Colorado case reaches end of the trail
In Colorado Group Limited & Anor v Strandbags Group Pty Limited [2008] HCATrans 200 (23 May 2008), the Colorado Group failed to obtain special leave from the High Court to appeal the Full Court of the Federal Court decision reported in the Australian Trade Marks Law Blog article: Colorado Group fails on appeal - Full court messes with the Fink.
As a result, neither party now has exclusive use of the mark "Colorado" in relation to handbags, wallets and purses, and the register will be rectified.
Per Crennan J:
"The applicants seek special leave to appeal in a claim for trademark infringement. The principal defence of the respondent is a counter-claim for rectification of the register in respect of the applicants’ registration of the trademark "Colorado", which is a geographical name. The grounds upon which rectification is sought which are relevant to the present application are that the applicant is not the proprietor of its registered trademark. Alternatively, if it is the proprietor, the mark is not capable of distinguishing certain of the applicants’ goods.
The basis for those claims is that for some years before the applicants’ application for registration both the applicant and the respondent concurrently used the mark "Colorado" on certain goods. An issue of substance and general importance was raised in the application concerning the proper construction of section 41(5) of the Trade Marks Act 1955 (Cth) as amended, but resolving that issue would not be determinative of the present dispute.
Whilst not to be taken to be agreeing with everything said by the Full Court (Kenny, Gyles and Allsop JJ) about section 41(5), we are nevertheless not persuaded that this is a suitable case for the grant of special leave. The conclusions in the case turn to a significant extent on matters of fact unaffected by issues of construction of section 41(5).
The application does not enjoy sufficient prospects of success to warrant a grant of special leave. Special leave is refused with costs."
Best throw-away line goes to Kirby J., with this gem:
"I realise that, and I come to this relatively freshly and therefore I do not really come with a lot of baggage, if I can use that word, but . . ."
