High Court says no to a Stoli
In the latest round in proceedings concerning the legal successor to the ownership of the trade marks STOLICHNAYA and a number of device and label marks for other words including STOLI, STOLICHNAYA, OHRANJ and MOSKOVSKAYA, on 5 October 2007, the High Court of Australia refused to grant special leave to appeal (from a decision of the Full Court of the Federal Court of Australia) to VAO Sojuzplodoimport (VAO) to seek to obtain discovery of documents from the Russian Federation.
The High Court is the court of final appeal in Australia. For more on special leave applications, click here.
The applicant for special leave, VAO, argued that the Russian Federation -- which is not a party to the proceeding and is (duh) a foreign state -- had not sued in its own name but, rather, had appointed a principal agent to recover the rights to the Australian marks. It argued: “the Russian Federation is the real plaintiff” and that “the notion of comity and immunity which would not apply were the Russian state the real plaintiff in its own name”.
The High Court held “Given the state of the preparation of this case, including the outstanding orders for discovery . . . it will be premature for this Court now to enter upon a consideration of the questions of general principle said to arise.”
The case is examining events that took place in 1992 upon the dissolution of the former Soviet Union and around that time the creation of the Russian Federation. Two Russian companies, the Federal State Enterprise Sojuzplodoimport (FKP) (created in April 2002) and the Federal Treasury Enterprise Sojuzplodoimport (FGUP) (created in April 2001) have alleged that in 1992, VAO falsely asserted it was the legal successor of the State entity that owned the marks at the time. The trade marks have since been assigned to a related company, Spirits International NV.The proceedings for the recovery of the trade marks from VAO have been brought on the basis of fraud, false suggestion or misrepresentation within the meaning of the Trade Marks Act. FKP is seeking an order that the register be rectified under section 88 of the Trade Marks Act by recording FKP as the registered owner in place of VAO. Alternatively, it seeks an order that the register be rectified by expunging the VAO registrations under section 58 of the Trade Marks Act.
Related proceedings have been brought in a number of jurisdictions including the Netherlands, Brazil and the US.
Links
The following list of relevant links is not exhaustive.
The decision concerning the initial notice of motion:
- S.P.I. Spirits (Cyprus) Limited v Diageo Australia Limited [2004] FCA 1780
The Federal Court decision set aside by the Full Court:
- S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd [2006] FCA 14
The decision of the Full Court of the Federal Court setting aside the order for third party discovery against the Russian Federation:
- Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International N.V.[2007] FCAFC 43
The High Court transcript:
- Spirits International N.V. v Federal Treasury Enterprise (FKP) Sojuzplodoimport [2007] HCATrans 595
