Vodka Wars: KWM, SPI Group Wins Long-Running Stolichnaya Trade Mark Case
King & Wood Mallesons, in a 15-year trade mark case, has successfully defended its client, SPI Group (‘SPI’) in relation to ownership of the Stolichnaya brand name in Australia. The proceedings concerned the ownership of trade marks of the well-known brands of the Russian vodka including the famous Stolichnaya trade mark. The proceedings commenced in 2004 with the underlying allegations that various trade marks were stolen from the Russian Federation.
The Federal Treasury Enterprise (FKP) Sojuzplodoimport (‘FKP’) was formed as an entity in 1966 under the laws of the former Union of Soviet Socialist Republics (USSR). In December 1991, the USSR was dissolved and was succeeded in Russia by the Russian Federation. The central issue concerned legal events in 1992, as to the transfer of ownership of the trade marks. SPI sought access to documents and various categories of discovery to investigate the legality of ownership of the marks.
In 2017, Edmonds J concluded that the Russian Federation was the “real plaintiff” in the proceeding rather than the FKP because it was the Russian Federation that claimed to be the owner of the trade marks and that the FKP was a conduit on its behalf.
As the Russian Federation was the true plaintiff in the proceedings, it should provide discovery and the proceedings would be stayed pending further order. Perram J ordered a further stay of the proceedings and that unless proper discovery was given by 30 November 2018, SPI was granted leave to file an interlocutory application to seek dismissal of the cross-claim. In November 2019, the proceedings were permanently stayed by the Federal Court because the Russian Federation did not provide discovery.
Mr. John Swinson of KWM said: “This is a very positive result for our client after such long-running proceedings. We think this was the longest-running Federal Court case presently on the docket in Australia. We are pleased to have acted for SPI Group in this matter to ensure that injustice was not done.”
“It is FKP’s position that the recent judgment handed down by the Federal Court of Australia is a purely procedural decision. The decision was based on rules of procedure, specific to the Australian courts and was not a decision on the merits of the dispute between FKP and SPI International B.V,” said a spokesperson for Quinn Emanuel Urquhart & Sullivan, the firm representing FKP.
Svethlana Milanes, ABComm
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