Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91

Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91

Trojan's use of the trade marks on re-packaged goods, which had previously been marked by or under the control of STG Eersel, fell within the protection of s 123(1) of the Trade Marks Act 1995 (Cth) and was not trade mark infringement. There was no evidence establishing misrepresentation or misleading conduct in relation to either passing off or consumer law claims. The appeal was therefore dismissed.

Jurisdiction
Australia
Judgment Date
24 June 2016
Procedural Posture
Appeal / Final Judgment
Outcome
appeal dismissed
Legal Topics
['trade Marks' 'passing Off' 'misleading or Deceptive Conduct' 'plain Packaging' 'parallel Importation']
['intellectual Property' 'consumer Law'] ['trade Marks' 'passing Off' 'misleading or Deceptive Conduct' 'plain Packaging' 'parallel Importation']

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Procedural Posture

Appeal / Final Judgment

Legal Issues

  1. 1 ['Did Trojan Trading Company Pty Ltd infringe registered trade marks under s 120 of the Trade Marks Act 1995 (Cth)?' 'Does s 123(1) of the Trade Marks Act 1995 (Cth) provide a defence in circumstances where marks are removed and reapplied during re-packaging?' 'Did Trojan engage in passing off by selling and offering cigars for sale in re-packaged form?' 'Did Trojan make false or misleading representations under s 18(1) and s 29(1) of the Australian Consumer Law in relation to tobacco products supplied in plain packaging?']

Ratio Decidendi

Trojan's use of the trade marks on re-packaged goods, which had previously been marked by or under the control of STG Eersel, fell within the protection of s 123(1) of the Trade Marks Act 1995 (Cth) and was not trade mark infringement. There was no evidence establishing misrepresentation or misleading conduct in relation to either passing off or consumer law claims. The appeal was therefore dismissed.

Court Disposition

appeal dismissed

Orders

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