Use it or lose it? The first High Court case on the new Trade Marks Act

On 31 July 2009 the High Court granted special leave to appeal in E & J Gallo Winery v Lion Nathan Australia Pty Limited.  Mallesons is acting for Lion Nathan.  You can read our alert on the decision at first instance here and on the decision of the Full Federal Court here.

Gallo could be the most significant Australian trade marks decision in some time.  It will be the first High Court appeal to consider the new Trade Marks Act 1995 (Cth).  It will give the High Court an opportunity to provide guidance on certain key concepts in trade mark law including

·                      the nature of trade mark “use;

·                      the meaning of use “in good faith”;

·                      what constitutes control sufficient to make a person an authorised user of a trade mark; and

·                      how important consumer perception is in deciding whether goods are “of the same description” in infringement proceedings.

This appeal will be carefully watched by all international trade mark owners with registrations in Australia and will decisively define the nature of the rights conferred by trade mark registration.  The High Court’s judgment may well suggest to those owners just how much or little care they must take to protect their Australian trade mark registrations.  A judgment in Gallo’s favour would be a boon to those owners particularly who manufacture large quantities of trade marked product overseas.  It would mean that they could more easily protect their registration simply by relying on the small quantities of their product that will coincidentally end up in Australia, rather than making a concerted effort to launch and market their product here.




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