02/08/2010

On 19 May 2010, the High Court decided that the use of the term “Barefoot Radler” on beer produced by Lion Nathan was an infringement of a trade mark registered to E&J Gallo Winery, a Californian wine company.  As a result, Lion Nathan are now restrained from selling beer under that name.

A “trade mark” is defined in section 17 of the Trade Marks Act 1995, as

“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.”

In this case, it was the use of the term “Barefoot” and a foot-print on a beer product that infringed the registered trade mark of that term used on wine bottles.

The arguments by Gallo were that they registered the trade mark in 1999, and a German distributor had re-sold some of the wine with the mark to a Victorian liquor wholesaler, who offered the wine for sale in 2002.  They argued that this was use of the trade mark in Australia within the meaning of the trade mark laws and it had sold about 100 bottles of wine through the Victorian wholesaler.

Lion Nathan registered its trade mark in 2007 in the same class, and began selling its beer in January 2008.  Lion Nathan denied any infringement and contended that Gallo had not used the trade mark, and therefore the Gallo’s mark should be removed from the register.

The High Court held that although Gallo was, at the time, unaware that the product had been sold in Australia, it was use of the trade mark within the law and therefore the mark had been used by an authorised user in Australia within the required time and before Lion Nathan.

The High Court then found that Lion Nathan had infringed the “Barefoot” trade mark and ordered that it be restrained after a period to time from:

“selling, offering for sale, advertising or promoting beer under the name BAREFOOT RADLER or any other name substantially identical with or deceptively similar to the [Gallo] registered trade mark…”

If you have any questions in regard to possible infringement of trade marks, please contact David Nicoll of TOWNSENDS BUSINESS & CORPORATE LAWYERS on (02) 8296 6222.