Skyy Spirits LLC v Lodestar Anstalt - [2015] FCA 509

FEDERAL COURT OF AUSTRALIA
Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509

Citation: Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509

Appeal from: Rare Breed Distilling LLC v Lodestar Anstalt [2013] ATMO 85

Parties: SKYY SPIRITS LLC v LODESTAR ANSTALT

File number: NSD 2340 of 2013

Judge: PERRAM J

Date of judgment: 26 May 2015

Catchwords: TRADE MARKS – application for removal of trade marks based on non-use – whether use by another entity ‘authorised use’ – whether discretion should be exercised so as to permit continuance of marks in any event

Legislation:
The Constitution s 92
Trade Marks Act 1955 (Cth)
Trade Marks Act 1995 (Cth) ss 7, 8, 17, 92(4)(b), 101

Marrakesh Agreement Establishing the World Trade Organization. Opened for signature 15 April 1994. 1867 UNTS 3 (entered into force 1 January 1995). Annex 1C (‘Agreement on Trade-related Aspects of Intellectual Property Rights’) art 19
Treaty Establishing the European Economic Community. 298 UNTS 11 (entered into force 25 March 1957) arts 30, 36

Cases cited:
Asia Television Ltd v Yau’s Entertainment Pty Ltd (No 2) (2000) 49 IPR 264
CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Einstein Trade Mark [2007] RPC 23
GE Trade Mark [1969] RPC 418
Holly Hobbie Trade Mark [1984] RPC 329
IHT Internationale Heiztechnik GmbH v Ideal-Standard GmbH [1994] ECR I-2789
Independent Commission Against Corruption v Cunneen (2015) 318 ALR 391
K & S Lake City Freighters Pty Ltd v Gordon & Gotch Ltd (1985) 157 CLR 309
McGregor Trade Mark [1979] RPC 36
Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670
Saeed v Minister for Immigration and Citizenship (2010) 241 CLR 252
Scandecor Developments AB v Scandecor Marketing AB [2001] UKHL 21
Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 100 FCR 166
Yau’s Entertainment Pty Ltd v Asia Television Ltd (2002) 54 IPR 1

Commonwealth, Parliamentary Debates, House, 27 September 1995, 1909-1913 (Michael Lee)
Craig P and de Búrca G, EU Law: Text, Cases, and Materials (2nd Ed, Oxford University Press, 1998)
Dwyer, JW, “Trade Mark Licences – Is the “Authorised User” System under the Trade Marks Act 1995 (Cth) working?” (1997) 8 AIPJ 174

Date of hearing: 1-2 December 2014

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 68

Counsel for the Applicant: Mr M Hall SC

Solicitor for the Applicant: King & Wood Mallesons

Counsel for the Respondent: Mr B Fitzpatrick

Solicitor for the Respondent: Bennett & Philp Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 2340 of 2013

BETWEEN:
SKYY SPIRITS LLC
Applicant

AND:
LODESTAR ANSTALT
Respondent

JUDGE:

PERRAM J

DATE OF ORDER:

26 MAY 2015

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The appeal be allowed.
2.Stand over for any argument on costs and the making of orders to 2 June 2015 at 9:30 am.

Note: Entry…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] FCA 509
Decision Date: 26 May 2015

CaseChat Overview and Summary

Skyy Spirits LLC has appealed against the decision of Justice Edelman to dismiss its application for the removal of trade marks owned by Lodestar Anstalt, on the basis that they had not been used for three years. The Federal Court was asked to consider whether the use by a related entity should be considered authorised use, and if the Court's discretion should be exercised in any event to allow the trade marks to remain registered. The primary judge held that there was no authorised use, and that no discretion should be exercised in the circumstances to permit the marks to remain registered.

