Is Your Trade Mark Protected?

A recent ruling by the Federal Court of Australia in the Lodestar Anstalt v Campari America (WILD GEESE) case updated the position of actual control over the use of a trade mark by a licensee.

- Eugene Honey & Reinhardt Biermann

THE RULING IN the Lodestar Anstalt v Campari America case is particularly interesting, bearing in mind that the Federal Court, in a 2002 decision, concluded that the theoretical possibility of contractual control was sufficient to establish authorised use and overcome an application for the removal of a mark, where it was alleged that the mark had not been used.

The Federal Court, in this instance, decided that a license agreement is not enough to prove authorised use or control of a trade mark. In the WILD GEESE-case, the Respondent owned two registered trade marks in Australia, namely WILD GEESE and WILDE GEESE WINES. Wild Geese Wines (WGW) was permitted by the Respondent to use the marks in relation to wine. The license agreement provided that the wine products in relation to which the marks would be applied, would be of such quality so as to obtain approval by the Wine and Brandy Corporation. If this requirement were fulfilled, the quality control provision of the agreement was met (together with reviewing wine samples from time to time).

The Appellant, Lodestar, the producer of WILD GEESE whisky, applied for the removal of the Respondent’s marks, on the basis of nonuse, in that the proprietor of the trade mark had not used the mark for a lengthy period.