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Appeal granted in Stolichnaya vodka trademark battle
A long-running battle for several Russian trademarks continues as a permanent stay order given in 2019 was revoked last week.
Lauren Croft
The case has had proceedings in Australian courts since 2004 and involves a cross-claim between by Russian state-owned entity Federal Treasury Enterprise Sojuzplodoimport (FKP) and SPI Group – which owns Spirits International B.V. that produces both the Stolichnaya and Moskovskaya vodka brands in Australia. Both parties are claiming ownership of both trademarks, among others.
King & Wood Mallesons, which represents SPI Group, was previously victorious in the Federal Court proceedings in 2019 and said in a statement at the time: “The Russian Federation (which the Court has previously found to be the ‘real plaintiff’ in the proceeding) sought to confiscate several Australian trademarks which are owned by SPI Group. The trademarks were owned by a Russian state-owned entity in the early 1990s, and were eventually transferred to SPI Group following privatisation of that entity.
“The Court permanently stayed the case in May 2019, but left open a question of whether there was any part of FKP’s claims which was not affected by the Russian Federation’s failure to provide discovery. The decision yesterday confirmed that the whole of the case was affected and should be permanently stayed in its entirety.”
Quinn Emanuel Urquhart & Sullivan stated that “FKP has a court-ordered right of appeal” and filed in November 2019. Last week, the Full Court found that the primary judge was incorrect to order a permanent stay of FKP’s entire cross-claim in October 2019 and the proceedings have been remitted to the Federal Court to reconsider the matter.
“In our view, the primary judge did not give sufficient consideration to the needs of justice as between the parties by failing to determine what effect any actual non-provision of documents by the Federation would have upon Spirits’ ability to defend the cross-claim in light of any issues estoppel that might flow from the Dutch decisions,” the judgement said.
“Granting a permanent stay is a draconian remedy. It is fair to say that Spirits could not speculate as to what was missing. But it is not enough to say that discovery was not complete. Spirits needed to do more to persuade the Court that the interests of justice warranted a permanent stay. It ought to have explained why, with what it had, it was nevertheless still substantially prejudiced in its conduct of the discretionary defences. There was no such analysis either by Spirits or the primary judge.”
It is for these reasons that the appeal was granted and the court recommended that the permanent stay order be lifted and modified. The Full Court has also indicated that FKP should be entitled to its costs of the appeal.
Quinn Emanuel Urquhart & Sullivan founding partner Michelle Fox said the firm was looking forward to continuing the matter in court.
“We are extremely happy to have been able to achieve such a fantastic result for our client Federal Treasury Enterprise Sojuzplodoimport in this important, long-running litigation. We look forward to advancing the true issues in dispute in this important proceeding, as our client is now rightly able to do,” she said.
Lawyers Weekly contacted KWM for a statement, which declined to comment at this time.
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Lauren Croft
Lauren is a journalist at Lawyers Weekly and graduated with a Bachelor of Journalism from Macleay College. Prior to joining Lawyers Weekly, she worked as a trade journalist for media and travel industry publications and Travel Weekly. Originally born in England, Lauren enjoys trying new bars and restaurants, attending music festivals and travelling. She is also a keen snowboarder and pre-pandemic, spent a season living in a French ski resort.
