Trident Seafoods 2

A previous post examined Gleeson J’s conclusion that Trident Foods had not used its TRIDENT trade marks for a continuous period of three years because it had not actually controlled the use by its parent, Manassen. As noted there, however, Gleeson J exercised her discretion under s 101(3) not to order removal.

You will recall that Trident Foods has had TRIDENT registered:

(1) for fish and fish products in class 29 since 1973, TM No. 266,625; and

(2) since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953,

and Trident Seafoods is trying to get those trade marks removed for non-use because they are blocking its attempt to register its own trade marks for “Trident Seafoods”. Gleeson J found that Trident Foods had not used its trade marks either itself or through an authorised user in the relevant 3 years between 2011 and 2014, but exercised her discretion against removal.

Discretion against removal

At [179], a number of matters played into her Honour’s decision not to order removal.

One factor was that Trident Foods had not abandoned its trade mark but, when the removal action had been filed, had organised Manassen to make some limited sales of fish products and (eventually) had entered into a formal (and presumably effective) licence agreement with Manassen.

Another factor was the risk of confusion if Trident Seafoods started marketing its products in Australia by reference to a trade mark which included “Trident”. While there had been limited use by Manassen in relation to fish and fish related products, there had nonetheless been some limited use both before and after the non-use period and that use had been with the knowledge and acquiescence of Trident Foods. Moreover, there was longstanding use in respect of a wide range of food products which changed over time.

Interestingly, Gleeson J would not have exercised the discretion if Manassen’s use had been in respect of products other than fish and fish products only. Such use could be taken into account in favour of the exercise of the discretion because there had been some use in respect of fish and fish products and, apparently more importantly at [178], because Trident Foods and Manassen still intended that Manassen continue to use the trade mark as an authorised user.

The fact that the limited sales of fish and fish products after the non-use period were specifically motivated in response to the bringing of the non-use application was not ‘colourable’. At [175], Gleeson J noted that the sales were not unprofitable or otherwise contrived, but appeared to reflect a genuine estimate of the extent to which the products could be profitably sold in Australia.

Other matters – what goods were specified

In the course of her Honour’s reasons, Gleeson J was required to give careful consideration to the meaning of “fish and fish products” in the specification of goods in the respective trade marks. This required consideration of the signification of the terms in the editions of the Nice Classification in force at the priority date of the trade marks as well as the normal meaning of the terms.

Trident Seafoods argued that the terms were limited to creatures with scales, gills and fins. However, Gleeson J accepted at [55] – [56] the terms were wide enough to cover crustaceans such as crabs and prawns and molluscs such as oysters as well as foods prepared from those products.

Trident Foods argued further that the use of TRIDENT for products which include fish as an ingredient would constitute use in respect of fish and fish products relying on, for example, sales of prawn flavoured tom yum soup. Gleeson J rejected this argument in its broadest form and, instead, considered a qualitative assessment on a product by product basis was required:

  1. … the application of a trade mark to a particular food product is a use of the trade mark in relation to those goods only, and generally not to the ingredients from which the goods are made.

Noting that a a trade mark in respect of flour would not cover bread or vice versa, her Honour explained at [66]:[1]

whether a product is a “fish product” will depend on the ingredients of the product or, perhaps, whether the product is identified by its name as a fish product. Generally speaking, the greater the fish content in a product, the more likely it will be to answer the description “fish product”. In my view, a fish sauce product or flavouring made from fish could be a fish product … particularly where the main ingredient is fish or seafood. ….

Noting also that there may be debate about whether a sauce of flavouring of animal origin fell within class 29 or class 30, Gleeson J considered that TRIDENT brand Tom Yum soup, labelled “Tom Yum Goong Flavour Thai Noodle Soup” with a marking “contains Crustacea and fish”, was not a fish product. The contents listed noodles, a flavour sachet, an oil sachet and a chilli sachet and the oil sachet was described as containing, relevantly, fish sauce and dried shrimp.

Honest concurrent user

The final round of issues related to Trident Foods’ fallback application to register TRIDENT for “its” products. After Trident Seafoods brought its non-use application against Trident Foods’ registrations, Trident Foods filed a further application in 2014 to register TRIDENT for its products including fish and fish products. Trident Foods’ application was blocked of course by Trident Seafoods’ earlier, pending applications (which you will remember were in turn blocked by Trident Foods’ registrations that Trident Seafoods was trying to remove for non-use).

