E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27

The BAREFOOT mark had not been used in Australia by Houlihan or Gallo during the non-use period because the Australian sales resulted from BAW importing wine from German stock without the owner or authorised user knowingly or deliberately projecting the goods into the Australian market. The removal order could not operate retrospectively. However, BAREFOOT RADLER was deceptively similar to BAREFOOT, radler beer and wine were goods of the same description, and Lion Nathan's actual use was likely to deceive or cause confusion; accordingly Lion Nathan infringed Gallo's registered trade mark while it remained registered.

Jurisdiction
Australia
Judgment Date
24 March 2009
Procedural Posture
Trade Mark Appeal and Cross Appeal / Appeal From a Single Judge of the Federal Court of Australia
Outcome
Gallo failed on the non-use issue but succeeded on infringement issues; Lion Nathan failed on the cross appeal concerning retrospective removal. The Court directed the parties to bring in short minutes of orders to give effect to the reasons.
Legal Topics
['removal From Register for Non Use' 'use of Trade Mark in Australia' 'authorised Use' 'trade Mark Infringement' 'deceptive Similarity' 'goods of the Same Description' 'prospective Operation of Removal Order']
['trade Marks' 'intellectual Property'] ['removal From Register for Non Use' 'use of Trade Mark in Australia' 'authorised Use' 'trade Mark Infringement' 'deceptive Similarity' 'goods of the Same Description' 'prospective Operation of Removal Order']

Case Brief

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Procedural Posture

Trade Mark Appeal and Cross Appeal / Appeal From a Single Judge of the Federal Court of Australia

Legal Issues

  1. 1 ['Whether the BAREFOOT trade mark had been used in Australia by the registered owner during the non-use period for the purposes of s 92(4)(b)(i) of the Trade Marks Act 1995 (Cth).' 'Whether an order removing the trade mark from the Register could or should operate from 8 May 2007 rather than from the date of order.' "Whether Lion Nathan's BAREFOOT RADLER mark was deceptively similar to Gallo's registered BAREFOOT mark." "Whether Lion Nathan's radler beer was goods of the same description as wine for the purposes of s 120(2)(a) of the Trade Marks Act 1995 (Cth)." 'Whether Lion Nathan established that its actual use of BAREFOOT RADLER was not likely to deceive or cause confusion.']

Ratio Decidendi

The BAREFOOT mark had not been used in Australia by Houlihan or Gallo during the non-use period because the Australian sales resulted from BAW importing wine from German stock without the owner or authorised user knowingly or deliberately projecting the goods into the Australian market. The removal order could not operate retrospectively. However, BAREFOOT RADLER was deceptively similar to BAREFOOT, radler beer and wine were goods of the same description, and Lion Nathan's actual use was likely to deceive or cause confusion; accordingly Lion Nathan infringed Gallo's registered trade mark while it remained registered.

Court Disposition

Gallo failed on the non-use issue but succeeded on infringement issues; Lion Nathan failed on the cross appeal concerning retrospective removal. The Court directed the parties to bring in short minutes of orders to give effect to the reasons.

Orders

  • ['The parties to bring in short minutes of orders to give effect to these reasons within 10 days.']