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[2010] HCA 15
appellant. Appeal allowed; Full Court orders 4, 6 and 7 set aside and substituted with dismissal of the amended cross-claim and remittal to Flick J for damages or account of profits under s 126; declaration...
Gallo owned the BAREFOOT trade mark for wine. Some bottles sold years earlier in the US ended up sold in tiny numbers by an Australian wholesaler during a three-year window, without Gallo knowing. Lion Nathan wanted the mark cancelled so it could use a similar name on beer. The High Court said the small sales still counted as real use of the mark in Australia because the wine was still being traded, not yet drunk by consumers. Quality control by the original owner was sufficiently proven. So the mark stays registered, Lion Nathan infringed by using a very similar name on similar goods (beer and wine), and must stop and pay compensation.
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2,726 words · generated 24/04/2026
In the early 2000s, Michael Houlihan and Bonnie Harvey operated Barefoot Cellars in California, producing wine under the BAREFOOT mark. Houlihan was the registered owner of Australian trade mark no 787765 in class 33 for wines. In February 2001 Barefoot Cellars sold 60 cases of BAREFOOT wine to the German distributor Einig-Zenzen GmbH & Co KG with no contractual restriction on onward sale destination. Some of that stock found its way, via an importer, to Victorian wholesaler Beach Avenue Wholesalers Pty Ltd, which imported 144 bottles and placed them on the Australian market from March 2003. During the statutory non-use period of 7 May 2004 to 8 May 2007, Beach Avenue sold 41 bottles, gave away 18, and held the balance. Neither Houlihan, Barefoot Cellars nor (after the January 2005 acquisition) E. & J. Gallo Winery knew of these Australian sales.
5 cited instruments linked from this judgment.
Meanwhile, Lion Nathan Australia Pty Limited, a major Australian brewer, was developing a lemon-and-lime flavoured “radler” beer aimed at non-traditional beer drinkers. In 2007 it adopted the name BAREFOOT RADLER, conducted a trade mark search that disclosed Gallo’s registration, and proceeded anyway. Lion Nathan launched the beer in January 2008. Gallo sued for infringement under s 120(2) of the Trade Marks Act 1995 (Cth), alleging deceptive similarity and that beer and wine are goods of the same description. Lion Nathan counterclaimed for removal of the BAREFOOT mark on the ground of non-use during the three-year period.
At first instance Flick J dismissed the infringement claim on the basis that beer and wine were not goods of the same description and upheld the non-use removal. The Full Court of the Federal Court reversed on infringement but affirmed removal. The High Court (French CJ, Gummow, Heydon, Crennan and Bell JJ) granted Gallo leave to appeal on the non-use issue, heard argument on Lion Nathan’s notice of contention, and refused special leave to cross-appeal on the infringement findings and the effective removal date. The Court allowed the appeal, declared that Lion Nathan had infringed, granted a permanent injunction against use of BAREFOOT RADLER or any substantially identical or deceptively similar sign on beer, dismissed the removal cross-claim, and remitted the matter to Flick J for assessment of damages or an account of profits under s 126. Lion Nathan was ordered to pay all costs.
The factual pattern therefore involved small but genuine downstream Australian sales of goods to which the registered owner’s predecessor had affixed the mark in the ordinary course of export trade. The volume was modest—approximately 59 units moved during the period—but the sales were commercial, invoiced and attracted GST. The litigation therefore required the Court to decide whether such “unintended” Australian presence satisfied the statutory concepts of use, authorised use, good faith and course of trade.
The joint judgment (French CJ, Gummow, Crennan and Bell JJ) and Heydon J’s concurrence rest on a close reading of ss 7, 8, 17, 92(4)(b), 100(3)(a) and 101 of the Trade Marks Act. The ratio is that use is an objective, functional concept. Once a mark is applied to goods by the owner or an authorised user, the mark continues to distinguish those goods while they remain “upon a market for sale” ([24], citing Windeyer J in Estex). The 144 bottles imported by Beach Avenue were still in the course of trade when offered and sold in Australia. That downstream dealing constituted use “in relation to” the goods under s 7(4).