The first point is that Gleeson J ruled at [202] that Trident Foods could not rely on “honest concurrent use” to overcome the citation of Trident Seafoods’ applications as Trident Seafoods had not used its trade mark in Australia. The plain, literal words of s 44(3)(a) required “honest concurrent use of the 2 trade marks (emphasis supplied). As there had been no use in Australia of its trade mark by Trident Seafoods, s 44(3)(a) did not apply.

Seems like yet another triumph of the “plain English” drafting of the 1995 Act.

(not) closely related goods

Next, at [207] – [211], Gleeson J ruled that Trident Foods could not take advantage of the prior continuous user provisions in s 44(3)(a).

The long period of non-use from 2007 to 2014 meant that there was no use at all in respect of “the goods” or “similar goods”. However, Trident Foods argued it could rely on use in respect of closely related goods on the basis of the reference in s 44(4)(a)(ii) to continuous use for “the similar services or closely related goods”. Gleeson J held this avenue was unavailable to Trident Foods because s 44(4)(a)(ii) applied only to trade mark applications for services. Where the application was blocked because of its specification of goods, only s 44(4)(a)(i) applied and so the use had to be in respect of the specified goods or similar goods. At [207]:

In this case, s 44(1) applies because the relevant application is an application for the registration of a trade mark in respect of goods. Section 44(2), concerning registration of a trade mark in respect of services, has no application. “[T]he similar goods or closely related services” referred to in s 44(4)(a)(i) are the “similar goods or closely related services” in respect of which registration of a trade mark is sought, referred to in s 44(1)(a)(ii). Section 44(4)(a)(ii) has no relevant operation, because it refers to the “similar services or closely related goods” in s 44(2)(a).

In any event, the use was by Manassen and, as discussed in the previous post, that use was not authorised use and so could not be relied on.

The discretion for “other circumstances” under s 44(3)(b)

Finally, Trident Foods argued at [213] that, even if “honest concurrent use” was not available,

(1) the existence of its earlier registrations for TRIDENT (which were not going to be removed);

(2) the fact that Trident Seafoods blocking applications were pending applications only and were blocked by Trident Foods’ own registrations; and

(3) essentially the discretionary considerations which led her Honour not to order removal of the trade mark registrations for non-use,

were “other circumstances” on which her Honour could exercise the discretion under s 44(3)(b).

At [216], Gleeson J accepted that the inchoate nature of Trident Seafoods’ applications and their inability to proceed in the face of Trident Foods’ earlier registrations was a relevant “other circumstance” enlivening s 44(3)(b).

At [217], however, it was not appropriate to exercise the discretion to allow registration because there was no use, or intention to use, the trade mark at the priority date of the application by Trident Foods or an authorised user:

in the absence of a licence agreement, Trident Foods was not using the “TRIDENT” trade mark as at the priority date and had not authorised any such use. Rather, the mark was being used by Manassen, albeit with the acquiescence of Trident Foods. The use or intended use of the trade mark, or the authorisation or intended authorisation of such use is a precondition to the right to apply for registration by s 27 of the Act. In my view, it would not be appropriate to exercise the discretion under s 44(3)(b) whether [sic] that precondition had not been satisfied.

Moreover, s 59 would apply as a ground of opposition to defeat Trident Foods’ application. You will remember that Trident Foods filed this application in 2014, but its licence agreement with Manassen was put in place only in 2017. When Trident Foods applied to register the trade mark, therefore, it did not have an intention to use the trade mark either itself or through an authorised user.

Trident Seafoods has appealed: NSD1951/2018.

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490


  1. See also [68].  ?

Trade mark licensing problems

Trident Seafoods has failed to get Trident Foods’ registrations for TRIDENT removed for non-use, but only because Gleeson J exercised her Honour’s discretion against removal.

Trident Foods has had TRIDENT registered for fish and fish products in class 29 since 1973, TM No. 266,625 and, since 1983, for meat, fish, poultry and various extracts, preservatives and pickles, TM No. 400,953.