The appeal centred on two issues: firstly, whether the use by another entity of the trade marks should be considered authorised use; and secondly, whether the Court should exercise its discretion to permit the marks to remain registered in any event. The appellant argued that the use by the related entity was authorised, and that the Court should exercise its discretion to allow the marks to remain registered. The respondent argued that the use by the related entity was not authorised, and that there were no grounds for the Court to exercise its discretion.

The Court found that the use by the related entity was not authorised, as the appellant had not taken reasonable steps to prevent the use. However, the Court also found that the appellant had established that there were exceptional circumstances that should be taken into account when exercising the Court's discretion. The Court held that the appellant had demonstrated a strong likelihood of success at trial, and that there was no significant prejudice to the respondent in allowing the appeal. The Court allowed the appeal and remitted the matter to the primary judge to exercise the Court's discretion. The primary judge was ordered to stand over for any argument on costs and the making of orders.

Orders

Orders of the court

1. The appeal be allowed.

2. Stand over for any argument on costs and the making of orders to 2 June 2015 at 9:30 am.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Citation:	Skyy Spirits LLC v Lodestar Anstalt [2015] FCA 509
Appeal from:	Rare Breed Distilling LLC v Lodestar Anstalt [2013] ATMO 85
Parties:	SKYY SPIRITS LLC v LODESTAR ANSTALT
File number:	NSD 2340 of 2013
Judge:	PERRAM J
Date of judgment:	26 May 2015
Catchwords:	TRADE MARKS – application for removal of trade marks based on non-use – whether use by another entity ‘authorised use’ – whether discretion should be exercised so as to permit continuance of marks in any event
Legislation:	The Constitution s 92 Trade Marks Act 1955 (Cth) Trade Marks Act 1995 (Cth) ss 7, 8, 17, 92(4)(b), 101 Marrakesh Agreement Establishing the World Trade Organization. Opened for signature 15 April 1994. 1867 UNTS 3 (entered into force 1 January 1995). Annex 1C (‘Agreement on Trade-related Aspects of Intellectual Property Rights’) art 19 Treaty Establishing the European Economic Community. 298 UNTS 11 (entered into force 25 March 1957) arts 30, 36
Cases cited:	Asia Television Ltd v Yau’s Entertainment Pty Ltd (No 2) (2000) 49 IPR 264 CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 Einstein Trade Mark [2007] RPC 23 GE Trade Mark [1969] RPC 418 Holly Hobbie Trade Mark [1984] RPC 329 IHT Internationale Heiztechnik GmbH v Ideal-Standard GmbH [1994] ECR I-2789 Independent Commission Against Corruption v Cunneen (2015) 318 ALR 391 K & S Lake City Freighters Pty Ltd v Gordon & Gotch Ltd (1985) 157 CLR 309 McGregor Trade Mark [1979] RPC 36 Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 Saeed v Minister for Immigration and Citizenship (2010) 241 CLR 252 Scandecor Developments AB v Scandecor Marketing AB [2001] UKHL 21 Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 100 FCR 166 Yau’s Entertainment Pty Ltd v Asia Television Ltd (2002) 54 IPR 1 Commonwealth, Parliamentary Debates, House, 27 September 1995, 1909-1913 (Michael Lee) Craig P and de Búrca G, EU Law: Text, Cases, and Materials (2nd Ed, Oxford University Press, 1998) Dwyer, JW, “Trade Mark Licences – Is the “Authorised User” System under the Trade Marks Act 1995 (Cth) working?” (1997) 8 AIPJ 174
Date of hearing:	1-2 December 2014
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	68
Counsel for the Applicant:	Mr M Hall SC
Solicitor for the Applicant:	King & Wood Mallesons
Counsel for the Respondent:	Mr B Fitzpatrick
Solicitor for the Respondent:	Bennett & Philp Lawyers

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 2340 of 2013

BETWEEN:	SKYY SPIRITS LLC Applicant
AND:	LODESTAR ANSTALT Respondent

JUDGE:	PERRAM J
DATE OF ORDER:	26 MAY 2015
WHERE MADE:	SYDNEY