Lodestar Anstalt v Austin, Nichols & Co Inc

Lodestar Anstalt (Lodestar) and Austin, Nichols & Co Inc (Austin) were parties to proceedings before the Trade Marks Hearings Officer. The dispute concerned an application by Austin to remove Lodestar's registered trade mark from the register.

The primary legal issue before the Hearings Officer was whether Lodestar's trade mark had been used in good faith in Australia, or whether it had been registered without any bona fide intention to use it, or without any bona fide use, in respect of the goods for which it was registered. This involved considering the extent of use and the circumstances surrounding that use.

The Hearings Officer reasoned that while Austin's initial removal application was unsuccessful, Lodestar's subsequent concession regarding the use of its trade mark in relation to certain alcoholic beverages indicated a limited success for Austin's second application. Balancing the interests of both parties, particularly considering the initial obstruction experienced by Austin, the Hearings Officer determined that a proper exercise of discretion required the trade mark to be partially removed from the register. Specifically, the registration was to be removed in respect of "wine, fortified wine and wine-based spirits, namely brandy, grappa and cognac" within class 33.

The Hearings Officer refused Austin's first removal application but directed the partial removal of the trade mark as described above. Neither party was awarded costs.