Not only did E & J Gallo fail in its infringement action against Lion Nathan’s Barefoot Radler mark for beer, but Lion Nathan successfully applied to get E & J Gallo’s trade mark removed for non-use. Various grounds were advanced to support the use of the trade mark. The surprising thing about this second part of the case, however, is that wine labelled with E & J Gallo’s trade mark was actually sold in Australia during the relevant non-use period.
(For the background and the first part of the case see here.)
The non-use period ran from 2004 to 2007. E & J Gallo had acquired the trade mark by assignment in January 2005. Neither E & Gallo’s predecessor, nor E & J Gallo had exported wine under the trade mark to Australia in the relevant period.
What happened was that E & J Gallo’s predecessor had exported some 60 cases of wine to Germany in 2001. Somehow, some of this wine made its way to Australia and was offered for sale, and sold, by someone known as Beach Avenue Wholesalers.
Flick J rejected the contention that the fact of the offering for sale and sale by Beach Avenue Wholesalers was sufficient to constitute use of the trade mark. His Honour also rejected the contention that Beach Avenue Wholesalers, someone who neither E & J Gallo nor its predecessor ever knew of or heard about was an authorised user of the trade mark.
His Honour distinguished Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 on the grounds that the trade mark owner there had consciously projected its goods into the course of trade in Australia.
One interesting thing about this approach is it is directly at odds with the cases, and reasoning, on why parallel imports don’t infringe trade marks: the fact that the trade mark owner had put the goods on the market anywhere was and is sufficient.
An appeal from Flick J’s decision is scheduled for hearing in November, NSD1085/2008
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