SPI Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2)

SPI Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2) involved a dispute over the validity of trade mark registrations held by Spirits in Australia. The case was brought by FKP and FGUP, two Russian State-owned enterprises, who claimed that they were the true owners of the trade marks in question and sought either the cancellation of Spirits' Australian trade mark registrations or rectification of the Trade Marks Register. The dispute arose from events surrounding the dissolution of the Soviet Union in 1991, particularly concerning the transformation of a State-owned corporation, Sojuzplodoimport, into a private corporation, VAO-SPI, and the succession of assets, including trade marks, from Sojuzplodoimport to VAO-SPI.

The primary legal issue before the court was whether FKP and FGUP were the appropriate entities to bring the claim or if the Russian Federation was the true or real applicant. The court also had to consider the scope and appropriateness of the discovery orders sought by Spirits, which would require every ministry, agency, and instrumentality of the Russian Federation to undertake searches for documents related to the trade marks.

The court found that FKP and FGUP were not the true owners of the trade marks, as the Russian Federation held the rights to the trade marks. The court emphasised that the Russian Federation had registered ownership of the trade marks in Russia and had rights concerning the trade marks outside Russia. The court also ruled that the discovery orders sought by Spirits were overly broad, lacked evidentiary support, and were inappropriate given the current stage of the proceedings. The court stood over the motion to a later date to discuss the categories of discovery that might be given by the Russian Federation and how the orders could be formulated accordingly.