Calico Global Pty Ltd v Calico LLC

The parties involved in this case were Calico Global Pty Ltd (the appellant) and Calico LLC (the respondent). The dispute centred on the removal of a trade mark registration for one class of services under section 101(1) of the Trade Marks Act 1995 (Cth). The core issue was whether the non-use or use in good faith of the trade mark occurred during the three years preceding the application to remove the registration. This case involved an unregistered assignment by the registered owner of the trade mark to Calico Pty Ltd, which subsequently licensed the trade mark to Calico LLC. The court had to determine whether any uses of the trade mark after the assignment and licence were by the registered owner or an authorised user. Additionally, the court examined whether the use of the trade mark was as a badge of origin of the services and whether the use was of a character appropriate to the class of registration. The court also considered the discretion under section 101(3) of the Trade Marks Act to allow the registration to remain where grounds of opposition were established, especially in cases where the registered owner engaged in conduct not in good faith to interfere with the opponent's use, creating a real risk of future repetition of confusing conduct. The case involved the interpretation and application of these statutory provisions in the context of the specific facts and circumstances presented.

The legal issues before the court included the interpretation of "use in good faith" under sections 92(4)(b)(ii) and 100(1)(c) and (3) of the Trade Marks Act 1995. The court needed to determine whether the use of the trade mark by Calico Global Pty Ltd and Calico LLC met the criteria for "good faith" use. This required an examination of the nature and purpose of the use, the quantum of sales, and whether the use was genuine or fictitious. The court also had to consider the implications of the unregistered assignment and licence on the authorisation of the use of the trade mark. Furthermore, the court had to evaluate whether the discretion under section 101(3) of the Trade Marks Act should be exercised in favour of Calico Global Pty Ltd, considering factors such as the potential deception of the public, the unimpeached title to the trade mark, and the continuous exercise in good faith by the person entitled to it.

The court concluded that Calico Global Pty Ltd had not demonstrated that the 184 mark was used in good faith during the three-year period prior to the application to remove the registration. The court found that the legal effect of the assignment and licence, together with Kevin Owens' role as the directing mind of both Calico Pty Ltd and Global, were insufficient to establish that Calico Pty Ltd had been an authorised user during the relevant period. Additionally, the court determined that Global had used the 184 mark with the permission of Calico Pty Ltd, not the registered owner, Kevin Owens, and that, accordingly, Global's use could not qualify as an authorised use. The court also held that it was not reasonable to exercise its discretion under section 101(3) in Global's favour, as the nature and operation of Global's business under the 184 mark were more appropriately covered by its registration under class 41. The court's reasoning was based on the lack of evidence supporting the genuine use of the trade mark by the appellant and the absence of a good title and good faith use by the appellant or its assignee.

The final orders of the court were that the appeal be dismissed and that the appellant pay the respondent's costs. This outcome reflects the court's determination that the appellant had not met the necessary criteria for the use of the trade mark in good faith and that the exercise of the discretion under section 101(3) of the Trade Marks Act was not warranted in the appellant's favour. The dismissal of the appeal and the imposition of costs on the appellant underscore the court's view that the appellant's arguments and evidence were insufficient to support the maintenance of the trade mark registration in the contested class of services.