Trident Seafoods was founded in the USA in 1973. It is apparently the largest seafood distributor in North America. It uses and has registrations all round the world – except for Australia and New Zealand – the trade marks “Trident Seafoods” and a stylised logo incorporating those words. It has been marketing its products in Australia since 2007 under the trade mark “Bountiful”, but its attempt to register “Trident Seafoods” has been blocked by Trident Foods’ prior registrations. It brought an action under s 92(4)(b) to remove those blocking registrations on the grounds of non-use. The non-use period was 7 January 2011 to 7 January 2014.

There is a good chance you have, or have had, some TRIDENT condiments on your shelf, but here’s the thing. Since at least 2000, Trident Foods did not itself manufacture and sell TRIDENT branded products. The products were manufactured and sold by Manassen Foods Australia. Trident Foods claimed Manassen’s use was use as an authorised user.[1] Gleeson J, however, rejected this claim but, as noted above, decided it was appropriate to exercise the discretion under s 101(3) not to order removal.

Manassen was not an authorised user

There was no written licence agreement between Trident Foods and Manassen until 3 November 2017.[2]

In addition to that licensing arrangement, Trident Foods relied on the corporate relationship with Manassen, the involvement in their respective businesses of two common directors and Manassen’s compliance with the Bright Food Group’s quality assurance manual.

Trident Foods is a wholly owned subsidiary of Manassen (and both are members of the same corporate group, the ultimate holding company of which is Bright “Cayman Islands”). Nonetheless, Trident Foods relied on the essentially pragmatic approach applied by the Registrar:[3]

There is nothing unusual in a large company such as Henry Schein, Inc and/or its predecessors (that is “the Company” as defined earlier) incorporating a wholly owned subsidiary in order to hold its worldwide trade mark (or, for that matter, patent or other IP right) portfolio. It is very common practice” because, inter alia, it efficiently streamlines processes for the prosecution and renewal of properties in the portfolio and it avoids the need to record name changes, mergers or assignments around the world should the parent company restructure or change names.

Gleeson J rejected this. Based on the Henschke v Rosemount and the Lodestar v Campari cases, her Honour held at [84] that “control” for the purposes of authorised use required “actual control” “as a matter of substance”.

The corporate relationship between Trident Foods and Manassen did not provide that. At [100(1)]: Gleeson J explained:

The corporate relationship between Trident Foods and Manassen does not place Trident Foods in a relationship of control over Manassen; rather, the converse is the case. The commonality of directors does not, without more, permit Trident Foods to exercise control over Manassen.

Trident Foods led evidence from a Ms Swanson, one of the two directors:

We have always maintained control over Manassen from the point of view of [Trident Foods’] as we have fiduciary obligations to act in the interest of [Trident Foods]. One of the things that has been considered, at least by me, since appointment as a director of Trident, is the quality and standard of the goods being sold under [Trident Foods’] trade mark registrations. As a director of Manassen, I appreciate the high standard of the goods that are sold by this company. As such, I have never had any cause for concern regarding the damage that could occur to the TRIDENT brand owned by [Trident Foods]. If there ever was a suggestion that poor quality goods were to be sold under [Trident Foods’] TRIDENT brand, I would be empowered and authorised to prevent such an occurrence.

Ms Swanson also gave evidence that Manassen had to comply with the Bright Food Group’s vendor quality management system (the VQM Manual) which was in place to maintain quality measures over all of the Group’s brands. In addition, she participated each month in meetings of Manassen’s “Innovation Council” which decided what products Manassen would sell, including “Trident” products, and were concerned with brand valuation and impairment to ensure that the brand was performing well and to avoid devaluation.

Gleeson J considered this was inadequate to establish actual control. Trident Seafoods argued that the directors would be in breach of their fiduciary duties to Manassen if they sought to exercise quality control over its operations on behalf of Trident Foods. Thankfully, Gleeson J did not accept this in terms. Rather, it seems Ms Swanson’s evidence was insufficient because it was at the level of assertion, without demonstrating examples of control being exercised by Trident Foods. At [100] points (2) – (6), her Honour explained:

(2) Ms Swanson’s evidence is in the nature of assertion. It does not include any particular illustration of conduct by Trident Foods amounting to actual control of the use of the “TRIDENT” trade mark.

(3) The fact that Ms Swanson considered it unnecessary to give directions, whether by reason of the existence of the VQM Manual or otherwise, is not relevant to the question of whether Manassen had obligations to Trident Foods in relation to the use of the “TRIDENT” trade mark.

