Australian Courts and Spanish Law

In an appeal from a Trade Mark opposition, Ryan J in Neumann v Sons of the Desert SL [2008] FCA 1183, has seemingly significantly broadened the operation of section 42 of the Trade Marks Act.

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.
On the basis of an affidavit from a Spanish lawyer, Ryan J held that:

registration of the mark in Australia by the respondent to the exclusion of the applicant would be contrary to Spanish law, which governs the relationship between the parties. I accept this evidence and therefore consider that the opposition based on s 42 of the Act must also succeed.

The decision stands for the propositions that:

a) the law in question need not be Australian law; and

b) it is sufficient that the process of seeking and obtaining registration of the trade mark is contrary to law, irrespective of whether use (as seemingly required by the Act) of that trade mark in Australian would be so.

In this case, the appeal was not contested by the respondent, however if the decision is followed, it may require an Australian Court to decide whether certain actions would be contrary to the law of another country. One might have thought that applying Australian IP law was challenging enough!