E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Property law; intangible property; trade marks; use of a trade mark.
Facts: E&J Gallo Winery (Gallo) was a US-based company which had gained ownership of a registered trade mark in Australia. The trade mark was 'BAREFOOT' with an accompanying image of a bare foot footprint, and was registered in relation to wines. In 2001, 60 cases of the BAREFOOT wine bottles were shipped from the US to Germany. 144 of these bottles were then sold from Germany to an Australian company. It sold just 41 bottles between 2004 and 2007. In 2008 Gallo brought a trade mark infringement action against Lion Nathan Australia Pty Ltd (LN), an Australian company which sold beer under the name BAREFOOT RADLER, with an image of a bare foot footprint. LN counter-claimed that Gallo's trade mark should be de-registered for the reason of non-use between 2004 and 2007.
Issue: Had Gallo's trade mark been 'used in good faith in Australia' during the period in question?
Decision: The trade mark had been so used.
Reason: It was irrelevant that the owner of the BAREFOOT trade mark did not themselves export the product to Australia for sale. It was also irrelevant that they did not even know that bottles of the wine were being sold in Australia at the time. A trade mark is a sign used to distinguish the goods of one person from the goods of others. It is used to indicate a connection in the course of trade between goods and the person who applies the mark to those goods. Accordingly, it must be used in the course of trade for the purpose of generating profits and establishing goodwill. As long as it is used in this way, this is sufficient to constitute 'use' of the trade mark for the purposes of the Trade Marks Act 1955 (Cth) even though the number of sales may be relatively small.