mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 , 202 CLR 45
Outcome: followed
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.
Case: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495
Outcome: considered
Whatever use there had been of the trade mark by its registered proprietor in the course of trade, that use had ended outside Australia. See: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 510 per Gummow J. 152 The second way in which Gallo Winery contends that there has been a use of the mark during the non-use period is again to rely upon the fact that BAREFOOT wine was sold by Beach Avenue Wholesalers and offered for sale during the non-use period. This, together with the quality control exercised by Mr Houlihan, it is submitted, made Beach Avenue Wholesalers an " authorised user " of the mark within the meaning of s 8(1) of the 1995 Act. Its use of the mark, it is contended, is an " authorised use " within the meaning of s 8(2). 153 Section 8 of the 1995 Act provides as follows: Definitions of authorised user and authorised use (1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark. (2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark. (3) If the owner of a trade mark exercises quality control over goods or services: (a) dealt with or provided in the course of trade by another person; and (b) in relation to which the trade mark is used; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner. (4) If: (a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and (b) the owner of the trade mark exercises financial control over the other person's relevant trading activities; the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner. (5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
Case: Colorado Group Ltd v Standbags Group Pty Ltd [2007] FCAFC 184 , 243 ALR 127
Outcome: distinguished
Lion Nathan placed reliance upon Colorado Group Ltd v Standbags Group Pty Ltd [2007] FCAFC 184 , 164 FCR 506. Just as in the Colorado case, Lion Nathan contends that the image cannot be divorced from the word such that the words alone had the capacity to distinguish the wine. In reaching a like conclusion in the Colorado case, Allsop J concluded: [110] Here, though the evidence was less than precise as to what the mark plus device use was by CGL, the examples in evidence reveal an important, perhaps even dominant, effect of the word "Colorado", but always with a device. That device was part of the trade mark use; it had a capacity to distinguish. It did not, in my view, operate as a separate mark, nor as a mere descriptor. It operated as part of a combination with the word "Colorado", in part reinforcing it. In these circumstances, I agree with the primary judge's concluded view that though the word "Colorado" is important in the impression, it cannot be said to have been used alone, rather than as part of a composite mark (with the device) to show origin. Kenny and Gyles JJ gave separate judgments but also agreed with Allsop J. 186 Although it may be accepted that a combination of a word and an image may in some circumstances strip, in the mind of a consumer, the association with a trade source previously associated with the word alone, such is not the present case. Rejected is the contention of Lion Nathan that -- if there was a use of a trade mark during the non-use period -- it was the use of a mark other than the word " BAREFOOT " . If there was a use of a mark during the non-use period, the addition of the image of the bare foot did not have the consequence that the word itself as a trade mark was not also being used. 187 One of the final contentions advanced by Gallo Winery was that any such use as there was of the trade mark during the non-use period was a use " in good faith " within the meaning of s 100(1)(c) of the 1995 Act. 188 Lion Nathan denies that any use was a use " in good faith ". Upon its analysis, during the non-use period there were 59 bottles provided to customers, of which 18 were given away free. Forty-three bottles, according to their analysis, were provided to Centro Euro Wines .
Case: Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: considered
It was no part of the case presently advanced by Gallo Winery to rely upon its international reputation or to advance any claim founded upon passing off: cf Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302. 212 It is not considered that either at May 2004 or May 2007, or at present, that it would be " reasonable " to allow the trade mark of Gallo Winery to remain registered. 213 And there are no " special facts and circumstances " which warrant an exercise of discretion in favour of Gallo Winery . No " sufficient reason " has emerged which would warrant leaving the mark on the Register.
