from the decision of Lodestar Anstalt v Campari America LLC [2016] FCAFC 92.  This means that the Full Federal Court decision remains the leading judgment on the application of section 8 of the Trade Marks Act 1995, “Definition of authorised user and authorised use”.  The case considered the extent to which a licensor had “control” over a licensee’s use of a trade mark for the purposes of proving use of the trade mark.

The Full Federal Court case was heard by five justices who delivered separate decisions, all concurring in the outcome.  They concluded that the trade mark owners had not exercised a sufficient level of “control” over the authorised use of their trade mark by a licensee, allowing a non-use application to be made in respect of the trade mark.

Facts of the Case

The trade marks concerned in the case were “Wild Geese Wines” and “Wild Geese”, which were registered in respect of wine.  The trade marks were owned by a group referred to as the “Wild Turkey interests” in the case, as the rights had come under the control of various companies during the relevant time period.  They obtained the trade marks by entering into an agreement with the original holder of the trade marks in Australia, a small wine company from South Australia called Wild Geese Wines Pty Ltd (“WGW”), operated by a Mr O’Sullivan, following a dispute between the two groups.  Under the agreement, WGW transferred the trade marks to the Wild Turkey interests, who licenced them back to WGW in perpetuity for a fee of $1.  WGW used the trade marks to sell a number of bottles of wine between 2005 and 2009.

An application for the removal of the two trade marks for non-use under Part 9 of the Trade Marks Act 1995 by a group selling “Wild Geese Rare Irish Whiskey” was initially granted by a delegate of the Registrar of Trade Marks.  This initial decision was then overturned by a single judge of the Federal Court on 12 June 2015, who “considered that he was bound to reach that conclusion by reason of the decision of the Full Court of the Federal Court in Yau’s Entertainment Pty Ltd v Asia Television Ltd [2002] FCAFC 78; (2002) 54 IPR 1” [at 24].

As Besanko J explained in his decision:

The appellants, referred to in the case as the “Irish Whiskey interests”, appealed this decision to the Full Federal Court, who overturned the primary judge’s ruling.

Decision

Besanko J, who wrote the leading judgement, found that “the primary judge erred in concluding he was bound by the Full Court’s decision in Yau  to hold that the use… was an authorised use by WGW within s 8 of the Act” [at 109].  He considered “the mere fact that WGW was licensed to use the trade marks is not sufficient to establish control…” 

Although the agreement between the Wild Turkey interests and WGW contained some requirements, including that the wine needed to be of “sufficient quality to obtain continuing export approval from the Australian Wine and Brandy Corporation” [at 48], he found that this was such a low bar, that “the Licence Agreement, in practical terms, had no effect on the way in which Mr O’Sullivan conducted his business” [at 103].  He also noted there was no evidence that the Wild Turkey interests had monitored WGW’s adherence to the requirements in the licence.

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Lodestar Anstalt v Campari America LLC [2016] FCAFC 92

Trade Marks Act 1995 (Cth)