Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8

Procedural Posture

Trade Marks Appeal Concerning Removal of Trade Mark for Non Use / Appeal From Austin, Nichols & Co Inc V Lodestar Anstalt [2011] FCA 39

Legal Issues

1. 1 ["Whether the primary judge's discretion under s 101(3) of the Trade Marks Act 1995 (Cth) miscarried." 'Whether the primary judge applied the wrong test in deciding not to remove the trade mark from the Register.' "Whether the primary judge took irrelevant considerations into account, including the trade mark owner's private interests and intention to use the mark." 'Whether the primary judge failed to have sufficient regard to the position at the time the non-use application was made.' 'Whether there was evidence supporting a finding that the WG mark had acquired an Australian reputation likely to cause confusion if removed from the Register.' 'If the discretion miscarried, how the discretion should be exercised.']

Ratio Decidendi

The primary judge identified the correct statutory test but the discretion miscarried because the finding that the WG mark had acquired an Australian reputation and profile such that confusion might result if it were removed was not supported by the evidence. Lodestar's Australian sales and promotion were limited, its international profile was not shown to have penetrated the Australian market, and no source or reason for likely confusion was identified. Re-exercising the discretion, the Court was not satisfied that it was reasonable to retain the WG mark on the Register, given the long non-use, limited later use, slight reputation, and absence of evidence that removal would cause confusion.

Court Disposition

Appeal allowed.

Orders

• ['The appeal be allowed.' 'Trade mark registration no. 839740 be removed from the Register.' "The respondent pay the appellants' costs."]