Case: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26
Outcome: followed
The fact that consumers may drink both BAREFOOT RADLER beer and wine, and the fact that deliberate steps were undertaken to entice some wine drinkers into drinking beer, does not lead to a conclusion -- either by itself or in conjunction with other considerations -- that the beer and wine are " goods of the same description ". As was the case in NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 it was not suggested that BAREFOOT RADLER beer and wines are " commonly used as substitutes or alternatives ": 14 IPR 26 at 43. And, as was the like assessment of Gummow J in that decision, some reliance may also be placed upon the initial reaction of the Consumer Insight Manager for Lion Nathan (Mr Simpson) when he first learned of the trade mark registration of the word " BAREFOOT " for wines -- he " was not overly concerned about the wine mark as beer was the main category that the project team was initially focusing on ". 88 It is thus considered that the Lion Nathan BAREFOOT RADLER beers are not " goods of the same description " as wine. 89 The concluding words of s 120(2) of the 1995 Act further provide a " defence " as follows: However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. To fall within this provision, Lion Nathan must establish that its use of the sign is " not likely to deceive or cause confusion ". Lion Nathan bears the onus by reason of the phrase " if the person establishes ". 101 Section 92(1) and (4)(b) of the 1995 Act provide as follows: Application for removal of trade mark from Register etc. (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register. ... (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: ... (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Section 7 further defines that which constitutes the " use " of a trade mark. An " authorised use " of a trade mark is taken to be a use of the trade mark by the owner: s 7(3). Section 8 defines that which constitutes an " authorised use ". See: Yau's Entertainment Pty Ltd v Asia Television Ltd [2002] FCA 338 at [75] [81], [2002] FCAFC 78 ; 54 IPR 1 at 16 per Hely J (Sundberg and Finkelstein JJ agreeing). The term " during " does not mean " throughout " so as to require a regular and continuous course of conduct for the whole period: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 44 per Gummow J. See: Luck J, Case Note (1990) 1 IPJ 63. 166 Buying Systems , it is considered, provides no support to the case now sought to be advanced by Gallo Winery. Reference may also be made to NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26. Gummow J there concluded that there had been a use of the mark in issue by reason of such facts during the statutory period as the provision of art work to enable the manufacture of packaging and the production of promotional videos. 190 And " good faith " means a real as opposed to a token use in a commercial sense. It requires a " substantial and genuine " use: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 45. Gummow J concluded: In these circumstances, it is clear that in the three year period ending 6 June 1988 (being the period specified in s 23(1)(b)) the moo mark had been used by the registered proprietor not only in relation to cheese, but also in relation to flavoured milk in the sense required to preserve the registration, subject only to the further requirement that the use answered the description of having been bona fide. In "Concord" Trade Mark [1987] FSR 209 ; Falconer J held that to be bona fide within the meaning of the equivalent provision in the British legislation (s 26 of the 1938 Act) use should be substantial and genuine judged by ordinary commercial standards considered in relation to the trade concerned. ... I should add that use by the first respondent would not cease to be bona fide even if the evidence had been that it used the trade mark only after it appreciated that the registration was vulnerable to an attack on the ground of non-use by reason of the lack of activity of the second respondent; nor would it cease to be bona fide, even though, as is the case on the evidence, neither the officers of the first respondent nor its patent attorney, who dealt with the second respondent at the time the assignment was taken in 1987, had enquired closely of the second respondent as to the extent of its previous user of the trade mark... Aff'd: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363. This approach was endorsed by Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [16] , [2001] FCA 261 ; 107 FCR 166 at 171.