In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, Gallo relied on its trade mark registration for "BAREFOOT" covering wine to commence infringement proceedings against Lion Nathan for its use of "BAREFOOT RADLER" for beer. Lion Nathan counter-claimed for removal of Gallo's trade mark from the Register on the basis of non-use.
At first instance, Justice Flick held that Lion Nathan did not infringe Gallo's trade mark and that the trade mark should be removed from the Register as there was no "use" of the trade mark by Gallo merely because wine, by some unexplained circuitous route, ultimately arrived in Australia. On appeal, the Full Federal Court ("FFC") agreed that Gallo's trade mark should be removed taking the view that the owner of the trade mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods in Australia. The HCA, however, upheld Gallo's appeal finding that the capacity of a trade mark to distinguish the owner's goods does not depend on whether the owner knowingly projects the goods into the Australian market.
Effect of the decision: The owner of an Australian trade mark registration should be able to defend a removal application on the basis of sales in Australia even if they had no knowledge of those sales or any intention to target the Australian market.
Other issues: Various other issues were considered by the HCA, the FFC and Justice Flick including whether Lion Nathan's radler beers were goods of the same description as wines (the FFC held that they were).
In Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13, Health World unsuccessfully opposed Shin-Sun's trade mark application for "HealthPlus". After the "HealthPlus" application proceeded to registration, Health World commenced rectification proceedings.
At first instance, Justice Jacobson held that, even though Health World had made out grounds for rectification, it did not have standing to seek relief because it was not an "aggrieved" person. The FFC held that the conclusion of Justice Jacobson that Health World lacked standing to institute rectification proceedings was correct. The HCA held that there is no exhaustive test for ascertaining standing. One test, amongst others, is that a wrongly registered mark gives its owner an advantage to which the owner has no entitlement at the expense of rivals. All that matters is that they are rivals in relation to the goods to which the mark applied. It does not matter whether or not they intend to use the mark on those goods.
Effect of the decision: For rectification proceedings, the test of standing will be liberally, and not restrictively, applied.
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