E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 136

E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 136

It is not appropriate in this case to allow the applicant/cross-respondent to pursue a declaration as to the non-registrability of the respondent/cross-claimant’s pending trade mark applications. The pleadings relating to such declaratory relief are struck out or dismissed as they do not present one of the rare circumstances where the Court should intervene in the statutory registration process. There is no proper basis for the current proceeding to determine the validity of pending applications. Procedurally, the cross-claim for revocation (non-use) will not be heard separately and earlier.

Parties
Applicant/cross Respondent: E. & J. Gallo Winery; Respondent/cross Claimant: Lion Nathan Australia Pty Limited (ACN 008 596 370)
Jurisdiction
Australia
Judgment Date
14 February 2008
Procedural Posture
Trade Mark Infringement Proceeding With Cross Claim for Revocation / Interlocutory Orders Regarding Amendments, Summary Dismissal, and Procedural Directions
Outcome
Amended pleadings seeking a declaration of non-registrability dismissed/struck out; directions for further conduct of the proceeding given.
Legal Topics
Trade Marks, Infringement Proceedings, Revocation/cross Claim, Declaratory Relief, Summary Dismissal, Procedure
Intellectual Property Law Trade Marks Infringement Proceedings Revocation/cross Claim Declaratory Relief Summary Dismissal Procedure

Case Brief

Summary, issues, holding and outcome

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Parties

E. & J. Gallo Winery

Applicant/cross Respondent

Lion Nathan Australia Pty Limited (ACN 008 596 370)

Respondent/cross Claimant

Procedural Posture

Trade Mark Infringement Proceeding With Cross Claim for Revocation / Interlocutory Orders Regarding Amendments, Summary Dismissal, and Procedural Directions

Legal Issues

  1. 1 Whether the applicant/cross-respondent can seek a declaration of non-registrability of the respondent's trade mark applications in the present proceeding
  2. 2 Whether the amended pleadings should be struck out or dismissed under s 31A of the Federal Court of Australia Act 1976 (Cth)
  3. 3 Whether the cross-claim should be determined before the principal infringement claim

Ratio Decidendi

It is not appropriate in this case to allow the applicant/cross-respondent to pursue a declaration as to the non-registrability of the respondent/cross-claimant’s pending trade mark applications. The pleadings relating to such declaratory relief are struck out or dismissed as they do not present one of the rare circumstances where the Court should intervene in the statutory registration process. There is no proper basis for the current proceeding to determine the validity of pending applications. Procedurally, the cross-claim for revocation (non-use) will not be heard separately and earlier.

Court Disposition

Amended pleadings seeking a declaration of non-registrability dismissed/struck out; directions for further conduct of the proceeding given.

Orders

  • Paragraph 4 of the Amended Application dismissed.
  • Paragraph 20 of the Amended Statement of Claim struck out.