A recent High Court of Australia (HCA) decision has marked the finale of the dispute between Lodestar Anstalt (Wild Geese Whiskey) and Campari America LLC (Wild Turkey Bourbon), with the HCA refusing to grant Wild Turkey Bourbon leave to appeal the 2016 decision of the Full Federal Court of Australia. For full background on the matter, our articles on the Federal Court (here) and Full Federal Court (here) decisions can be accessed.
In summary, the issue for the Full Federal Court came down to whether Wild Turkey Bourbon had “authorised” the use of its WILD GEESE and WILD GEESE WINES marks by a licensee within the meaning of the Act, and what level of control this required.
It was decided that “control” within the Act required “actual control” and sufficient connection in the course of trade between the registered owner and the goods and services. However, the Full Federal Court commented that “actual control” is a question of fact and degree to be determined in each case. In certain circumstances, a mere licence may be sufficient if the licence provisions were appropriate for the owner of the trade mark to maintain a sufficient connection with the marks. In the subject case they were not, and Wild Turkey Bourbon’s trade marks were removed from the Register on the basis of non-use.
The latest HCA refusal to grant leave to appeal upholds the Full Federal Court’s unanimous decision, emphasising the importance of taking care in establishing and enforcing trade mark licensing regimes, particularly in circumstances where only a licensee is making use of a mark. Where sufficient control is not exercised through such licensing regimes, trade marks may be vulnerable to non-use action