Exercise of discretion not to remove a trade mark for non-use

Exercise of discretion not to remove a trade mark for non-use - Griffith Hack

3 June 2011

In the recent case of Austin Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39, Austin Nichols filed an application to remove the Wild Geese trade mark owned by Lodestar for wines. The application claimed that the mark had not been used in Australia in the preceding 3 years.

The matter was initially heard by the Trade Marks Office, where it was ordered that, in view of the non-use of the mark, the registration should be removed for the relevant goods.

Austin Nichols appealed against the decision to the Federal Court, arguing that, despite the non-use, the mark should not be removed as there were obstacles preventing its use, or on the exercise of the court’s discretion.

The court was not convinced that there were any obstacles which excused Lodestar’s non-use. For example, the court did not accept that Lodestar was prevented from using the mark in Australia because of being involved in trade mark litigation in other countries, difficulties in finalising negotiations with wine producers, or because it had been denied an exhibition space.

However, the court exercised its discretion to not remove the mark on the basis that:
  • Lodestar had used the Wild Geese mark internationally;
  • it had used the mark in Australia recently;
  • it had acquired a reputation in the mark in Australia; and
  • use of the same mark by any other person would now cause confusion in the marketplace.

The decision is currently under appeal.

Despite the trade mark owner’s success in this case, trade mark owners should not be complacent, as the discretion to not remove a trade mark (where non-use is established) is only exercised in exceptional circumstances. Trade mark owners should ensure that their marks are used in Australia or they will be vulnerable to cancellation for non-use.

For further information, please contact:
Anne Makrigiorgos, Principal
Email Anne