(4) Any control that Ms Swanson might personally exercise by virtue of her membership of the Innovations Council (which was asserted but not demonstrated) does not prove control by Trident Foods.

(5) The identification of Trident Foods as trade mark owner on products supplied by Manassen does not prove use of the trade mark under the control of Trident Foods.

(6) Assuming that the VQM Manual is owned by Trident Foods jointly with other corporate entities in the Bright Group, Trident Seafoods did not demonstrate that the VQM Manual conferred any relevant control on Trident Foods over Manassen.

Finally, Gleeson J was not prepared to find there had in fact been an unwritten licence agreement in place as claimed in the recitals to the 2017 document. The claim was inconsistent with the evidence of how things had actually operated.

It is not possible to tell from the judgment what the contents of the VQM Manual were. One must wonder, however, whether much would really be gained by requiring the directors of Trident Foods to have met and formally adopted the relevant parts of the VQM Manual (assuming there were any) as the quality standards that Manassen needed to comply with and, further, to meet formally as directors of Trident Foods and approve changes to any applicable quality standards or even to meet at regular intervals to consider whether Manassen was complying with quality standards they had prescribed. Unless a subsidiary can never exercise control of its parent or a related body corporate that was not a subsidiary, nonetheless, it would seem that level of formalism is required.

Her Honour’s approach may be compared to that of Nicholas J in Dunlop v Goodyear at [88] and [121]. Of course, in that case the trade mark was owned by the parent, not the subsidiary; there seem to have been numerous written agreements in place and some evidence of head office (i.e., the parent) issuing instructions about the business and the use of the trade marks in the business.

As already indicated, Gleeson J went on to exercise the discretion not to remove Trident Foods’ registrations. In what is already an overly long post, that and some other points of interest will have to await consideration another day.

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490


  1. As you know, under s 7(3), authorised use of a trade mark by a person is taken to be use of the trade mark by the registered owner. And, under s 8 a person is an authorised user of a trade mark if that person uses the trade mark under the control of the trade mark owner. Section 8(3) and (4) provide that “control” may be “quality control” or “financial control”, although s 8(5) does provide that s 8(3) and (4) do not limit the meaning of “under the control of”.  ?
  2. The recitals stated that there had been an unwritten licence agreement between them since 2000 and this document reflected the parties’ wish to reduce the terms of their licence to writing. Apparently, in reliance on Film Investment Corporation of New Zealand Ltd (Receiver Appointed) v Golden Editions Pty Ltd [1994] FCA 11; (1994) 28 IPR 1 at 15; Black & Decker Inc at [147] and [148]; Allam at [430] and [431].  ?
  3. HS TM, LLC v Schein Orthopadie-Service KG [2016] ATMO 63 at [23]; heard before Lodestar, but decided afterwards.  ?

Servier best method & amendment

Servier has lost what may be its last round[1] in the arginine perindopril litigation against Apotex. Servier began the litigation back in 2007. Ultimately, it lost with its patent being found invalid on the ground that Servier had failed to disclose the best method of performing the invention. After that ruling, Servier applied to amend its patent to include the best method. Its application failed on discretionary grounds. Now, we have the Full Court’s decision dismissing Servier’s appeal from that refusal.

Best method

Servier’s first argument was that, following the High Court’s Kimberley-Clark decision, all s 40(2)(a) required was a disclosure sufficient to enable a skilled person to produce something within each claim without new invention or additions or prolonged study of matters presenting initial difficulty. Servier argued that there was no separate and independent requirement to disclose the “best method”.

After an extensive review of the case law, the Full Court rejected that argument, ruling that disclosure of the best method was indeed a separate requirement. In this case, Servier had failed to comply with that requirement.

Claim 1 of the patent was for the arginine salt of perindopril. There had been an earlier patent for perindopril and sodium and maleate salt forms had been identified. According to the Specification, the arginine salt form had particular stability advantages in conditions of heat and humidity which resulted in longer shelf life and permitted the use of less expensive forms of packaging. The achievement of these advantages, however, could be affected by the method of production. The Specification described the claimed arginine perindopril only as being produced by “a classical method of salification”.

The experts agreed this description of how to prepare the salt was “pregnant with ambiguity” and following from this evidence the trial judge had found this description was “wholly inadequate” and did not:

allow the skilled addressee to follow a routine process of deduction from that description because it leaves open too many variables.