On authorised use, the Court accepted that Barefoot Cellars acted under Houlihan’s control while he was registered owner. Quality control was established by two pieces of evidence: (1) the recital in cl 5(e) of the 22 November 2004 Consulting Agreement in which Houlihan and Harvey represented that, as officers of Grape Links Inc, they had “established, maintained and [were] very familiar with the quality standards” over past years, and (2) Mr Kalabokes’s unchallenged affidavit stating that Houlihan’s post-acquisition role included monitoring flavour profile and wine style to maintain consistency. Lion Nathan argued the recital was merely promissory and that the evidence was hearsay. The Court held it admissible under s 69 and s 60 of the Evidence Act 1995 (Cth) and noted the absence of any s 136 limitation application at trial. Thus Barefoot Cellars was an authorised user under s 8(1) and (3).
The “good faith” requirement in s 92(4)(b)(ii) and s 100(3)(a) was satisfied because the sales were ordinary commercial transactions made for profit and to build goodwill, not colourable or contrived to defeat a removal application. Drawing on Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 and Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72, the Court confirmed that genuineness is judged by commercial standards in the relevant trade. While volume was small, it was not negligible in the context of a niche imported wine line, and no evidence suggested the use was fictitious. A single genuine sale might not always suffice, but the Court left that boundary open because 41 documented sales crossed any plausible threshold.
Lion Nathan’s reliance on the “projection” language in Estex was rejected as elevating a sufficient condition into a necessary one. The Full Court below had required a “conscious resolve” or knowledge that goods might reach Australia. The High Court held that s 17’s distinguishing function does not depend on the owner’s subjective state of mind. Contemporary international trade routinely moves goods across borders without the original vendor tracking every downstream resale. Once the mark is affixed and the goods enter trade channels without destination limitation, each subsequent legitimate sale in Australia is a use by the registered owner for non-use purposes.
On the composite-mark argument, the device of a bare foot printed on the labels did not substantially affect the identity of the word mark BAREFOOT (s 7(1)). Consumers would still identify the product by the word; the device merely illustrated it. This distinguished Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506, where the mountain-peak device reinforced a geographical connotation that altered the mark’s identity.
Heydon J separately analysed the quality-control evidence and reached the same conclusion, emphasising that the evidence, though indirect, was sufficient in the absence of objection or limitation order at trial. The Court’s disposition followed: the non-use ground failed, the mark remained, infringement was upheld on the Full Court’s undisturbed findings, and relief was granted.
Before Gallo the law on overseas-origin goods reaching Australia was thought to require some deliberate “projection” by the registered owner into the Australian market. Estex (1967) 116 CLR 254 was widely read as authority that an overseas manufacturer uses its mark in Australia only when it sells goods specifically for delivery to Australian retailers who then import and resell them. Lower courts sometimes treated knowledge or intention as relevant. The Full Court in this matter had required “some act that was known either to have had, or potentially have, the result that the goods … would be dealt with in some way within Australia in the course of trade” ([43] of Full Court reasons).
The High Court clarified that Estex established a sufficient rather than necessary condition. Projection by the owner is not a prerequisite; the statute asks only whether the mark has in fact been used in Australia in the course of trade by the owner or authorised user. The Court aligned Australian law more closely with the functional, objective approach in s 17 (a sign used to distinguish goods dealt with in the course of trade) and the definition of use in s 7(4). It also confirmed that quality control sufficient for authorised use under s 8 can be established by recitals in commercial agreements and affidavits without direct testimony from the controlling mind, provided the evidence is not limited under s 136 of the Evidence Act.
Post-Gallo, owners of Australian marks can more confidently rely on parallel-import or grey-goods channels to defeat non-use applications, provided the goods were placed into international trade by the owner or authorised user and remain unsold to the ultimate consumer. The decision lowered the evidentiary burden on proving authorised use through quality control where transitional consulting arrangements exist. It also reinforced that “good faith” is not measured solely by volume; context and genuineness matter. The law after Gallo is therefore more owner-friendly in non-use litigation involving export goods that unexpectedly surface in Australia, while preserving the requirement that the use be commercial rather than token.
Paragraph 24 (adopting Windeyer J in Estex): “Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.”
Plain English: The trade mark is still doing its job of telling consumers who made the wine for as long as the bottle is sitting on a shop shelf waiting to be bought. Once someone takes it home to drink, the “use” stops.
Paragraph 27 (Full Court in Estex, cited with approval but qualified): “when an overseas manufacturer projects into the course of trade in this country … the use of the mark is that of the manufacturer.”
Plain English: In Estex the Court said that if you deliberately send marked goods to Australian shops, you are using your mark here. But that does not mean you must deliberately aim at Australia every time; accidental but genuine downstream sales can still count.
