Battle of the Birds

The Australian Trade Marks Office in Lodestar Anstalt v Austin Nichols[2009] ATMO 38 has ordered that trade mark number 839740 for WILD GEESE in classes 32 and 33 be partially removed following two removal applications filed by Austin Nichols and Co, Inc (”Austin”) and Wild Geese Wines Pty Ltd (”WGW”) respectively.

Although at the time of the hearing, both removal applications were proceeding in the name of Austin, as each was filed before the amendments to the Trade Marks Act in 2006 in relation to standing, each applicant was required to establish it was a person aggrieved as at the date of the application.

In considering the issue of standing the Hearing Officer, referring to the decision of the Full Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2009] FCAFC 14, confirmed that a person in the same trade who shows that he or she could use the mark establishes a rebuttable presumption of standing, although it was still necessary for the applicant to demonstrate a reasonable possibility of being appreciably disadvantaged in a legal or practical sense.

The Hearing Officer found that the first removal application must fail for lack of standing on the basis that Austin’s trade mark WILD TURKEY, upon which its person aggrieved submission was based, was not sufficiently similar to WILD GEESE. However, despite deficiencies in its evidence, the Hearing Officer was prepared to accept that WGW was a person aggrieved at the time of filing the second removal application on the basis of its use of the trade marks WILD GEESE or WILD GEESE WINES in relation to wine.

Ultimately the second removal application, directed to class 33 only, was partially successful resulting in an amendment to the specification of goods to “Alcoholic beverages (except beers) but excluding wine, fortified wine and wine-base spirits, namely brandy, grappa and cognac”

WGW/Austin relied on the decision of the Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 to the effect that beer was goods of the same description as wine in support of its claim for removal of all goods in class 33. However, the Hearing Officer considered that the partial removal, together with various concession by Lodestar was a sufficiently strong shield against any inconvenience to WGW/Austin.