Servier itself had used two different methods before the filing date – the 1986 method and the 1991 method – and another method – the 2002 study – after the priority date. The evidence showed that the method of salification used and variables such as the solvent used and whether and when to stir significantly affected the properties of the resulting salt, including its stability.

Accordingly, the Full Court upheld the trial judge’s conclusion that Servier had not disclosed the best method known to it of performing the invention.

Amendment

Servier had applied after the trial to amend the Specification to add the best method.

The Full Court affirmed the Pfizer Full Court’s ruling that the best method requirement required disclosure of the best method of performing the invention known to the applicant at the filing date. However, it was possible to remedy a failure to disclose the best method by amendment of the Specification made after the filing date.

The Full Court agreed with the trial judge that the amendment power under s 105 could be invoked even after trial and judgment finding all claims invalid. While there was a proprietal interest in being allowed to amend, it was still necessary for the patentee to satisfy the Court that discretionary grounds did not warrant exclusion.

In this case, however, discretionary grounds warranted refusal. Back in 2004, the examiner had issued a report as a result of which Servier’s patent attorney had advised Servier to include a description of the method of manufacture of arginine perindopril, even if it was well known. The inhouse instructor replied “we will see later”.

Although there was no suggestion of bad faith on the part of the inhouse instructor, the Full Court upheld the trial judge’s conclusion that the inhouse instructor’s decision to ignore the advice of her Australian patent attorney was not reasonable.

The Full Court considered that there was no error of principle in the trial judge’s rejection of the length of the delay as otherwise warranting rejection of the application. However, they would appear themselves have felt the trial judge had been overly generous.

Finally, the Full Court allowed Apotex’ appeal from the trial judge’s order that Apotex pay 66% of Servier’s costs. Rather, Servier should pay 40% of Aptex’ costs of the revocation proceeding and 75% of Aptex’ costs of the amendment proceedings.

Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (Bennett, Besanko and Beach JJ)


  1. Barring (potentially) a special leave application.  ?

IPSANZ and patent amendments

One of the interesting sessions at the IPSANZ conference was David Catterns QC and the 2 Gregs talking about amending patent specifications – before and after grant.

I certainly wouldn’t disagree with the view that, all other things being equal, you should amend before litigation rather than during (although how often are all other things equal, especially for patents in multiple jurisdictions). Australian law, at least insofar as it concerns amendments before the Commissioner, however, may be moving closer to the New Zealand situation.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 includes in Sch 1 at item 31 an amendment to s 102:

(2D) An amendment of a patent request or a complete specification is not allowable if it is of a kind prescribed by regulations made for the purposes of this section.

For some reason I have a (vague) recollection that this provision may be used to confer on the Commissioner through the Regs a discretion similar to that which the Court has under s 105. I am afraid I have not been able to re-locate wherever it was that I read or heard this.

Does anyone know any better or differently?

It doesn’t seem to be what the EM contemplates as the role for item 31 and one might have thought that there might be scope to expand the regulations made for the purposes of s 104 to effect that goal (if it were intended to be achieved) as it is the “narrowness” of those regulations which leads to the present situation.

One might question the constitutional desirability of putting such ‘substantive’ matters in the Regs rather than expressing them in the Act itself. However, that fight seems, sadly, to have been well and truly lost. In any event, if the introduction of such a discretion in the Commissioner be intended, it would surely be in everyone’s interests to amend the terms of s 104 itself to track the terms of s 105(1) rather than bury it away in the Regs.

DGTEK v Digiteck II

For DGTEK v Digiteck I, see here.

Non-use

Lander J considered that the goods covered by Hills’ registration should be limited as a result of non-use for the statutory period of 3 continuous years under s 92.

One interesting point on this part of the case is that Bitek had sought removal of all goods in its original application for removal. It accepted that evidence filed by Hills showed use in relation to some goods. Hills argued therefore the non-use application must fail since the application was directed to all goods.

