Skyy Spirits LLC v Lodestar Anstalt

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.