E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934

Here is a good little case on trade mark infringement - E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 which outlines the approach one should adopt when determining if there is a trade mark infringement pursuant to the Trade Marks Act 1995.

To establish a trade mark infringement, one must establish that s120 Trade Marks Act 1995 has been satisfied. Section 120(2) provides as follows:

When is a registered trade mark infringed?

…

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b) services that are closely related to registered goods; or

(c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d) goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

In determining whether s120 has been breached, one should note that a trade mark has the following meaning,

A “trade mark” is defined by s 17 of the Trade Marks Act 1995 (Cth) as being:

… a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The function of a trade mark, it has repeatedly been said, is “to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods — to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market”: In re Powell’s Trade Mark [1893] 2 Ch 388 at 403–4 per Bowen LJ. Use “as a trade mark” in s 120(1) is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19], 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424–5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89–90.

This is not an exhaustive meaning but a list of indicia.

To be able to fully determine whether s120 applies, the following questions would therefore need to be answered,

(i) what is the "sign" being used as a trade mark by the infringer?

(ii) is the "sign" being used by the infringer "substantially identical with" the trade mark of registered trade mark owner?

(iii) is the "sign" being used by infringer "deceptively similar to" the trade mark of registered trade mark owner?

(iv) are the products and or services of the infringer "goods of the same description" as the products and or services of registered trade mark owner?

(v) is the manner in which infringer uses its sign "not likely to deceive or cause confusion"?

(vi) has there been a "non-use" of the trade mark? The resolution of this question involves a consideration as to:

(a) whether there were sales of the products and or services displaying the trademark during the non-use period;

(b) whether the products and or services displaying the trademark were offered for sale during the non-use period;

(c) if the products and or services displaying the trademark were sold or offered for sale during the non-use period, whether there was a use of the trade mark by any authorised user;

(d) whether there were negotiations between registered trade mark owner and other persons durign the non-use period constituted a use of the trade mark;

(e) whether there was an "obstacle" (for example an objection lodged with IP Australia with respect to the registration of the registered trade mark) to the use of the registered trade mark owner trade mark;

(f) even if there was a use, which mark was in fact being used; and

(g) whether any use was a use "in good faith".

(vii) if there has been a "non-use" of the trade mark by registered trade mark owner, should the discretion conferred by s 101(3) of the 1995 Act be exercised so as to allow its trade mark to remain on the Register?

Answering these questions will point you in the right direction when trying to determine if there has been a trade mark infringement.