Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 3)

• Jurisdiction: Australia Federal only
• Judge: BESANKO J
• Judgment Date: 16 December 2019
• Neutral Citation: [2019] FCA 2116
• Date: 16 December 2019
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 3) [2019] FCA 2116

File number:	SAD 340 of 2016
Judge:	BESANKO J
Date of judgment:	16 December 2019
Catchwords:	PRACTICE AND PROCEDURE — application for a stay of various orders pending the hearing and determination of an appeal to the Full Court of the Federal Court of Australia — whether grounds of appeal are arguable — whether the applicants will be deprived of the full benefits of the judgment in their favour — whether the respondents will be deprived of fruits of their appeal if a stay is refused and the appeal is successful — where the respondents contend they will suffer non-financial prejudice — whether the appeal will be rendered nugatory — where the respondents have not offered security — where there was delay in the filing of the respondents’ application
Legislation:	Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) Federal Court Rules 2011 (Cth) r 36.08
Cases cited:	Alexander v Cambridge Credit Corp Ltd (1985) 2 NSWLR 685; (1985) 10 ACLR 42 Citrus Queensland Pty Ltd v Sunstate Orchards Pty Ltd [2008] FCA 1867 Maher v Commonwealth Bank of Australia [2008] VSCA 122 Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902 Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140 Powerflex Services Pty Ltd v Data Access Corp (1996) 67 FCR 65; (1996) 137 ALR 498 Wealthsure Pty Ltd v Selig [2013] FCA 628
Date of hearing:	27 November 2019
Registry:	South Australia
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	72
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

JUDGE:	BESANKO J
DATE OF ORDER:	16 December 2019

THE COURT ORDERS THAT:

1. The operation of paragraphs 16–21 inclusive of the orders of the Court made on 25 July 2019 be suspended until further order.

2. The respondents’ interlocutory application dated 8 November 2019 be otherwise dismissed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BESANKO J:

Introduction

1. On 8 November 2019, the respondents to this proceeding filed an interlocutory application in which they seek an order for a stay of orders made by the Court on 25 July 2019 and 10 October 2019 pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) (the stay application). The respondents seek a stay pending the hearing and determination of an appeal by them to the Full Court of this Court.

2. The substantive proceeding involved a claim by the applicants against the respondents for relief in relation to trade mark infringement, contraventions of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth) (ACL)) and the tort of passing off. The proceeding also involved a cross-claim by the respondents alleging an estoppel and a contravention of the ACL by the applicants. Prior to trial, I made an order that issues of liability be heard and determined before issues of quantum.

3. On 13 June 2019, I delivered reasons for judgment in relation to the question of liability (Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902 (substantive reasons)). The applicants were successful.

4. On 25 July 2019, I made a number of orders and declarations to give effect to the conclusions set out in the substantive reasons (the final orders) and delivered reasons for those orders (Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140). I also made orders with respect to the costs of the trial and with respect to the categories of discovery relevant to, and the filing of non-expert and expert evidence in relation to, the question of an account of profits.

5. The respondents sought to appeal. On 4 July 2019, prior to the making of the final orders, they filed a Notice of Appeal. They filed a Second Notice of Appeal on 24 September 2019. The appeal is to be heard in May 2020.

6. In the stay application, the respondents seek a stay of the following orders:

12. The respondents pay the applicants’ costs of and incidental to the trial pursuant to order 4 made 16 May 2017 as varied by order 1 made 7 August 2018, to be taxed if not agreed.

…

16. If some or all categories are not agreed, then on or before 30 August 2019, the applicants make such application discovery as they may be advised.

17. Any interlocutory application for discovery be listed for argument on a date to be fixed.

18. On or before 11 October 2019 the applicants file and serve affidavits comprising any further evidence-in-chief upon which they seek to rely in relation to the question of an account of profits.

19. On or before 25 October 2019 the respondents file and serve affidavits comprising any further evidence-in-chief upon which they seek to rely in relation to the question of an account of profits.

20. On or before 15 November 2019, the applicants serve on the respondent[s] any expert reports upon which they seek to rely on the question of an account of profits.

21. On or before 29 November 2019 the respondents serve on the applicants any expert reports upon which they seek to rely on the question of an account of profits.

I will refer to order 12 as the Costs Order and orders 16 to 21 inclusive as the Programming Orders.

7. The respondents also seek a stay of an order made on 10 October 2019. That order, which I will refer to as the Second Costs Order, relates to the costs of an interlocutory application for discovery and production filed by the applicants on 2 October 2019. The order is in the following terms:

5. The respondents pay the applicants’ costs of the interlocutory application dated 2 October 2019.

8. The stay application is opposed by the applicants.

9. In these reasons, I will refer to the parties by reference to their status at trial and I will describe the respondents in the same way as I did in the substantive reasons.

Relevant legal principles

10. The principles which are relevant to an application for a stay of the enforcement of a judgment pending an appeal are well-established: see Alexander v Cambridge Credit Corp Ltd (1985) 2 NSWLR 685; (1985) 10 ACLR 42 per Kirby P, Hope and McHugh JJ; Powerflex Services Pty Ltd v Data Access Corp (1996) 67 FCR 65; (1996) 137 ALR 498 per Burchett, Heerey and Whitlam JJ; Maher v Commonwealth Bank of Australia [2008] VSCA 122 per Redlich and Dodds-Streeton JJA. They were not in dispute on this application.

11. An applicant for a stay bears the onus of demonstrating that the stay should be granted. However, there is no need for the applicant to demonstrate “special” or “exceptional” circumstances. The applicant need only demonstrate...