Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 03 May 2019
• Neutral Citation: [2019] FCA 720
• Date: 03 May 2019

FEDERAL COURT OF AUSTRALIA

Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd
[2019] FCA 720

File number(s):	VID 176 of 2018
Judge(s):	BEACH J
Date of judgment:	3 May 2019
Date of publication of reasons:	21 May 2019
Catchwords:	TRADE MARKS – summary judgment – default judgment – trade mark infringement – meaning of foreign words – meaning and pronunciation of Chinese characters – use as a trade mark – summary judgment granted – application to dispense with r 4.01(2) of Federal Court Rules 2011 (Cth) – dispensation refused
Legislation:	Federal Court of Australia Act 1976 (Cth) ss 31A, 37M Federal Court Rules 2011 (Cth) rr 1.34, 4.01(2), 4.05(2), 5.22, 5.23(1)(b), 11.02, 26.01 Trade Marks Act 1995 (Cth) ss 7(3), 88(1)(a), 120(1), 228
Cases cited:	Basetec Services Pty Ltd v CPB Contractors Pty Ltd [2017] FCA 510 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd (2004) 213 ALR 153 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 Tolkien Estate Ltd v Saltalamacchia [2016] FCA 944 Upaid Systems Ltd v Telstra Corp Ltd (2016) 122 IPR 190; [2016] FCAFC 158
Date of hearing:	15 February and 3 May 2019
Registry:	Victoria
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	96
Counsel for the Applicant/Cross-Respondent:	Mr EJC Heerey QC and Mr PJT Creighton-Selvay
Solicitor for the Applicant/Cross-Respondent:	Herbert Smith Freehills
Counsel for the First and Second Respondents/Cross-Claimants:	Mr L Merrick (15 February 2019)
Solicitor for the First and Second Respondents/Cross-Claimants:	Kain Lawyers (15 February 2019)
Counsel for the Third Respondent:	The Third Respondent did not appear
Counsel for the Fourth Respondent:	The Fourth Respondent did not appear

ORDERS

		VID 176 of 2018
BETWEEN:	SOUTHCORP BRANDS PTY LTD (ACN 005 156 945) Applicant
AND:	AUSTRALIA RUSH RICH WINERY PTY LTD (ACN 611 615 108) First Respondent ; AUSTRALIA R&R GROUP PTY LTD (ACN 620 278 702) Second Respondent ; RUSH RICH INTERNATIONAL TRADING INC., LTD (and another named in the Schedule) Third Respondent
AND BETWEEN:	AUSTRALIA RUSH RICH WINERY PTY LTD (ACN 611 615 108) (and another named in the Schedule) First Cross-Claimant
AND:	SOUTHCORP BRANDS PTY LTD (ACN 005 156 945) Cross-Respondent

JUDGE:	BEACH J
DATE OF ORDER:	3 MAY 2019

THE COURT ORDERS THAT:

1. Summary judgment be given in favour of the Applicant against each of the Respondents pursuant to r 26.01(1)(e) of the Federal Court Rules and s 31A(1) of the Federal Court of Australia Act 1976 (Cth).

2. The First and Second Respondents/Cross-claimants’ cross-claim be dismissed, pursuant to r 5.23(1)(b) of the Federal Court Rules 2011 (Cth).

THE COURT DECLARES THAT:

3. The Respondents, by using the following Chinese characters:

   1. 奔富;

   2. 奔富酒园;

   3. 奔富酒庄;

   4. 澳大利亚奔富酒庄; and/or

   5. 澳洲大利亚奔富 酒庄

(the Impugned Chinese Characters)

as a trade mark, have infringed each of:

6. Australian trade mark no. 37674 for PENFOLDS (Penfolds TM);

7. Australian trade mark no. 1762333 for BEN FU (Ben Fu TM); and

8. Australian trade mark no. 1762317 for 奔富 (Chinese Character TM).

1. The Fourth Respondent has acted in concert with, and aided, counselled, directed and joined with, the First, Second and Third Respondents in furtherance of a common design, namely, the use of the Impugned Chinese Characters on Infringing Bottles (as defined in the Further Amended Statement of Claim) in contravention of s 120(1) of the Trade Marks Act 1995 (Cth).

THE COURT FURTHER ORDERS THAT:

5. The Respondents, whether by themselves, or by their servants, agents, related bodies corporate or otherwise, be restrained from using, or aiding, counselling or directing the use of the Impugned Chinese Characters or any other mark substantially identical with, or deceptively similar to, the Chinese Character TM, Penfolds TM or Ben Fu TM, in relation to wine.

6. The First Respondent pay the Applicant the sum of $351,916.75.

7. The First Respondent pay the Applicant interest on the sum in paragraph 6 above in the amount of $23,385.59.

8. The Fourth Respondent forthwith withdraw Australian Trade Mark Application Nos. 1916426, 1916427 and 1916428.

9. The Respondents pay the Applicant’s costs of and incidental to the Applicant’s interlocutory application dated 18 April 2019 (Interlocutory Application) to be taxed in default of agreement.

10. The Respondents pay the Applicant’s costs of and incidental to the proceeding to be taxed in default of agreement.

11. The time for service of the Interlocutory Application, and the affidavit of Shaun Daniel McVicar dated 18 April 2019, be abridged to midday on Wednesday 24 April 2019.

12. The trial listed to commence on 3 June 2019 be vacated.

13. Liberty to apply.

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

REASONS FOR JUDGMENT

BEACH J:

1. By interlocutory application the applicant (Southcorp) applied for both default judgment and summary judgment against the respondents, including dismissal of the cross-claim filed by the first and second respondents.

2. These reasons set out the basis upon which earlier this month I granted summary judgment against the respondents in respect of Southcorp’s claims and default judgment on the cross-claim. They also deal with my dismissal of the first and second respondents’ application to dispense with the requirements of r 4.01(2) of the Federal Court Rules 2011 (Cth).

3. Now on the material before me, although I granted summary judgment on Southcorp’s claims Southcorp was also entitled to default judgment for reasons that I will now explain.

(a) Default judgment

4. For the purposes of determining an entitlement to default judgment, r 5.22 provides that a party will be in default if they fail to do an act required to be done, or to do an act in the time required, by the Rules, they fail to comply with an order of the Court, they fail to attend a hearing in the proceeding or they fail to prosecute or defend the proceeding with due diligence.

5. If one or more of these conditions is satisfied, the Court may grant default judgment. Moreover, in this context the Court has power to grant both declaratory and injunctive relief by way of default judgment, as well as to grant a pecuniary remedy.

6. Let me set out some background.

7. On 16 February 2018, Southcorp initiated the present proceeding against the first...