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29 November 2016Trademarks

Up the apples and pears: court rules in Pink Lady trademark battle

Apple and Pear Australia (APAL), an Australian commercial apple and pear grower, has won a trademark dispute over the Pink Lady brand.

The Court of Appeal of the Supreme Court of Victoria heard a case between APAL, which manages the Pink Lady brand in Australia and other countries, and US-based Pink Lady America (PLA) on November 23.

The court granted an appeal filed by APAL over its ‘Pink Lady’ trademarks used for apples grown and exported from Chile to North America and elsewhere. It said that PLA cannot use ‘Pink Lady’ trademarks registered in Chile.

APAL and PLA had entered into an “opinion deed” where PLA agreed to transfer APAL the ownership of its ‘Pink Lady’ trademarks that it had applied for in Chile.

This was in exchange for an “exclusive licence” to use the trademarks for the “relevant” apple products in Chile and the US, royalty free, in perpetuity.

The trial judge had to earlier decide not only whether the opinion deed covered the trademarks set out in the schedule to that deed, but also a “refreshed” ‘Pink Lady’ mark that was adopted in 2008 by the International Pink Lady Alliance (IPLA).

IPLA is an organisation with an interest in developing and promoting the Pink Lady brand. APAL and PLA are both members of IPLA.

The trial judge had found that the opinion deed did include the “refreshed” trademark because APAL and PLA were “aware” that the mark would be adopted by IPLA.

But the appeals court held that the judge “erred” in taking this approach. It held that, if properly construed, the option deed doesn’t extend to the “refreshed” mark and is limited to the trademarks listed in the schedule to the deed.

Additionally, the court rejected an argument by PLA that the opinion deed had been “varied” to include the refreshed mark.

Garry Langford, APAL’s intellectual property manager, said: “The court of appeal has held and ordered that Pink Lady America has no right to use the ‘Pink Lady’ trademarks registered in Chile.

“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.”

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