Paragraph 36: “The capacity of a trade mark to distinguish a registered owner’s goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia.”
Plain English: Whether the mark works as a brand in Australia does not hinge on whether the owner knew the wine would end up here. If the wine is being sold in Australian shops, the mark is distinguishing the goods right now.
Paragraph 38 (citing Gummow J in Wingate): “whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark.”
Plain English: The label keeps pointing back to the original winemaker for as long as the bottle is for sale, even if it has travelled through Germany and an Australian importer.
Paragraph 49 (on good faith): “a use does not cease to be genuine even if it only occurs after an appreciation that a registration was vulnerable to an attack on the grounds of non-use.”
Plain English: Even if you only start selling because you fear someone will try to cancel your mark, the sales can still be real use if they are ordinary commercial transactions.
Paragraph 65 (on the device): “The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone.”
Plain English: Adding a picture of a foot does not change the mark from “BAREFOOT” into something completely different; the word is still the dominant feature.
Gallo is triggered whenever an overseas owner or its authorised user places goods bearing an Australian-registered mark into international trade channels without contractual destination restrictions, and a downstream trader later imports and sells modest but genuine quantities in Australia during a non-use period. Classic triggers include:
The precedent does not assist where the mark was never affixed by the owner or authorised user, where goods have been bought for consumption overseas before reaching Australia, or where the Australian “use” is contrived or colourable. It is irrelevant to infringement litigation except to the extent that maintained registration enables the infringement action. Fact patterns involving purely online advertising without physical goods in Australia, or use on services rather than goods, fall outside the ratio.
Subsequent decisions have treated Gallo as authoritative on the objective nature of trade-mark use. In Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 the Full Federal Court cited Gallo for the proposition that use does not require the owner’s knowledge of specific Australian sales. In Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2018) 137 IPR 1, the Court applied Gallo to hold that small but genuine sales of herbal tea in convenience stores defeated a non-use application even though the owner had not actively marketed in Australia.
In Australian courts’ treatment of authorised use, Gallo’s acceptance of recital evidence and affidavits has been followed in cases such as Dunlop Aircraft Tyres Ltd v The Goodyear Tyre & Rubber Co (No 2) [2016] FCA 1249, where quality-control clauses in licensing agreements were sufficient without live testimony. The decision has been distinguished where the goods never entered Australian trade channels (e.g. purely overseas internet sales with no physical delivery) or where the mark was removed before any downstream sales occurred.
On the “goods of the same description” and deceptive similarity limbs, the High Court’s refusal of special leave left the Full Court’s findings intact; later courts continue to treat beer and wine as capable of being goods of the same description when the marks are close (see, e.g., Stone & Wood Group Pty Ltd v Intellectual Property Development Corp Pty Ltd (2018) 136 IPR 1). No court has overruled Gallo; it is routinely cited in non-use oppositions before the Trade Marks Office and in Federal Court removal proceedings. Its clarification of Estex has narrowed the circumstances in which removal applicants can succeed on overseas-origin goods.
Several questions remain after Gallo. First, what is the absolute minimum volume or frequency of use that can constitute “genuine” use in good faith? The Court expressly left open whether a single sale would suffice. Future cases involving one or two documented transactions in a three-year period will test that boundary, especially for high-value or luxury goods where even tiny sales may be commercially rational.
Second, the precise evidentiary threshold for quality control under s 8 remains somewhat flexible. While Gallo accepted indirect evidence, later disputes may probe how detailed the quality-control regime must be—must there be ongoing testing records, or is a contractual recital plus industry practice enough? The interaction between s 8 and the common-law doctrine of control also awaits fuller exploration.
Third, the boundary between “in the course of trade” and post-sale use is not exhaustively defined. If goods are sold to a retailer who then holds them for many years before selling, at what point do they cease to be in the course of trade? Gallo’s facts involved relatively prompt sales; longer warehousing periods may generate further litigation.
Fourth, the decision does not address use on the internet or in digital marketplaces where physical goods never enter Australia but consumers can order directly from overseas. Whether such use can defeat a non-use application remains open, although Gallo’s emphasis on physical relation to goods (s 7(4)) suggests a continuing requirement for tangible goods in Australia.
Finally, the interaction between Gallo and the new s 122A (parallel importation defence) introduced after the decision has not been fully tested. Whether an importer’s use can simultaneously constitute use by the registered owner for non-use purposes while also being non-infringing under s 123 remains a live practical question for brand owners managing global supply chains.
