Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509

Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509

The use of the WILD GEESE marks by Wild Geese Wines during the relevant period was, under prevailing Full Court authority (Yau’s case), an authorised use within s 8(1) of the Trade Marks Act 1995 (Cth) because the registered proprietor retained a theoretical contractual ability to control the use of the marks, notwithstanding the absence of actual control; thus, the ground for non-use removal was not established.

Parties
Applicant: Skyy Spirits LLC; Respondent: Lodestar Anstalt
Jurisdiction
Australia
Judgment Date
26 May 2015
Procedural Posture
Appeal / Judgment
Outcome
Appeal allowed
Legal Topics
Trade Marks, Non Use Removal, Authorised Use, Licensing, Quality Control
Intellectual Property Law Trade Marks Non Use Removal Authorised Use Licensing Quality Control

Case Brief

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Parties

Skyy Spirits LLC

Applicant

Lodestar Anstalt

Respondent

Procedural Posture

Appeal / Judgment

Legal Issues

  1. 1 Whether use of trade marks by another entity was 'authorised use' under s 8 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the Wild Turkey interests exercised sufficient control over use to constitute authorised use
  3. 3 Whether discretion should be exercised to allow the trade marks to remain on the register despite established non-use

Ratio Decidendi

The use of the WILD GEESE marks by Wild Geese Wines during the relevant period was, under prevailing Full Court authority (Yau’s case), an authorised use within s 8(1) of the Trade Marks Act 1995 (Cth) because the registered proprietor retained a theoretical contractual ability to control the use of the marks, notwithstanding the absence of actual control; thus, the ground for non-use removal was not established.

Court Disposition

Appeal allowed

Orders

  • The appeal be allowed.
  • Stand over for argument on costs and the making of orders to 2 June 2015 at 9:30 am.