find the latest legal job
Corporate Counsel and Company Secretary
Category: Generalists - In House | Location: Newcastle, Maitland & Hunter NSW
· Highly-respected, innovative and entrepreneurial Not-for-Profit · Competency based Board
View details
Chief Counsel and Company Secretary
Category: Generalists - In House | Location: Newcastle, Maitland & Hunter NSW
· Dynamic, high growth organisation · ASX listed market leader
View details
In-house Projects Lawyer | Renewables / Solar | 2-5 Years PQE
Category: Generalists - In House | Location: All Australia
· Help design the future · NASDAQ Listed
View details
Insurance Lawyer (3-5 PAE)
Category: Insurance and Superannuation Law | Location: Brisbane CBD & Inner Suburbs Brisbane QLD
· Dynamic organisation ·
View details
Legal Counsel
Category: Corporate and Commercial Law | Location: North Sydney NSW 2060
· 18 month fixed term contract · 3-5 years PQE with TMT exposure
View details
Trade marks war ruffles feathers in liquor industry

Trade marks war ruffles feathers in liquor industry

The High Court has delivered its judgment in a lengthy trade marks dispute between two liquor brands.

The HCA ruled in favour of Lodestar Anstalt, the company that owns Wild Geese whiskey, following an appeal lodged by Campari against a Federal Court trade marks decision made earlier this year. 

Intellectual property lawyer Ken Philp (pictured), who acted on behalf of the whiskey company, described the High Court decision to refuse to hear Campari's appeal as a “precedent setter”, being the first major case about the definition of “use” and “control” as factors in a trade mark’s non-use in more than 40 years. Mr Philp has represented Lodestar Anstalt for the past three years.

“What had not been decided until now was that if you want a control clause over your trade mark, you have to show actual control over its use, not just theoretical control.

“The message it sends to businesses is that if you are a trade mark licensor, you need to show you are actively involved in control of the mark’s use by your licensee. If not, you could lose the trade mark,” Mr Philp said.

Earlier this year the Federal Court removed Campari’s trade marks to the brands Wild Geese and Wild Geese Wines. The decision came after Lodestar Anstalt sought to have the trade marks for the brand name lifted.

According to Mr Philp, the decision has implications for licensees and licensors. He said the decision specifically affects whether licensed trade marks can be vulnerable to a non-use removal application in a non-use period.

“My main argument was that the mere existence of a quality control clause was not sufficient evidence of its 'use' under the act. 

“[We] argued that there still had to be actual exercise of control and not just the theoretical possibility of control being able to be exercised,” Mr Philp said.

The full-bench decision means that Wild Geese is cleared to lodge marks for its Wild Geese whiskey products.

Mr Philp added that lawyers will have to be careful to scrutinise all trade mark licence agreements moving forward.

“We will be advising our clients that, as a matter of caution, a high-priority review on their licence agreements should be done,” he said.

Like this story? Read more:

QLS condemns actions of disgraced lawyer as ‘stain on the profession’

NSW proposes big justice reforms to target risk of reoffending

The legal budget breakdown 2017

Trade marks war ruffles feathers in liquor industry
lawyersweekly logo
Promoted content
Recommended by Spike Native Network
more from lawyers weekly
LCA president Fiona McLeod SC
Aug 17 2017
Where social fault lines meet the justice gap in Aus
After just returning from a tour of the Northern Territory, LCA president Fiona McLeod SC speaks wit...
Marriage equality flag
Aug 17 2017
ALHR backs High Court challenge to marriage equality postal vote
Australian Lawyers for Human Rights (ALHR) has voiced its support for a constitutional challenge to ...
Give advice
Aug 17 2017
A-G issues advice on judiciary’s public presence
Commonwealth Attorney-General George Brandis QC has offered his advice on the public presence of jud...
Allens managing partner Richard Spurio, image courtesy Allens' website
Jun 21 2017
Promo season at Allens
A group of lawyers at Allens have received promotions across its PNG and Australian offices. ...
May 11 2017
Partner exits for in-house role
A Victorian lawyer has left the partnership of a national firm to start a new gig with state governm...
Esteban Gomez
May 11 2017
National firm recruits ‘major asset’
A national law firm has announced it has appointed a new corporate partner who brings over 15 years'...
Nicole Rich
May 16 2017
Access to justice for young transgender Australians
Reform is looming for the process that young transgender Australians and their families must current...
Geoff Roberson
May 11 2017
The lighter side of the law: when law and comedy collide
On the face of it, there doesn’t seem to be much that is amusing about the law, writes Geoff Rober...
May 10 2017
Advocate’s immunity – without fear or without favour but not both
On 29 March 2017, the High Court handed down its decision in David Kendirjian v Eugene Lepore & ...