Calico Global Pty Ltd v Calico LLC [2018] FCA 2096

Calico Global Pty Ltd v Calico LLC [2018] FCA 2096

The court found there was no use by the registered owner, assignee, or an authorised user of the 184 mark as a trade mark for services in class 44 within the required period. Apparent uses amounted only to fitness, exercise, and nutrition services insufficient to satisfy trade mark use in class 44. Uses after Calico LLC's launch were not genuine or in good faith, and Global's conduct was designed to cause confusion and pressure Calico LLC. Discretion under s 101(3) should not be exercised in favour of Global, and the appeal must be dismissed.

Jurisdiction
Australia
Judgment Date
21 December 2018
Procedural Posture
Appeal / Judgment
Outcome
Appeal dismissed
Legal Topics
['trade Marks' 'non Use Removal' 'authorised Use' 'assignment and Licensing of Trade Marks' 'discretion Under Trade Marks Act 1995 (cth) S 101(3)']
['intellectual Property'] ['trade Marks' 'non Use Removal' 'authorised Use' 'assignment and Licensing of Trade Marks' 'discretion Under Trade Marks Act 1995 (cth) S 101(3)']

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Procedural Posture

Appeal / Judgment

Legal Issues

  1. 1 ['Whether the registered owner or an authorised user used the 184 mark in good faith in class 44 during the relevant period under Trade Marks Act 1995 (Cth)' 'Whether any such use was as a trade mark for services in class 44' 'Whether the court should exercise its discretion under s 101(3) to allow the registration to remain notwithstanding established grounds for removal']

Ratio Decidendi

The court found there was no use by the registered owner, assignee, or an authorised user of the 184 mark as a trade mark for services in class 44 within the required period. Apparent uses amounted only to fitness, exercise, and nutrition services insufficient to satisfy trade mark use in class 44. Uses after Calico LLC's launch were not genuine or in good faith, and Global's conduct was designed to cause confusion and pressure Calico LLC. Discretion under s 101(3) should not be exercised in favour of Global, and the appeal must be dismissed.

Court Disposition

Appeal dismissed

Orders

  • ['The appeal be dismissed.' "The appellant pay the respondent's costs."]