Lander J rejected that argument:

[279] Because Bitek was seeking to remove “all of the goods” for non-use, Hills submitted that it was required to rebut the allegation of non-use of all of those goods. Hills argued that the evidence demonstrated use of the DGTEC trade mark in respect of several products including televisions, DVD players, CD players, decoders and cameras. On this basis, it argued that the application should be dismissed.
[280] In the alternative, Hills argued that Bitek could not alter its position or limit its application as an application for removal under s 92(2) is required to be in an approved form: reg 9.1 of the Regulations. The only application for removal in approved form is the initial application in which Bitek seeks to remove “all of the goods” in respect of which the trade mark is registered.
[281] Hills also said that Bitek should not be allowed to limit its application because to do so would lead to a denial of procedural fairness. …

Following a review of the cases, Lander J rejected these arguments:

[295] Hills’ argument that if the Court considered Bitek’s argument that the class of goods should be narrowed would result in a denial of procedural fairness should be rejected. Bitek’s concession means that it cannot have the relief it sought in the application but in seeking to argue that it is entitled to have the restricted relief it is thereby narrowing the scope of the inquiry. In those circumstances it could not be a denial of procedural fairness to allow the matter to proceed by reference to a narrower class of goods.

[296] I also reject Hills’ submission that the application must fail because there is evidence of use of some of its goods. I accept Bitek’s argument that the Court may exercise its discretion under s 101(2) to narrow the scope of the registration where the applicant establishes that a ground exists in relation to only some of the goods to which the application relates.

The power to excise some, but not all goods, was consistent with the policy of Part 9: to ensure that Register (and freedom to trade) was not cluttered with unused marks: [304] and consistent with the terms of s 101(2).

Lander J then refused to exercise a discretion against non-removal, apparently on the basis that any reputation that had been generated in respect of the goods on which there had been use did not spill over on to the goods for which there had not been use:

Bitek submitted that s 101(3) does not save Hills’ registration because there is no evidence of use of similar or closely related goods. The only evidence of use relates to a limited group of products which Bitek mainly excluded from its application for removal.

[316] In my opinion, Hills’ argument should be rejected. The fact that it has used its mark in respect of goods which are similar to those goods marketed by Bitek is not in my opinion to the point.

[317] The circumstance which is addressed in s 101(4) is whether Hills has used the mark in respect of similar goods to those to which the application relates. In Hills’ case it has not used the goods except in relation to set-top boxes, remote controls, digital video recorders with hard drive, televisions, CD and MP3 players, DVD players, micro sound systems, iPod docking speakers and web-based cameras. I do not think there is any evidence to suggest any use of any similar goods to those proved used by Hills which ought to be retained in the statement of goods.

Perhaps rather surprisingly given the finding of non-use in respect of some products, Lander J considered Hills’ specification of goods should be amended to read:

Digital and electronic products including set top boxes, remote controls, digital video recorders with hard drive, televisions, CD and MP3 players, DVD players, micro sound systems, iPod docking speakers and web-based cameras. (my emphasis)

Infringement

Lander J accepted he was bound be the decision in Gallo that removal of a mark for non-use operated only from the date of removal of the mark from the Register.

Bitech admitted it had used DIGITECH since 2003 in respect ofantennas, cables (including speaker, coaxial, data and security), plasma TV brackets, leads, AV switch selectors, connectors, wall plates of various types, splitters, TV mounting hardware, video senders, video intercoms, industry tools, remote controls, multi-switches, set-top boxes, cable ties and cable clips.

Ultimately, his Honour found that Bitek infringed by reason of its use on set-top boxes and remote controls, but not the other products.

Consistently with his Honour’s earlier findings, DIGITECH was of course deceptively similar to DGTECH. Apart from set-top boxes and remote controls, the goods for which Bitek had used its trade mark were either covered by its own (now) registration (s 122(1)(fa)) – and all use had been after the application date – or were not shown to be within the scope of Hills’ registration or goods of the same description. S 120(3) also could not be invoked as Hills’ trade mark was not well-known.

Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

Wild Geese survive Wild Turkey attack

Anita Brown, over at IPanz, reports on Cowdroy J’s exercise of discretion to leave the Wild Geese trade mark for whiskey on the Registrar, even though non-use throughout the relevant statutory period was proved, on the basis of the perceived risk of public confusion.

His Honour also addressed the standing requirement for a non-use action.

His Honour’s reasons in full:

Austin, Nichols & Co Inc v Lodestar Anstalt [2011] FCA 39

Not using (but keeping) Pioneer

Prof. Mark Davison reviews Bennett J’s recent decision allowing Pioneer, by an exercise of discretion, to keep its registration for , even though it had no use of, or intention to use, the trade mark in respect of those goods.

Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135