E & J Gallo Winery v Lion Nathan Australia Pty Ltd

The High Court of Australia heard an appeal from a decision of the Full Court of the Federal Court of Australia concerning trade mark infringement. The appellant, E & J Gallo Winery, was the registered owner of the trade mark "BAREFOOT" for wines. The respondent, Lion Nathan Australia Pty Ltd, had been selling beer under the name "BAREFOOT RADLER" in Australia. Gallo alleged that this constituted infringement of its registered trade mark. Lion Nathan sought to have Gallo's trade mark removed from the Register of Trade Marks on the grounds of non-use.

The legal issues before the High Court included whether the use of the registered trade mark "BAREFOOT" in conjunction with a device constituted use of the registered trade mark itself, and whether such use was sufficient to defeat a claim for removal from the Register based on non-use. The Court also considered whether the use of the trade mark by a foreign distributor, with potential re-sale in Australia, constituted use by the registered owner. Furthermore, the Court addressed the question of whether the relevant date for assessing non-use was the conclusion of the statutory period or the conclusion of the proceedings.

The High Court reasoned that the addition of a device to the word mark "BAREFOOT" did not substantially affect the identity of the registered trade mark, and therefore, use of the mark with the device constituted use of the registered trade mark in accordance with section 7(1) of the *Trade Marks Act 1995* (Cth). The Court found that the registered trade mark had been used in the relevant statutory period and that this use was in good faith, thereby succeeding under section 100(3)(a) of the Act. Consequently, Lion Nathan's application for removal of the trade mark from the Register was dismissed. The Court also refused Lion Nathan's application for special leave to cross-appeal on grounds relating to deceptive similarity and goods of the same description, finding no general question of public importance.

The High Court allowed the appeal, set aside the orders of the Full Court, and ordered that Lion Nathan's amended cross-claim be dismissed. The matter was remitted to the Federal Court for assessment of damages or an account of profits. The Court declared that Lion Nathan had infringed Gallo's registered trade mark and granted an injunction restraining Lion Nathan from selling beer under the "BAREFOOT RADLER" name. Lion Nathan was ordered to pay Gallo's costs.