Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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In E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 the Full Federal Court has affirmed a first-instance decision to remove E & J Gallo’s ‘BAREFOOT’ trade mark from the Register for non use, thus confirming that Lion Nathan has the right to market its 'BAREFOOT RANDLER' beer product.  Whilst confirming the first instance decision to remove the 'BAREFOOT' trade mark, the Appeal Court overturned the Trial Judge's finding that beer and wine are not ‘goods of the same description’ and held that Lion Nathan was infringing the ‘BAREFOOT’ trade mark during the 6 month period which it remained on the Register and Lion Nathan had sold its ‘BAREFOOT RADLER’ beer. 

So although ultimately losing their trade mark, the Appeal may have proven worthwhile for E & J Gallo.  This will be clearer when the question of remedies for the period Lion Nathan was infringing Gallo's trade mark is resolved.  On the other hand, the finding that wine and beer are 'goods of the same description' has opened the door for Lion Nathan to bring its own infringement action.

Background

E & J Gallo Winery (Gallo) is a large wine-producing company incorporated in the United States whom in 2005 acquired the share capital in a company trading under the name ‘Barefoot Cellars’. As part of that deal they acquired the Australian ‘BAREFOOT’ trade mark for wine in Class 33. Although ‘BAREFOOT’ was very successful in the United States, only a very limited quantity of the wine had been sold by Beach Avenue Wholesalers Pty Ltd (BAW) in the Australian market during the period from 7 May 2004 to 8 May 2007 (the non-use period). Importantly, there was no evidence that Gallo, or its predecessor, knew about these sales.

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In National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd (WIPO Case No. DAU2008-0021) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 6 March, 2009, the Complaint was submitted by nine complainants against one respondent. The complainants (whom were commonly represented by one law firm) each operate businesses that deal in ‘smartnumbers’: or, in other words, freephone or local rate phone numbers. These are numbers auctioned by the Australian Communications and Media Authority that are numerically alliterative (e.g. 1800 222 222) or those that translate to a "phoneword" when the suffix digits are selectively mapped to the letters on an alphanumeric keypad (e.g. 13 2287, which translates to 13 CATS).

The Respondent, it was alleged, operates a business that had registered sixty-six disputed domain names comprising the Complainants’ phonewords with the addition of the suffix ".com.au".  

The Complaint raised a novel procedural issue for which the auDRP contains no express provision: whether a single complaint may be filed against a single respondent by multiple complainants or, in other words "consolidation of multiple complainants" as distinguished from similar issues like consolidation of multiple domain names, consolidation of multiple respondents and consolidation of multiple complainants and respondents.

Panelist, Professor Andrew Christie enumerated ten principles to help guide determination of this issue, as follows:

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Pioneer KK, the makers of quite well known audio, audio-visual and home entertainment products have had a big win in an application against them for non-use of their trade mark on a range of  goods. In Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135 (23 February, 2009), the battle lines were drawn between the applicant for removal, Pioneer Computers (‘the new guys’), which used the sign Pioneer on its computer products and Pioneer KK (‘the old guys’), the company that sells the home entertainment products under the Pioneer brand that most of us are probably familiar with.

The problem here was that the old guy’s original registration in Class 9 for Pioneer was quite broad. It included ‘computers, computer peripheral devices, computer keyboards; computer memories; printer for use with computers… computer software’ as well as the home entertainment equipment for which the old guys are known. The new guys started up in late 1996 and had been selling computers and computer products since then with the knowledge of the old guys but the old guys, it seems, have had enough and wish to enforce their strict statutory rights. While they retain registration in respect of computers, they can require the new guys to cease using selling Pioneer computers by relying on s120(1) of the Trade Marks Act 1995 (Cth). Effectively, the provision is a strict liability provision and the old guys would not have to prove confusion and the new guys would have no defence even if there was proof of a lack of confusion. The other infringement provisions in s120(2) and (3) are more conditional and offer opportunities for consideration of the likelihood of confusion. They apply where the defendant’s use is on goods for which the trade mark owner does not have registration.