Lodestar Anstalt v Campari America LLC

The appeal concerns a dispute between the Wild Turkey interests, who own the Wild Turkey trade mark, and the Irish Whiskey interests, who own the Wild Geese trade mark. The Irish Whiskey interests applied for the removal of the Wild Geese trade mark from the Register, and the Wild Turkey interests opposed the application. The primary judge dismissed the application for removal, and the Irish Whiskey interests appealed to the Full Court of the Federal Court of Australia. The appeal was allowed, and the Wild Turkey interests were ordered to pay the Irish Whiskey interests’ costs.

The central issue before the court was whether the use of the Wild Geese trade mark by the licensee, WGW, during the period of non-use by the registered owner, constituted authorised use, as required by the Trade Marks Act 1995 (Cth) s 8. The court had to determine whether the registered owner exercised control over the use of the trade mark by the licensee and whether the trade mark indicated a connection in the course of trade with the registered owner. The court also had to consider whether the registered owner's contractual power was sufficient to establish control over the use of the trade mark.

The court held that the Wild Turkey interests did not prove that the registered owner exercised control over the use of the Wild Geese trade mark by WGW during the period of non-use. The court found that the registered owner did not exercise quality control over the products sold by WGW, and the use of the trade mark by WGW was not authorised use for the purpose of the Act. The court also held that the trade mark did not indicate a connection in the course of trade with the registered owner during the period of non-use. The court rejected the argument that the registered owner's contractual power was sufficient to establish control over the use of the trade mark.

The court allowed the appeal and set aside the orders made by the primary judge. The court dismissed the appeal to the Court from the decision of the delegate of the Registrar of Trade Marks with costs. The Wild Turkey interests were ordered to pay the Irish Whiskey interests’ costs of the appeal.