Austin, Nichols & Co Inc and Rare Breed Distilling LLC, the former and current owners of Wild Turkey bourbon, have successfully had the trade mark “WILD GEESE” removed from the Register. In a decision handed down on Tuesday, with Mallesons acting for the successful appellants, the Full Federal Court ordered the mark’s removal. The Court found that the primary judge miscarried in exercising the discretion under section 101(3) of the Trade Marks Act 1995 (Cwlth) to allow the mark to remain on the Register.
The respondent, Lodestar Anstalt, registered the mark “WILD GEESE” in 2000 for beer, non-alcoholic and alcoholic drinks. The company only started to sell “Wild Geese” Irish whiskey in Australia in 2008. The first appellant, Austin, had applied to have the mark removed some three years before, in 2005. The Registrar ordered partial removal of the WILD GEESE mark in respect of “wine, fortified wine and wine-based spirits” but refused to remove the mark entirely.
Austin appealed the Registrar’s decision to the Federal Court. The primary judge, Cowdroy J, held that Lodestar’s mark should stay on the Register because it had acquired a reputation and profile overseas and in Australia such that confusion might result if it were removed. Austin and Rare Breed (which had purchased the Wild Turkey business) then appealed to the Full Court challenging Cowdroy J’s exercise of the discretion under s 101(3) which allows the Court to not remove a mark, even if grounds of opposition have been established, if “satisfied that it is reasonable to do so”.
The Full Federal Court found that Cowdroy J’s discretion had miscarried as his Honour made a finding of fact unsupported by the evidence. While there was evidence of some use of the mark, it was confined to a
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two-year period from 2008 to 2010 (eight years after the mark was registered and three years after the non-use applications had been filed) and there were few sales. The Full Court held that this was insufficient evidence of reputation in Australia, that there was no evidence Australian consumers knew of the mark’s international profile and that no reason for possible confusion had been identified. Although noting that the discretion in s 101(3) is broad and exceptional circumstances need not be shown before it is exercised, the Full Court was not satisfied it was reasonable to do so in Lodestar’s favour.