Case: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196
Outcome: followed
It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same: Australian Woollen Mills Ltd v F S Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ. See also: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [84] [89] per Sundberg J. The " recollection " may be imperfect: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [87] , [2004] FCAFC 196 ; 209 ALR 1 at 21 per Moore, Sackville and Emmett JJ. 62 The word " RADLER " is not a word having any meaning found in either the Macquarie or Shorter Oxford Dictionaries. It is a German word and, not being a word of everyday usage in the English language, its use would unquestionably leave an impression on the mind of a person. The word " RADLER ", it is considered, would leave an impression on the mind of a person who knew what the word meant and would leave an even firmer impression upon the mind of a person who had no such knowledge. And it is a word given prominence in the Lion Nathan sign. But those factors either alone or in combination would not be such as to remove the likelihood of deception or confusion. Contrast: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 , 209 ALR 1. 63 An essential feature common to both the mark of Gallo Winery and the sign as pleaded by Lion Nathan remains the word " BAREFOOT " which, it is considered, would leave a considerable impression on the mind of a consumer of ordinary intelligence. Notwithstanding the distinctiveness which the word " RADLER " brings to the sign of Lion Nathan , it would not be sufficient to remove the likelihood of deception otherwise arising. 64 Again, it should be noted, any deceptive similarity with the Gallo Winery mark would not have arisen had Lion Nathan been free to rely upon the combination of words and the image of the bare foot.
Case: " Daiquiri Rum " Trade Mark [1969] RPC 600
Outcome: cited
The Applicant accepts that other cases which have resolved whether the goods there in issue were " goods of the same description " are not determinative. But it does contend that some guidance may be gleaned from decisions which have held or suggested that the following are " goods of the same description ": namely, " rum and a rum cocktail or a Daiquiri " (" Daiquiri Rum " Trade Mark [1969] RPC 600 at 609 per Lord Reid, at 613 per Lord Morris, at 615 per Lord Pearce); wines and spirits ( In re Australian Wine Importers' Trade Mark (1889) 6 RPC 311) ; and beer and rum ( In re Turney and Sons' Trade Mark (1893) 11 RPC 37 at 44 5). Of these decisions, it is of significance to note that in the Australian Wine Importers case the Court of Appeal dismissed an appeal from a decision of Kay J. Cotton LJ held at 316: ... Well, it is not confined to the same goods, but it is "the same goods or description of goods ;" and if it were necessary to decide it absolutely on that point, my opinion would be that there was an application for registration with respect to the same description of goods ; because although wine and whiskey, and wine and spirits are in a great many ways considered as different goods, yet we are not considering here how chemists would describe them, but whether manufacturers would describe them as being the same description of goods or not. We find that they are goods which are generally sold by the same persons, and for the purposes of trade may, in some respects, be considered as the same description of goods; for they are both alcoholic, and although there may be differences in them, they may fairly be considered as coming within the same description of goods, though they are not the same goods. ... Lindley LJ similarly concluded at 318 19: Of course one has to look at the trade. One must look at it from a business point of view. They are alcoholic and spirituous. They are sold in this country constantly by the same people. Wine and spirit dealers are common enough in this country, and I am not sure that they are not the same description of goods ; but whether they are or not, it seems to me that they are so uncommonly near the line that we ought not to depart from the view taken by Mr. Justice Kay, and say to the Comptroller, "You must register in favour of these wine merchants a mark which is already on the Register in favour of a spirit merchant who is also a wine merchant." It appears to me that Mr. Justice Kay has taken the right view of the case, and that we ought not to interfere with his Order. These observations disclose, at the very least, that questions of fine judgment may be involved.
Case: de Cordova v Vick Chemical Co (1951) 68 RPC 103
Outcome: considered
And whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at] [2], at p. 106. Whether there is substantial identity is a question of fact... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38] , [1999] FCA 1721 ; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. 59 In reaching this conclusion considerable assistance has been gained from the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227. Polo Textile was there the registered proprietor of the mark " Polo " in respect of manchester, including sheets and towels. It was concluded that Domestic Textile did not avoid infringing that mark by selling bed linen products using the mark " Polo Club ". Burchett J concluded that it was of importance that the distinctive impact of the word " Polo " was likely to affect the mind while the presence or absence of the blander word " Club " may escape notice. See also: de Cordova v Vick Chemical Co (1951) 68 RPC 103.
Case: Delta Metallics v Hawley-Jacobs t/as Fightboi Health &amp; Fitness Centre [2006] FCA 334
Outcome: followed
Albeit only during the course of closing submissions by Lion Nathan , Gallo Winery supplemented its earlier contentions by placing reliance upon O 11, r 10 of the Federal Court Rules . That rule requires a matter to be specifically pleaded if it " might take the other party by surprise ": Dyno Wesfarmers Ltd v Orica Australia Pty Ltd [1999] FCA 554 , 46 IPR 386 ; Delta Metallics v Hawley-Jacobs t/as Fightboi Health &amp; Fitness Centre [2006] FCA 334 at [8] per Kenny J.