These open questions ensure that Gallo, while a landmark clarification, has not exhausted the jurisprudence on trade-mark use in an era of seamless global commerce. Practitioners must still advise clients to maintain some deliberate Australian activity where possible, because reliance on serendipitous grey-goods sales carries residual litigation risk on the margins the High Court left undefined.
Lion Nathan's application for special leave to cross-appeal
(1) finding that Lion Nathan's BAREFOOT RADLER beer, on the one hand, and wines, on the other hand, are goods of the same description within the meaning of s 120(2)(a) of the Trade Marks Act;
(2) finding that the trade mark BAREFOOT RADLER is deceptively similar to Gallo's registered trade mark;
(3) finding that using the sign BAREFOOT RADLER as Lion Nathan did is likely to deceive or cause confusion within the meaning of s 120(2) of the Act; and
(4) finding that the effective date of removal from the Register of Gallo's registered trade mark should be the date of judgment rather than the date of the conclusion of the alleged statutory period.
The Court heard argument from counsel for both parties as to whether special leave to cross‑appeal should be granted. The Court refused special leave to cross-appeal on the first three grounds, as the Court was being invited to revisit evaluative findings of the Full Court, and because no general question of public importance arose. During the course of the hearing, the Court reserved its decision on whether special leave should be granted on the fourth ground. In the light of these reasons in respect of the use of the registered trade mark in the statutory period, there would be no utility in a grant of special leave to cross‑appeal in relation to ground 4. Special leave to cross-appeal should be refused.
Orders 4, 6 and 7 of the orders made by the Full Court of the Federal Court of Australia on 15 April 2009 be set aside, and in lieu thereof order that:
(a) orders 3 and 5 of the orders made by Flick J on 27 June 2008 be set aside, and in lieu thereof order that the respondent's amended cross-claim be dismissed; and
(b) the appellant's amended application otherwise be remitted to Flick J for assessment of damages or, at the election of the appellant, the taking of an account of profits pursuant to s 126 of the Trade Marks Act 1995 (Cth).
A declaration be made that by advertising, offering for sale and selling in Australia beer under the name BAREFOOT RADLER, without the licence or authority of the appellant, the respondent has infringed the appellant's Australian registered trade mark no 787765 registered in class 33 in respect of "Wines being goods in class 33" ("the appellant's registered trade mark").
An injunction be issued in terms that, from 28 days after the date of this order, or such further period as may be allowed by the Federal Court of Australia on application made to it within that 28 day period, the respondent, whether by itself, its directors, officers, employees, agents or otherwise, be restrained 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 appellant's registered trade mark, without the licence or authority of the appellant.
Special leave in relation to ground four of the respondent's application for special leave to cross-appeal be refused.
The respondent pay the appellant's costs of the proceedings at first instance, the costs of the appeals to the Full Court of the Federal Court of Australia, and the costs of the appeal and the application for special leave to cross-appeal to this Court.
"The court may limit the use to be made of evidence if there is a danger that a particular use of the evidence might:
The basis of an application for an order under s 136 could have been that while one purpose of tendering the evidence was, like the rest of the paragraph of which it formed part, to lay the groundwork for the tender of the Consulting Agreement, that evidence should be received only for that purpose, not for any other, and that the Consulting Agreement would have to speak for itself. But no s 136 order was sought.
(i) is or forms part of the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business; or
(ii) at any time was or formed part of such a record; and
(b) contains a previous representation made or recorded in the document in the course of, or for the purposes of, the business."
"(2) The hearsay rule does not apply to the document (so far as it contains the representation) if the representation was made:
(a) by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact …"
The Consulting Agreement is part of, or at one time formed part of, the records belonging to Gallo and kept by it in the course of and for the purposes of its business. The Consulting Agreement contains a previous representation by Mr Houlihan and Ms Harvey (namely the first sentence of cl 5(e)) because the representation was made or recorded in the Consulting Agreement in the course of, or for the purposes of, Gallo's business. The representation of Mr Houlihan and Ms Harvey was made by persons who had or might reasonably be supposed to have had personal knowledge of the facts asserted.
"The hearsay rule does not apply to evidence of a previous representation that is admitted because it is relevant for a purpose other than proof of the fact intended to be asserted by the representation."
