Case: Kowa Co Ltd v Organon [2005] FCA 1282 , 223 ALR 27
Outcome: followed
The discretion presently conferred by s 101(3) of the 1995 Act, it has been said, confers a " broad discretion ": C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [72] , [2000] FCA 1539 ; 52 IPR 42 at 73. And it is a discretion, it is considered, no longer constrained by any requirement to establish " exceptional circumstances "; it is a discretion which may be exercised " when it is reasonable to do so ": Kowa Co Ltd v Organon [2005] FCA 1282 , 223 ALR 27. Lander J there indicated that he was of the view that it was not reasonable not to remove the mark in issue. Of the discretion, his Honour concluded: [97] ... There are significant differences in the section considered by the Court of Appeal in Lyons [(1959) 76 RPC 120] and s 101(3). In the English section, regard had to be had to the bona fide use of the trade mark during the relevant period. No such regard is had in s 101(3). It is always dangerous to have regard to a statement of principle in relation to the exercise of a discretion in a section in an Act which is not in pari materia with a section of a second Act for the purpose of considering the way in which a discretion should be exercised in that second Act. [98] In Upjohn [(1998) 42 IPR 576] it was said that the power may be applied in "exceptional circumstances". Section 101(3) does not say that. There is no warrant to read the expression "exceptional circumstances" into the subsection. That would be to give the subsection a construction contrary to its express terms. In my opinion, the discretion which is to be exercised under s 101(3) is to be exercised as the subsection itself says, "when it is reasonable to do so". To suggest that the party against whom the non-use has been put in a case such as this should establish exceptional circumstances is to put too high a hurdle in that party's path. 210 Although the " guiding principle behind the discretion is public interest, particularly in the integrity of the register " ( Kowa Co Ltd v Organon [2005] FCA 1282 at [92] , [2005] FCA 1282 ; 223 ALR 27 at 41 2 per Lander J), the private commercial interests of both Gallo Winery and Lion Nathan remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme -- or, at least -- a predominant interest is the maintenance of the integrity of the Register: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [40] , [2000] HCA 12 ; 202 CLR 45 at 65. Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised. Their Honours observed that: [42] ... the Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public's interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment. The provisions of the 1955 Act with respect to defensive registrations and certification marks were recognitions that the interests of the owners of registered trade marks may go beyond that of indicating trade origin. In Yale Electric Corporation v Robertson [(1928) 26 F 2d 972 at 973], Judge Learned Hand said of this interest: "that one merchant shall not divert customers from another by representing what he sells as emanating from the second. This has been, and perhaps even more now is, the whole Law and the Prophets on the subject, though it assumes many guises." In this decade, legislation in the United States, the United Kingdom, and now in Australia to varying degrees has extended the infringement action to restrain activities which are likely adversely to affect the interests of the owner of a "famous" or "well-known" trade mark by the "dilution" of its distinctive qualities or of its value to the owner.