The Trademarks Act 1995 allows an applicant to apply to remove a trademark if the trademark owner:
- had no intention to use the trademark in Australia and had not used the trademark in Australia in the month before the application; or
- had not “used” the trademark in Australia in the three years before the application.
The issue of disuse has recently been considered by the Federal Court in Skyy Spirits LLC v Lodstar Anstalt [2015] FCA 509 where the owner of Wild Geese Rare Irish Whiskey (“Wild Geese”) brought an application to have the trademark “Wild Geese” and “Wild Geese Wines” (the “Trademarks”) removed from the trademark register. The trademarks were registered to the owners of the Wild Turkey bourbon trademark (“Wild Turkey”).
The case concerned a convoluted factual situation where Wild Turkey had licensed the Trademarks to an unrelated third party who produced Wild Geese Wines. Wild Geese argued that Wild Turkey was not “using” the Trademarks.
“Use” under the Act provides for licensing arrangements by including “authorised use” in the definition of “use”. Proving “authorised use”, however, required Wild Turkey to show the third party used the Trademarks under Wild Turkey’s control or that Wild Turkey exercised quality control over the products sold under the trademark.
In this case, the Judge found that, on the facts, Wild Turkey exercised no actual control over the third party’s company in the way in which it used the Trademarks and did not have any quality control over the products it produced.
However, whilst the Judge held this view, he was bound by previous decisions of the Federal Court that have held a mere theoretical possibility of contractual control was sufficient to constitute an authorised use.
This case is a timely reminder that trademark holders should ensure:
- that trademarks are used and are not dormant for more than three years; and
- any trademark licensing agreements allow for the necessary “control” of the licensee so that the licensee’s use qualifies under the Act.
Cowell Clarke has experience in dealing with applications for trademark removal and also the drafting of trademark licencing agreements. Please contact us if you want to discuss this type of matter or any other trademark related matter.