E. & J. Gallo Winery v Lion Nathan Pty Limited (No 2) [2008] FCA 1005

E. & J. Gallo Winery v Lion Nathan Pty Limited (No 2) [2008] FCA 1005

Section 101(2) of the Trade Marks Act 1995 (Cth) does not empower the Court to order removal of a trade mark from the Register with retrospective effect from a date prior to judgment. The order removing Australian Trade Mark No 787765 therefore operates from the date of decision, not from 8 May 2007.

Jurisdiction
Australia
Judgment Date
27 June 2008
Procedural Posture
Trade Marks Proceeding Concerning Removal of a Trade Mark for Non Use / Final Orders After Reasons for Decision, With Dispute About Whether Removal Should Operate From the Date of Judgment or Retrospectively From the End of the Non Use Period
Outcome
The Amended Application was dismissed and the Registrar of Trade Marks was ordered to remove Australian Trade Mark No 787765 from the Register of Trade Marks, with the removal order stayed for 21 days or, if an appeal is filed within that time, until determination of the appeal on the stated undertaking.
Legal Topics
['non Use of Trade Mark' 'removal From Register of Trade Marks' 'retrospective Effect of Removal Order' 'judicial Discretion Under S 101(2) of the Trade Marks Act 1995 (cth)']
['trade Marks' 'intellectual Property'] ['non Use of Trade Mark' 'removal From Register of Trade Marks' 'retrospective Effect of Removal Order' 'judicial Discretion Under S 101(2) of the Trade Marks Act 1995 (cth)']

Case Brief

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Procedural Posture

Trade Marks Proceeding Concerning Removal of a Trade Mark for Non Use / Final Orders After Reasons for Decision, With Dispute About Whether Removal Should Operate From the Date of Judgment or Retrospectively From the End of the Non Use Period

Legal Issues

  1. 1 ['Whether an order removing Australian Trade Mark No 787765 from the Register of Trade Marks should take effect from the date of judgment or retrospectively from 8 May 2007, the end of the three-year non-use period.' 'Whether s 101(2) of the Trade Marks Act 1995 (Cth) empowers the Court to order removal of a trade mark from a date prior to judgment.']

Ratio Decidendi

Section 101(2) of the Trade Marks Act 1995 (Cth) does not empower the Court to order removal of a trade mark from the Register with retrospective effect from a date prior to judgment. The order removing Australian Trade Mark No 787765 therefore operates from the date of decision, not from 8 May 2007.

Court Disposition

The Amended Application was dismissed and the Registrar of Trade Marks was ordered to remove Australian Trade Mark No 787765 from the Register of Trade Marks, with the removal order stayed for 21 days or, if an appeal is filed within that time, until determination of the appeal on the stated undertaking.

Orders

  • ['The Amended Application be dismissed.' "The Applicant to pay the Respondent's costs of the Amended Application." 'The Registrar of Trade Marks remove the Australian Trade Mark No 787765 from the Register of Trade Marks.' "The operation of Order 3 be stayed for: (a) 21 days from the date hereof; or (b) in the event...