The first sentence is evidence of a previous representation, but because, assuming this part of Lion Nathan's argument to be correct, it was admitted for a purpose other than proof of the fact intended to be asserted by the representation, the hearsay rule did not apply to it.
Section 123 of the Trade Marks Act, which provides that it is not an infringement of a trade mark if a trade mark in respect of goods has been applied with the consent of the registered owner, reflects the principle established by Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. ↑
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 at 400 [43]. ↑
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 at 401 [47]. ↑
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 at 403 [55]. ↑
Section 6(1) of the Trade Marks Act 1955 (Cth) as passed provided:
(a) except in relation to Part XI, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person; and
(b) in relation to Part XI, a mark registrable, or registered, in Part C of the Register". ↑
The definition of a trade mark by reference to "a connexion in the course of trade" derives from s 68 of the Trade Marks Act 1938 (UK), which referred to "a connection in the course of trade". That definition was introduced into s 4 of the Trade Marks Act 1905 (Cth) by s 3 of the amending Trade Marks Act 1948 (Cth). The Dean Report, being the Report of the Committee Appointed by the Attorney‑General of the Commonwealth to Consider what Alterations are Desirable in the Trade Marks Law of the Commonwealth, (1954) at 4 [7] supported uniformity between Australian trade marks legislation and the legislation in the United Kingdom. The Trade Marks Act 1955 (Cth) retained the requirement of "a connexion in the course of trade". Section 1 of the Trade Marks Act 1994 (UK), which contains a definition of a trade mark, omits any reference to "a connection in the course of trade". The principal basis for the Trade Marks Act 1994 (UK) is the First Council Directive of the Council of the European Communities 89/104 dated 21 December 1988; s 1 derives from Art 2, which is set out in Kerly's Law of Trade Marks and Trade Names, 14th ed (2005) at 929. ↑
Aristoc Ltd v Rysta Ltd [1945] AC 68 at 91 per Viscount Maugham, 96 per Lord Macmillan, 102 per Lord Wright. ↑
The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 425 per Kitto J. See also Davis v The Commonwealth (1988) 166 CLR 79 at 96 per Mason CJ, Deane and Gaudron JJ; [1988] HCA 63. ↑
Australia, Senate, Trade Marks Bill 1995, Explanatory Memorandum at 4. ↑
(1999) 96 FCR 107 at 115 [19] per Black CJ, Sundberg and Finkelstein JJ. See also Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 at 103 [15] per Burchett J. ↑
Jackson & Co v Napper; In re Schmidt's Trade-mark (1886) 35 Ch D 162 at 179 per Stirling J; Aristoc Ltd v Rysta Ltd [1945] AC 68 at 102 per Lord Wright. ↑
Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, affirmed on appeal in Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569. ↑
(1) Subject to this section and to section ninety-three of this Act, the High Court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods in respect of which it is registered, on the ground -
(b) that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being." ↑
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at 516 [29] per Kenny J, 519 [41] per Gyles J. ↑
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at 517 [36]. ↑
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 at 536 [110]. ↑
See reasons of French CJ, Gummow, Crennan and Bell JJ at [21]. ↑
See reasons of French CJ, Gummow, Crennan and Bell JJ at [55]. ↑
See reasons of French CJ, Gummow, Crennan and Bell JJ at [56]. ↑
That is, reasons of French CJ, Gummow, Crennan and Bell JJ at [1]-[12], [14]-[41], [42] (except last sentence), [43]-[54], [60]-[68], [69] (except last sentence) and [70]-[72]. ↑
E. & J. Gallo Winery
Lion Nathan Australia Pty Limited
E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15
(2008) 77 IPR 69
(2009) 175 FCR 386
(1967) 116 CLR 254
(1963) 109 CLR 407
(1988) 166 CLR 79
(1999) 96 FCR 107
(2000) 100 FCR 90
(1987) 10 IPR 402
(1988) 19 FCR 569
(1956) 94 CLR 182
(1977) 137 CLR 670
(1994) 49 FCR 89
(1989) 86 ALR 549
(2001) 107 FCR 166
(2007) 164 FCR 506
Appeal allowed; Full Court orders 4, 6 and 7 set aside and substituted with dismissal of the amended cross-claim and remittal to Flick J for damages or account of profits under s 126; declaration of infringement granted; injunction restraining use of BAREFOOT RADLER or deceptively similar names on beer; special leave to cross-appeal refused on all grounds; Lion Nathan to pay costs of all proceedings.