Case: Dyno Wesfarmers Ltd v Orica Australia Pty Ltd [1999] FCA 554 , 46 IPR 386
Outcome: followed
Albeit only during the course of closing submissions by Lion Nathan , Gallo Winery supplemented its earlier contentions by placing reliance upon O 11, r 10 of the Federal Court Rules . That rule requires a matter to be specifically pleaded if it " might take the other party by surprise ": Dyno Wesfarmers Ltd v Orica Australia Pty Ltd [1999] FCA 554 , 46 IPR 386 ; Delta Metallics v Hawley-Jacobs t/as Fightboi Health &amp; Fitness Centre [2006] FCA 334 at [8] per Kenny J.
Case: Figgins Holdings v Beltrami SpA (1998) 46 IPR 411
Outcome: followed
The discretion to allow a mark which has not been used to remain registered is that now set forth in s 101(3) of the 1995 Act. That sub-section provides as follows: If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established. The discretion, it has been said, requires there to be " special facts and circumstances, or an overriding question of public interest ": Figgins Holdings v Beltrami SpA (1998) 46 IPR 411 at 418 19.
Case: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605
Outcome: followed
A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market": In re Powell's Trade Mark [1893] 2 Ch 388 at 403 4 per Bowen LJ. Use "as a trade mark" in s 120(1) is use of the mark as a "badge of origin" in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , [1999] FCA 1721 ; 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90. 54 It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same: Australian Woollen Mills Ltd v F S Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ. See also: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [84] [89] per Sundberg J. The " recollection " may be imperfect: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 at [87] , [2004] FCAFC 196 ; 209 ALR 1 at 21 per Moore, Sackville and Emmett JJ.
Case: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 , 75 IPR 478
Outcome: considered
The present proceedings, it is considered, stand in stark contrast to those confronting both the trial judge and the Full Court in C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 , 52 IPR 42. The trial judge there had indicated that he would have allowed the mark to remain registered, even had it not been used. The registered proprietor of the mark had died in 1972 and no steps had been taken to transfer the mark until 1997. The beneficial interest in the mark had at all times resided directly or indirectly in members of the Henschke family. The only " formal " deception which could be pointed to was an impression that it may have been the partnership, rather than the executors, who owned the " Hill of Grace " trade mark. The persons using the mark were the persons who gave the mark its value. See also: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 at [223] [225], [2008] FCA 100 ; 75 IPR 478 at 503 per Jacobson J.
Case: Hermes Trade Mark [1982] RPC 425
Outcome: considered
Reliance is placed by Gallo Winery upon the obiter comments of Falconer J in Hermes Trade Mark [1982] RPC 425. In that decision an application was made for the removal of the trade mark " Hermes ", in relation to watches, for non-use during a five year period. That application was rejected. Falconer J nevertheless went on to observe that, had it been necessary to exercise the statutory discretion conferred by s 52 of the Trade Marks Act 1938 (UK), his Honour would have allowed the mark to remain on the Register. Relevant to that conclusion were five factors: there had been no abandonment of the trade mark; the registered proprietors still had a residual reputation in the mark; there had been sales by the registered proprietors of watches since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; and the registered proprietors were not aware of the applicant's sales under the " Hermes " mark. 203 That list of considerations is, obviously enough, not an exhaustive catalogue of factors that may be taken into account. But it does provide some assistance. No attempt was made in the present proceedings to establish any reputation or sale of Gallo Winery's wines in Australia under the trade mark BAREFOOT prior to May 2004. No question of any " residual reputation " thus arises in the present proceedings by reason of earlier sales in Australia. But there have been sales in Australia since May 2007 of Gallo Winery's wines using the BAREFOOT trade mark and there certainly has been no intention on the part of Gallo Winery to abandon its use of that mark. And Lion Nathan knew that there was a risk that Gallo Winery may have been able to establish a use of its mark during the three year period 2004 2007. 204 As is frequently the case with any exercise of discretion, the considerations relevant to the exercise are seldom all one way.