Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judge: BESANKO J
• Judgment Date: 25 July 2019
• Neutral Citation: [2019] FCA 1140
• Court: Federal Court
• Date: 25 July 2019

FEDERAL COURT OF AUSTRALIA

Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140

File number:	SAD 340 of 2016
Judge:	BESANKO J
Date of judgment:	25 July 2019
Catchwords:	TRADE MARKS — where the applicants seek declarations and injunctions with respect to trade mark infringement — whether an injunction granted pursuant to s 126 of the Trade Marks Act 1995 (Cth) can and should be expressed in terms of the applicants’ statutory monopoly or in terms of the particular conduct found to be infringing conduct — where the applicants also seek an order with respect to their applications for registration of other marks ; CONSUMER LAW — where the applicants seek declarations and injunctions with respect to contraventions of ss 18 and 29(1)(h) of the Australian Consumer Law — whether an injunction granted pursuant to s 232 of the Australian Consumer Law should be expressed in terms of the conduct giving rise to the contravention — where the applicants also seek delivery up pursuant to the Court’s general powers and pursuant to s 238 and s 243(d) of the Australian Consumer Law, or removal of the infringing words — whether the Court should make an order for delivery up when the order will result in the delivery up of valuable commercial property ; COSTS — where the applicants seek an order with respect to costs — whether the respondents should be ordered to pay the applicants’ costs of and incidental to the trial
Legislation:	Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) ss 18, 29, 232, 238, 243 Trade Marks Act 1995 (Cth) s 126
Cases cited:	Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; (2015) 327 ALR 630 Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1970) 122 CLR 25 Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 Interflora Inc v Marks and Spencers plc (No 2) [2014] FSR 3 Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 Melway Publishing Pty Ltd v Robert Hicks Pty Limited (2001) 205 CLR 1 Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902 Playgro Pty Ltd v Playgo Art & Craft Manufactory Limited (No 2) [2016] FCA 478 Roussel Uclaf v Pan Laboratories Pty Ltd (1994) 51 FCR 316 Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780; (2011) 282 ALR 43 Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (No 2) [2015] FCA 140; (2015) 322 ALR 557 Sun Microsystems Inc v Airtech Computer Corp Ltd [2006] FSR 35 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Date of hearing:	18 July 2019
Date of last submissions:	23 July 2019
Registry:	South Australia
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	30
Counsel for the Applicants:	Mr P Bullock
Solicitor for the Applicants:	Minicozzi Lawyers
Counsel for the Respondents:	Mr M Murphy
Solicitor for the Respondents:	Georgiadis Lawyers

ORDERS

		SAD 340 of 2016
BETWEEN:	MITOLO WINES AUST PTY LTD (ACN 089 233 312) AS TRUSTEE OF THE MITOLO WINE TRUST First Applicant ; MITOLO WINES PTY LTD (ACN 112 011 560) Second Applicant
AND:	VITO MITOLO & SON PTY LTD (ACN 166 447 605) First Respondent ; VITO MITOLO Second Respondent ; ANTHONY MITOLO Third Respondent
AND BETWEEN:	VITO MITOLO & SON PTY LTD (ACN 166 447 605) (and another named in the Schedule) First Cross-Claimant
AND:	MITOLO WINES AUST PTY LTD (ACN 089 233 312) AS TRUSTEE OF THE MITOLO WINE TRUST (and another named in the Schedule) First Cross-Respondent

JUDGE:	BESANKO J
DATE OF ORDER:	25 JULY 2019

THE COURT DECLARES THAT:

1. By the use of the words:

1.1 V. Mitolo and (whether or not within the ribbon device) Son;

1.2 V. Mitolo & Son;

1.3 V. Mitolo and (whether or not within the ribbon device) Son within the two‑heads logo; or

1.4 V. Mitolo & Son within the two-heads logo

and whether or not in conjunction with use of another prominent word, the first respondent has infringed trademark number 801717 of the first applicant registered in Class 33 in respect of the goods “wine”.

2. By the use of the words:

2.1 V. Mitolo and (whether or not within the ribbon device) Son;

2.2 V. Mitolo & Son;

2.3 V. Mitolo and (whether or not within the ribbon device) Son within the two‑heads logo; or

2.4 V. Mitolo & Son within the two-heads logo

and whether or not in conjunction with use of another prominent word, the first respondent has contravened s 18 of the Australian Consumer Law.

3. By the use of the words:

3.1 V. Mitolo and (whether or not within the ribbon device) Son;

3.2 V. Mitolo & Son;

3.3 V. Mitolo and (whether or not within the ribbon device) Son within the two‑heads logo; or

3.4 V. Mitolo & Son within the two-heads logo

and whether or not in conjunction with use of another prominent word, the first respondent has contravened s 29(1)(h) of the Australian Consumer Law.

4. The second and third respondents are persons involved in the first respondent’s contravention of s 18 and s 29(1)(h) of the Australian Consumer Law set out in declarations 2 and 3 above.

5. By offering for sale red wine:

5.1 bearing the McLaren Vale geographic indication;

5.2 from a location very near to the applicants’ cellar door; and

5.3 utilising the name “V. Mitolo and Son” or “V. Mitolo & Son”

the first respondent has passed off its wine as the applicants’ wine, or otherwise associated with the applicants’ wine.

THE COURT ORDERS THAT:

6. Pursuant to s 126 of the Trade Marks Act 1995 (Cth), the first respondent, whether by itself, its directors, employees, servants or agents and the second and third respondents and each of them are restrained from infringing the first applicant’s registered trade mark number 801717 for the word “MITOLO”.

7. Pursuant to s 126 of the Trade Marks Act 1995 (Cth), the first respondent, whether by itself, its directors, employees, servants or agents, is restrained from advertising, marketing, promoting, exhibiting in public, offering for sale and selling wine in Australia using the words:

7.1 V. Mitolo and (whether or not within the ribbon device) Son;

7.2 V. Mitolo & Son;

7.3 V. Mitolo and (whether or not within the ribbon device) Son within the two‑heads logo; or

7.4 V. Mitolo & Son within the two-heads logo

save to the minimum extent necessary to comply with any applicable written Australian law or legislative instrument.

8. Pursuant to s 232 of the Australian Consumer Law, the first respondent, whether by itself, its directors, employees, servants or agents, and the second and third respondents and each of them, are restrained from advertising, marketing, promoting, exhibiting in public, offering for sale and selling wine or wine related merchandise in Australia using the words:

1. V. Mitolo and (whether or not within the ribbon device) Son;

2. V. Mitolo & Son;

8.3 V. Mitolo and (whether or not within the ribbon device) Son within the two-heads logo; or

8.4 V. Mitolo & Son within the two-heads logo

save to the minimum extent necessary to comply with any applicable written...