HOW A BRISBANE FIRM HELPED SET A HIGH COURT TRADEMARK PRECEDENT
Written on the 15 July 2016
TRADEMARK agreements will be reviewed across Australia following a landmark intellectual property case in theFederal Court of Appeal, where Brisbane law firm Bennett & Philp had a precedent-setting win on behalf of an international alcohol company.
Campari America, owner of Wild Turkey Bourbon, has been in a trade mark war with Lodestar Anstalt, owner of Wild Geese Irish Whiskey, for 15 years. The battle came to Australia through a trade mark case where Anstalt brought into question Campari's control over its Wild Geese Wines trademark.
Acting for Lodestar Anstalt, Bennett & Philp director Ken Philp (pictured) successfully argued that the existence of a quality control clause in a trademark licence was not sufficient evidence of its 'use' under Australia's trademarks legislation and five Federal Court of Appeal judges - CJ Allsop, Greenwood, Besanko, Nicholas and JJ Katzmann - unanimously agreed.
"Under our legislation if you don't use a trade mark or do not properly control its use by a licensee for a period of three years and one month before an application to remove it is filed, then you are vulnerable to losing it," Mr Philp said.
This court appeal was the first major case since the 1960s to argue the definition of "use" and "control" as factors in a trade mark's non-use.
Senior Associate Nicole Murdoch, who assisted Philp on the case, told Brisbane Legal the ruling would have ramifications for any business holding a trademark in Australia.
'What the case set down was that holding a clause of control was not enough, the holder needs to actively control the trademark,' she said. 'What we are concerned about is that there would be a lot of traders out there in this situation, who could have their trademarks removed.'
Murdoch said the ruling did not make an inclusive definition of the term control and therefore any future court decisions would depend on the circumstances, as trademark agreements are generally individually tailored for clients and exist for multiple products, from goods to services.
Campari has until 26 July to seek leave to appeal if it wants to attempt to take the case to the High Court.
You can read the high court decision here.