The decision of the Federal Court in Austin, Nichols & Co Inc v Lodestar Anstalt  FCA 39 illustrates that the discretion to retain a trade mark on the Register, where a prima facie case for removal for non-use has been made out, may be exercised where there is a possibility of public confusion if the trade mark is removed.
Rare Breed Distilling LLC, owner of the WILD TURKEY whiskey brand, together with its predecessor in title, Austin, Nichols & Co Inc, established a prima facie case for removal of Lodestar Anstalt’s WILD GEESE trade mark registration in Australia pursuant s.92(4)(b) of the Trade Marks Act 1995 (Cth) (“the Act”).
However, Lodestar successfully argued the Court should exercise its discretion pursuant to s.101(3) of the Act to retain its WILD GEESE trade mark on the Register.
The evidence indicated that Lodestar had not used the trade mark in Australia until three years after the relevant non-use period and had not used the mark prior to that period at all. However, Cowdrey J noted the distribution of WILD GEESE whiskey in other jurisdictions, during and after that period, was substantial. Whilst WILD GEESE whiskey had a limited profile in Australia due to the sale of 120 cases of products since late 2008 to mid-2010, Cowdrey J considered that:
“Such exposure, although small, could amount to a degree of brand recognition on the part of the public that might lead to confusion should the WG [WILD GEESE] trade mark be removed.”
After reviewing the authorities, Cowdrey J considered that this likelihood of confusion to the public, the fact Lodestar had not abandoned its trade mark, and the lack of evidence of any prejudice to the public or other traders if the trade mark remained on the Register, supported the exercise of the discretion in favour of Lodestar.
Lodestar had earlier tried to rebut the allegation of non-use by arguing there were circumstances which constituted an obstacle to use of the WILD GEESE mark in Australia during the relevant non-use period, within s.100(3)(c) of the Act. Lodestar led evidence of the production delays it had experienced, its multi-jurisdiction litigation in respect of the trade mark and also of the fact it was not permitted to exhibit at a trade fair in Cannes. However, on the facts the Court did not consider that any one of these circumstances were sufficient obstacles to use of the mark in Australia to rebut the non-use allegation.
In his decision, Cowdrey J adopted the liberal construction of the term ‘person aggrieved’ applied by the majority of the High Court in Health World. This requires the applicant for removal and the trade mark owner to be ‘in the same trade’ and ‘trade rivals’.
Lodestar’s WILD GEESE registration covered both alcoholic and non-alcoholic beverages. It argued that Austin Nichols was not a trade rival with respect to non-alcoholic beverages as it only sold alcoholic beverages and did not have standing to bring a removal application in respect of those goods.
However, in assessing whether the parties were trade rivals, Cowdrey J, observed the emphasis was on the identity of the parties rather than on the goods to which the specific marks pertained. He found that as both parties were whiskey producers, they were trade rivals and Austin Nichols therefore had standing to bring the removal application