The Full Federal Court has ordered that the trade mark “WILD GEESE” be removed from the Register for non-use in Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, reversing Cowdroy J’s 2011 Federal Court decision.
Rare Breed Distilling LLC, current owner of the WILD TURKEY whiskey brand, together with its former owner, Austin, Nichols & Co Inc, appealed the first instance decision to allow Lodestar Anstalt’s WILD GEESE mark to remain on the register despite a finding of non-use, on grounds that Cowdroy J had inappropriately exercised discretion under s 101(3) of the Trade Marks Act 1995 (Cth).
In the decision, handed down this week, the Full Federal Court held that Cowdroy J had made a finding of fact unsupported by the evidence in failing to explain why, if the WILD GEESE mark were removed, then public confusion might follow.
The Full Federal Court, while acknowledging that there was recognition of the brand in Australia, albeit limited; and evidence of some use confined to a period between 2008 and 2010; nevertheless considered that whatever reputation the WILD GEESE mark had acquired, it was “slight, not long established, and unlikely to have had any significant impact”.
The onus was on Lodestar Anstalt to show that confusion would or, at least, could result from removal of the WILD GEESE mark from the Register, but this was not established.
The Court confirmed that while discretion under s 101(3) is broad and exceptional circumstances need not be shown before it may be invoked, in this instance it was not reasonable to do so.