Apple and Pear Australia Limited (APAL) own the Pink Lady brand for apples in numerous worldwide territories. They own the Pink Lady trademark in most territories, but in 2006 they did not own the trade marks in North America.
Pink Lady America had successfully registered the Pink Lady trade marks in Chile and in 2006 Pink Lady America agreed to assign this trademark to APAL. As part of this assignment Pink Lady America would retain the exclusive right to exploit the marks in North American territories.
APAL and Pink Lady America subsequently entered into an agreement where APAL agreed to grant Pink Lady America an exclusive, royalty free licence to use the trademarks in the territories between Chile and North America.
The International Pink Lady Alliance (IPLA) is an organisation which develops and promotes the PINK LADY brand and both APAL and Pink Lady America are members. In 2008 the IPLA introduced a new heart shaped logo which they called 'refreshed'.
APAL argued that this new logo did not fall under the agreement reached with Pink Lady America and so it could not be used royalty free. Pink Lady America did not agree and so APAL issued proceedings to determine the status and scope of the agreement. The main issue was whether the agreement covered only the trademarks which were present at the time the agreement was drawn up, or if the refreshed logo was also covered by the agreement.
The Judge at the Victorian Supreme Court held that Pink Lady America could use the logo because both APAL and Pink Lady America were aware at the time of the agreement that the new logo would be introduced by the IPLA, but chose not to include it in the agreement.
APAL appealed the decision and on 2 November 2016 the Court of Appeal Judge overturned this decision and held that the agreement was limited to the trademarks listed in the schedule of the agreement, which did not include the refreshed logo. The Judge held that even if the surrounding circumstances could be taken into account at the time of the construction of the agreement, the circumstances did not support the conclusion that the agreement was intended to apply to the refreshed mark.
APAL's intellectual property manager Garry Langford said "We are pleased that the judgment has confirmed APAL's rights in Chile relating to the trademarks as this will be of benefit to all growers in Chile who export under licence from APAL."
The decision means that APAL can continue licensing the brand on Chilean-grown fruit to North America. Pink Lady America has until 21 December 2016 to appeal the decision further to the High Court in Australia and it will be interesting to see whether they decide to take this step.in: EU/International, Trade Marks