In the long-running dispute between E & J GALLO WINERY and LION NATHAN AUSTRALIA PTY LIMITED regarding the trade mark BAREFOOT, GALLO has been successful in obtaining special leave to appeal the judgment of the Full Federal Court. In its judgment the Full Federal Court concluded that GALLO's non-use of its trade mark in Australia within the prescribed period of three years had the consequence that the trade mark should be removed from the Australian Trade Marks register. The leave to appeal application raised two specific issues.

The first issue is whether there is use of a registered trade mark in Australia by the registered owner of the trade mark in circumstances where the trade mark is applied to goods outside Australia and the registered owner of the mark is not aware that those goods are being offered for sale or sold in Australia. The second issue to be considered by the Court is whether, in the circumstances envisaged by the first question, the only use of the registered trade mark in Australia is the use made by the wholesaler or retailer in Australia who offers the goods for sale rather than the registered owner of the trade mark.

These issues have implications for all overseas owners of trade marks registered in Australia in circumstances where goods bearing the registered trade mark are offered for sale in this country by unrelated third parties. The issues raised by Gallo are likely to be considered by the High Court before the end of this year.