The appellant Lodestar Anstalt (Wild Geese Whiskey) manufactures and sells Wild Geese Irish Whiskey, while the respondent Campari America LLC (Wild Turkey Bourbon) manufacturers and sells Wild Turkey Bourbon.
Wild Geese Whiskey applied to registered the mark WILD GEESE in 2000 (Whiskey Mark), however for some years following this did not make use of the mark. In 2005, Mr O’Sullivan filed for the trade marks WILD GEESE and WILD GEESE WINES (O’Sullivan Marks), which were blocked from registration because of the prior Whiskey Mark. Mr O’Sullivan filed an application to remove the Whiskey Mark from the register on the ground of non-use.
Through this removal action, Mr O’Sullivan became aware that Wild Turkey Bourbon had also filed an application to remove the Whiskey Mark. It appears that as a result of negotiations between Mr O’Sullivan and Wild Turkey Bourbon, Mr O’Sullivan agreed to assign his O’Sullivan Marks, together with his removal application, to Wild Turkey Bourbon and in return, Wild Turkey Bourbon granted Mr O’Sullivan a perpetual licence to use the O’Sullivan Marks. The trade mark licence agreement contained certain standard measures of control, including quality control assurance provisions; however, these mechanisms were not exercised in practice.
Following this, Wild Turkey Bourbon succeeded in removing the Whiskey Mark from the Register and then registered the O’Sullivan Marks in its name.
In 2010, Wild Geese, who had commenced selling their whiskey in Australia, sought to remove the O’Sullivan Marks (WILD GEESE and WILD GEESE WINES that were now owned by Wild Turkey Bourbon) from the register on the ground of non-use. It is important to note that Wild Turkey Bourbon, who now owned the O’Sullivan Marks, had not made any use of the marks themselves, and all use of the marks had been made by Mr O’Sullivan in relation to his Wild Geese Wines products.
A Delegate of the Registrar of Trade Marks Office granted the application for removal, which Wild Turkey Bourbon then appealed to the Federal Court.