mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: In re Australian Wine Importers' Trade Mark (1889) 6 RPC 311
Outcome: considered
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: In re Powell's Trade Mark [1893] 2 Ch 388
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.
Case: In re Turney and Sons' Trade Mark (1893) 11 RPC 37
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: Jackson &amp; Co v Napper (1886) 35 Ch D 162 , 4 RPC 45
Outcome: considered
In Estex Clothing the London manufacturer knew that its goods had been sold into Australia. But Gallo Winery contends that the result in that decision would have been the same even had the manufacturer not known to whom the goods were sold or the market into which they were to be sold. So much, contends Gallo Winery , is supported by the reliance placed by Windeyer J on Jackson &amp; Co v Napper (1886) 35 Ch D 162 , 4 RPC 45 at 57 9, a decision which Windeyer J observed " contains much that is instructive ". In a passage commencing at 178, Stirling J observed: The case as to the other five classes of goods rests on different considerations, and raises the question what is meant by the user of a trade-mark in England. Now, in considering that, I do not think I can do better than refer to what Lord Westbury said in McAndrew v. Bassett [4 DJ&amp;S 380] with respect to the essential ingredients of a trade-mark. He says [4 DJ&amp;S 384]: "An element of the right to the property in a trade-mark may be represented as being the fact of the article being in the market as a vendible article, with that stamp or trade-mark, at the time when the defendants imitate it. The essential ingredients for constituting an infringement of that right probably would be found to be no other than these : first, that the mark has been applied by the plaintiffs properly (that is to say), that they have not copied any other person's mark, and that the mark does not involve any false representation ; secondly, that the article so marked is actually a vendible article in the market ; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description." It seems to me, according to that passage from Lord Westbury's judgment, that the trade-mark has been used in England if you find that the articles marked with it have been actually vendible articles in the market in England ; and that is the test which I proceed to apply to the various classes of goods which remain. Gallo Winery's contention is that knowledge or intention on the part of the registered proprietor is not determinative; that which matters is whether its goods, to which its trade mark had been applied, were on the market at all. The trade mark, it is contended, is used in Australia if the product to which the mark is applied is on the Australian market.
Case: Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Outcome: followed
When addressing the requirement for a " use in good faith " for the purposes of the former s 23(1)(b) in the Trade Marks Act 1955 (Cth), in Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 354, Gummow J observed: Section 23(1)(b) of the Act also uses the expression "use in good faith" as a criterion for expungement for non-use. There is, in relation to the comparable provisions in the Trade Marks Act 1938 (Eng), authority to the effect that in order to qualify as such use there must be a real or genuine use in a commercial sense, rather than colourable activity and "token" use designed to lead trade rivals to think that the registered proprietor was using its mark in a way which gave it the protection of the legislation: see Imperial Group Ltd v Philip Morris &amp; Co Ltd [1982] FSR 72 ; KODIAK Trade Mark [1990] FSR 49; D R Shanahan, Australian Law of Trade Marks and Passing Off (2nd ed, 1990), pp 272-274. 104 If an allegation is made that there has been a non-use of a trade mark under s 92(4)(b), the burden is on the opponent to rebut the allegation of non-use: s 100(1)(c). And that burden can be discharged if there has been " an obstacle to the use of the trade mark ": s 100(3)(c). 105 Section 100 provides in relevant part as follows: Burden on opponent to establish use of trade mark etc. (1) In any proceedings relating to an opposed application, it is for the opponent to rebut: ... (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services. (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if: ... (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period. See: McKeough J, Stewart A and Griffith P, Intellectual Property in Australia (3 rd ed, 2004) at [19.76].
Case: McCormick &amp; Co Inc v McCormick [2000] FCA 1335 , 51 IPR 102
Outcome: followed
In McCormick &amp; Co Inc v McCormick [2000] FCA 1335 , 51 IPR 102 , Kenny J also identified some of the factors to be taken into account when determining whether goods were of the same description. Her Honour there observed: [18] The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.
Case: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414
Outcome: distinguished
The reference to Moorgate is a reference to Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414. Gummow J referred to that decision as setting forth the " applicable principles " and set forth (at IPR 518 19) the following passages from the judgment of Deane J (at CLR 433 4): To establish prior use of the mark in Australia, Moorgate relies upon evidence that, during or in connexion with discussions between Loew's and Philip Morris about the introduction of the low tar and nicotine cigarette in Australia, packets of cigarettes and associated advertising material displaying the name "KENT GOLDEN LIGHTS" were handed personally, or in one instance sent by mail, to representatives of Philip Morris in Australia. That evidence indicates that there were at least three occasions on which such cigarette packets and advertising material were so delivered. At the times when those items were so delivered, there was no intention on the part of Loew's that it would itself trade in the goods in Australia. Nor, for that matter, had it been decided what name would be used if Philip Morris were, under licence from Loew's, to commence to manufacture and market the goods in Australia at some indefinite future time. ... In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark "KENT GOLDEN LIGHTS" for the purpose of indicating or so as to indicate a connexion in the course of trade between the new cigarettes and Loew's. 169 Moorgate Tobacco is not authority for the proposition that an intention alone to use a trade mark constitutes a use sufficient to defeat an application for removal for non-use. 170 Gallo Winery further contends that, in the event that there was a non-use of the trade mark, there was an " obstacle " to its use. This obstacle was the fact that Logan Wines Pty Ltd ( Logan Wines ) had a registered trade mark which it considered was remarkably similar to the BAREFOOT design which Gallo Winery had acquired from Barefoot Cellars . 171 The trade mark of Logan Wines had been registered in April 2004 and was as follows: The trade mark of Gallo Winery was of course the word BAREFOOT , but not the image of the bare foot as depicted in the mark of Logan Wines .
Case: Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370
Outcome: followed
Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense: Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 at 377 per Lockhart, Pincus and von Doussa JJ. (On appeal, see: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363).
Case: Nordstrom Inc v Starite Distributors Inc (2008) 75 IPR 418
Outcome: considered
Notwithstanding the commercial steps undertaken by Gallo Winery to first acquire Barefoot Cellars and thereafter develop the market for the sale of that wine, it is considered that there is little reason to exercise the discretion in the manner being urged by Gallo Winery . That company acquired Barefoot Cellars in January 2005 and thereafter implemented a staged plan to market the wine world-wide. In its commercial judgment, the development of the Australian market was deliberately left until the end of 2007. It could have used its mark during the non-use period. It could have secured suitable wine and commenced selling at an earlier point of time. It did not do so. The consequences of its commercial judgment, it is considered, must now fall upon it -- including an adverse exercise of the discretion conferred by s 101(3). Compare: Nordstrom Inc v Starite Distributors Inc (2008) 75 IPR 418 at 426 7.
Case: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363
Outcome: cited
Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense: Murray Goulburn Co-operative Co Ltd v NSW Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 at 377 per Lockhart, Pincus and von Doussa JJ. (On appeal, see: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60 ; (1990) 171 CLR 363). 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.
Case: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323
Outcome: followed
If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J. 209 Justice Woodward in Paragon Shoes was by no means attempting to set forth an exhaustive statement as to the content of the " public interest " when considering the discretion to permit a mark to remain registered. Centrally relevant to that discretion must remain a consideration of whether the public would be deceived or confused. Considerations such as those deposed to by Mr Simpson, and in particular the costs incurred in promoting a product, however, assume some limited relevance and assist the conclusion -- otherwise reached -- that the discretion should be exercised adversely to Gallo Winery . The objection to this portion of his evidence is thus rejected.